Uniloc 2017 LLC

Patent Trials and Appeals Board

Jan 19, 2021

IPR2019-01367 (P.T.A.B. Jan. 19, 2021)

Trials@uspto.gov Paper 29
Tel: 571-272-7822 Date: January 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SLING TV L.L.C. and
VUDU, INC.,
Petitioner,
v.
UNILOC 2017 LLC,
Patent Owner.
____________

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Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

1 Vudu, Inc., which filed a petition in IPR2020-00677, has been joined as a
petitioner in this proceeding.
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I. INTRODUCTION
Sling TV L.L.C. (“Sling”) filed a Petition seeking institution of inter
partes review of claims 1–3 of U.S. Patent No. 8,407,609 B2 (Ex. 1001, “the
’609 patent”). Paper 2 (“Pet.”). Uniloc 2017 LLC (“Patent Owner”) filed a
Preliminary Response. Paper 6 (“Prelim. Resp.”). After reviewing those
papers, we determined that Petitioner had demonstrated a reasonable
likelihood that it would prevail in proving that claims 1–3 of the ’609 patent
are unpatentable, and we instituted an inter partes review of all challenged
claims on all grounds set forth in the Petition. Paper 7 (“Institution
Decision” or “Inst. Dec.”).
After institution, Patent Owner filed a Response (Paper 13, “PO
Resp.”), and Sling filed a Reply (Paper 15, “Pet. Reply”). Vudu, Inc.
(“Vudu”) was then joined as a petitioner (Paper 16), and Sling and Vudu are
now collectively referred to as “Petitioner.” Patent Owner filed a Sur-Reply
(Paper 18, “PO Sur-Reply”). An oral hearing in this proceeding was held on
December 3, 2020, and a transcript of the hearing is included in the record.
Paper 28 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons discussed
below, Petitioner has shown by a preponderance of the evidence that claims
1–3 of the ’609 patent are unpatentable under 35 U.S.C. § 103(a).
A. Related Matters
The parties identify various civil actions involving the ’609 patent that
are or were pending in district court, including Uniloc 2017 LLC v. Sling TV,
LLC, 1:19-cv-00278 (D. Colo.); Uniloc 2017 LLC v. Vudu, Inc., 1:19-cv-
00183 (D. Del.); Uniloc 2017 LLC v. Netflix, Inc., 8:18-cv-02055 (C.D.
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Cal.); Uniloc 2017 LLC v. Google LLC, 2:18-cv-00502 (E.D. Tex.). Pet. v–
vi; PO Resp. 9–10; see Paper 19 (Petitioner’s Updated Mandatory Notices).
The ’609 patent is or was the subject of three other petitions for inter
partes review. In IPR2020-00677, Vudu filed a petition that is substantively
identical to the Petition, and the Board instituted that review and joined
Vudu to this proceeding as Petitioner. Paper 16 (Joinder Order). Also, a
petition filed by Netflix, Inc. and Roku, Inc. was instituted by the Board.
Netflix, Inc. v. Uniloc 2017 LLC, IPR2020-00041 (“the 041 IPR”), Paper 10
(PTAB Mar. 25, 2020) (Institution Decision in the 041 IPR). A final written
decision in the 041 IPR is being issued concurrently with this Decision.
Finally, the ’609 patent was previously the subject of another petition for
inter partes review that was discretionarily denied under 35 U.S.C. § 314(a).
Google LLC v. Uniloc 2017 LLC, IPR2020-00115, Paper 8 (PTAB Mar. 27,
2020).
B. Real Parties in Interest
Sling states that it is owned (directly or indirectly) by Sling TV
Holding L.L.C., DISH Network L.L.C., DISH Technologies L.L.C., and
DISH Network Corporation. Pet. v. Vudu identifies each of the following
companies as a direct or indirect owner (at some point in time): Walmart
Inc., Fandango Media, LLC, NBCUniversal Media, LLC, Warner Bros.
Entertainment Inc., Comcast Corporation, Warner Media, LLC, and AT&T
Inc. Paper 16, 2 n.1 (citing IPR2020-00677, Papers 1, 8).
Patent Owner identifies no other real parties in interest. Paper 3, 1
(Mandatory Notice).
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C. The Petition’s Asserted Grounds
Petitioner asserts the following grounds of unpatentability (Pet. 2):
Claims Challenged 35 U.S.C. § References/Basis
1–3 103(a)2 Jacoby,3 Bland4
1–3 103(a) McTernan,5 Robinson6
Petitioner also relies on the testimony of Dr. James A. Storer to support its
contentions. Ex. 1002.
D. Summary of the ’609 Patent
The ’609 patent is titled “System and Method for Providing and
Tracking the Provision of Audio and Visual Presentations via a Computer
Network.” Ex. 1001, code (54). The application that led to the ’609 patent
was filed on August 21, 2009, and claimed the benefit of a U.S. provisional
application filed August 21, 2008. Id. at codes (22), (60).
The ’609 patent discloses tracking a user computer’s receipt of digital
media presentations via a web page. Ex. 1001, code (57). An exemplary
web page provided to a user’s computer is shown in Figure 9, which is
reproduced below:

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
Because the challenged patent was filed before March 16, 2013, we refer to
the pre-AIA version of § 103.
3 Jacoby, US 2004/0254887 A1, published Dec. 16, 2004 (Ex. 1006).
4 Bland et al., US 5,732,218, issued Mar. 24, 1998 (Ex. 1009).
5 McTernan et al., WO 01/89195 A2, published Nov. 22, 2001 (Ex. 1007).
6 Robinson et al., EP 0 939 516 A2, published Sept. 1, 1999 (Ex. 1008).
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Ex. 1001, Fig. 9. As shown above, Figure 9 depicts a web page (900) with
portion 930 (including portion 920, where a presentation selected by the user
may be displayed) and portions 910 and 940, which “may be used to display
related information, such as advertisements.” Id. at 11:59–12:6, 12:12–14.
In order to appropriately value the advertising space, the ’609 patent seeks to
“identify how long the media was actually, or may typically be played.” Id.
at 12:6–15.
The presentation, which is displayed in portion 920, may be supplied
by the system or may be linked by the system (with the content stored on a
third party’s computer system). Ex. 1001, 12:64–66; see id. at 7:25–38
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(identifying challenge of tracking presentation “[w]here content is housed
elsewhere and linked to by computers 30”). “Regardless, page 900 may
include a timer applet,”7 which is “used to indicate when a pre-determined
temporal period has elapsed.” Id. at 12:66–67, 13:5–6. For example, the
temporal period may be ten, fifteen, or thirty seconds. Id. at 13:6–8.
“[W]hen the applet determines the predetermined temporal period has
elapsed, it signals its continued execution to system 20.” Id. at 13:10–12. In
addition, “the applet may cause [a] cookie [received with web page 900], or
associated data, to be transmitted from the user’s computer 20 to system 30.”
Id. at 13:14–21; see id. at Fig. 1 (illustrating user computers 20 and server
computers 30). The system logs receipt of the applet’s signal and logs the
client’s cookie (or data associated with it). Id. at 13:12–13, 13:21–23. For
example, “a table entry” may be made identifying the user, the page, and
total time on that page. Id. at 13:24–30.
According to the ’609 patent, this “provide[s] the capability to know
that a viewer began viewing a particular show at a certain time, and to know
when a user began viewing a different page, or show, thereby providing
knowledge of how long a particular viewer spent on a particular page.”
Ex. 1001, 13:43–48. The ’609 patent states that this knowledge allows the
cost of “advertising displayed on a given page” to correspond to the length
of time that page is viewed. Id. at 13:49–14:2; see also id. 7:42–52, 11:53–
58.

7 “‘Applet,’ as used [in the Specification], generally refers to a software
component that runs in the context of another program . . . .” Ex. 1001,
12:67–13:3.
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E. Challenged Claims
The Petition challenges claims 1–3 of the ’609 patent. Claim 1 is
independent, and claims 2 and 3 depend from claim 1. Independent claim 1
is reproduced below with bracketed element letters added for reference:
1. [pre] A method for tracking digital media
presentations delivered from a first computer system to a user’s
computer via a network comprising:
[a] providing a corresponding web page to the user’s
computer for each digital media presentation to be delivered
using the first computer system;
[b] providing identifier data to the user’s computer using
the first computer system;
[c] providing an applet to the user’s computer for each
digital media presentation to be delivered using the first
computer system, wherein the applet is operative by the user’s
computer as a timer;
[d] receiving at least a portion of the identifier data from
the user’s computer responsively to the timer applet each time a
predetermined temporal period elapses using the first computer
system; and
[e] storing data indicative of the received at least portion
of the identifier data using the first computer system;
[f] wherein each provided webpage causes corresponding
digital media presentation data to be streamed from a second
computer system distinct from the first computer system
directly to the user’s computer independent of the first
computer system;
[g] wherein the stored data is indicative of an amount of
time the digital media presentation data is streamed from the
second computer system to the user’s computer; and
[h] wherein each stored data is together indicative of a
cumulative time the corresponding web page was displayed by
the user’s computer.
Ex. 1001, 14:17–45.
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II. ANALYSIS
A. Principles of Law
In an inter partes review, the petitioner has the burden of proving
unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e).
That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are “such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The legal question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
objective evidence of obviousness or nonobviousness.8 Graham v. John
Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966). One seeking to
establish obviousness based on more than one reference also must articulate
sufficient reasoning with rational underpinnings to combine teachings. See
KSR, 550 U.S. at 418.
B. The Level of Ordinary Skill in the Art
Petitioner asserts that the level of ordinary skill in the art corresponds
to “a bachelor’s degree in electrical engineering, computer science, or a

8 The record does not include allegations or evidence of objective indicia of
obviousness or nonobviousness.
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similar field with at least two years of experience in web page and Internet
technology or a person with a master’s degree in electrical engineering,
computer science, or a similar field with a specialization in web page and
Internet technology.” Pet. 7 (citing Ex. 1002 ¶ 49). Patent Owner “does not
offer a competing definition” of a person of ordinary skill in the art. PO
Resp. 12.
Petitioner’s proposal (unopposed by Patent Owner) is supported by
the testimony of Dr. Storer and is consistent with the ’609 patent
specification and the asserted prior art. See Ruiz v. A.B. Chance Co., 234
F.3d 654, 666–67 (Fed. Cir. 2000) (identifying factors); see also Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (The “level of skill in the
art is a prism or lens through which a judge, jury, or the Board views the
prior art and the claimed invention.”). Accordingly, we adopt the level of
ordinary skill as articulated by Petitioner, except that we remove the
qualifier “at least” because it expands the range indefinitely without an
upper bound. Accord Inst. Dec. 7 (adopting same position).9
C. Claim Construction
We interpret claim terms using “the same claim construction standard
that would be used to construe the claim in a civil action under 35 U.S.C.
282(b).” 37 C.F.R. § 42.100(b) (2019).
The Petition proposes constructions for four claim terms and phrases:
“applet,” “computer system,” “amount of time the digital media presentation

9 In the 041 IPR, we adopt a slightly different definition of a person of
ordinary skill in the art. Both definitions are substantially the same for
purposes of these proceedings. In particular, our analysis and conclusions in
this Decision would be the same regardless of which definition is adopted.
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data is streamed,” and “cumulative time the corresponding web page was
displayed by the user’s computer.” Pet. 7–11 (emphasis omitted). Before
institution, Patent Owner submitted that none of these claim terms or phrases
required express construction. Prelim. Resp. 5; but see id. at 6–7 (disputing
Petitioner’s proposed construction of “computer system”). In the Institution
Decision, we agreed with Patent Owner that no claim terms or phrases
required construction. Inst. Dec. 8.
The parties’ post-institution briefs dispute whether Petitioner properly
construed the term “computer system” (PO Resp. 14; Pet. Reply 3–5; PO
Sur-Reply 1–3), but the parties agree that the Board need not construe this
term in this proceeding (PO Resp. 13, 15; Pet. Reply 5; Tr. 16:25–17:18,
31:16–26). We agree that it is not necessary for us to construe this term:
although the parties do not agree on the term’s meaning, resolution of their
dispute would not affect this Decision.10 Accordingly, we do not expressly
construe the term “computer system,” and we apply the plain and ordinary
meaning of that term. See Tr. 17:19–23, 32:1–6 (no objection to using the
term’s plain and ordinary meaning).
In addition, Patent Owner submits two district court orders analyzing
the construction of claim terms and phrases in the ’609 patent. PO Resp. 10
(citing Ex. 2001 (Order in Uniloc 2017 LLC v. Netflix, Inc., 8:18-cv-02055
(C.D. Cal.)); Ex. 2002 (Order in Uniloc 2017 LLC v. Google LLC, 2:18-cv-

10 For example, Patent Owner does not contend that the cited references fail
to disclose a “computer system.” See generally PO Resp. Although Patent
Owner argues that the Petition fails to show a second computer system
distinct from the first computer system (id. at 31–33), resolution of that
dispute is not affected by the meaning of the term “computer system,” as we
explain in more detail in Section II.D.3.g, infra.
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00502 (E.D. Tex.))); see Consolidated Trial Practice Guide 47 (Nov. 2019)
(“Consolidated TPG”)11 (“Parties should submit a prior claim construction
determination by a federal court or the ITC in an AIA proceeding as soon as
that determination becomes available.”). We have reviewed and considered
the district courts’ orders. See Ex. 2001, 6, 14–18, 26–27; Ex. 2002, 57–78;
37 C.F.R. § 42.100(b) (“Any prior claim construction determination
concerning a term of the claim in a civil action . . . that is timely made of
record in the inter partes review proceeding will be considered.”).
However, given the issues presented in this proceeding, this Decision
need not—and does not—expressly construe any claim terms or phrases.
See PO Resp. 13 (stating that “the Board need not expressly construe any
claim term”); Pet. Reply 23 (observing that Patent Owner “neither relies on
nor asks the Board to adopt any of the constructions from the district court
orders”); Tr. 17:24–18:15, 37:9–22; see also, e.g., Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(“[W]e need only construe terms ‘that are in controversy, and only to the
extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
D. Obviousness in view of McTernan and Robinson
Petitioner contends that claims 1–3 are rendered obvious by the
combination of McTernan and Robinson. Pet. 40–63, 69–73. Patent Owner
argues the Petition fails to show that the combination teaches element 1[f]
(see infra § II.D.3.g) and fails to show a sufficient motivation to combine the
references in the manner proposed (see infra § II.D.3.i). PO Resp. 31–43.

11 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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For the reasons explained below, we are persuaded by a
preponderance of the evidence that Petitioner has shown that the subject
matter of claims 1–3 would have been obvious over McTernan and
Robinson.
1. McTernan (Ex. 1007)
McTernan is titled “System and Method for Secure Delivery of Rich
Media.” Ex. 1007, code (54). McTernan delivers “rich media resources” to
client devices and tracks “show viewership” using “heartbeat packets” sent
by client devices during playback of the media resources. Id. at code (57).
McTernan’s system is depicted in Figure 1, reproduced below.

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As shown above, Figure 1 includes producers 102, web servers 104, show
servers 106, client device 108, security servers 110, and central server 112.
Ex. 1007, 12:12–15.
Producers 102 create rich media presentations and send the associated
files to show servers 106. Id. at 12:22–23, 14:2–3. Show servers 106
upload the files to security servers 110 for encryption and then store the
encrypted files for future transmission to requesting clients 108. Id. at 11:4–
6, 14:6–10, 15:2–3. Security servers 110 store the encryption keys. Id. at
14:7–15:2.
“Web server 104 serves HTML pages to Client devices 108
containing links to one or more available shows hosted by Show
Server 106.” Ex. 1007, 15:14–15. “When a client 108 requests the
transmission of content by selecting a link presented on a Web page, an
appropriate Show Server Guide 103c is transmitted” that lists show
servers 106 capable of transmitting the requested content. Id. at 16:22–17:2.
Client 108 connects with a listed show server 106 (id. at 17:2–4, 17:17–18),
and the client’s media player (player 103b) receives the encrypted rich
media resources from that show server 106 (id. at 18:3–9). Client 108
requests the resources’ encryption keys from security server 110 (id. at
18:10–11), and security server 110 provides the appropriate encryption keys
and a unique session identifier (“session id”) to client 108 (id. at 18:13–17).
During the show, media player 103b (running on client 108) sends
“heartbeat packets” to security server 110 at regular intervals. Ex. 1007,
18:22–19:1. The heartbeats “consist of the unique session id and a time
stamp” and “are generated and transmitted a [sic—at] regular
intervals . . . e.g., every 30 seconds, every minute, etc.” Id. at 19:1–4. “The
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time stamp is used to measure the elapsed time from the beginning of the
viewing of a show to the generation of the heartbeat packet. In this manner,
the system is capable of generating statistics regarding how long each show
is viewed for by each client.” Id. at 19:4–6. According to McTernan, “[b]y
having each Player 103b update the Security Server 110 with viewing
statistics, a mechanism is provided whereby precise measurements of show
viewership can be made.” Id. at 19:10–12; see also id. at 9:22–23 (“These
heartbeat data packets are used to calculate the total time that a user is
watching a show . . . .”). Security server 110 retains this data and provides it
to central server 112, and the data can be used for billing purposes. Id.
at 19:13–20.
2. Robinson (Ex. 1008)
Robinson is titled “User communication and monitoring system for
computer networks.” Ex. 1008, code (54). Robinson describes a user
communication and monitoring system (UCMS) that measures the duration
of a visitor’s presence on a web page. Id. ¶¶ 4–7. “UCMS generates
information and enables knowledge on arrival and departure time of visitors,
and thus of duration of visit,” and Robinson states that “visit duration
information is potentially more valuable and accurate in monitoring the
‘success’ of WWW sites, and in redesigning layout and marketing strategy.”
Id. ¶ 18.
Robinson measures the visit duration using “heartbeats” sent by an
applet on the client’s machine. Ex. 1008 ¶¶ 8–9. “When a user arrives on a
web page,” the user’s computer receives the web page and “a small Java
applet which is able to communicate with the server side UCMS program.”
Id. ¶ 20. The client sends a message to indicate the starting time of the
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applet, and the server updates a log-file with the LOGIN-time and an
“identifier and page-indicator.” Id. ¶¶ 20, 22. After the page is downloaded,
“the applet regularly sends pulse message[s] [i.e., heartbeats] to the server,”
which indicate that the user is online. Id. ¶ 23. “[T]he applet in the client
updates its existence at intervals e.g. of 1 second (generally in the range
0,001 – 5 min).” Id. ¶ 28. If the server fails to receive a heartbeat pulse, it
assumes “the client is not on-line anymore,” and “updates the log-file.” Id.
¶ 23. “The log-file consists minimally of information about the login and
logout times of any web page (with identifier and page-indicator) to which
the applet has been added,” and the log-file can be used for “real time
monitoring of users or collecting long-term statistics or for security reasons.”
Id. ¶ 21 (emphasis omitted); see id. ¶ 31 (“[T]he same Java applet can be
used with all pages each page containing unique identification variables.”);
see also id. ¶ 24 (deleting applet before new web page is downloaded).
3. Independent Claim 1
a. 1[pre]: “A method for tracking digital media
presentations delivered from a first computer system
to a user’s computer via a network comprising”
Petitioner asserts that McTernan discloses the preamble of claim 1
(Pet. 41–45),12 and Patent Owner has not argued otherwise (see generally
PO Resp.).
Petitioner’s assertions are supported by the cited evidence and are
persuasive. McTernan’s web server 104, security servers 110, and central

12 Because Petitioner has shown sufficiently that the recitations in the
preamble are satisfied by McTernan, we need not determine whether the
preamble is limiting. See Vivid Techs., 200 F.3d at 803.
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server 112 collectively teach a first computer system. E.g., Ex. 1007, 10:22–
11:18, 12:12–15, Fig. 1; see Pet. 41–42 (mapping these servers to the
claimed “first computer system”). These servers facilitate the delivery of
rich media resources (the claimed “digital media presentations”) to client
device 108 (the claimed “user’s computer”) via data network 100. E.g.,
Ex. 1007, code (57), 9:12–20, 12:12–21, Fig. 1. McTernan’s security
servers 110 and central server 112 track delivery of the media resources
using heartbeat packets generated by the client during playback. E.g., id. at
code (57), 18:22–19:6. Accordingly, we are persuaded that McTernan
discloses the preamble.
b. 1[a]: “providing a corresponding web page to the
user’s computer for each digital media presentation
to be delivered using the first computer system”
Petitioner asserts that McTernan discloses element 1[a] (Pet. 45–47),
and Patent Owner has not argued otherwise (see generally PO Resp.).
Petitioner’s assertions are supported by the cited evidence and are
persuasive. McTernan states that “Web Server 104 serves HTML pages to
Client devices 108 containing links to one or more available shows.”
Ex. 1007, 15:14–15; see id. at 22:6–12 (web pages may be encoded in
Hypertext Markup Language (HTML)). McTernan discloses “providing a
corresponding web page for each digital media presentation,” as claimed, for
two reasons that are each independently sufficient. First, McTernan
discloses that the HTML pages may contain a link to “one . . . available
show[].” Id. at 15:14–15; see Ex. 1002 ¶ 190. Second, after client 108
selects one of these links, McTernan’s web server 104 provides “Show
Server Guide 103c . . . listing all Show Servers 106 connected to the
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network 100 that are capable of transmitting the content requested by the
client 108.” Ex. 1007, 16:22–17:2; see id. at 23:15–17; Ex. 1002 ¶ 191
(testifying that an ordinary artisan would have understood the show server
guide to be provided on a web page). Accordingly, we are persuaded that
McTernan discloses element 1[a].
c. 1[b]: “providing identifier data to the user’s
computer using the first computer system”
Petitioner asserts that McTernan discloses element 1[b] (Pet. 47–48),
and Patent Owner has not argued otherwise (see generally PO Resp.).
Petitioner’s assertions are supported by the cited evidence and are
persuasive. McTernan’s security server 110 sends a session identifier (the
claimed “identifier data”) to client device 108. Ex. 1007, 18:15–16, Fig. 4
(step 402). “The session id is a reference to the unique id of the Player 103b
and the unique id of the show being viewed.” Id. at 18:16–17; see id.
at 15:21–22 (“The player and plug-in 103b are encoded with an identifier to
uniquely identify the player and plug-in and thereby associate it with the
Client 108.”). Accordingly, we are persuaded that McTernan discloses
element 1[b].
d. 1[c]: “providing an applet to the user’s computer for
each digital media presentation to be delivered using
the first computer system, wherein the applet is
operative by the user’s computer as a timer”
Petitioner asserts that McTernan and the McTernan-Robinson
combination each disclose element 1[c] (Pet. 48–53), and Patent Owner has
not argued otherwise (see generally PO Resp.). Petitioner’s assertions are
supported by the cited evidence and are persuasive.
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We are persuaded that a person of ordinary skill in the art would have
understood McTernan’s media player 103b to disclose the claimed applet.
See Pet. 49–50. McTernan describes media player 103b as a “plug-in or
other software add-on” that can be “loaded into the client’s content viewer.”
Ex. 1007, 22:14–18; see also id. at 15:13–19, 22:18–23:5; Ex. 1002 ¶ 196
(testifying that an ordinary artisan “would have understood that a ‘plug-in’
or ‘add-on’ runs in the context of another program, such as a browser”).
Also, Dr. Storer testifies that an ordinary artisan would have understood
McTernan to disclose providing a media player “for each presentation to be
delivered,” as claimed, because “Mc[T]ernan does not require the client 108
to possess a media player in advance.” Ex. 1002 ¶ 197 (citing Ex. 1007,
15:16–19). We credit Dr. Storer’s testimony because it is logical and
consistent with McTernan’s disclosure. Finally, media player 103b is
“operative . . . as a timer,” as claimed, because it generates periodic
heartbeat data packets that each include a time stamp “used to measure the
elapsed time from the beginning of the viewing of a show to the generation
of the heartbeat packet.” Ex. 1007, 18:22–19:5; see also id. at 9:21–10:2.
Accordingly, we are persuaded that McTernan discloses element 1[c].
Moreover, we are persuaded that Robinson discloses an applet, as
claimed. See Pet. 50–51. After arriving on a web page, Robinson’s client
downloads “a small Java applet” that periodically sends heartbeats to a
server. Ex. 1008, code (57), ¶¶ 20, 22, 28. Robinson’s server uses these
heartbeats “to make an accurate calculation of the client leaving time and of
visit duration.” Id. ¶ 9; see id. ¶¶ 20–23 (server maintains a log-file with
“identifier and page-indicator” and timing information). Robinson’s applet
“can be used with all pages[,] each page containing unique identification
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variables.” Id. ¶ 31; see also id. ¶ 24 (stating that applet is deleted from the
client before a new web page is downloaded).
We are also persuaded that it would have been obvious to combine
Robinson’s applet with McTernan’s system. See Pet. 69–70. McTernan and
Robinson both disclose software that instructs a client to periodically
provide heartbeats to a server for tracking purposes. Ex. 1007, code (57);
Ex. 1008, code (57). McTernan’s client retrieves “rich media plug-in and
stand-alone player 103b” from web server 104 (Ex. 1007, 15:17–19), and
similarly, Robinson’s client receives an applet when downloading a web
page’s HTML code (Ex. 1008 ¶ 22). Dr. Storer testifies that a person of
ordinary skill would have been motivated to use an applet, as disclosed in
Robinson, in place of McTernan’s software, because it would have been “a
simple substitution of one known element . . . for another” and would
“obtain predictable results.” Ex. 1002 ¶ 234. Dr. Storer also testifies that
use of an applet would “simplify the method of providing a client with
software for generating heartbeat packets” and a person of ordinary skill in
the art would have known how to provide an applet using McTernan’s web
server. Id. ¶¶ 235–236 (citing Ex. 1008 ¶¶ 19, 22, 31, 41). We credit this
testimony because it is logical and consistent with and supported by the
disclosure in Robinson. Accordingly, we are also persuaded that the
McTernan-Robinson combination discloses element 1[c].
e. 1[d]: “receiving at least a portion of the identifier
data from the user’s computer responsively to the
timer applet each time a predetermined temporal
period elapses using the first computer system”
Petitioner asserts that McTernan and the McTernan-Robinson
combination each disclose element 1[d] (Pet. 53–54), and Patent Owner has
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not argued otherwise (see generally PO Resp.). Petitioner’s assertions are
supported by the cited evidence and are persuasive.
McTernan’s security server 110 receives heartbeat packets, which
contain the unique session identifier, from media player 103b at regular
intervals (“e.g., every 30 seconds, every minute, etc.”). Ex. 1007, 18:22–
19:12, Fig. 4 (steps 408, 410); see also id. at 9:21–10:3. Accordingly, we
are persuaded that McTernan discloses element 1[d].
In addition, Robinson’s server receives heartbeats from the client’s
applet at regular intervals. Ex. 1008 ¶¶ 20, 23; see id. ¶ 28 (noting that “the
applet in the client updates its existence at intervals e.g. of 1 second”).
Robinson’s server maintains a log-file to determine whether a client has
stopped sending heartbeat pulses, which indicates that Robinson’s heartbeats
include information that uniquely identifies the client and the web page. See
id. ¶¶ 21 (“The log-file consists minimally of information about the login
and logout times of any web page (with identifier and page-indicator) to
which the applet has been added.”), 22 (“Minimally, with the time
information, the server saves some kind of identifier and page-indicator.”),
23 (“The server reacts to cessation of heartbeat pulses by . . . updat[ing] the
log-file and refus[ing] all connection attempts to that client.”), 31 (noting
pages can each contain “unique identification variables”). Dr. Storer
testifies that, based on Robinson’s disclosure, a person of ordinary skill in
the art “would understand that the client provides the page-indicator with the
heartbeats to allow the UCMS server to save the timing information with the
page-indicator.” Ex. 1002 ¶ 207 (citing Ex. 1008 ¶¶ 5, 8, 10–23, 28, 31).
We credit this testimony because it is logical and supported by Robinson’s
disclosure and because we perceive (and Patent Owner identifies) no
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evidence to the contrary. Accordingly, we are persuaded that Robinson
discloses that the applet causes the client to send heartbeats (that include a
page identifier) to the server at regular intervals.
Further, as explained above, we are persuaded that it would have been
obvious to combine Robinson’s applet with McTernan’s system. See supra
§ II.D.3.d (analyzing element 1[c]). In addition, as explained below, we are
persuaded that it would have been obvious to combine Robinson’s
heartbeats (which track time on a page) and McTernan’s system (which
tracks time a show is viewed). See infra § II.D.3.i (analyzing element 1[h]).
Accordingly, we are also persuaded that the McTernan-Robinson
combination discloses element 1[d].
f. 1[e]: “storing data indicative of the received at least
portion of the identifier data using the first computer
system”
Petitioner asserts that McTernan discloses element 1[e] (Pet. 55–56),
and Patent Owner has not argued otherwise (see generally PO Resp.).
Petitioner’s assertions are supported by the cited evidence and are
persuasive. In particular, McTernan’s security server 110 “stores received
heartbeat packets . . . indexed according to the packet’s unique session id.”
Ex. 1007, 25:16–17, Fig. 4 (step 410); see also id. at 25:17–20 (stating that
central server 112 retrieves the stored data from security server 110).
Accordingly, we are persuaded that McTernan discloses element 1[e].
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g. 1[f]: “wherein each provided webpage causes
corresponding digital media presentation data to be
streamed from a second computer system distinct
from the first computer system directly to the user’s
computer independent of the first computer system”
Petitioner asserts that McTernan discloses element 1[f]. Pet. 56–59
(citing id. at 41–45). Patent Owner contends that the Petition fails to show
that McTernan teaches “a second computer system distinct from the first
computer system” (PO Resp. 31–34), but does not dispute Petitioner’s
showing for the remainder of this element (see generally id.).
First, we address the undisputed aspects of this element—i.e.,
“wherein each provided webpage causes corresponding digital media
presentation data to be streamed from a second computer system.” We find
Petitioner’s assertions regarding these claimed aspects are supported by the
cited evidence and persuasive. See Pet. 56–59. McTernan teaches that its
web server 104 provides web pages corresponding to each digital media
presentation. See supra § II.D.3.b (analyzing element 1[a]). After selecting
a link on this web page, client 108 initiates a connection with show server
106, receives the encrypted resource, obtains the necessary encryption
key(s), and ultimately plays the media resource. E.g., Ex. 1007, code (57),
9:12–20. Dr. Storer testifies that a person of ordinary skill in the art would
have understood the media resources “to be streamed,” as required by the
claim, based on McTernan’s disclosure of “providing content from show
server 106 to client 108 via a UDP connection.” Ex. 1002 ¶ 215 (citing
Ex. 1007, 5:1–10; Ex. 1001, 4:43–47). We credit this testimony because it is
consistent with the cited evidence and because we perceive (and Patent
Owner identifies) no evidence to the contrary. Accordingly, we are
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persuaded that McTernan discloses “wherein each provided webpage causes
corresponding digital media presentation data to be streamed from a second
computer system,” as required by element 1[f].
Next, we turn to the aspects of this element that are disputed by the
parties—i.e., “stream[ing] from a second computer system distinct from the
first computer system directly to the user’s computer independent of the first
computer system” (emphasis added).
Petitioner contends that the claimed “second computer system” is
taught by McTernan’s show servers 106 and, as noted above, that the
claimed “first computer system” is taught by web server 104, security
servers 110, and central server 112. Pet. 41–42. For the requirement that
these systems be “distinct,” Petitioner refers to its discussion of the preamble
(id. at 56), which states:
[A person of ordinary skill in the art] would understand that
show servers 106 are “distinct” from the first computer system
and are not under common control. Figure 1 illustrates show
servers 106 as separate servers with separate functionality.
Mc[T]ernan does not describe show servers 106 as being under
control of the central server 112[, which controls the servers in
the “first computer system”].
Id. at 43 (citations omitted). Petitioner argues that show server 106 streams
directly to client 108 independent of the first computer system, as required,
because the “stream goes from show server 106 to client 108 via
network 107, not web server 104, 110, or 112.” Id. at 56. To illustrate,
Petitioner annotates McTernan’s Figure 1 (id. at 57), as shown below:
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Petitioner’s annotation of Figure 1 (reproduced above) “highlight[s] the
streaming of the digital media presentation from the show server 106
through multicast router network 107 and not via servers 104, 110, or 112.”
Id. Petitioner further contends:
Mc[T]ernan confirms that the digital media presentation
is streamed “from a second computer system [show servers
106] . . . directly to the user’s computer independent of the first
computer system.” “Client 108 . . . negotiate[s] and maintain[s]
a connection with Show Servers 106, which provide content
used in delivering a presentation or show.” Ex[1007] 16:9-21
(emphasis added); id. (the connection between client 108 and
show servers 106 can be multicast, unicast UDP, or unicast
TCP); id. 17:7-16 (describing communication between client
108 and show servers 106 via multicast router network 107).
Id. at 57–58 (emphasis omitted; most alterations in original).
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Patent Owner contends that Petitioner has not met its burden to show
that McTernan discloses “a second computer system distinct from the first
computer system,” as required by the claim. PO Resp. 31–33. Patent Owner
argues that Petitioner fails “to show that there is separate control of two
different systems, which would be required under [Petitioner’s]
interpretation of ‘computer system.’” Id. at 32. Patent Owner also argues
that McTernan “implies a single operator or common control of the entire
system,” as shown by the interaction between McTernan’s show server 106
and its security server 110. Id. (citing Ex. 1007, 11:4–6). Patent Owner
asserts that “the grounds presented in the Petition are based on Petitioner’s
argument that the alleged ‘first computer system’ and ‘second computer
system’ are distinct because they are not under common control.” Id. at 33
(citing Pet. 43, 56); see also PO Sur-Reply 13–14.
Having considered the parties’ arguments and the evidence presented,
we find that Petitioner has shown by a preponderance of the evidence that
McTernan’s show server 106 is “distinct from” the first computer system
(i.e., security server 110, web server 104, and control server 112) and that
show server 106 streams “directly to” client 108 “independent of” the first
computer system, as required by the claim. McTernan teaches that show
servers 106 are separate from (and different than) the servers in the first
computer system, and McTernan’s show servers 106 perform different
functions than web server 104, security servers 110, and central server 112.
E.g., Ex. 1007, Fig. 1, 12:12–15, 14:6–15, 17:7–18:9; see Pet. 43 (“Figure 1
illustrates show servers 106 as separate servers with separate
functionality.”); see also Ex. 1002 ¶ 183 (testifying that a person of ordinary
skill in the art would understand McTernan’s show servers to be distinct
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from the first computer system). McTernan’s client 108 connects with a
particular show server 106 independently of its communications with web
server 104 and security servers 110 (e.g., Ex. 1007, 16:9–16, 17:2–16) and
receives media resources from show server 106 via that connection (e.g., id.
at 17:17–18:9, Fig. 1).
Patent Owner arguments to the contrary are misplaced. See PO
Resp. 32 (“Petitioner has not met its burden to show that there is separate
control of two different systems . . . .”). It does not matter whether
McTernan teaches that its servers are separately controlled. This may be one
way to show “distinct” systems, but it is not a prerequisite. See Tr. 33:4–11,
35:8–23 (acknowledging that control is one way, but not the only way, to
show that systems are distinct).13 According to Patent Owner, separate
control is required by Petitioner’s construction of the term “computer
system,” but the Institution Decision identifies the logical errors underlying
this argument.14 It explains:
Patent Owner’s argument that show servers 106 are not
“distinct” from web server 104 and security servers 110 is
premised on an erroneous assumption—specifically, Patent
Owner assumes that the first and second computer systems
cannot have a common operator or be under common control.
Patent Owner does not provide support for this interpretation,

13 During the oral hearing, the meaning of the term “distinct” was discussed,
but the parties agreed that it should have its plain and ordinary meaning (and
did not propose competing constructions for the term). See Tr. 17:24–18:15,
30:14–31:15, 32:7–33:10, 35:8–23. Thus, on this record, we determine that
the parties’ dispute is whether the reference teaches the claim limitation,
rather than the meaning of the term “distinct.”
14 The Response repeats this argument from the Preliminary Response.
Compare Prelim. Resp. 16–17, with PO Resp. 31–33.
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but rather contends that it flows from Petitioner’s proposed
construction of the term “computer system.” We disagree.
Petitioner construes a “computer system” as “one or
more computing devices having a common operator or under
common control.” Pet. 8–9. Contrary to Patent Owner’s
assumption, we do not understand the proposed construction to
prevent two distinct computer systems from having a common
operator or being under common control. An example will
illustrate: assume that four computing devices (A, B, C, and D)
are operated by the same entity. Devices A and B qualify as a
computer system under Petitioner’s proposed construction—A
and B are computing devices that have a common operator.
Similarly, devices C and D would qualify as a computer
system, and because they are not devices A and B, they would
be a different computer system than the system of A and B. As
a result, under Petitioner’s proposed construction, two
“computer systems” can be identified that are operated by the
same entity. And Petitioner’s proposal provides no basis for
concluding that these two computer systems are not “distinct,”
as argued by Patent Owner.
Moreover, Patent Owner does not identify (and we do not
perceive) any support in the record for Patent Owner’s
interpretation of claim 1. The relationship between the first and
second computer systems is defined by the claim. In particular,
claim 1 specifies that the “second computer system [is] distinct
from the first computer system” and that a presentation is
streamed from the second computer system “directly to the
user’s computer independent of the first computer system.” Ex.
1001, 14:17–45 (emphasis added). The Specification does not
use the term “distinct” outside of summarizing the claimed
invention. Id. at Abstract, 2:13–34. But the Specification
indicates that the method applies whether or not the first and
second computer systems are operated by different entities. See
id. at 12:46–14:8 (noting that playback may be “tracked in a
substantially same [sic] manner, regardless of whether it is
streamed from system 30 or otherwise unrelated computer
systems operated by third parties”). Accordingly, on this
record, we are not persuaded that claim 1 prohibits the common
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operation or control of the claimed first and second computer
systems, even under Petitioner’s proposed construction.
Inst. Dec. 21–23 (footnote omitted); see also Pet. Reply 3–4 (agreeing that
Petitioner’s “proposed construction does not prevent two distinct computer
systems from having a common operator or being under common control”).
We adopt that analysis in this Decision.
Moreover, we disagree with Patent Owner’s related argument that the
Petition is premised on an allegation that the computer systems are distinct
because they are not under common control. PO Resp. 33 (citing Pet. 43,
56); see also PO Sur-Reply 13–14. For the requirement that the second
computer system be “distinct,” the Petition points to the discussion mapping
the second computer system to McTernan’s show servers:
Mc[T]ernan discloses “a second computer system distinct
from the first computer system” for the reasons discussed for
element 1[pre]. See supra, §X.B.1.a (the second computer
system includes show servers 106); Ex[1002] ¶¶212-216.
Pet. 56 (some alterations in original). In the cited section, the Petition
contends that the two computer systems “are ‘distinct’ . . . and are not under
common control”—not that they are distinct because they are not under
common control. Id. at 43 (emphasis added). Specifically, the full text of
the relevant paragraph states:
For the “second computer system,” a [person of ordinary
skill in the art] would understand that show servers 106 are
“distinct” from the first computer system and are not under
common control. Ex[1007] 12:11-19:21. Figure 1 illustrates
show servers 106 as separate servers with separate
functionality. Mc[T]ernan does not describe show servers 106
as being under control of the central server 112. Rather, show
servers 106 receive content from producers 102 that create
content, and show servers 106 provide the content to client 108
via a media path (represented by 107a-c) that does not include
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the web servers 104, security servers 110, or central server 112.
See e.g., Ex[1007], Fig. 1, 2:13-17, 14:6-15, 17:7-18:9;
Ex[1002] ¶183.
Id. (most alterations in original). Accordingly, the Petition is not predicated
on a contention that the systems are separately controlled.
Furthermore, even if the Petition could be read as arguing that the
computer systems are distinct because they are not under common control, it
also argues that the systems are distinct because they are “separate servers
with separate functionality.” Pet. 43. Consequently, the former argument
would be superfluous because we agree with the latter.
Accordingly, we are persuaded that McTernan discloses element 1[f].
h. 1[g]: “wherein the stored data is indicative of an
amount of time the digital media presentation data is
streamed from the second computer system to the
user’s computer”
Petitioner asserts that McTernan discloses element 1[g] (Pet. 59–61),
and Patent Owner has not argued otherwise (see generally PO Resp.).
Petitioner’s assertions are supported by the cited evidence and are
persuasive. McTernan’s “heartbeat data packets are used to calculate the
total time that a user is watching a show.” Ex. 1007, 9:22–23. Specifically,
McTernan states:
These heartbeat packets consist of the unique session id and a
time stamp. . . . The time stamp is used to measure the elapsed
time from the beginning of the viewing of a show to the
generation of the heartbeat packet. In this manner, the system
is capable of generating statistics regarding how long each
show is viewed for by each client. . . . By having each Player
103b update the Security Server 110 with viewing statistics, a
mechanism is provided whereby precise measurements of show
viewership can be made.
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Id. at 19:1–12. Accordingly, we are persuaded that McTernan discloses this
element 1[g].
i. 1[h]: “wherein each stored data is together indicative
of a cumulative time the corresponding web page was
displayed by the user’s computer”
Petitioner asserts that the McTernan-Robinson combination discloses
element 1[h]. Pet. 61–62. Petitioner submits that Robinson’s heartbeats,
which are used to measure visit duration, are “together indicative of the total
amount of time the user’s computer spent on the web page.” Id. (citing
Ex. 1008 ¶¶ 8–9, 39; Ex. 1002 ¶¶ 219–221). Petitioner contends that it
would have been obvious to combine McTernan and Robinson such that
McTernan’s system used both McTernan’s heartbeat packets (which indicate
the amount of time the presentation is streamed, see supra § II.D.3.h
(element 1[g])) and Robinson’s heartbeat packets (which indicate the total
time a web page was displayed). Pet. 61–62; see also id. at 52, 54, 56.
According to Petitioner, the proposed combination is within the skill
of an ordinary artisan, and a person of ordinary skill in the art would have
had a reasonable expectation of success. See Pet. 52 (“A POSA would have
known to use identifiers to distinguish heartbeat packets for tracking a show
from heartbeat packets for tracking a page.” (citing Ex. 1007, 18:15–17;
Ex. 1008 ¶¶ 21–23; Ex. 1002 ¶¶ 204, 237–242)), 56 (“A POSA combining
the teachings of Robinson would know to configure Mc[T]ernan’s security
server 110 to store Robinson’s heartbeats in a similar manner, e.g., indexed
by their identifiers (such as a page-indicator).” (citing Ex. 1002 ¶¶ 209–
211)), 71 (arguing that, given similarities, no modifications or only slight
modifications to McTernan’s servers would be required), 72 (“Such a
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modification would be a trivial task . . . .” (citing Ex. 1008 ¶¶ 22, 24)); see
also id. at 62.
Petitioner also contends the combination is a mere “application of a
known technique . . . to a known system . . . ready for improvement to yield
predictable results.” Pet. 70–71. Relatedly, Petitioner argues that a person
of ordinary skill would have been motivated to combine the references in
this manner as a combination of “prior art elements . . . according to known
methods . . . to yield predictable results.” Id. at 72. Petitioner notes that
McTernan and Robinson have “substantial similarities.” Id. at 71 (citing Ex.
1008 ¶ 22; Ex. 1007, 18:15–17, 19:1–2). According to Petitioner, the
combination improves McTernan by making the tracking more effective and
accurate and by improving security. Id. at 71–73 (citing Ex. 1007, 9:8–11;
Ex. 1008 ¶¶ 5, 8–9, 21).
Patent Owner contends that “Petitioner has not established a
motivation to combine the heartbeats of Robinson with the system of
McTernan” and that Petitioner’s proposed combination “is based on
impermissible hindsight.” PO Resp. 35. Patent Owner submits that, to
guard against improper hindsight, Petitioner must show “a motivation to
combine the prior art teachings in the particular manner claimed.” Id. at 37;
see id. at 35–37 (summarizing Federal Circuit cases). Patent Owner argues
that Petitioner’s statements are “insufficient on their face” to explain why an
ordinary artisan “would have made the combination or substitutions in the
particular manner claimed.” Id. at 38.
Moreover, Patent Owner argues that Petitioner’s statements are
“premised on there being a reason, not explained by Petitioner, for using
web page tracking in addition to show tracking.” PO Resp. 37–38; id. at 42
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(alleging failure “to explain why web page visit time is relevant to a system
that bills users according to media played, not how long the user was on a
web page” (emphasis omitted)). Patent Owner argues that “there is no
explanation as to why one of ordinary skill in the art would have wanted
such data in light of the functionality alleged to be present in McTernan,”
where “McTernan has no obvious use for web page visitation data.” Id.
at 38. Responding to Petitioner’s identified improvements (see Pet. 71–72),
Patent Owner argues the Petition fails to explain why there would have been
an improvement. PO Resp. 41.
Finally, Patent Owner argues that, unlike the ’609 patent, neither
McTernan nor Robinson disclose or suggest “using web page viewing times
for advertising” or “generating web pages with advertising.” PO Resp. 38–
40. According to Patent Owner, McTernan’s heartbeats are used to bill
customers for viewing media resources (id. at 39–40 (citing Ex. 1007, 7:8–
22, 9:21–23)), and Robinson’s heartbeats are used “in real-time” to
“facilitat[e] communications between users” (id. at 40 (citing Ex. 1008 ¶¶ 7–
9)). From this, Patent Owner argues:
The only motivation for combining a system for timing the
playing of shows, as in McTernan, so that a user can be billed
for playing time, with a system for determining real-time user
presence, for facilitating communications, as in Robinson, to
arrive at a system that uses a timer applet to determine the time
users are on a web page for advertising purposes, is
impermissible hindsight. There is simply no suggestion in
either McTernan or Robinson of the recited system.
Id. at 40–41.
On this record, we are persuaded that Robinson discloses element
1[h]. In particular, Robinson’s heartbeats are collectively used to calculate
the duration of a client’s visit on a particular web page. E.g., Ex. 1008 ¶¶ 8–
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9, 39. Patent Owner does not dispute Petitioner’s assertions in this regard.
See Pet. 61–62; see generally PO Resp. 34–43.
Moreover, after considering the parties’ arguments and the evidence
of record, we are persuaded, by a preponderance of evidence, that it would
have been obvious to combine McTernan and Robinson in the particular
manner proposed by Petitioner.
The Supreme Court instructs: “when a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (quoting
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. “[I]f a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” Id. But, the
Supreme Court also cautioned that “a patent composed of several elements is
not proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” Id. at 418. As a result, “it can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” Id.
We find that Petitioner’s proposal combines known elements with
each performing the same function it had been known to perform (see
Pet. 52, 54, 56, 71–73), and indeed, Patent Owner does not argue to the
contrary. As explained above, McTernan discloses a system that uses
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heartbeat packets to determine the amount of time a presentation is
streamed, and Robinson discloses a system that uses heartbeat packets to
determine the total time a web page is displayed. Petitioner proposes a
combination of Robinson’s heartbeats into McTernan’s system, with each
performing its known function.
We also find that the combination proposed by Petitioner is within the
skill of an ordinary artisan and that a person of ordinary skill in the art would
have had a reasonable expectation of success in making the combination.
Petitioner’s assertions and explanations on this point are detailed and
consistent with and supported by the evidence cited by Petitioner (see
Pet. 52, 54, 56, 71–73), and Patent Owner does not dispute these assertions.
Dr. Storer testifies that that a person of ordinary skill in the art “would have
known to use identifiers to distinguish” the two types of heartbeat packets
(in McTernan and Robinson) and would have known to store all heartbeats
indexed by their respective identifiers. Ex. 1002 ¶¶ 204 (citing Ex. 1007,
18:15–17; Ex. 1008 ¶¶ 21–23), 211. Dr. Storer further testifies that, given
the similarities between McTernan and Robinson, “the web server 104/
security server 110 of Mc[T]ernan would not need to be modified (or, at
most, slightly modified to account for any minor differences in the syntax of
the packets)” and that “[s]uch a modification would have been well within
the capacity of a [person of ordinary skill in the art].” Ex. 1002 ¶ 238 (citing
Ex. 1007, 18:15–17, 19:1–2; Ex. 1008 ¶ 22). Dr. Storer also testifies that
modifying McTernan by adding Robinson’s tracking of the amount of time
spent on a page “would be a trivial task and could involve merely hosting
the applet of Robinson on the web servers of Mc[T]ernan and sending
Robinson’s applet to the user along with the media player and plug-in of
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Mc[T]ernan by embedding Robinson’s applet in the web pages of
Mc[T]ernan.” Ex. 1002 ¶ 240 (citing Ex. 1008 ¶¶ 22, 24). We credit this
testimony: it is logical, reasonable, and supported by the cited references,
and we perceive (and Patent Owner identifies) no contradictory evidence or
deficiencies in the rationale.
Further, we find that a person of ordinary skill in the art would have
been motivated to make the specific combination proposed by Petitioner.
See Pet. 71–73. One of McTernan’s goals is “more effectively track[ing] the
use of content by consumers.” Ex. 1007, 9:10–11. McTernan’s heartbeats
track “the total time that a user is watching a show” (Ex. 1007, 9:21–23),
and McTernan’s client generates heartbeats when a “show is playing, e.g.,
has not been paused or stopped” (id. at 25:6–15). Robinson’s heartbeats, on
the other hand, are “used to make an accurate calculation (external to and
independent of the client) of the client leaving time and of visit duration” on
a web page.15 Ex. 1008 ¶ 9. Supplementing McTernan’s system with
Robinson’s tracking technique would provide additional data regarding
consumers’ use of content, furthering McTernan’s goal of effectively
tracking use of that content. See Ex. 1007, 9:10–11; KSR, 550 U.S. at 420
(“[A]ny need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining

15 Incidentally, we disagree with Patent Owner’s suggestion that Robinson’s
only purpose is to facilitate communications between users on the page. See
PO Resp. 40, 42. Robinson explains that it monitors a user’s presence on a
web page both “to make real-time communication between users on the
same page possible, and for subsequent measurement of visit durations.”
Ex. 1008 ¶ 5 (emphasis added); see also id. ¶¶ 8–9 (describing heartbeats
support communication between users and “can further be used” to measure
visit duration and leaving time).
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the elements in the manner claimed.”). In addition, Dr. Storer testifies that
the proposed combination would improve McTernan by furthering its goal
of tracking customer’s use of content (Ex. 1002 ¶ 239), and we credit this
testimony because it is logical and uncontradicted.
As a result, we do not agree with Patent Owner’s contention that the
Petition fails to identify a motivation to combine the references in the
particular manner claimed. See PO Resp. 35–38; see also PO Sur-Reply 18–
19. As detailed above, Petitioner proposes a combination of Robinson’s
heartbeats with McTernan’s system, and Petitioner explains why it would
have been obvious to make this specific proposed combination. As
explained above, we find Petitioner’s identified motivation to be logical,
supported by evidence, and persuasive. Patent Owner identifies (and we
perceive) no evidence to the contrary.
Moreover, we have considered but are not persuaded by Patent
Owner’s arguments that the Petition fails to sufficiently explain why an
ordinary artisan would have wanted to include Robinson’s data in
McTernan’s system. PO Resp. 38–43. According to Patent Owner,
“McTernan has no obvious use for web page visitation data” (id. at 38), and
Robinson’s information would not be an improvement because McTernan’s
“users are billed based upon viewing media” (id. at 41). See id. at 42
(alleging failure “to explain why web page visit time is relevant to a system
that bills users according to media played, not how long the user was on a
web page” (emphasis omitted)). Although McTernan does not suggest use
of web page visitation data specifically, it generally seeks to improve the
techniques of tracking customers’ use of content. See, e.g., Ex. 1007, 9:10–
11. Robinson provides a way to achieve that goal, by accurately tracking
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customer’s use of a web page. See, e.g., Ex. 1008 ¶ 9. We are persuaded
that a person of ordinary skill would have recognized that supplementing
McTernan with Robinson’s tracking information would provide more
information regarding customers’ use of content. See Pet. Reply 15
(explaining that an ordinary artisan would recognize that adding Robinson’s
data would “further improve the effectiveness and accuracy of Mc[T]ernan’s
ability to track web visitor behavior and experience,” as for example, “the
combination allows for tracking both the amount of time that a presentation
was streamed (excluding when the presentation was paused or stopped, per
Mc[T]ternan) and the amount of time that the page was displayed (including
when the presentation was paused or stopped, per Robinson)” (citing Pet. 62,
70–73; Ex. 1007, 25:6–10; Ex. 1008 ¶¶ 5–9)). As a result, it does not matter
whether the proposed modification also would have altered McTernan’s
billing methods.
Patent Owner’s arguments regarding the references’ failure to discuss
advertising are misplaced. See PO Resp. 38–41. Although we agree with
Patent Owner’s assessment that the references have different stated goals
than the ’609 patent—advertising was the driving motivation in the ’609
patent, but the asserted references do not mention advertising—this
difference is not relevant to our inquiry. “[N]either the particular motivation
nor the avowed purpose of the patentee controls” when evaluating
obviousness (KSR, 550 U.S. at 419), and Petitioner does not rely on
advertising as a motivation to combine the references (see Pet. 52, 54, 56,
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70–73). As a result, we are not persuaded by Patent Owner’s arguments that
McTernan and Robinson fail to contemplate web page advertising.16
Finally, although we are always mindful of the danger of improper
hindsight bias,17 we are not persuaded by Patent Owner’s argument that the
Petition improperly relies on hindsight. As shown above, we are persuaded
by Petitioner’s analysis and evidence that a person of ordinary skill in the art
at the time of the invention would have been motivated to combine
McTernan and Robinson to yield the claimed invention. See KSR, 550 U.S.
at 418 (explaining that an obviousness analysis “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ”); see also In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016)
(observing that the party’s “impermissible hindsight” argument was
“essentially a repackaging of the argument that there was insufficient
evidence of a motivation to combine the references”).

16 When addressing the Jacoby-Bland ground, Patent Owner asserts that
“the recitation of a web page corresponding to a digital media presentation
inherently comprises a web page that includes particular corresponding ads
relating to the viewer’s identification and/or login.” PO Resp. 30. To the
extent Patent Owner contends that the claim requires advertisements, we
disagree. Patent Owner identifies (and we perceive) no basis for construing
claim 1 to include such a requirement. See also Pet. Reply 17–18
(responding to argument); cf. PO Resp. 13 (declining to construe claim).
17 See KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of
the distortion caused by hindsight bias and must be cautious of arguments
reliant upon ex post reasoning.”); Polaris Indus., Inc. v. Arctic Cat, Inc., 882
F.3d 1056, 1068 (Fed. Cir. 2018) (“We have observed that the prejudice of
hindsight bias often overlooks that the genius of invention is often a
combination of known elements which in hindsight seems preordained.”
(internal quotation marks omitted)).
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Accordingly, after reviewing the evidence of record and the parties’
arguments, we are persuaded that Petitioner has shown by a preponderance
of the evidence that it would have been obvious to combine McTernan and
Robinson, as proposed by Petitioner.
j. Conclusion
For the foregoing reasons, Petitioner has demonstrated by a
preponderance of the evidence that the subject matter of independent claim 1
would have been obvious over McTernan and Robinson.
4. Dependent Claim 2
Claim 2 depends from independent claim 1 and further recites
“wherein the storing comprises incrementing a stored value dependently
upon the receiving.” Ex. 1001, 14:46–47.
Petitioner has shown by a preponderance of the evidence that
McTernan discloses this limitation. See Pet. 62–63. McTernan’s security
servers 110 store the received heartbeat data, and central server 112 polls
security servers 110 “at regular intervals to retrieve accumulated heartbeat
data” for analysis and generation of billing statistics. Ex. 1007, 19:13–20;
see Ex. 1002 ¶¶ 222–223 (testifying that a person of ordinary skill in the art
would understand this “accumulated heartbeat data” to be a stored value
incremented dependently upon receiving the heartbeat packets); see also
Ex. 1007, 9:22–23 (stating that heartbeats “are used to calculate the total
time that a user is watching a show”). Beyond the arguments addressed
above with respect to independent claim 1, Patent Owner does not contest
Petitioner’s assertions with respect to claim 2. PO Resp. 43.
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Based on Petitioner’s persuasive arguments and evidence, we
determine that Petitioner has shown by a preponderance of the evidence that
the subject matter of dependent claim 2 would have been obvious over
McTernan and Robinson.
5. Dependent Claim 3
Claim 3 depends from dependent claim 2 and further recites “wherein
the received data is indicative of a temporal cycle passing.” Ex. 1001,
14:48–49.
Petitioner has shown by a preponderance of the evidence that
McTernan and Robinson each disclose this limitation. See Pet. 63.
McTernan’s heartbeats (the claimed “received data”) “are generated and
transmitted a [sic—at] regular intervals . . . , e.g., every 30 seconds, every
minute, etc.” Ex. 1007, 19:2–4. Also, Robinson’s heartbeats are transmitted
at regular intervals. Ex. 1008 ¶¶ 23, 28. Beyond the arguments addressed
above with respect to independent claim 1, Patent Owner does not contest
Petitioner’s assertions with respect to claim 3. PO Resp. 43.
Based on Petitioner’s persuasive arguments and evidence, we
determine that Petitioner has shown by a preponderance of the evidence that
the subject matter of dependent claim 3 would have been obvious over
McTernan and Robinson.
E. Obviousness in view of Jacoby and Bland
In view of our determination that claims 1–3 are unpatentable, as
discussed above, we need not address Petitioner’s additional arguments of
unpatentability based on the combination of Jacoby and Bland. See
35 U.S.C. § 318(a) (“If an inter partes review is instituted and not dismissed
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under this chapter, the Patent Trial and Appeal Board shall issue a final
written decision with respect to the patentability of any patent claim
challenged by the petitioner and any new claim added under section
316(d).”); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(determining that an administrative agency is at liberty to reach a decision
based on a single dispositive issue).
F. Patent Owner’s Constitutional Challenge
Patent Owner argues that Administrative Patent Judges (“APJs”) are
unconstitutionally appointed principal officers. PO Resp. 44–47 (citing
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), cert.
granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206 (Oct. 13,
2020)). According to Patent Owner, the Federal Circuit erred by remedying
the constitutional violation, and thus, this case must be dismissed. Id.
We are bound by the Federal Circuit’s decision in Arthrex, which
addressed this issue. See 941 F.3d at 1337 (“This as-applied severance . . .
cures the constitutional violation.”); see also Arthrex, Inc. v. Smith &
Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020) (Moore, J., concurring in
denial of rehearing) (“Because the APJs were constitutionally appointed as
of the implementation of the severance, inter partes review decisions going
forward were no longer rendered by unconstitutional panels.”).
Accordingly, we do not consider this issue any further.
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III. CONCLUSION18
Based on the evidence presented with the Petition, the evidence
introduced during the trial, and the parties’ respective arguments, Petitioner
has shown by a preponderance of the evidence that the challenged claims are
unpatentable, as summarized in the following table:
Claims 35 U.S.C. §
References/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–3 103(a) McTernan, Robinson 1–3

1–3 103(a) Jacoby, Bland19
Overall
Outcome 1–3

18 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding, 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
19 As explained above, because we determine that the challenged claims are
unpatentable based on the McTernan-Robinson combination, we decline to
address this ground.
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IV. ORDER
It is hereby:
ORDERED that claims 1–3 of the ’609 patent are determined 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.

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PETITIONER:
Eliot D. Williams
G. Hopkins Guy
Ali Dhanani
Kurt Pankratz
BAKER BOTTS L.L.P.
eliot.williams@bakerbotts.com
hop.guy@bakerbotts.com
ali.dhanani@bakerbotts.com
kurt.pankratz@bakerbotts.com

Alyssa Caridis
Donald Daybell
ORRICK, HERRINGTON & SUTCLIFFE LLP
A8CPTABDocket@orrick.com
D2DPTABDocket@orrick.com

PATENT OWNER:
Brian Koide
Ryan Loveless
Brett Mangrum
James Etheridge
Jeffrey Huang
ETHERIDGE LAW GROUP
brian@etheridgelaw.com
ryan@etheridgelaw.com
brett@etheridgelaw.com
jim@etheridgelaw.com
jeff@etheridgelaw.com