Hawaiian Telcom, Inc.v.Broadband iTV, Inc.Download PDFPatent Trial and Appeal BoardApr 1, 201511685188 (P.T.A.B. Apr. 1, 2015) Copy Citation Trials@uspto.gov Paper 11 Tel: 571-272-7822 Entered: April 1, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ HAWAIIAN TELCOM, INC., Petitioner, v. BROADBAND iTV, INC., Patent Owner. _______________ Case CBM2014-00189 Patent 7,631,336 B2 _______________ Before JUSTIN T. ARBES, MICHELLE R. OSINSKI, and TINA E. HULSE, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION Denying Institution of Covered Business Method Patent Review 37 C.F.R. § 42.208 CBM2014-00189 Patent 7,631,336 B2 2 I. INTRODUCTION A. Background Hawaiian Telcom, Inc. (“Petitioner”) filed a corrected Petition (Paper 5, “Pet.”) requesting a covered business method patent review of claims 1–4 and 7–11 of U.S. Patent No. 7,631,336 B2 (Ex. 1001, “the ’336 patent”). Broadband iTV, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 9, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 324, which provides that a covered business method patent review may not be instituted unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the Petition and Preliminary Response, we determine that the information presented in the Petition does not demonstrate that any of the challenged claims is more likely than not unpatentable. We, therefore, deny the Petition. B. The ’336 Patent (Ex. 1001) The ’336 patent relates to a method for enabling the converting, navigating, and displaying of video content from a video content provider on an open online network to a discrete digital TV service provider network. Ex. 1001, 21:15–18 (claim 1). One example of such a method outlined in the ’336 patent broadly relates to “uploading wide ranging content via [the] Internet for viewing on the VOD [video-on-demand] platforms of any type of digital TV system.” Id. at 14:36–38. Figure 4 of the ’336 patent is reproduced below. CBM2014-00189 Patent 7,631,336 B2 3 Figure 4 depicts “a diagram illustrating a process flow for enabling content publishers on the Internet to upload video content to digital television service providers for viewing on the home TV.” Id. at 4:24–27. Referring to Figure 4, an author or publisher can upload content from his or her computer, for example, to Web-based Content Management System 40. Id. at 14:45–46. “[H]ierarchical addressing metadata is associated with or tagged to the content when uploaded to the Web-based Content Management System 40.” Id. at 16:55–57. “[T]he author or publisher selects the category term, subcategory term(s) and title by which it is desired to find the program title in the TV EPG [electronic program guide] display hierarchy.” Id. at 16:46–50. In this way, “the addressing metadata identifying content uploaded on the Internet” is the same as the “EPG hierarchical addressing scheme used for the VOD program guide.” Id. at 16:42–46. CBM2014-00189 Patent 7,631,336 B2 4 Content Feed System 42 transfers the uploaded content to Content Conversion System 43. Id. at 14:45–47. Content Conversion System 43 converts the uploaded content “from standard digital data formats to TV video format.” Id. at 14:45–49. The converted content is then sent to VOD Content Delivery System 44 where a “local instance” of the converted content is stored at an assigned VID [video ID] address in Video Content Database 45 for retrieval upon viewer request. Id. at 14:49–51, 17:3–6. “The VID address is linked to the metadata title for the video content listed in the EPG.” Id. at 17:6–8. “Uploaded [content is] offered to viewers by listing them on the EPG, and upon viewer selection via the Set Top Box, are delivered via the Digital TV System infrastructure.” Id. at 14:51–54. The content is “automatically listed in the EPG under the common addressing scheme to enable viewers to find any program of interest.” Id. at 16:60–62. “Upon the subscriber selecting . . . the title of the video content from the hierarchically-arranged categories and subcategories in the EPG, a return request for the selected title is transmitted to the VOD platform for retrieving the video content at the linked VID address in the Video Content Database.” Id. at 17:12–18. C. Illustrative Claim Claim 1 is illustrative of the claimed subject matter and is reproduced below. 1. A method for automatically enabling the converting, navigating and displaying of video content from a video content provider on an open online network to a discrete digital TV service provider network which is of the type employing a closed system of pre-screened and pre-programmed video content selectable for viewing by TV service subscribers CBM2014-00189 Patent 7,631,336 B2 5 inputting keypresses on their TV remote control units to set-top boxes connected to their TV equipment, which predetermined video content is listed by title for selection from an electronic program guide for a video-on-demand (VOD) platform of a the discrete digital TV service provider comprising: (a) enabling the uploading of video content in a digital video format via an online network to a Web-based content management server that is connected to the VOD platform of the discrete digital TV service provider network, along with a title and a hierarchical address of hierarchically-arranged categories and subcategories as metadata for categorizing a hierarchical ordering for the title for the video content; (b) converting the content uploaded to the Web-based content management server into a standard TV digital format used by the discrete digital TV service provider network and storing a “local instance” thereof at a video ID (VID) address in a video content database of the VOD platform, wherein the VID address is linked to the title for the video content; (c) listing the title of the video content in an electronic program guide for the VOD platform of the discrete digital TV service provider using the same hierarchically-arranged categories and subcategories as used in the uploaded metadata for the hierarchical address for the video content in the electronic program guide of the VOD platform; (d) providing a TV service subscriber, having a TV- equipment-connected set-top box connected to the VOD platform of the discrete digital TV service provider network, with access to the electronic program guide for the VOD platform for navigating through the hierarchically-arranged titles of video content by categories and subcategories therein in order to find the title of the video content desired for viewing on their TV equipment; and (e) upon the TV service subscriber selecting, via their TV remote control unit in communication with the set-top box, the title for the video content from the hierarchically-arranged categories and subcategories of the electronic program guide, and the set-top box transmitting a request for the selected title to the VOD platform, then enabling retrieval of the selected CBM2014-00189 Patent 7,631,336 B2 6 video content stored at the VID address in the video content database of the VOD platform linked thereto, and transmission of the selected video content to the TV service subscriber’s set- top box for display on the TV service subscriber’s TV equipment. D. The Asserted Grounds of Unpatentability Petitioner challenges the patentability of claims 1–4 and 7–11 of the ’336 patent on the following grounds (Pet. 21–79). References Basis Challenged Claims Novak, 1 Dukiewicz, 2 and Logan 3 § 103(a) 1–4 and 7–11 Novak, Wilson, 4 and Logan § 103(a) 1–4 and 7–11 N/A § 101 1 II. DISCUSSION A. Standing Section 18 of the Leahy-Smith America Invents Act (“AIA”) governs the transitional program for covered business method patent reviews. 5 Section 18(a)(1)(B) of the AIA limits such reviews to persons, or their privies, who have been sued or charged with infringement of a “covered 1 Novak, U.S. Patent Application Publication No. 2002/0104099 A1 (published Aug. 1, 2002) (Ex. 1007). 2 Dukiewicz et al., U.S. Patent Application Publication No. 2002/0088009 A1 (published July 4, 2002) (Ex. 1008). 3 Logan et al., U.S. Patent No. 5,721,827 (issued Feb. 24, 1998) (Ex. 1009). 4 Wilson, International Patent Application Publication No. WO 03/069457 A1 (published Aug. 21, 2003) (Ex. 1010). 5 See Section 18(a) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329 (2011). CBM2014-00189 Patent 7,631,336 B2 7 business method patent.” AIA §§ 18(a)(1)(B), 18(d)(1); see 37 C.F.R. § 42.302(a). 1. Eligibility Requirements of § 42.302 Petitioner asserts that Patent Owner has sued Petitioner for infringement of the ’336 patent. Pet. 14–15; see also id. at 3 (identifying Broadband iTV, Inc. v. Hawaiian Telcom, Inc., No. 14-cv-00169-ACK-RLP (D. Haw.) as a related matter). Petitioner also asserts that it is not estopped from challenging the claims of the ’336 patent on the grounds set forth in its Petition. Id. at 15. Patent Owner does not dispute that Petitioner has been sued for infringement of the ’336 patent or challenge eligibility under § 42.302. See Paper 7 (Patent Owner’s Mandatory Notices), 2–3. On this record, Petitioner meets the eligibility requirements of § 42.302. 2. Covered Business Method Patent Under § 18(a)(1)(E) of the AIA, the Board may institute a transitional proceeding only for a patent that is a covered business method patent. A “covered business method patent” is a patent that “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). The “legislative history explains that the definition of covered business method patent was drafted to encompass patents ‘claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.’” See Transitional Program for Covered Business Method Patents— Definitions of Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012) (quoting CBM2014-00189 Patent 7,631,336 B2 8 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)). A patent need have only one claim directed to a covered business method to be eligible for review. See id. at 48,736 (Comment 8). a. Financial Product or Service For purposes of determining whether a patent is eligible for a covered business method patent review, our focus is on the claims. See 77 Fed. Reg. at 48,736. Petitioner argues that the ’336 patent meets the “financial product or service” prong of the AIA. See Pet. 4–9. Patent Owner does not challenge this aspect, and only argues that the patent is for a “technological invention.” See Prelim. Resp. 11–18. Claim 1 of the ’336 patent recites “providing a TV service subscriber, having a TV-equipment-connected set-top box connected to the VOD platform of the discrete digital TV service provider network, with access to the electronic program guide” and “upon the TV service subscriber selecting, via their TV remote control unit in communication with the set-top box, the title for the video content . . . [, enabling the] transmission of the selected video content to the TV service subscriber’s set-top box for display on the TV service subscriber’s TV equipment.” Ex. 1001, 21:49–53, 22:4–7 (emphases added). As acknowledged within the patent, a TV service subscriber subscribes “to any of several tiers of bundled TV services on a scale with increasing rates in accordance with signal quality, TV program offerings, and types of interactive services.” Id. at 1:45–48. Claim 1 of the ’336 patent is directed to a method of providing additional content to TV service subscribers, and, therefore, claims an activity that is incidental or complementary to television subscription services. Pet. 6. In the particular context of the ’336 patent, and claim 1 in CBM2014-00189 Patent 7,631,336 B2 9 particular, we conclude that the claimed television subscription services are a financial activity in that fees are generated based on use of the system provided under the subscription. Id. at 5; see also SAP America, Inc. v. Versata Development Group, Inc., Case CBM2012-00001, slip op. at 23 (PTAB Jan. 9, 2013) (Paper 36) (concluding “[t]he term financial is an adjective that simply means relating to monetary matters” based on section 18 of the AIA and its legislative history). Accordingly, we determine that claim 1 recites a method for performing data processing or other operations used in the practice, administration, or management of a financial product or service, as required by § 18(d)(1) of the AIA. See 37 C.F.R. §42.301(a). b. Exclusion for Technological Inventions The definition of a “covered business method patent” in Section 18 of the AIA expressly excludes patents for “technological inventions.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). To determine whether a patent is for a technological invention, we consider “whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.” 37 C.F.R. § 42.301(b). According to the Office Patent Trial Practice Guide, the following claim drafting techniques are examples that typically do not render a patent a “technological invention”: (a) Mere recitation of known technologies, such as computer hardware, communication or computer networks, software, memory, computer-readable storage medium, scanners, display devices or databases, or specialized machines, such as an ATM or point of sale device. CBM2014-00189 Patent 7,631,336 B2 10 (b) Reciting the use of known prior art technology to accomplish a process or method, even if that process or method is novel and non-obvious. (c) Combining prior art structures to achieve the normal, expected, or predictable result of that combination. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,763–64. Petitioner argues that claim 1 does not recite a technological feature that is novel and unobvious over the prior art because “it merely recites a combination of known technology to accomplish its claimed method.” Pet. 11. Petitioner points to the technology that would be used in the method of claim 1, such as “computer networks, display formats, and VOD systems,” as well as “metadata,” “technology that enabled uploading of metadata and content simultaneously,” “electronic program guides or hierarchical categories,” and/or “the Internet and video compression software,” as each comprising known technology. Id. at 11–12. In its Preliminary Response, Patent Owner argues that Petitioner has failed to meet its burden by failing to consider the claim “as a whole.” Prelim. Resp. 11–12 (citing Motorola Mobility, LLC v. Intellectual Ventures I, LLC, CBM2014-00084, slip op. at 7 (PTAB Aug. 6, 2014) (Paper 18), and Experian Mktg. Solutions, Inc. v. RPost Commc’ns. Ltd., CBM2014-00010, slip op. at 9 (PTAB Apr. 22, 2014) (Paper 20)). Patent Owner focuses on Petitioner’s purported failure to meet its burden, but does not identify any specific element(s) in the claims that were not well-known technology. See, e.g., id. at 14 (“Petitioner’s isolation of generic hardware elements, without any citation to any claim, is contrary to the Board’s previous decisions and is insufficient to meet its burden . . . .”). We are persuaded by Petitioner’s identification of the technology necessary to accomplish the claimed steps CBM2014-00189 Patent 7,631,336 B2 11 and Petitioner’s explanation that such technology was well-known. See Pet. 11–12. As to Patent Owner’s contention that “[i]t does not necessarily follow from Petitioner’s statement that the use of specific steps in the claims of the ’336 patent are not novel or unobvious when viewed as a whole” (Prelim. Resp. 13 (emphasis added)), we reiterate that even if the steps of a process or method are novel and non-obvious, merely reciting the use of known prior art technology to accomplish the steps of a process or method falls squarely within an exemplary claim drafting technique that has been described as insufficient to qualify as a “technological invention.” Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,763–64. We also distinguish the instant proceeding from the prior Board decisions cited by Patent Owner in that the prior Board decisions were focused on Petitioner’s failure to consider whether specific technology elements set forth in the claims (e.g., software elements or server configurations) were known in the prior art. We are persuaded that claim 1, as a whole, does not recite a technological feature that is novel and unobvious over the prior art. We also have considered whether the method of claim 1, as a whole, 6 solves a technical problem using a technical solution as contended by Patent Owner. Prelim. Resp. 14–18. We do not agree, however, that the problem in the prior art described and addressed by the ’336 patent is “the migration 6 “The reference ‘and solves a technical problem using a technical solution’ is with respect to ‘the claimed subject matter as a whole.’” Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed. Reg. at 48,736. CBM2014-00189 Patent 7,631,336 B2 12 of video content using an open online network into a discrete, closed digital television system” as suggested by Patent Owner. Id. at 15. Rather, the problem in the prior art described and addressed by the ’336 patent is the alleged lack of “capability for Internet uploading and automatic listing in any VOD EPG [to] open[] VOD programming to a greatly expanded field of non-studio TV program publishers.” Ex. 1001, 3:62–64 (emphasis added). Providing the ability for users to locate content easily in a familiar manner (through the use of an existing electronic program guide) is primarily a content organization problem, not a technical problem. The problem is addressed through “listing the title of the video content in the electronic program guide using the same categories as those specified in the [hierarchically arranged title-ordering] metadata uploaded along with the video content.” Prelim. Resp. 16. We are not persuaded that this is a technical solution to a technical problem. See Pet. 13–14. The Board considers “whether a patent is for a technological invention on a case-by-case basis and will take into consideration the facts of a particular case.” Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed. Reg. at 48,737. A “determination of whether a patent is to a technological invention will be determined based on the claims of the patent.” Id. at 48,736. Based on the facts of this particular case, we determine that the ’336 patent is a “covered business method patent” that is not excluded for being a “technological invention” and, therefore, is eligible for a covered business method patent review. CBM2014-00189 Patent 7,631,336 B2 13 B. Claim Construction In a covered business method patent review, the Board interprets claim terms in an unexpired patent using the broadest reasonable construction. 37 C.F.R. § 42.300(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 448667, at *5–8 (Fed. Cir. Feb. 4, 2015). Claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We have reviewed Petitioner’s and Patent Owner’s statements regarding claim construction (see Pet. 17–20; Prelim. Resp. 26–27), but we determine that express construction of any particular term is unnecessary for purposes of this Decision. C. Challenge to Claim 1 Based on Same-Invention Type Double Patenting Petitioner contends that claim 1 of the ’336 patent is unpatentable for same-invention type double patenting under 35 U.S.C. § 101 in view of claim 1 of U.S. Patent No. 7,590,997 (“the ’997 patent,” Ex. 1003). 7 Pet. 66–79. Petitioner asserts that “[t]he AIA permits challenges under 35 U.S.C. § 101 in CBM proceedings.” Id. at 66 (citing Apple Inc. v. SightSound Technologies, LLC , Case CBM2013-00021, slip op. at 24 (PTAB Oct. 8, 2013) (Paper 13) (holding that judicially-created obviousness-type double 7 The ’336 patent is a continuation-in-part of the ’997 patent. Pet. 16, 66; Ex. 1001. The ’336 patent and the ’997 patent are commonly owned by Patent Owner and both list the same sole inventor. Pet. 67. CBM2014-00189 Patent 7,631,336 B2 14 patenting is not a permissible ground for challenging claims in a covered business method patent review)). As set forth in the SightSound case, any ground that could be raised under 35 U.S.C. § 282(b)(2) or (3) can be raised in a covered business method patent review. See AIA § 18(a)(1); 35 U.S.C. § 321(b). The grounds under 35 U.S.C. § 282(b)(2) are: “Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability.” Title 35, Part II includes 35 U.S.C. § 101. “[S]ame invention,” or “statutory,” double patenting prevents a person from obtaining more than one patent on identical subject matter. In re Longi, 759 F.2d 887, 892 (Fed. Cir. 1985). This type of double patenting “finds its support in the language of 35 U.S.C. § 101,” which states that “[w]hoever invents or discovers any new and useful process . . . may obtain a patent therefor.” Id. (emphasis added). For purposes of this Decision, we determine that same- invention type double patenting under 35 U.S.C. § 101 is a permissible ground for challenging claims in a covered business method patent review. Petitioner states that the test for same-invention type double patenting “is whether one of the claims could be literally infringed without literally infringing the other. If it could be, the claims do not define identically the same invention.” Pet. 67 (citing Application of Vogel, 422 F.2d 438, 441 (CCPA 1970)). Petitioner asserts that “[a] person of ordinary skill in the art would understand that ’336 claim 1 could not be literally infringed without literally infringing ’997 claim 1.” Id. at 72 (citing the Declaration of Stephen D. Bristow, Ex. 1011 ¶ 109); see also id. at 72–75 (setting forth a side-by-side comparison of claim 1 of the ’336 and ’997 patents). Patent Owner argues Petitioner fails to apply properly the test for same-invention type double patenting for at least two reasons. Prelim. Resp. CBM2014-00189 Patent 7,631,336 B2 15 29–30. First, Patent Owner points out that claim 1 of the ’997 patent refers to the uploading, receipt, and storage of “a plurality of video content segments,” such that “[t]o literally infringe claim 1 of the ’997 Patent, a user must be enabled to upload a plurality (i.e., more than one) of video content segments over the open online network.” Id. at 30 (citing Ex. 1003, 14:53– 59). Patent Owner argues that claim 1 of the ’336 patent merely requires a user to “be enabled to upload ‘video content,’ which could be in the form of a single video content segment.” Id. at 31. Patent Owner argues that claim 1 of the ’336 patent could, thus, be literally infringed by enabling the upload of a single video content segment, whereas claim 1 of the ’997 patent could not be literally infringed by enabling the upload of a single video content segment. Id. Second, Patent Owner points out that claim 1 of the ’997 patent refers to “links among video content segments that are ordered with respect to one another in a particular hierarchy,” whereas “[t]his feature of ‘linking’ is entirely absent from claim 1 of the ’336 Patent.” Id. at 31–32 (citing Ex. 1003, 15:1–7). Patent Owner argues that because “claim 1 of the ’336 Patent can be infringed by a system with unlinked video content segments[,] but claim 1 of the ’997 Patent cannot, the proposed ground of rejection based on double patenting again fails.” Id. at 33. We agree with Patent Owner on both points, and therefore, we are not persuaded that Petitioner has demonstrated that it is more likely than not that claim 1 of the ’336 patent is unpatentable for same-invention type double patenting over claim 1 of the ’997 patent. CBM2014-00189 Patent 7,631,336 B2 16 D. Obviousness of Claims 1–4 and 7–11 over Novak (Ex. 1007), Dukiewicz (Ex. 1008), and Logan (Ex. 1009) 1. Overview of Novak Novak discloses a system and method for an individual to upload media objects 8 to a server 9 in which the media objects can be ultimately provided to an end user via a “synthetic channel” on a television of a cable subscriber. Ex. 1007, Abstr., ¶¶ 10, 28. A user interface may allow the individual uploading the media objects to indicate date, time slot, descriptions, file types, etc., associated with the media objects. Id. ¶¶ 62–63. The server “makes the media objects available and accessible through the Internet via . . . web site 124 or via other techniques/connections.” Id. ¶ 39. The upload source can own the server that stores web site 124, or the server can be hosted by third parties. Id. ¶ 40. “[T]he synthetic channel is able to provide the media programs according to the type, sequence, length, desired scheduled play time, etc. specified by the individual who uploaded the media objects to the server.” Id. ¶ 26. The synthetic channel “can be tuned to or selected by the end user as if tuning to a conventional television broadcast channel.” Id. ¶ 10. “The synthetic channel is provisioned with information to access and display at 8 Exemplary media objects include audio and video clips, JPEGs, recorded audiovideo tape clips, sequenced JPEGs with attached audio files, MPEGs, MP3 files, web camera video clips, flash animation, text and graphics, or other media files. Ex. 1007 ¶ 39. 9 “The server can comprise part of or be communicatively coupleable to an interactive video casting system, such as an interactive television system.” Ex. 1007 ¶ 25. CBM2014-00189 Patent 7,631,336 B2 17 least one media object . . . stored in a storage location if the synthetic channel is selected by a client terminal.” Id. Information relating to the media object and the synthetic channel can be provided in an electronic program guide, “instead of having to navigate through complicated URL addresses and hyperlinks on the Internet.” Id. ¶¶ 10, 26. The information for the synthetic channel is displayed concurrently with information for television programs of available conventional channels. Id. ¶¶ 71, 74. The electronic program guide or set top box of the cable subscriber can “communicat[e] with the web site 124 to receive the uploaded media objects themselves when the synthetic channel is selected by the end user.” Id. ¶¶ 59, 75. 2. Overview of Dukiewicz Dukiewicz discloses “devices and processes for generating metadata for individual program segments, thus allowing program segments to be treated as individual programming events that can be individually evaluated by the user or by user equipment,” as opposed to evaluation of programs “on a whole-program basis.” Ex. 1008 ¶ 15. The production data used to produce multi-segmented programming can be processed to generate metadata and distribute that metadata to consumers in advance of the airing of the program. Id. Dukiewicz further discloses “a content classification hierarchy for classifying the content of programming events and for defining viewer’s particular interests” that allows for classification “with a previously unattainable degree of specificity.” Id. ¶ 16. For example, rather than broadly classifying based on “[s]ports,” the hierarchical classification could specify “Buffalo Bills” within “AFC” within “NFL” within “Football” CBM2014-00189 Patent 7,631,336 B2 18 within the broad category of “[s]ports.” Id. ¶ 70. When the hierarchical classification is “coupled with metadata describing individual program segments . . . it becomes possible to provide the viewer with a truly personalized viewing experience, from which all uninteresting subject matter has been eliminated through deep content specific filtering at the program segment level.” Id. ¶ 17. 3. Overview of Logan Logan discloses “a personalized information delivery system . . . which incorporates mechanisms for selectively delivering a subset of [a large number of diverse] programs to a given subscriber based on that subscriber’s characteristics, subject matter preferences and interests, and express requests.” Ex. 1009, Abstr., 1:39–46. Logan discloses that player mechanism 103 accepts commands that control the playback mechanism, including the command “MARK” that is “used to place a ‘bookmark’ into the usage log which identifies a program segment . . . which the listener wishes to designate for future use.” Id. at 12:17–20; 14:42–45. Logan discloses that “[b]y bookmarking a program segment, that segment may be recalled by the subscriber and all or part of it saved for later use in local storage, from which it may be reproduced, forwarded as an attachment to an email message, and the like.” Id. at 14:48–52. 4. Obviousness of Claims 1–4 and 7–11 Petitioner argues that the combination of Novak, Dukiewicz, and Logan renders claim 1 unpatentable as obvious. Pet. 21–40. Petitioner asserts that “Novak discloses a complete digital television system including traditional television content as well as content uploaded through the Internet into the closed digital system.” Id. at 26 (noting Figure 1’s CBM2014-00189 Patent 7,631,336 B2 19 disclosure of uploaded content traveling from upload source 122 through web site 124 to cable service provider 108, which delivers the content over cable network 134 to cable subscribers, as well as electronic program guide 153 as part of set top box 152) (citing Ex. 1007 ¶¶ 27, 37, 39). a. “Enabling” Step of Claim 1 With respect to the particular claim element of “enabling the uploading of video content . . . along with a title and a hierarchical address of hierarchically-arranged categories and subcategories as metadata for categorizing a hierarchical ordering for the title for the video content” (Ex. 1001, 21:27–34), Petitioner asserts that Novak “discloses the use of metadata associated with uploaded content that can be used to create hierarchical categories for ordering video content.” Pet. 28. Petitioner points to, in particular, Novak’s disclosure that “a plurality of headings 704 [e.g., date, time slot, media object identifier, media object description, file type, preview video] identifies a corresponding plurality of fields 706 where the individual can enter media object information or preferences.” Id. (quoting Ex. 1007 ¶ 63); see Ex. 1007, Fig. 7. Petitioner also points to Novak’s disclosure that “[o]ther fields may be present where the uploading individual can provide not just schedule information but also other program information, such as actors . . . director, story summary, . . . etc. that are all accessible/displayable from the [electronic program guide] 153.” Id. at 28– 29 (quoting Ex. 1007 ¶ 63). We are not persuaded by Petitioner’s contentions that Novak alone teaches or suggests the uploading of “a hierarchical address of hierarchically-arranged categories and subcategories as metadata for categorizing a hierarchical ordering for the title for the video content.” CBM2014-00189 Patent 7,631,336 B2 20 Petitioner argues that “hierarchically-arranged categories and subcategories as metadata for categorizing a hierarchical ordering [for] the title for the video content” should be construed as “topics and subtopics associated with a particular video title that are useful to categorize and order the title.” Pet. 20 (citing Ex. 1001, 3:28–34, 18:3–20). Petitioner suggests that “genre” could be a “topic,” and “director or actor” could be a “subtopic,” but Petitioner does not describe how these purported topics and subtopics would be useful to order or identify the title. Id.; see also Ex. 1001, 15:37–41 (describing the “hierarchical addressing scheme” as “a string of category term, subcategory term(s), and title that together . . . uniquely identify[] each program”). At most, Petitioner has explained how Novak teaches the inclusion of terms (e.g., media object description, actors, director, story summary) that may be used to describe uploaded video content, but not how these terms are arranged hierarchically into topics and subtopics to categorize and order the title. Petitioner further asserts that to the extent that “hierarchically arranged categories and subcategories are not disclosed inherently by Novak, this feature of claim 1 is disclosed by Du[]kiewicz.” See Pet. 30–31 (citing Ex. 1011 ¶ 37; Ex. 1008 ¶ 70, Fig. 8). Petitioner explains that Figure 8 of Dukiewicz “illustrates a portion of an exemplary classification hierarchy . . . . At the top level of the hierarchy are general subject categories . . . [and] extending from each of the top level categories is a tree of more specific subject categories that fall within the top level category.” Id. at 31 (citing Ex. 1008 ¶ 70, Fig. 8). Petitioner further asserts that Dukiewicz discloses that descriptive data concerning a given programming event can be processed to produce metadata to classify the programming CBM2014-00189 Patent 7,631,336 B2 21 event using the classification hierarchy of Figure 8. Id. (citing Ex. 1008 ¶ 72, Fig. 8; Ex. 1011 ¶ 39). Petitioner argues that “a person of skill in the art would . . . find the additional, more detailed disclosure of [Dukiewicz’s] categorization method helpful in implementing the invention of Novak.” Id. at 23. More particularly, Petitioner argues that “[b]ecause both Novak and Du[]kiewicz disclose the inclusion of metadata information with available video content, . . . it would naturally follow to use that information to categorize the uploaded content on the VOD platform in a logical way.” Id. According to Petitioner, “[b]y providing a method for automatic hierarchical categorization of programming content based on metadata, Du[]kiewicz facilitates the practice of the VOD system described in Novak.” Id. at 22. The “enabling” and “listing” steps of claim 1 refer to the same “hierarchically-arranged categories and subcategories” in uploaded metadata. Even assuming we agree with Petitioner that the combination of Novak and Dukiewicz renders obvious the “enabling” step of claim 1, we determine that Petitioner has not shown sufficiently that the combination of prior art references renders obvious the subsequent “listing” step of claim 1, as explained further below. b. “Listing” Step of Claim 1 With respect to the particular claim element of “listing the title of the video content in an electronic program guide for the VOD platform of the discrete digital TV service provider using the same hierarchically-arranged categories and subcategories as used in the uploaded metadata” (Ex. 1001, 21:42–48), Petitioner asserts that interface 702 of Figure 7 of Novak uses headings and fields, such as title, file type, time slot information, actors, CBM2014-00189 Patent 7,631,336 B2 22 personalities, director, story summary, etc., for the purpose of organizing uploaded content. Pet. 36 (citing Ex. 1007 ¶¶ 63–64, Fig. 7). Petitioner further asserts that electronic program guide 153 includes listing 908 that “identifies the time slots, descriptions, and lengths (collectively shown at 910) of the media program that . . . upload source 122 created and is now making available to end users for viewing.” Id. at 35–36 (citing Ex. 1007 ¶ 74, Fig. 9). The implication is that the electronic program guide of Novak’s Figure 9 uses the same data as the metadata inserted through interface 702. Pet. 35. Petitioner argues that Novak discloses that “[o]nce the media object(s) is uploaded to the server, information related to the media objects can be displayed in an electronic program guide (EPG) or otherwise made available to selected subscribers or end users of the interactive video casting system.” Pet. 34–35 (citing Ex. 1007 ¶ 26; Ex. 1011 ¶ 45). Again, we are not persuaded by Petitioner’s contentions that Novak alone teaches or suggests listing the title of the video content in an electronic program guide using the same hierarchically-arranged categories and subcategories as used in the uploaded metadata for the hierarchical address. At most, Petitioner has explained how Novak teaches the inclusion of the title of the uploaded content in an electronic program guide (as well as time slot, length, and a description, for example), but not how any hierarchically- arranged categories and subcategories are used in listing the title of the video content in the electronic program guide, let alone the same hierarchically- arranged categories and subcategories as were used in the uploaded metadata (i.e., data to describe a hierarchical ordering that is useful to categorize and order the title of video content). CBM2014-00189 Patent 7,631,336 B2 23 To the extent that the hierarchically-arranged categories and subcategories are “not disclosed inherently in Novak,” Petitioner again relies on Dukiewicz, pointing to Dukiewicz’s alleged “explicit disclosure of subject-based hierarchically-arranged categories for organizing programming information.” Id. at 36 (citing Ex. 1008 ¶¶ 70–71). Even assuming we agree with Petitioner’s view of Dukiewicz’s teachings, we determine that Petitioner has not shown sufficiently that a person of ordinary skill would have combined Dukiewicz and Novak to render obvious the “listing” step of claim 1, as explained further below. c. Reason to Combine As stated in KSR, “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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “Although common sense directs one to look with care” at patent claims that combine “two known devices according to their established functions, 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.” Id.; Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (“Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements . . . .”); see also In re Chaganti, 554 F. App’x 917, 922 (Fed. Cir. 2014) (“It is not enough to say that there would have been a reason to combine two references because to do so would ‘have been obvious to one of ordinary skill.’ Such circular CBM2014-00189 Patent 7,631,336 B2 24 reasoning is not sufficient—more is needed to sustain an obviousness rejection”) (citation omitted). As explained in KSR, an analysis regarding an apparent reason to combine known elements “should be made explicit.” KSR, 550 U.S. at 418. Petitioner asserts that “[i]t would have been obvious to use [Dukiewicz’s] organization technique in conjunction with the electronic program guide disclosed in Novak” to render obvious the “listing” step of claim 1. Pet. 36 (citing Ex. 1011 ¶ 47). Petitioner seems to reason that using Dukiewicz’s organization technique (in which metadata is produced to classify content using a classification hierarchy) is useful with Novak’s electronic program guide “to categorize the uploaded content on the VOD platform in a logical way” (Pet. 23) and “for organizing programming information” (id. at 36). Patent Owner, however, argues that “Novak teaches that the program lineup is fixed by the upload source (i.e., arranging the programs into time slots) and is sent to the end viewer over a dedicated synthetic channel, which obviates any need to arrange programs in hierarchical categories and subcategories.” Prelim. Resp. 45. Patent Owner also argues that end users will be aware of the location of media programs without having to search for them in an electronic program guide because the media programs are only available on a dedicated channel. Id. at 45–46. We agree with Patent Owner and are not persuaded that Petitioner has provided sufficiently articulated reasoning having a rational evidentiary underpinning explaining why an ordinary artisan would have had a reason to modify Novak’s electronic program guide to list the title of uploaded video content in the electronic program guide using the same hierarchically- CBM2014-00189 Patent 7,631,336 B2 25 arranged categories and subcategories as used in the metadata produced in Dukiewicz for classifying content, considering that the content is already logically organized into assigned time slots on a single channel in Novak to facilitate identification and selection by the end user. Moreover, Petitioner has not explained with any particularity how Dukiewicz’s classification hierarchy would be combined with listing the title of uploaded video content in Novak’s electronic program guide, so as to support that such a modification of Novak would result in a logical organization of programming as asserted by Petitioner. We also have considered Petitioner’s argument that Novak and Dukiewicz share the same U.S. Classification code, as well as common elements (such as the use of electronic program guides). Pet. 23. These arguments, however, do not remedy the lack of reasoning to explain why or how one of ordinary skill in the art would use Dukiewicz’s classification hierarchy in connection with Novak’s electronic program guide. Consequently, Petitioner has not demonstrated that it is more likely than not that independent claim 1 is unpatentable as obvious over Novak, Dukiewicz, and Logan. For the same reasons, we are not persuaded that Petitioner has demonstrated that it is more likely than not that dependent claims 2–4 and 7–11 are unpatentable as obvious over Novak, Dukiewicz, and Logan. E. Obviousness of Claims 1–4 and 7–11 over Novak (Ex. 1007), Wilson (Ex. 1010), and Logan (Ex. 1009) 1. Overview of Wilson Wilson discloses a television program guide having a hierarchical tree structure. Ex. 1010, Abstr. The classifications of the hierarchical tree CBM2014-00189 Patent 7,631,336 B2 26 structure may fall into first level, second level, third level, fourth level, and fifth level categories. Id. ¶ 47. Upon selecting particular content, the title of the program and channel and broadcast time can be displayed. Id. ¶ 50. 2. Obviousness of Claims 1–4 and 7–11 Petitioner contends that claim 1 would have been obvious over the combination of Novak, Wilson, and Logan. Pet. 53–59. For the same reasons as described above, we determine that, on the present record, Petitioner has not shown that Novak alone teaches or suggests the uploading of “a hierarchical address of hierarchically-arranged categories and subcategories as metadata for categorizing a hierarchical ordering for the title for the video content” or listing the title of the video content in an electronic program guide using the same hierarchically-arranged categories and subcategories as used in the uploaded metadata for the hierarchical address. Petitioner submits that the limitation of uploading “a hierarchical address of hierarchically-arranged categories and subcategories as metadata for categorizing a hierarchical ordering for the title for the video content” “would have been obvious to one of skill in the art in view of the combination of Novak and Wilson.” Pet. 55–57. Petitioner points to Wilson’s “hierarchical program guide . . . shown in Figure 2” that includes “a plurality of levels, including at least a first level displayed on the display device and a second level.” Id. at 56 (citing Ex. 1010 ¶¶ 19, 27, Fig. 2). As to a rationale for the combination of Novak and Wilson, Petitioner argues that “[h]ierarchical organization by category, as described by Wilson, would be a desirable means of organizing uploaded content to maximize discoverability” and “would also provide a convenient means for a user to CBM2014-00189 Patent 7,631,336 B2 27 locate and identify a desired item of programming content within the VOD system of Novak.” Id. at 54. Petitioner further argues that Wilson “builds on [Novak’s] disclosure [of ‘the use of metadata as a means of locating desired content’] by describing a specific implementation of an electronic program guide that details the user interface features of a hierarchical structure.” Id. at 54–55 (citing Ex. 1007 ¶ 63; Ex. 1010 ¶ 19). Although Novak arguably discloses the inclusion of metadata information (title, time slot, length, description, etc.) with uploaded content, Novak does not disclose the use of this metadata as a means for users to locate desired content other than showcasing the content at the desired data and time slot entered by the uploader. Patent Owner argues that “Wilson does not explicitly describe how content selections become associated with various categories in the hierarchical tree.” Prelim. Resp. 52. We agree with Patent Owner that Petitioner has not described sufficiently how Wilson’s classification hierarchy within its electronic program guide could be utilized in Novak’s system (in which users insert data regarding the uploaded content) so as to enable the uploading of a hierarchical address of categories and subcategories as metadata, along with the content itself. As to the limitation of “listing the title of the video content in an electronic program guide . . . using the same hierarchically-arranged categories and subcategories as used in the uploaded metadata for the hierarchical address for the video content” (Ex. 1001, 21:42–47), Petitioner asserts that this element “would have been obvious to one of skill in the art in view of the combination of Novak with Wilson.” Pet. 57. Petitioner asserts that Wilson discloses that second level category 720b may have a plurality of third level categories 730a–c, such as title, actors, and director, CBM2014-00189 Patent 7,631,336 B2 28 and that within the program guide, displayed data may include channel information, titles, program descriptions, and broadcast time. Id. at 58 (citing Ex. 1010 ¶¶ 19, 47, 50, 61, Figs. 2, 7). As to a rationale for the combination of Novak and Wilson, Petitioner argues that “a person of skill in the art would be motivated to improve upon the electronic program guide disclosed in Novak using the additional teachings of Wilson” in order “to organize th[e] content to make it readily accessible to the user.” Id. at 54. Patent Owner, however, argues that “the arrangement of media objects in Novak is fixed by the uploading source and sent to a viewer via a synthetic channel, removing any need for hierarchical arrangement.” Prelim. Resp. 52 (citing Ex. 1007 ¶ 63). We agree with Patent Owner and are not persuaded that Petitioner has explained adequately why an ordinary artisan would have had a reason to purportedly improve upon Novak’s electronic program guide to list the title of the uploaded video content in the electronic program guide in a hierarchical organization by category as described in Wilson, considering that the content is already logically organized into assigned time slots on a single channel in Novak to facilitate identification and selection by the end user. Overall, Petitioner provides insufficiently articulated reasoning that lacks a rational evidentiary underpinning explaining how or why Wilson’s teachings (that do not describe how content becomes associated with a particular hierarchical classification) would be combined with Novak’s teachings (that do not describe associating hierarchically-arranged categories and subcategories with uploaded content to order or identify content in light of content appearing on a single dedicated channel) to result in the claimed method. CBM2014-00189 Patent 7,631,336 B2 29 We also have considered Petitioner’s argument that Novak and Wilson share the same International Classification Number. Pet. 55. This argument, however, does not remedy the lack of reasoning to explain why or how one of ordinary skill in the art would use Wilson’s hierarchical electronic program guide in connection with Novak’s system of assigning a date and time slot at the time of uploading content for airing of the uploaded content on a single dedicated channel. Consequently, Petitioner has not demonstrated that it is more likely than not that independent claim 1 is unpatentable as obvious over Novak, Wilson, and Logan. For the same reasons, we are not persuaded that Petitioner has demonstrated that it is more likely than not that dependent claims 2–4 and 7–11 are unpatentable as obvious over Novak, Wilson, and Logan. III. CONCLUSION For the foregoing reasons, we determine that Petitioner has not demonstrated that it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. IV. ORDER For the reasons given, it is ORDERED that institution of covered business method patent review is denied. CBM2014-00189 Patent 7,631,336 B2 30 FOR PETITIONER: Sasha G. Rao Brandon H. Story BINGHAM MCCUTCHEN LLP srao@bingham.com bstroy@bingham.com FOR PATENT OWNER: John D. Simmons Stephen E. Murray Dennis J. Butler PANITCH SCHWARZE BELISARIO & NADEL LLP jsimmons@panitchlaw.com smurray@panitchlaw.com dbutler@panitchlaw.com Copy with citationCopy as parenthetical citation