Uniloc 2017 LLC

Patent Trials and Appeals Board

Jan 19, 2021

IPR2020-00041 (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
____________

NETFLIX, INC.,
Petitioner,
v.
UNILOC 2017 LLC,
Patent Owner.
____________

IPR2020-00041
Patent 8,407,609 B2
____________

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)

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I. INTRODUCTION
Netflix, Inc. (“Petitioner”) and Roku, Inc.1 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 1 (“Pet.”). Uniloc 2017 LLC
(“Patent Owner”) filed a Preliminary Response. Paper 9. 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 10 (“Institution
Decision” or “Inst. Dec.”).
After institution, Patent Owner filed a Response (Paper 15, “PO
Resp.”), Petitioner filed a Reply (Paper 18, “Pet. Reply”), and Patent Owner
filed a Sur-Reply (Paper 22, “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. Netflix,
Inc., 8:18-cv-02055 (C.D. Cal.); Uniloc 2017 LLC v. Sling TV, LLC, 1:19-

1 Roku, Inc. was terminated from this proceeding following a settlement
with Patent Owner. Paper 14 (Termination Order).
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cv-00278 (D. Colo.); Uniloc 2017 LLC v. Vudu, Inc., 1:19-cv-00183 (D.
Del.); Uniloc 2017 LLC v. Google LLC, 2:18-cv-00502 (E.D. Tex.). Pet. 2–
3; PO Resp. 9.
The ’609 patent is or was the subject of three other petitions for inter
partes review. A petition filed by Sling TV L.L.C. was instituted by the
Board. Sling TV L.L.C. v. Uniloc 2017 LLC, IPR2019-01367 (“the 1367
IPR”), Paper 7 (PTAB Feb. 4, 2020) (Institution Decision in the 1367 IPR).
In IPR2020-00677, Vudu filed a petition that is substantively identical to the
petition filed in the 1367 IPR, and the Board instituted that review and
joined Vudu to the 1367 IPR as a petitioner. IPR2019-01367, Paper 16
(Joinder Order). A final written decision in the 1367 IPR is being issued
concurrently with this Decision. Also, 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. The Petition’s Asserted Grounds
Petitioner asserts the following grounds of unpatentability (Pet. 5):
Claims Challenged 35 U.S.C. § References/Basis
1–3 103(a)2 Davis,3 Choi4

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 US 5,796,952, issued Aug. 18, 1998 (Ex. 1003).
4 US 2003/0236905 A1, published Dec. 25, 2003 (Ex. 1004).
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Claims Challenged 35 U.S.C. § References/Basis
1–3 103(a) Siler,5 Davis
Petitioner also relies on the testimony of Dr. Michael Franz to support its
contentions. Ex. 1002; Ex. 1009 (reply declaration).6
C. 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).

5 US 2004/0133467 A1, published July 8, 2004 (Ex. 1005).
6 According to Patent Owner, “the Reply and its accompanying Franz
Supplement (Ex. 1009) belatedly introduce at least two new theories, both of
which are improper,” and consequently, “[t]he Board should not consider the
entire reply.” PO Sur-Reply 4–5; see id. at 6–8 (identifying alleged new
theories). We are not persuaded that it is appropriate to wholly disregard
either document, as we can easily separate the challenged portions from the
remainder of the document. Moreover, for each portion of those documents
that we rely upon in this Decision, we have determined that Petitioner’s
argument and evidence fairly respond to arguments presented in Patent
Owner’s Response. See Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372,
1380–81 (Fed. Cir. 2018) (“[T]he petitioner . . . may introduce new evidence
after the petition stage if the evidence is a legitimate reply to evidence
introduced by the patent owner, or if it is used ‘to document the knowledge
that skilled artisans would bring to bear in reading the prior art identified as
producing obviousness.’” (quoting Genzyme Therapeutic Prods. L.P. v.
Biomarin Pharm. Inc., 825 F.3d 1360, 1369 (Fed. Cir. 2016))); see also
Consolidated Trial Practice Guide 73–75 (Nov. 2019) (“Consolidated
TPG”), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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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:

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
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“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
(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.”

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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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.
D. 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;
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[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.
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

8 The record does not include allegations or evidence of objective indicia of
obviousness or nonobviousness.
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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 “at least a B.S. degree in computer science, computer engineering, or
electrical engineering (or equivalent experience) and . . . at least two years of
experience with web development, including the then-current web
technologies such as HTML, XML, Java, and JavaScript.” Pet. 14 (citing
Ex. 1002 ¶¶ 21–25). Petitioner states that “[a]dditional educational
experience in computer science could make up for less work experience and
vice versa.” Id. Patent Owner “does not offer a competing definition” of a
person of ordinary skill in the art. PO Resp. 10.
Petitioner’s proposal (unopposed by Patent Owner) is supported by
the testimony of Dr. Franz 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. 13–14 (adopting same position).9

9 In the 1367 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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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 “computer system” and
“streamed.” Pet. 12–14 (emphasis omitted). In the Institution Decision, we
determined that no claim terms required construction. Inst. Dec. 15.
At trial, Patent Owner advances claim constructions for “streaming,”
“identifier data,” “computer system,” and “each stored data is together
indicative of a cumulative time the corresponding web page was displayed
by the user’s computer.” PO Resp. 11–14. But, when alleging deficiencies
in Petitioner’s Davis-Choi ground,10 Patent Owner only references the
construction of “identifier data.” See id. at 20. And, although the parties
dispute the meaning of this term (see Pet. Reply 10–12 (disputing Patent
Owner’s construction)), resolution of their dispute would not affect this
Decision, as we explain below in element 1[d]. See infra § II.D.3.e
(addressing Patent Owner’s arguments regarding “identifier data”).
In addition, Patent Owner submits two district court orders analyzing
the construction of claim terms and phrases in the ’609 patent. PO Resp. 11
(citing Ex. 2002 (Order in Uniloc 2017 LLC v. Google LLC, 2:18-cv-00502
(E.D. Tex.)); Ex. 2003 (Order in Uniloc 2017 LLC v. Netflix, Inc., 8:18-cv-
02055 (C.D. Cal.))); see Consolidated TPG 47 (“Parties should submit a
prior claim construction determination by a federal court or the ITC in an

10 Because we determine that claims 1–3 are unpatentable based on the
combination of Davis and Choi, we do not address Petitioner’s additional
arguments of unpatentability based on the combination of Siler and Davis.
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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 Tr. 12:15–15:2, 36:12–19 (agreeing that no express claim construction is
required); 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 Davis and Choi
Petitioner contends that claims 1–3 are rendered obvious by the
combination of Davis and Choi. See Pet. 14–42. Patent Owner argues that
the references are incompatible and that the Petition fails to show that the
combination teaches element 1[d] (see infra § II.D.3.e). PO Resp. 14–20.
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 Davis and Choi.
1. Davis (Ex. 1003)
Davis is titled “Method and Apparatus for Tracking Client Interaction
with a Network Resource and Creating Client Profiles and Resource
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Database.” Ex. 1003, code (54). Davis discloses a tracking program with a
software timer that “permits the accurate determination of the length of time
users have displayed and/or interacted with [a particular] Web page,” which
is “invaluable information to Internet advertisers, among others.” Id. at code
(57), 11:24–33; see id. at 16:64–17:10 (“[U]sers who have access to a live
news or entertainment feed may be charged according to the amount of
[time] information [is] displayed,” and “[s]imilarly, a user could be charged
and billed for time spent on a Web page.”).
One of the embodiments of Davis is illustrated in Figure 4,
reproduced below:

As shown above, Figure 4 depicts a client and two servers (Server A and
Server B), as well as various steps. Ex. 1003, 6:1–4.
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In step S401, the client requests, from Server A, “[a] Web page (or
HTML document)” that “contains text, as well as embedded URLs that point
to graphical images (e.g. GIF format image files).” Ex. 1003, 11:35–40. In
this embodiment of Davis, the embedded URLs point to images located on
Server A (id. at 11:37–40), but Davis indicates that these URLs may point to
other resources (including video) that may be located on different servers
(see id. at 7:19–24, 11:40–41). As shown in Figure 4, the client fetches the
images (S402) and renders them on the browser (S405). Id. at 11:45–47.
The web page received from Server A also includes embedded URLs
that point to two resources residing on Server B. Ex. 1003, 11:47–50. The
client will fetch the first of these resources (S403), causing Server B to
execute CGI Script 1, which registers the web page for tracking with
Server B. Id. at 11:53–12:4. The client also fetches the other resource
(S406) and receives “a JAVA applet, the tracking program.” Id. at 12:13–
14, 12:19–21. The client initializes the tracking program (S407) and
executes its START method, which makes a note of the current time (S408).
Id. at 12:22–26. When the user leaves the Web page (S409), the client
executes the applet’s STOP method, which “compute[s] the difference
between the current time and the time noted during execution of the START
method.” Id. at 12:26–30; see id. at 9:3–4 (“In its simplest form, the
tracking program is a timer program . . . .”). “This difference, which is the
time between execution of the STOP and execution of the START methods,
is sent to the Server B for storage and analysis (S410)” via CGI Script 2. Id.
at 12:30–36. CGI Script 2 “can then obtain any information tracked and
transmitted by the applet as well as any available information in the HTTP
request header” for storage in a database on Server B. Id. at 12:36–40. As a
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result, the database may store “information about users who have visited the
Web page, such as their network and client IDs, how often they visited the
Web page, how long the Web page was displayed, and so on.” Id. at 12:51–
55.
2. Choi (Ex. 1004)
Choi is titled “System and Method for Automatically Recovering
from Failed Network Connections in Streaming Media Scenarios.”
Ex. 1004, code (54). Choi describes a “method of streaming media content
from a server” to a client that allows playback of the content to be re-
synchronized after streaming is interrupted. Id. ¶ 5. Choi notes that its
invention can be implemented using “real-time streaming protocol
(RTSP).” Id. ¶ 6; see id. ¶ 29 (RTSP “is an application-level protocol for
control of the delivery of data with real-time properties,” such as video.).
In Choi, “[t]he client 110 periodically transmits state data (e.g.,
logging statistics) to the server 108 for storage.” Ex. 1004 ¶ 47. This state
data includes, inter alia, a “stream identifier” that identifies the particular
stream being delivered to the client. Id. ¶¶ 44, 47. If the server-to-client
session is interrupted, “the client 110 can resume playback at the location in
the stream when the failure occurred using statistics saved prior to the
failure.” Id. ¶ 28; see id. ¶ 34 (explaining that server uses the state to re-
establish a lost connection). If the client successfully reconnects, it sends
logging statistics to the server (id. ¶¶ 40, 49–50); otherwise, after the time
for reconnecting expires, the server will log an error, which includes
“generating a log on behalf of the client,” because the client “will not submit
a log . . . for content rendered before the reconnect event” (id. ¶ 47).
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Choi’s Appendix C provides “an exemplary list and discussion of
logging statistics.” Ex. 1004 ¶¶ 49, 88; see id. ¶¶ 49 (“Logging information
is data that describes the characteristics of the client 110 and the rendering
information associated with the streaming session.”), 88 (“Logging statistics
are used by content distribution networks (CDNs) to bill customers. As a
result, accurate logging statistics are critically important for the CDNs to
maximize their revenue opportunities.”). Appendix C includes Table C1,
which lists exemplary parameters, including some “static parameters” that
are “sent once in the beginning or at the end of the session.” Id. ¶ 99.11
“[O]ther dynamically changing parameters are sent regularly, [and] the
frequency of reporting [is] set by the statistics reporting interval parameter
sent in the initial request.” Id. ¶ 97.
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 Davis discloses the preamble of claim 1
(Pet. 18–22),12 and Patent Owner has not argued otherwise (see generally
PO Resp.).

11 Choi’s Appendices repeat paragraph numbers that were previously used
in its specification. Compare Ex. 1004, 7 (using paragraph numbers 94–
100), with id. at 10, 18, 22, 25 (repeating paragraph numbers 94–100).
Unless otherwise indicated, this Decision refers to the second instance of
paragraphs 96–99, which appear on page 22 of Choi (in Appendix C).
12 Because Petitioner has shown sufficiently that the recitations in the
preamble are satisfied by Davis, we need not determine whether the
preamble is limiting. See Vivid Techs., 200 F.3d at 803.
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Petitioner’s assertions are supported by the cited evidence and are
persuasive. In Davis, Server B (part of the claimed “first computer system”)
provides a tracking program to a client (the claimed “user’s computer”) over
a network. E.g., Ex. 1003, code (57), 4:3–8, Fig. 4. The tracking program
monitors the amount of time a resource, such as a web page, is displayed.
E.g., id. at 4:3–8, 9:33–35, 11:24–30, 12:22–33; see also id. at 16:63–17:10
(stating that tracking program may also monitor the amount of time “a live
news or entertainment feed” is displayed). Accordingly, we are persuaded
that Davis 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 Davis discloses element 1[a] (Pet. 22–23), and
Patent Owner has not argued otherwise (see generally PO Resp.).
Petitioner’s assertions are supported by the cited evidence and are
persuasive. In Davis, Server A provides a web page to the client. E.g.,
Ex. 1003, 9:16–29, 11:35–41. This web page may contain an embedded
URL that points to a resource located either on Server A or “on any HTTP
server on the Internet.” Id. at 9:23–29, 11:37–47; see also id. at 7:19–24
(noting that “embedded URLs point[] to resources (such as images, video or
sound) that the client must fetch to fully render the Web Page in a browser”).
Dr. Franz testifies that Davis embeds a resource (such as video) in a web
page and, thus, teaches a corresponding web page for each digital media
presentation. Ex. 1002 ¶¶ 118–120. We credit Dr. Franz’s testimony
because it is logical and supported by the reference and because Patent
Owner identifies (and we perceive) no evidence to the contrary. Finally, we
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are persuaded that Davis’s Server A and Server B collectively teach the
claimed “first computer system.” See also Ex. 1003, 18:1–7 (same server
can perform certain functions of both Server A and Server B). Accordingly,
we are persuaded that Davis discloses element 1[a].
c. 1[b]: “providing identifier data to the user’s computer using
the first computer system”
Petitioner asserts that Davis discloses element 1[b] (Pet. 24–26), and
Patent Owner has not argued otherwise (see generally PO Resp.).
Petitioner’s assertions are supported by the cited evidence and are
persuasive. In Davis, Server B provides client ID to the client. Ex. 1003,
11:65–12:4; see id. at 2:12–22 (describing “client ID,” also known as a
“cookie”). Additionally, Server A provides embedded URLs that point to
resources and the tracking program. Id. at 7:19–29, 9:18–27, 11:34–50.
Accordingly, we are persuaded that Davis 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 Davis discloses element 1[c] (Pet. 26–27), and
Patent Owner has not argued otherwise (see generally PO Resp.).
Petitioner’s assertions are supported by the cited evidence and are
persuasive. After receiving a web page, Davis’s client obtains a
corresponding tracking program from Server B. E.g., Ex. 1003, 9:16–23,
12:13–21. This tracking program may be “a JAVA applet” (e.g., id. at
10:46–57, 12:13–14), and it operates as a timer (e.g., id. at 9:3–10, 9:33–38,
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12:22–33). Accordingly, we are persuaded that Davis 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 Davis and Choi, in combination, render element
1[d] obvious. Pet. 27–32; see Pet. Reply 1–13. Patent Owner presents
arguments to the contrary. PO Resp. 14–20; see PO Sur-Reply 1–14.
Having considered the parties’ arguments and the evidence presented,
we are persuaded that the cited references render element 1[d] obvious for
the reasons explained below.
(1) Petitioner’s Contentions
Petitioner contends that Davis discloses “receiving at least a portion of
the identifier data from the user’s computer responsively to the timer
applet . . . using the first computer system,” as required by claim 1. Pet. 27–
29. According to Petitioner, when a web page is no longer displayed, the
client provides to Server B the tracking information “as well as any available
information in the HTTP request header,” which would include the client ID.
Id. at 27–28 (emphasis omitted) (quoting Ex. 1003, 12:33–39) (citing
Ex. 1003, Fig. 4 (S410A, S410B), 9:35–38, 11:59–12:4, 12:22–39; Ex. 1002
¶¶ 132–134).
Petitioner further contends that it would have been obvious, in light of
Choi’s disclosure, to modify Davis to report tracking information (including
the client ID as well as a stream identifier) “each time a predetermined
temporal period elapses,” as required by claim 1, rather than only after
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termination of the tracking program. Pet. 17, 27, 29–32; see id. at 25–26,
30–31 (explaining that a person of ordinary skill in the art would have
included a stream identifier when modifying Davis to include streaming).
According to Petitioner, “Davis disclosed that its tracking program operated
by running from the time the web page was first loaded until the user leaves
the web page,” but a person of ordinary skill in the art would have
recognized that this “was only one way of tracking the duration the web
page was displayed.” Id. at 29 (citing Ex. 1003, 12:26–28; Ex. 1002 ¶¶ 103–
109). Petitioner contends that a person of ordinary skill in the art “would
have recognized from Choi’s disclosure that using a series of periodic
reports from the client to the server while the web page was displayed was
another possible approach.” Id. at 29 (citing Ex. 1004 ¶ 47; Ex. 1002
¶¶ 103–109); see id. at 29–30 (“[T]he frequency of reporting [is] set by the
statistics reporting interval parameter sent in the initial request.” (alteration
in original) (quoting Ex. 1004 ¶ 97)).
Finally, Petitioner contends that the ordinary artisan would have been
motivated to modify Davis “to use a periodic timer . . . to trigger a report
from the client to Server B” because: (1) it was “one among a limited
number of solutions to triggering the report”; and (2) such periodic reports
were “very well-known,” “frequently used for client-server
communications,” and “preferred . . . in many networked environments.”
Pet. 17, 30 (citing Ex. 1002 ¶¶ 103–109); see id. at 17 (also alleging a
reasonable expectation of success). To support these assertions, Petitioner
relies on the testimony of Dr. Franz, who states that Davis’s “event-driven”
approach to reporting information was one approach, but a person of
ordinary skill in the art would have recognized two other basic approaches:
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“periodic reporting” (as described in Choi) and “batch processing.”
Ex. 1002 ¶¶ 104–105, 108–109; see id. ¶ 108 (explaining that “the batch
driven approach would not have been appealing to a person of ordinary skill
in the field”). Dr. Franz further testifies that the ordinary artisan would have
recognized “significant benefits” with using the periodic reporting approach:
(1) “regular receipt of logging statistics at the server would make sure
logging information was on hand in case any network disruptions occurred”;
(2) “using a predetermined reporting interval would in some instances be
easier to implement,” as implementation would require few lines of code;
and (3) regular reporting (in the form of “‘heartbeat’ status reports”) was “a
preferred manner for maintaining status information about a client at the
server in a networked environment.” Id. ¶¶ 105–107, 109. Finally, Dr.
Franz testifies that “a person of ordinary skill would have had no technical
difficulty in implementing” the regular, periodic reporting interval described
by Choi. Id. ¶¶ 105, 109.
(2) Patent Owner’s Contentions
Patent Owner argues that it is not “relevant” that Davis’s Server B
receives the client ID when the applet terminates execution, as the claim
requires receipt “responsively to the timer applet each time a predetermined
temporal period elapses.” PO Resp. 15–16. According to Patent Owner,
“[i]t is undisputed that Davis fails to disclose a ‘timer applet’ meeting these
explicit requirements.” Id. at 16.
Patent Owner next argues that Choi “fails to disclose providing a
‘timer applet’ as claimed.” PO Resp. 16. Patent Owner contends that “the
timing of [Choi’s] periodic transmissions is set” by a parameter in a client’s
initial request, which “is distinguishable . . . from a first computer system
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providing a timer applet.” Id. at 16 (citing Ex. 1004 ¶ 97; Pet. 29–30); see
PO Sur-Reply 4 (“The issue is not how the temporal period is determined
but that Choi’s mere transmission of an interval parameter (e.g., a certain
number of seconds) in the initial request is not a teaching of an applet acting
as a timer.”).13
Patent Owner also contends that “Choi fails to disclose, and indeed
teaches away from,” the claim’s requirement that “identifier data” be
received each time the temporal period elapses. PO Resp. 17. According to
Patent Owner, Choi states “that if a parameter is ‘constant,’ it is ‘sent only
once at the beginning of the session,’” and “the parameters ‘sent regularly’
are only those that are ‘dynamically changing.’” Id. at 17–18 (quoting
Ex. 1004 ¶ 97). Patent Owner argues that “[t]he Petition offers no argument
or evidence for how Choi’s changed parameters are somehow the same
‘identifier data’ provided to the user’s computer.” Id. at 18. Patent Owner
contends that paragraph 47 of Choi (which is relied upon by Petitioner) “is
properly understood in the context of the additional and more detailed
disclosure in Choi’s Appendix C, discussed above.” Id. at 18–19. Thus,
Patent Owner asserts that paragraph 47 “suffers at least from the same
deficiencies” because “Choi itself explains that its periodic transmittal
pertains only to ‘dynamically changing parameters.’” Id. at 19 (citing
Ex. 1004 ¶ 97, App. C).

13 In the Response, Patent Owner also appears to distinguish Choi on the
ground that Choi’s client dictates the frequency of reporting. See PO
Resp. 18. To the extent this is a different argument, it is insufficiently
explained. For example, claim 1 does not specify the source of the
“predetermined temporal period” that dictates the frequency of reporting.
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Patent Owner further alleges that Davis and Choi are incompatible.
PO Resp. 19–20. According to Patent Owner, “Choi expressly states
that . . . a client should not send its own identifier”; rather, in Choi, “due to
privacy concerns the client sends up an empty value (denoted as a dash
character).” Id. at 19 (quoting Ex. 1004, Table C1 (“c-dns” entry)). Patent
Owner also contends that, “as repeatedly emphasized above, to the extent a
client ID is considered constant, then . . . in Choi, such a parameter would be
sent only once.” Id. at 19–20.
Finally, Patent Owner points to a district court order, which construed
the claim term “identifier data” as “data that can be used to identify the user
and to identify the provided corresponding web page.” PO Resp. 20
(quoting Ex. 2002, 62)). Patent Owner argues that “additional deficiencies
arise in the event the Board adopts [this] construction,” as “[t]he Petition
simply identifies no teaching in either Davis or Choi allegedly disclosing
‘identifier data’ that would allegedly satisfy [this] interpretation.” Id.; see
id. at 13 (discussing the construction of “identifier data”).
(3) Analysis
We find that Davis discloses “receiving at least a portion of the
identifier data from the user’s computer responsively to the timer applet . . .
using the first computer system,” as required by claim 1. See Pet. 27–29.
Davis’s tracking program teaches the claimed “timer applet.” See supra
§ II.D.3.d (finding Davis discloses a tracking program that is an applet and
operates as a timer). Upon termination of Davis’s tracking program, Server
B receives information from the client, including the running time of the
tracking program and “any available information in the HTTP request
header,” including the client ID. Ex. 1003, 12:30–39, Fig. 4 (S410A,
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S410B); see id. at 11:59–65 (information collected from the HTTP request
header includes “client ID”); see also id. at 9:35–45 (client sends time
elapsed and “[o]ther available client information, such as the network ID and
client ID, or so-called ‘Cookie’ of the client”); Ex. 1002 ¶¶ 133–134
(testifying that Davis discloses that the HTTP request header includes the
client ID).
Applying the district court’s claim construction would not affect our
finding that Davis teaches these claim limitations. See PO Resp. 20
(asserting that adoption of that construction would reveal “deficiencies”).
Specifically, even if “identifier data” means “data that can be used to
identify the user and to identify the provided corresponding web page”
(Ex. 2002, 62), the claim only requires “receiving at least a portion of the
identifier data” (Ex. 1001, 14:29 (emphasis added)). As a result, even if we
applied this construction, we would still find that Davis’s receipt of the
client ID discloses “receiving at least a portion of the identifier data,” as the
client ID can be used to identify the user.14 Consequently, we need not—
and do not—decide whether this is the correct construction of the term
“identifier data.”
As Petitioner acknowledges, Davis does not disclose that its server
receives the information “each time a predetermined temporal period
elapses,” as further required by the claim. Pet. 29. Instead, Davis reports

14 Furthermore, Davis also discloses that Server B receives, from the client,
the HTTP request header, which also includes “network ID (IP address)” as
well as “the URL of the Web page.” Ex. 1003, 11:59–65, 12:33–39; see Pet.
Reply 12–13. Thus, Davis discloses receiving data that “identif[ies] the
user” as well as data that “identif[ies] the provided corresponding web page”
(Ex. 2002, 62), even if both were required by this limitation.
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information to a server upon the occurrence of a predetermined event, such
as when a user leaves the web page. E.g., Ex. 1003, 9:11–15, 9:33–38; see
also id. at 13:19–22, 13:39–46 (noting that tracking program may report
“when the user incurs a keyboard or mouse event,” such as by clicking on a
portion of the web page).
But Choi discloses this limitation. In Choi, during streaming of
media, “[t]he client 110 periodically transmits state data (e.g., logging
statistics) to the server 108 for storage.” Ex. 1004 ¶ 47; see id. ¶ 97 (“[T]he
frequency of reporting [is] set by the statistics reporting interval parameter
sent in the initial request.”). The “state data includes a session identifier and
a stream identifier” as well as other information that describes the streaming
session. Id. ¶ 47; see id. ¶¶ 49, 97, 99. Choi reports its information
regularly to ensure that the information is available if the client-server
session is unintentionally interrupted. E.g., id. ¶¶ 28, 34, 47–51; see also id.
¶ 88 (explaining that “accurate logging statistics are critically important for
the [content distribution networks] to maximize their revenue
opportunities”). Thus, we find that Choi discloses that its server receives
information (including a session identifier and a stream identifier) “each
time a predetermined temporal period elapses,” as required by claim 1.
We are persuaded that it would have been obvious, in light of Choi’s
disclosure, to modify Davis’s tracking program to report information to the
server “each time a predetermined temporal period elapses.” See Pet. 16–17,
29–30. First, we find that a person of ordinary skill in the art would have
been motivated to modify Davis’s tracking program to periodically report its
information because Choi’s periodic-reporting approach provided several
benefits: (1) “regular receipt of logging statistics at the server would make
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sure logging information was on hand in case any network disruptions
occurred”; (2) “using a predetermined reporting interval would in some
instances be easier to implement,” as implementation would require few
lines of code; and (3) regular reporting (in the form of “‘heartbeat’ status
reports”) was “a preferred manner for maintaining status information about a
client at the server in a networked environment.” Ex. 1002 ¶¶ 105–107, 109.
We credit this testimony of Dr. Franz because it provides a logical, clear,
and reasoned explanation that is supported by the cited prior art references.
Moreover, Patent Owner identifies (and we perceive) no evidence that
contradicts this testimony. Accordingly, we are persuaded that a person of
ordinary skill in the art would have been motivated to modify Davis as
proposed. See, e.g., KSR, 550 U.S. at 420 (“[A]ny need or problem known
in the field . . . can provide a reason for combining the elements in the
manner claimed.”).
Second, we find that it would have been obvious to a person of
ordinary skill in the art to try Petitioner’s proposed modification. See
Pet. 16–17, 29–30. Dr. Franz testifies that a person of ordinary skill in the
art would have recognized three basic approaches to reporting information
from Davis’s timer applet—the information could be sent upon the
occurrence of an event (e.g., termination of the applet), periodically during
execution (e.g., at regular intervals), or in a batch (e.g., at the end of the
day). Ex. 1002 ¶¶ 104–105, 108–109. Dr. Franz testifies that “a person of
ordinary skill would have had no technical difficulty in implementing” either
Choi’s periodic reporting interval or Davis’s event-driven reporting. Id.
¶¶ 105, 109. We credit Dr. Franz’s testimony because it is clear, logical, and
consistent with the evidence of record. Accordingly, because we find that
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there were a small number of predictable solutions within the skill of an
ordinary artisan, we are persuaded that the proposed modification would
have been obvious to try. See KSR, 550 U.S. at 416 (“The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.”); see id. at 421 (explaining
that obviousness may be shown where there are a “finite number of
identified, predictable solutions”).
Patent Owner’s arguments regarding this limitation are not persuasive.
Some of Patent Owner’s arguments appear premised on the erroneous
assumption that Petitioner must show that either Davis or Choi, individually,
discloses both a “timer applet” and the receipt of identifier data “each time a
predetermined temporal period elapses.” See PO Resp. 15–16; PO Sur-
Reply 1–4. These arguments are not persuasive because they fail to address
the ground articulated in the Petition, which contends that Davis discloses
the “timer applet,” and it would have been obvious to modify Davis, in light
of Choi, such that identifier data is received “each time a predetermined
temporal period elapses.” See Pet. 16–17, 26–32; Bradium Techs. LLC v.
Iancu, 923 F.3d 1032, 1050 (Fed. Cir. 2019) (holding that arguments that
“attack the disclosures of the two references individually” cannot overcome
a ground premised on the combination of those references (citing In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.”))).
Other arguments are premised on a misunderstanding of Choi. See
PO Resp. 17–19 (arguing that, in Choi, only “dynamically changing”
parameters are sent periodically); PO Sur-Reply 13 (arguing that “to the
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extent a client ID is considered constant, then under the express teachings in
Choi, such a parameter would be sent only once”). We find that Choi
teaches that its periodic transmissions include a session identifier and a
stream identifier. Ex. 1004 ¶ 47. Choi’s disclosure is clear and explicit:
The client 110 periodically transmits state data (e.g.,
logging statistics) to the server 108 for storage. . . . The state
data includes a session identifier and a stream identifier
corresponding to the current client-server session and the
streams being delivered, respectively.
Id. We are not persuaded that Choi’s Appendix C alters the natural
understanding of this passage. In Appendix C, Choi lists parameters that are
used for reporting logging statistics. Id. ¶ 49; see id. App. C, Table C1.
Choi states that the “dynamically changing” parameters are included in its
periodic transmissions, but the “static parameters” are not:
The various statistical parameters that remain constant
throughout the session are sent only once at the beginning of
the session. The other dynamically changing parameters are
sent regularly, the frequency of reporting set by the statistics
reporting interval parameter sent in the initial request.
Id. ¶ 97; see also id. ¶ 99. There is no tension between this teaching and
Choi’s statement that its periodic transmissions include a session identifier
and a stream identifier—although Choi’s session identifier and stream
identifier do not change during a particular streaming session (and, thus, are
static) (see, e.g., id. ¶¶ 44, 49), Choi does not indicate that either of these
identifiers are “parameters.” Indeed, the table of “parameters” provided in
Appendix C lists neither the session identifier nor the stream identifier. See
id. at App. C, Table C1. Accordingly, we find that Choi’s server
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periodically receives data from the client that includes the session identifier,
the stream identifier, and other logging information.15
Further, despite Patent Owner’s arguments to the contrary (see PO
Resp. 19–20), we are not persuaded that Choi and Davis are incompatible in
any relevant way. See MCM Portfolio LLC v. Hewlett-Packard Co., 812
F.3d 1284, 1294 (Fed. Cir. 2015) (“[T]he test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference.” (quoting In re Keller, 642 F.2d 413, 425
(CCPA 1981)); Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889
(Fed. Cir. 1984) (The ordinary artisan is not “compelled to adopt every
single aspect of [a reference’s] teaching without the exercise of independent
judgment.”). Patent Owner argues that the references are incompatible
because: (1) Choi’s periodic transmissions only include dynamically
changing parameters; and (2) Choi’s client does not populate a particular
field due to privacy concerns. See PO Resp. 19–20; PO Sur-Reply 12–14.
Patent Owner’s first argument misses the mark because it relies on a
flawed premise: as explained above, we find that Choi’s periodic
transmissions do include a session identifier and a stream identifier that
serve to identify the client-server session and the particular stream.
Ex. 1004 ¶¶ 44, 47.
Patent Owner’s second argument is unpersuasive because Patent
Owner does not persuasively explain (and we do not perceive) why Choi’s

15 Because we need not rely on the arguments and evidence presented in
Petitioner’s Reply, we do not address them, except to agree that Patent
Owner’s proposed interpretation of Choi is not supported by Choi’s
disclosure. See Pet. Reply 8–9; Ex. 1009 ¶¶ 6–8.
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particular privacy concern is relevant to Petitioner’s proposed combination.
See PO Resp. 19; PO Sur-Reply 12–13. Patent Owner contends:
Petitioner asserts that Davis relies upon transmission of a
“client ID” and that it would have been obvious to incorporate
the (distinguishable) periodic transmission technique of Choi
into Davis. Petitioner overlooks, however, that Choi expressly
states that, under its disclosed scheme, a client should not send
its own identifier, as this would violate privacy concerns.
Rather, “due to privacy concerns the client sends up an empty
value (denoted as a dash character).” Choi, Appendix C at ¶99,
Table C1 (entry for the “c-dns” Logging Field).
PO Resp. 19; see PO Sur-Reply 13 (asserting that “the ‘privacy concern’
noted in Choi teach[es] away from sending the client ID regularly”); see also
Tr. 30:4–24 (Patent Owner identifying no other supporting passage in Choi).
Patent Owner does not provide further explanation of its argument.
Although we agree with Patent Owner that a reference must be
considered in its entirety (see PO Sur-Reply 14), the other teachings in a
reference are not always relevant to a proposed combination. Petitioner
does not rely upon Choi’s c-dns field in its proposed combination, and
Patent Owner fails to sufficiently explain why the privacy concerns for this
particular field are relevant to the proposed combination. For example,
Patent Owner fails to explain (and the record does not reveal) why a privacy
concern associated with a client “send[ing] up” presumably sensitive
information (Ex. 1004, App. C, Table C1) would discourage use of
“identifier data” that is provided to and then received from a client
(Ex. 1001, 14:23–24). Indeed, consistent with the claim’s requirements,
Choi discloses that the server provides the session identifier (and the stream
identifier) to the client (Ex. 1004 ¶ 44) and receives these identifiers from
the client with the periodic transmissions (id. ¶ 47). Consequently, Patent
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Owner does not sufficiently explain why Choi is allegedly incompatible with
Davis.
Moreover, having considered the references, we find that a person of
ordinary skill in the art would not have been discouraged by Choi from
following Davis’s teaching to send the client ID with its tracking
information, and that an ordinary artisan would not have found the
references to be incompatible in any relevant way. E.g., Ex. 1003, 9:35–41,
11:59–65, 12:51–55. In particular, we find no relationship between Choi’s
“c-dns” field (and its associated privacy concerns) and Petitioner’s proposed
combination. Also, Choi expressly discloses that periodic transmissions
should include a session identifier, which (like Davis’s client ID) identifies
the current client-server session. Ex. 1004 ¶¶ 44, 47. For this reason, we
find that a person of ordinary skill in the art would not have even been
discouraged by Choi’s passing reference to a “privacy concern[]” with an
unrelated field. Id. at App. C, Table C1. Consequently, we perceive no
relevant incompatibility between Choi’s discussion of the “c-dns” field (and
associated privacy concern) and Petitioner’s proposed combination.
Accordingly, we are persuaded that Davis and Choi, in combination,
render element 1[d] obvious.
f. 1[e]: “storing data indicative of the received at least portion
of the identifier data using the first computer system”
Petitioner asserts that Davis discloses element 1[e] (Pet. 33–34), and
Patent Owner has not argued otherwise (see generally PO Resp.).
Petitioner’s assertions are supported by the cited evidence and are
persuasive. As noted above (supra § II.D.3.e), Davis’s Server B receives the
running time of the tracking program and the client ID. E.g., Ex. 1003,
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9:35–45, 12:30–39. Davis states, “This information can be stored in a
database on Server B or elsewhere.” Id. at 12:39–40; see also id. at 11:13–
24 (describing server database storing “client ID, the associated link (the
URL of the Web page), [and] the amount of time the user spent interacting
with the Web page”), 12:51–55 (“The database thus constructed . . . may
contain information about users who have visited the Web page, such as
their network and client IDs, how often they visited the Web page, how long
the Web page was displayed, and so on.”). Accordingly, we are persuaded
that Davis discloses element 1[e].
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 Davis and Choi, in combination, render element
1[f] obvious (Pet. 34–36), 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, we find that Davis discloses “wherein each
provided webpage causes corresponding digital media presentation data” to
be provided “from a second computer system distinct from the first
computer system directly to the user’s computer independent of the first
computer system,” as required by claim 1. See Pet. 34–35. In Davis, the
web page provided by Server A to the client contains an embedded URL that
points to a resource (such as a video) located either on Server A or “on any
HTTP server on the Internet.” Ex. 1003, 11:35–47; see also id. at 7:19–24,
9:23–29; Ex. 1002 ¶ 153 (testifying that, “while Davis only describes
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Figure 4 with the example of static images being the resources referenced in
the webpage, Davis makes clear elsewhere that the resources can be audio
and video”). The resource is fetched and rendered on the client’s browser.
Ex. 1003, 11:45–47. Dr. Franz testifies that, when Davis’s embedded URL
points to a resource in another server, the resource would be provided
directly from that server to the client independently of Servers A and B (i.e.,
the claimed “first computer system”). Ex. 1002 ¶¶ 155–156. We credit this
testimony because Dr. Franz provides a logical explanation, which is
consistent with and supported by the reference.
In addition, we are persuaded that it would have been obvious to
“stream[]” the resources provided by Davis in light of Choi’s disclosure.
See Pet. 15–16, 23, 35–36. Davis states that its tracking program can be
used to charge users for access to “a live news or entertainment feed”
(Ex. 1003, 16:63–17:10), which suggests streaming of resources to the
client. See Ex. 1002 ¶ 97 (explaining that use of the term “live” implies
streaming). In addition, Dr. Franz testifies that streaming video was
“extremely well known” and that “a person of ordinary skill would have
been highly motivated to actually use streaming” because it had “become the
preferred delivery mechanism for audio and video in many user-facing Web
applications.” Ex. 1002 ¶¶ 99–101; see also id. ¶¶ 95–97, 102. Further,
Choi discloses streaming video from a server to a client and provides an
improvement to that technology. E.g., Ex. 1004 ¶¶ 2–5; see also Ex. 1002
¶¶ 98–99 (“Choi is really just a representative instance showing that
streaming of content was well known, if that was not already evident from
Davis.”). We credit Dr. Franz’s testimony because it is logical and
supported by a detailed explanation and evidence. Moreover, Patent Owner
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identifies (and we perceive) no deficiencies in his explanation or evidence
that contradicts or undermines his statements.
Accordingly, we are persuaded that Davis and Choi, in combination,
render element 1[f] obvious.
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 Davis and Choi, in combination, render element
1[g] obvious (Pet. 36–39), 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, Petitioner presents a detailed analysis, supported
by the testimony of Dr. Franz, specifically explaining how and why an
ordinary artisan would have modified Davis to include streaming video, as
disclosed in Choi, and demonstrating that the resulting combination would
have met this limitation. See Pet. 36–39; see also id. at 25–26 (explaining
that it would have been obvious for the client to receive Choi’s stream
identifier from Davis’s Server A), 30–32 (explaining that it would have been
obvious for Davis’s Server B to receive Choi’s stream identifier and timing
parameters in element 1[d]), 33–34 (explaining that it would have been
obvious to store this information in element 1[e]); Ex. 1002 ¶¶ 124–130,
136–152, 158–176; Ex. 1003, 11:24–33 (describing benefits of tracking
program), 16:63–17:10 (describing embodiment that charges for accessing
“a live news or entertainment feed . . . according to the amount of
information displayed, either according to bit size or time, or both”); supra
§ II.D.3.g (determining it would have been obvious to stream the resources
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provided by Davis in light of Choi’s disclosure). Patent Owner identifies
(and we perceive) no deficiencies in Petitioner’s rationale and no
contradictory evidence.
Accordingly, we are persuaded that Davis and Choi, in combination,
render element 1[g] obvious.
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 Davis discloses element 1[h] (Pet. 39–40), and
Patent Owner has not argued otherwise (see generally PO Resp.).
Petitioner’s assertions are supported by the cited evidence and are
persuasive. In Davis, Server B stores data indicative of the amount of time a
web page was displayed by the client. E.g., Ex. 1003, 11:13–33, 12:51–55.
Accordingly, we are persuaded that Davis discloses element 1[h].
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 Davis and Choi.
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 this
limitation would have been obvious in light of the Davis-Choi combination.
See Pet. 40–42. As explained above, we are persuaded that a person of
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ordinary skill in the art would have been motivated to modify Davis to
periodically send its tracking information from the client to Server B. See
supra § II.D.3.e (analyzing element 1[d]). Dr. Franz testifies that a person
of ordinary skill in the art would have been motivated to increment a counter
when storing these periodic reports in Server B. Ex. 1002 ¶¶ 180–189
(citing Ex. 1003, 3:42–53). We credit Dr. Franz’s testimony because it
provides a logical, detailed explanation that is supported by the cited
evidence. 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. 28.
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 Davis
and Choi.
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 this
limitation would have been obvious in light of the Davis-Choi combination.
See Pet. 42. As explained above, we are persuaded that a person of ordinary
skill in the art would have been motivated to modify Davis to send its
tracking information at predetermined intervals, as disclosed by Choi. See
supra § II.D.3.e (analyzing element 1[d]). As such, in the Davis-Choi
combination, the server’s receipt of tracking information from the client
indicates the end of a predetermined interval. See Ex. 1002 ¶ 190. Beyond
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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. 28.
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 Davis
and Choi.
E. Obviousness in view of Siler and Davis
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 Siler and Davis. See 35 U.S.C.
§ 318(a) (“If an inter partes review is instituted and not dismissed 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. 28–31 (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.
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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.
III. CONCLUSION16
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:

16 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).
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Patent 8,407,609 B2
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Claims 35 U.S.C. §
References/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–3 103(a) Davis, Choi 1–3
1–3 103(a) Siler, Davis17
Overall
Outcome 1–3

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.

17 As explained above, because we determine that the challenged claims are
unpatentable based on the Davis-Choi combination, we decline to address
this ground.
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Patent 8,407,609 B2
39
PETITIONER:
Babak Tehranchi
Matthew Bernstein
Patrick J. McKeever
Kyle R. Canavera
PERKINS COIE LLP
tehranchi-ptab@perkinscoie.com
bernstein-ptab@perkinscoie.com
mckeever-ptab@perkinscoie.com
canavera-ptab@perkinscoie.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