Hawaiian Telcom, Inc.v.Broadband iTV, Inc.

Patent Trial and Appeal Board

Apr 1, 2015

11685188 (P.T.A.B. Apr. 1, 2015)

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
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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.
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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.
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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
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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
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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).
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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
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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
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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.
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(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
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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.
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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.
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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.
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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.
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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.
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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.
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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”
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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
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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.”
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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
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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,
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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).
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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
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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-
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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
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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
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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,
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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.
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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.
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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