S.I.SV.EL. Societa Italiana Per Lo Sviluppo Dell’elettronica S.P.A.

Patent Trials and Appeals Board

Jun 25, 2020

IPR2019-00471 (P.T.A.B. Jun. 25, 2020)

Trials@uspto.gov Paper 36
571-272-7822 Date: June 25, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS INC.,
Petitioner,
v.
S.I.SV.EL. SOCIETA ITALIANA PER LO SVILUPPO
DELL’ELETTRONICA S.P.A.,
Patent Owner.

IPR2019-00471
Patent 7,734,680 B1

Before TERRENCE W. McMILLIN, AMANDA F. WIEKER, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.

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

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We have jurisdiction to conduct this inter partes review under 35
U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C.
§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we
determine that Unified Patents Inc. (“Petitioner”) has shown, by a
preponderance of the evidence, that claims 1, 4, 8, 11–13, and 16–18 of U.S.
Patent No. 7,734,680 B1 (Ex. 1001, “the ’680 patent”) are unpatentable.
Petitioner has not shown that claim 10 of the ’680 patent is unpatentable.

I. BACKGROUND
A. Procedural History
Petitioner filed a Petition challenging claims 1, 4, 8, 10–13, and 16–18
of the ’680 patent. Paper 2 (“Pet.”).1 S.I.SV.EL. Societa Italiana Per Lo
Sviluppo Dell’elettronica S.p.A. (“Patent Owner”) filed a Preliminary
Response to the Petition. Paper 6 (“Prelim. Resp.”). On July 24, 2019, we
instituted trial. Paper 10 (“Inst. Dec.”). Patent Owner filed a Response.
Paper 14 (“PO Resp.”). Petitioner filed a Reply. Paper 18 (“Pet. Reply”).
Patent Owner filed a Sur-reply. Paper 20 (“PO Sur-reply”). An oral
argument was held on April 23, 2020, and a transcript was entered into the
record. Paper 35 (“Tr.”).

1 Petitioner filed a motion to correct clerical and typographical errors in the
Petition under 37 C.F.R. § 42.104(c). Paper 7. This motion was granted and
the changes in the red-lined version of the Petition filed as Exhibit 1020
were incorporated into the Petition as originally filed. Paper 9, 5.
Accordingly, we review the Petition as including the changes shown in
Exhibit 1020.
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B. Related Matters
The parties indicate that the ’680 patent has been asserted in these
three cases filed in the United States District Court for the District of
Delaware on January 8, 2018:
S.I.SV.EL. Societa Italiana Per Lo Sviluppo Dell’elettronica S.p.A. v.
Rakuten Kobo Inc., No. 1:18-cv-00068;
S.I.SV.EL. Societa Italiana Per Lo Sviluppo Dell’elettronica S.p.A. v.
Rhapsody International Inc., No. 1:18-cv-00069; and
S.I.SV.EL. Societa Italiana Per Lo Sviluppo Dell’elettronica S.p.A. v.
Spotify USA Inc., No. 1:18-cv-00070. Pet. 64; Paper 3, 2.
The ’680 patent was also the subject of IPR2019-00520 in which we
denied institution of inter partes review.
C. The ’680 Patent
The ’680 patent is titled, “Method and Apparatus for Realizing
Personalized Information from Multiple Information Sources.” Ex. 1001,
code (54). “A meta-browser presents personalized collections of
information from multiple sources of different media types in a single
browser space.” Id. at 2:37–39. Figure 4 of the ’680 patent is reproduced
below.
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Figure 4 depicts “a block schematic diagram of a meta-browser system.” Id.
at 2:28–29. The system shown in Figure 4 includes remote information
sources 310 comprised of collaborative filtering database 316 and other
sources of information. Id. at 7:24–27. Figure 4 also depicts receiver 320
with explicit/implicit filter 326 and adaptive user profile database 328. Id. at
5:41–6:17. Figure 4 further depicts user I/O devices 330 including output
device 332 and selector 334. Id. at 5:16–40.
“The meta-browser presents personalized collections of information
from multiple sources of different media types as different media collections
in [a] unified browser space.” Id. at code (57) (Abstract). “[P]ersonalized
recommendations . . . are generated based on a profile of the user’s interests
captures across multiple media sources.” Id. “Collaborative filtering, which
uses multiple user profiles to compute co-relations between the user’s profile
and others, is also used to make recommendations.” Id.
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D. Challenged Claims
Petitioner challenges claims 1, 4, 8, 10–13, and 16–18 of the
’680 patent. Pet. 2. Of the challenged claims, claim 1 is an independent
method claim, claim 11 is an independent apparatus claim, and claim 16 is
an independent computer program product claim. Ex. 1001, 10:21–12:64.
Claim 1 recites:
1. A method operable in a computer-enabled apparatus, said
method comprising:
establishing a user profile for a user based on various interests of
the user;
establishing a virtual unified space including a virtual library on
the computer-enabled apparatus;
populating the virtual library with a plurality of different virtual
media collections in accordance with the user profile, wherein
the plurality of the different virtual media collections includes
information obtained directly from at least a broadcasted
television signal; and
browsing the virtual library by moving between the plurality of
different media collections under user control;
searching the virtual unified space with a search engine under
user control; and
filtering the results of the searching step in accordance with the
user profile and the browsing step, wherein said filtering
comprises explicit and implicit filtering, wherein said explicit
filtering provides filtering of from information from said
plurality of different media collections and said implicit
filtering draws from collaborative data among said plurality of
different media collections and similar user profiles;
prioritizing results of said filtering step; and
updating the user profile in accordance with at least one selection
of the results of the filtering step, wherein said updating is
reflected in a ratio in responding to said user’s current
programming choice or specific requests.

Id. at 10:21–48.
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Claim 11 recites:
11. A receiver apparatus for obtaining content from multiple
information sources for viewing by a viewer, comprising:
an input/output (“I/O”) controller including an Internet
connection input, a video output, and a selector input;
an adaptive user profile database;
a filter coupled to the adaptive user profile database, the filter
being coupled to the I/O controller for filtering information
from the Internet connection input in accordance with the
adaptive user profile database, wherein said filtering
comprises explicit and implicit filtering, wherein said explicit
filtering provides filtering of information from said plurality
of different media collections and said implicit filtering draws
from collaborative data among said plurality of different
media collections and similar user profiles,
an output display device configured to display a virtual unified
space including a virtual library transmitted through the video
output;
a populater that populates the virtual library with virtual multiple
media collections using the filtered information from the filter;
a browser that browses the virtual library by moving between
multiple media collections in accordance with the selector
input;
and a recommender that recommends virtual media in the virtual
multiple media collections in the virtual library to a user based
on a user profile for the user, and
an updater for updating the user profile based on at least one
selection of the recommended virtual media, wherein said
updating is reflected in a ratio in responding to said user’s
current programming choice or specific requests.

Id. at 11:32–65.
Claim 16 recites:

16. A computer program product comprising a computer
readable medium having program logic recorded thereon for
enabling a computer-enabled apparatus to display
personalized information for a user from multiple information
sources, comprising:
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a populater for populating a virtual library with a plurality of
different virtual media collections in accordance with a user
profile, wherein the virtual library is populated with different
types of media obtained from different media sources; and
a browser for browsing the virtual library by moving between the
plurality of different media collections under user control;
a search engine for searching the virtual library under user
control; and
a filter for filtering the results of the searching step in accordance
with the user profile and said browsing step, wherein said
filtering comprises explicit and implicit filtering, wherein said
explicit filtering provides filtering of information from said
plurality of different media collections and said implicit
filtering draws from collaborative data among said plurality of
different media collections and similar user profiles;
a prioritizer for prioritizing results of the filtering step; and
an updater for updating the user profile in accordance with at
least one selection of the results of the filtering step, wherein
said updating is reflected in a ratio in responding to said user’s
current programming choice or specific requests.

Id. at 12:25–53.
E. Prior Art and Asserted Grounds
Petitioner asserts (Pet. 7) that claims 1, 4, 8, 10–13, and 16–18 of the
’680 patent would have been unpatentable on the following grounds:
Claims Challenged 35 U.S.C. § References/Basis
1, 4, 8, 10–13, 16–18 103(a)2 Easty,3 Hendricks4
1, 4, 8, 10–13, 16–18 103(a) Easty, Hendricks, Kittaka5

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’680 patent issued was filed
before this date, the pre-AIA version of § 103 applies.
3 US Patent No. 6,189,008 B1 (Ex. 1004) filed April 3, 1998.
4 US Patent No. 5,798,785 (Ex. 1005) issued August 25, 1998.
5 US Patent No. 5,999,975 (Ex. 1006) filed March 5, 1998.
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Petitioner relies on the Declaration of Loren Terveen, Ph.D. (Ex. 1003)
(“Terveen Decl.’) and the First Supplemental Declaration of Loren Terveen,
Ph.D. (Ex. 1021) (“Terveen Supp. Decl.”). Patent Owner relies on the
Declaration of Dr. Michael J. Pazzani (Ex. 2001) (“Pazzani Decl.”) and the
Supplemental Declaration of Dr. Michael J. Pazzani (Ex. 2009) (“Pazzani
Supp. Decl.”).6
II. ANALYSIS
A. Legal Standard
A patent claim is unpatentable as obvious if the differences between
the claimed subject matter and the prior art are such that the subject matter,
as a whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) objective evidence of nonobviousness.7 Graham v.
John Deere Co., 383 U.S. 1, 17–18 (1966).
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review

6 The Supplemental Declaration of Dr. Michael J. Pazzani (Ex. 2009) is the
subject of a Motion to Strike (Paper 22). As discussed infra (Section II.D.),
we deny the Motion to Strike.
7 Neither party presents any objective evidence of nonobviousness or any
related arguments for us to consider.
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petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). Petitioners cannot satisfy their
burden of proving obviousness by employing “mere conclusory statements.”
In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
B. Level of Skill in the Art
With regard to the level of ordinary skill in the art, Petitioner contends
that a person of ordinary skill would have had “(i) an undergraduate degree
in computer science, computer engineering, or similar technical field; and
(ii) one to two years of experience in analysis, design, or development
related to recommender systems and collaborative filtering, with additional
education substituting for less experience and vice versa.” Pet. 6 (citing
Ex. 1003 (Terveen Decl.) ¶¶ 22–24). Patent Owner contends the applicable
level of ordinary skill in the art would have had “(i) a B.S. in Computer
Science or a closely related field with three or more years of experience in
either embedded systems or recommendation systems or (ii) at least an M.S.
in Computer Science. Additional education or experience may serve as a
substitute for these requirements.” PO Resp. 19 (citing Ex. 2001 (Pazzani
Decl.) ¶ 24) (internal citations omitted). Although these contentions differ
slightly in the amount of required experience, they are very similar, and
neither party contends that these differences are material to any issue in
dispute.
Factors that may be considered in determining the level of ordinary
skill in the art include, but are not limited to, the types of problems
encountered in the art, the sophistication of the technology, and educational
level of active workers in the field. In re GPAC, Inc., 57 F.3d 1573, 1579
(Fed. Cir. 1995). In addition, the level of ordinary skill in the art may be
reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350,
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1355 (Fed. Cir. 2001). Generally, it is easier to establish obviousness under
a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA
Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated
level of skill generally favors a determination of nonobviousness . . . while a
higher level of skill favors the reverse.”).
We do not find it necessary to resolve the differences between the
contentions of the parties. In other words, our conclusions herein would not
differ under either party’s assessment of the appropriate level of skill in the
art.
C. Claim Construction
“[I]n an inter partes review proceeding, a claim of a patent . . . shall
be construed using the same claim construction standard that would be used
to construe the claim in a civil action under 35 U.S.C. § 282(b), including
construing the claim in accordance with the ordinary and customary
meaning of such claim as understood by one of ordinary skill in the art and
the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). In
applying a district court-type claim construction, we are guided by the
principle that the words of a claim “are generally given their ordinary and
customary meaning,” as understood by a person of ordinary skill in the art at
the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
(Fed. Cir. 2005) (en banc) (citation omitted). “In determining the meaning
of the disputed claim limitation, we look principally to the intrinsic evidence
of record, examining the claim language itself, the written description, and
the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
415 F.3d at 1312–17). There is a “heavy presumption,” however, that a
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claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).
We are also guided by the principle that we only construe claim terms
if, and to the extent that, it is necessary. See, e.g., Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(“[W]e need only construe terms ‘that are in controversy, and only to the
extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
In the Petition, Petitioner proposes constructions for “implicit
filtering” and “explicit filtering.” Pet. 8–9. Patent Owner does not dispute
Petitioner’s proposed constructions. Prelim. Resp. 33. Patent Owner does
not dispute Petitioner’s showing that the cited art teaches “implicit filtering”
and “explicit filtering” as used in the context of the claims of the
’680 patent. See generally PO Resp. Thus, we do not discern any dispute
between the parties regarding these terms. As construction of these terms is
not necessary in order to resolve this proceeding, we do not explicitly
construe these terms.
Patent Owner contends that the term “virtual library” as used in
independent claims 1, 11, and 16 should be construed to mean “a
personalized collection of information from multiple sources of different
media types in a single browsing space without requiring switching between
different systems to access the different media types.” PO Resp. 19–23;
PO Sur-reply 3–10. For the reasons discussed below, we do not adopt Patent
Owner’s proposed construction as it is too restrictive and incorporates a
number of limitations unsupported by the claims or the intrinsic evidence.
The plain and ordinary meaning of “virtual library” is broader than
Patent Owner’s proposal and encompasses information that is not
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personalized, originates from a single source, or contains a single media
type. See, e.g., Ex. 1021 (Terveen Decl.) ¶¶ 6–8. For example, we are
persuaded that a website originating from a public library that contains only
the text of books is within the plain and ordinary meaning of “virtual
library.” Id. ¶ 8 (opining that a skilled artisan would not have understood
“virtual library” to require, e.g., multiple media sources); but see Ex. 2001
¶ 54 (providing only conclusory opinion that a “virtual library” “includes the
ability to browse multiple types of media”). Patent Owner has not identified
an explicit definition in the Specification or other evidence to overcome the
presumption that “virtual library” should be given its plain and ordinary
meaning, as opposed to the more restrictive construction it proposes.
Patent Owner argues that “the Specification contains numerous
columns of text defining the virtual library” (PO Resp. 20) but cites in
support a single passage from the “Detailed Description from the Preferred
Embodiment.”8,9 Id. at 20–21. This passage contains a description of a

8 In a section titled “Applicable Legal Principles,” Patent Owner states,
“Generally, however, it is a ‘cardinal sin’ to read a limitation from the
specification into the claims,” and “[t]his holds even if the specification
describes only one embodiment.” PO Resp. 5 (citing Phillips v. AWH Corp.,
415 F.3d 1303, 1320 (Fed, Cir. 2005) (en banc) and Epos Techs. Ltd. v.
Pegasus Techs. Ltd., 766 F.3d 1338, 1341 (Fed. Cir. 2014)). In addition,
Patent Owner provides the following quote from Kara Tech. Inc. v.
Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009): “a patentee is
entitled to the full scope of his claims and [a court] will not limit him to his
preferred embodiment or import a limitation from the specification into the
claims” (addition by Patent Owner). We accept that the law does not
support limiting the construction of “virtual library” based on the
Specification as proposed by Patent Owner.
9 The Specification states: “The description and applications as set forth
herein are illustrative and are not intended to limit the scope of the
invention, which is defined in the following claims.” Ex. 1001, 10:9–11.
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meta-browser and provides, “The metaphor underlying the meta-browser is
shown in FIG. 1. The metaphor is a virtual library that has multiple floors.”
Ex. 1001, 2:37–55; see also id. at 3:57–62 (describing an “example of a
user’s experience with the meta-browser” as a “‘library’ having three
floors,” each for a different type of media content, where “the library having
floors 110, 120, and 130 is the unified browsing space”). Figure 1 of the
’680 patent is reproduced below.

Figure 1 is “a pictorial representation of a virtual digital library, in
accordance with the present invention.” Id. at 2:20–21. Patent Owner
contends, “[t]his text effectively provides a definition of ‘virtual library’
within the claims, and that definition should be adopted here.” PO Resp. 21.
We do not agree. First and foremost, the Specification does not
provide that this “metaphor” or “pictorial representation” is a limiting
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definition10 of “virtual library.” Indeed, the Specification provides to the
contrary. The Specification states: “While the library metaphor is a
particularly useful personalized visualization of heterogeneous media, other
useful visualizations are possible. Other possible visualizations include, for
example, simple nested menus and an office and file drawer metaphor.” Id.
at 5:11–15. Patent Owner does not explain, and we do not discern, how the
alternative visualizations of “simple nested menus” or “an office and file
drawer metaphor” support Patent Owner’s proposed construction.
Second, the description of the “virtual library” metaphor in the
Specification does not support Patent Owner’s proposed construction. With
regard to that portion of Patent Owner’s proposed construction that provides
“a personalized collection of information,” the same paragraph Patent
Owner cites states, “The types of floors in the virtual library, the types of
stacks populating each floor, and the specific media items on each of the
stacks preferably are selected based on the user’s profile, although they
may also be based on all of the information that is available to the meta-
browser when the available information is a relatively small and
manageable amount.” Ex. 1001, 3:10–15 (emphasis added). The
alternative of displaying “all of the information that is available to the meta-
browser,” as opposed to content “selected based on the user’s profile,” does
not support limiting “virtual library” to require personalization.
With regard to the portion of Patent Owner’s proposed construction
that provides “information from multiple sources from different media types

10 See GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
(Fed. Cir. 2014) (in order to act as its own lexicographer to define a claim
term in the specification, a patentee must clearly set forth a definition and
clearly express an intent to define the term).
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in a single browsing space,” the ’680 patent states, “The unified browsing
space may be the entire library, particular floors of the library, or one
particular floor of the library, depending on what media collections the
user wishes to browse.” Ex. 1001, 3:16–18 (emphasis added).11
Importantly, each floor of the described library contains only one media
type. See id. at 2:53–3:6 (“[F]loor 10 contains community events . . . Floor
20 contains books . . . Floor 30 contains movies . . . Floor 40 contains music
. . . Floor 50 contains television programs.”). Therefore, these passages
from the Specification do not limit the recited “virtual library” to
“information from multiple sources from different media types in a single
browsing space,” because the Specification explicitly contemplates a
collection of a single media type, i.e., “one particular floor.”
Additionally, Patent Owner’s arguments regarding the language of
independent claim 11 contradicts construing “virtual library” as Patent
Owner proposes. Claim 11 recites, “a filter . . . for filtering information
from the Internet connection input” and “a populater that populates the
virtual library with virtual media collections using the filtered information
from the filter.” Ex. 1001, 11:39–41, 11:52–54 (emphasis added). In the
Response, Patent Owner argues, “the prior art lacks a ‘virtual library’
because it discloses an Internet-based search engine and that the Internet is a
single source, ‘which is but one resource of the instantly claimed
invention.’” PO Resp. 32. If “the Internet is a single source,” claim 11
recites populating the “virtual library” with information from a single

11 As discussed above, the Specification describes the metaphorical “library”
as an example of “the unified browsing space.” Ex. 1001, 3:57–62 (“the
library having floors 110, 120, and 130 is the unified browsing space”).
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source.12
Finally, Patent Owner does not cite any support in the Specification
for including “without requiring switching between different systems to
access the different media types” in its construction of “virtual library.”
There is no language in the passage that Patent Owner quotes that could
reasonably be interpreted as supporting construing “virtual library” to
contain this restrictive phrase.13 See PO Resp. 20–21 (quoting Ex. 1001,
2:37–55); see also PO Sur-reply 6–7. And, we find no support elsewhere in
the Specification.
Patent Owner argues, “during prosecution, the Applicant likewise
disclaimed singular source libraries from its definition and confirmed that
user personalized, multi-source libraries are required features.”14 PO
Resp. 21. In support, Patent Owner quotes four passages from the

12 Also, in the Response, Patent Owner argues “this is a misreading of
claim 11” and “Claim 11 is merely limited to those embodiments where one
of the sources is the Internet.” PO Resp. 32. However, at oral argument,
Patent Owner acknowledged that claim 11 could be met by populating the
“virtual library” with only information from the Internet. Tr. 42–43.
13 See Teleflex Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1325
(Fed. Cir. 2002) (requiring “expressions of manifest exclusion or restriction,
representing a clear disavowal of claim scope” in order to limit claims based
on language in the specification).
14 Patent Owner does not argue that the prosecution history supports
including “without requiring switching between different systems to access
the different media types” in its construction of “virtual library.”
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prosecution history. See id. at 21–22 (citing Ex. 2007,15 449,16 451, 477,
478). The quoted passages are:
[D]escribes the arrangement of the virtual library, wherein the
library includes a number of floors indicative of different
sources of media types so that the user may selectively browse
between floors in accordance with the user profile.
* * *
[A] virtual library with a plurality of different virtual media
collections in accordance with the user profile, in which the
browsing of the virtual library is achieved by moving between
the plurality of different media collections . . .
* * *
Applicants claimed invention is a meta-browser that creates a
virtual library based on a variety of sources and constantly
updates the virtual library dependent on the actions of the user.
* * *
The virtual library of the claimed invention, which is created of
user profile information, provides a user with an ability to
search for information outside the scope of the Internet, and
then retrieve, and search and/or browser the virtual library. . . .

15 Exhibit 2007, like Exhibit 1002, is the prosecution history of the ’680
patent. In its Response, Patent Owner cites to both Exhibit 1002 and
Exhibit 2007, sometimes in the same paragraph. See PO Resp. 17, 21–22.
This has created confusion and difficulty in analyzing Patent Owner’s
arguments. This was unnecessary and violated the rules governing this
proceeding. Exhibit 2007 was filed by Patent Owner without authorization
from the Board, in violation of 37 C.F.R. § 42.6 (d) (“A document already in
the record of the proceeding must not be filed again, not even as an exhibit
or an appendix, without express Board authorization.”). Although we could
expunge Exhibit 2007 (see 37 C.F.R. § 42.6 (a)) (and render substantial
portions of Patent Owner’s arguments unsupported by cited evidence), we
exercise our discretion not to do so and, instead, analyze Patent Owner’s
arguments on the merits, as best the supporting evidence can be discerned.
16 In the Response, Patent Owner cites page 449 of Exhibit 1002. See PO
Resp. 21. The quoted passage does not appear on this page of Exhibit 1002.
It does appear at page 449 of Exhibit 2007.
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Ex. 1002, 124, 125, 151, 153. In its Response, Patent Owner cites case law
providing that a disclaimer of claim scope during prosecution must be clear
and unmistakable. PO Resp. 5 (citing Omega Eng’g, Inc. v. Raytek Corp.,
334 F.3d 1314, 1325–26 (Fed. Cir. 2003) (“Although a patent’s prosecution
history is relevant to the claim construction analysis, any disclaimer of claim
scope based on prosecution history must be ‘clear and unmistakable.’”)).
Patent Owner does not argue or explain how or why the passages it quotes
from the prosecution history constitute a clear and unmistakable disclaimer.
See PO Resp. 21–22. These passages were used by the Applicant in its
patentability arguments. See Ex. 1002, 124, 125, 151, 153. In response to
these arguments, the Examiner found the Applicant was arguing unclaimed
features of the invention. Id. at 177–178. The Examiner wrote:
As per Appellant’s argument that a meta-browser is not an
obvious variant of a browser, Appellant is arguing matter not
explicitly claimed in the claims of the specification. Appellant
further argues that the claimed invention involves searching a
multitude of sources, where Rapaport[17] teaches searching the
single source of the Internet. However, Appellant does not
distinguish in claims what that [sic] a multitude of sources are
searched in addition to the Internet. Applicant further argues that
the meta-browser “preferably monitors for data events even if the
user engages in other activities such as…” Appellant continues
to argue features not claimed in the claims of the specification.
As per Appellant’s argument that the virtual library of the
claimed invention searches outside the scope of the Internet and
is more than just a text-based search engine, Appellant is arguing
features not claimed in the claims of the specification.

Id., see also id. at 367. And, on appeal from this rejection, this argument
was evaluated and rejected by a predecessor of the Board, the Board of

17 U.S. Patent No. 5,890,152. See Ex. 1002, 371.
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Patent Appeals and Interferences (“BPAI”). Id. at 376–377. The BPAI
wrote:
Appellants allege that “Rapaport, as admitted in the Final
Office Action, is silent with regard to a virtual library, and fails,
of course, to disclose that the library may be browsed by moving
between different media collections.” (Br. 6, top). This
argument is key to the Appellants’ objection to the rejection, and
is best analyzed by considering Claim 1’s limitations,[18] read in
the context of the specification
As noted in Findings of Fact 2, above, Rapaport teaches
an enhanced browser designed to acquire information from
various information sources spread across the Internet. We find
in Rapaport a teaching of the claimed user profile based on the
user’s interests. (Col. 3, l. 5 ff). We also find in Rapaport a
virtual unified space: Figure 15a of Rapaport shows a Search
Results screen that brings together in a single view the results of
searching for butterflies in various contexts and from various
information sources, which the Examiner considered a unified
space. We do not find error in that reading.
Is the claimed virtual library also taught? We must
consider what is a virtual library. In accordance with Philips
[sic] (cited above) we look first to the common meaning of the
term, in light of the specification. We have not found that
Appellants rely on an exact definition of virtual library in the
specification. We have found the term used in the specification
to refer to a metaphor for a physical library, with stacks of
information sources listed on various floors of a virtual building.
(Specification, Figure 1, and page 11, line 10 ff). This metaphor

18 At this point in the prosecution, claim 1 recited (Ex. 1002, 371):
A method of realizing personalized information for a user from
multiple information sources, comprising:
establishing a user profile for the user based on various interests of the
user;
establishing a virtual unified space including a virtual library;
populating the virtual library with a plurality of different virtual media
collections in accordance with the user profile; and
browsing the virtual library by moving between the plurality of
different media collections under user control.
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is not claimed, however, and only the general term virtual
library is recited as a limitation in the claim. We are thus free
to interpret the term with the reasonable breadth used during
examination. The claim only requires that the virtual library is
populated with a plurality of different virtual media collections.
The Examiner has pointed out (with regard to the discussion of
Claim 6, on page 5 of the Answer) that Figure 15a of Rapaport
presents, as part of the unified screen (space), a plurality of
different virtual media collections – for text, for audio sources,
for video sources. We find this a sufficient teaching of a virtual
library as claimed, as the claimed steps (claim 1), structure (claim
15), and means (claim 19) are clearly taught by Rapaport.

Id. (emphasis added). “In determining whether a clear and unambiguous
disclaimer attaches to particular claim language, it is important to consider
the statements made by the applicant both in the context of the entire
prosecution history and the then-pending claims.” Mass. Inst. of Tech. v.
Shire Pharm., Inc., 839 F.3d 1111, 1120 (Fed. Cir. 2016). We have
reviewed the entire prosecution history and find nothing therein that could
be reasonably considered a clear and unmistakable disclaimer.19 The

19 The Patent Owner’s Response states, “The Prosecution History
demonstrates that ‘virtual library’ was the key limitation focused on during
prosecution.” PO Resp. 17 (citing (again) Ex. 1002, 124, 125, 151, 153). A
review of the entire prosecution contradicts this statement. The Applicant
did not appeal from the BPAI’s decision affirming the rejection but
continued to prosecute the application while abandoning its arguments based
on the “virtual library” limitation. In its first submission after the appeal,
Applicant filed a Request for Continued Examination (“RCE”), amended the
claims, and presented arguments that did not rely on the “virtual library”
limitation. Ex. 1002, 379–392. Thereafter, the application was repeatedly
rejected (see id. at 402–414, 433–448, 477–491, 514–520, 539–545) and
Applicant submitted five more amendments to the claims (see id. at 418–
427, 455–464, 469–476, 498–510, 525–535, 548–555). Thus, the scope of
the claimed invention was substantially narrowed in order to gain allowance
after “virtual library” was added to the independent claims. And, Applicant
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intrinsic evidence contradicts, rather than supports, Patent Owner’s proposed
construction.
Patent Owner also argues that its proposed construction is supported
by the extrinsic evidence20 of the Pazzani Declaration (Ex. 2001). PO
Resp. 22–23 (citing Ex. 2001 ¶¶54, 77); see also PO Sur-reply 4, 9–10.
Compared to the strong intrinsic evidence21 contradicting Patent Owner’s
proposed construction, we find the cited paragraphs of the Pazzani
Declaration to be unpersuasive. Most importantly, the Pazzani Declaration
never endorses Patent Owner’s proposed construction as the proper
construction of “virtual library” and provides no analysis or evidence that
supports Patent Owner’s proposed construction. Indeed, Patent Owner’s
proposed construction is nowhere found in the Pazzani Declaration. In cited
paragraph 54, Dr. Pazzani does not provide any proposed construction or
explain or suggest any reason for adopting the multi-part construction
proposed by Patent Owner. Ex. 2001, 15–20. Paragraph 54 of the Pazzani
Declaration (Ex. 2001) states:
Petitioner fails to provide any proposed construction for
the term “virtual library,” which appears in all challenged claims.
It is apparent, however, that Petitioner’s arguments throughout

never argued after losing before the BPAI that the invention could be
distinguished based upon the “virtual library” element. See id. In the
Applicant’s submission before allowance, Applicant did not refer to “virtual
library” in its Remarks. Id. at 548–555. The Examiner made no specific
reference to “virtual library” in allowing the claims. See id. at 559–565.
20 The Patent Owner’s Response states, “a court should not rely upon
[extrinsic] evidence to interpret the claim terms where their meaning is clear
from the intrinsic sources.” PO Resp. 6.
21 The Patent Owner’s Response states, “When it is necessary to construe a
claim, intrinsic evidence is typically ‘the single best guide to the meaning of
a disputed term.’” PO Resp. 5 (citing Phillips, 413 F.3d at 1315, and
Vitrionics Corp. v, Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
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its Petition misapprehend the term “virtual library,” and fail to
account for the fact that a “virtual library” of the ‘680 patent
includes the ability to browse multiple types of media within the
same system.

This paragraph consists entirely of criticism of Petitioner’s purported failure
to properly construe “virtual library” but contains no proposed construction.
Cited paragraph 77 of the Pazzani Declaration (Ex. 2001) also contains
criticism of Petitioner’s argument relating to the prior art reference Easty
but, like paragraph 54, contains no proposed construction of “virtual
library.” Thus, even considering the extrinsic evidence of the Pazzani
Declaration, we determine that Patent Owner’s proposed construction is not
supported.
For these reasons, we reject Patent Owner’s proposed construction of
“virtual library” and, instead, give “virtual library” its plain and ordinary
meaning. The term “virtual library” is broad and Patent Owner has not
shown why it should be limited. Accordingly, in the context of the claims of
the ’680 patent, we determine that a “virtual library” is a representation of an
organized collection of one or more types of information or content. See
Pet. Reply 3 (“Consistent with the plain meaning of ‘virtual’ (digital, not in
physical form) and ‘library’ (organized collection of information or content),
it is a metaphor for an organized collection of content not physically
existing, but made by software to appear so.”); Ex. 1022, 92:4–12; Ex. 1021
¶¶ 5–8. The information or content represented in a virtual library can be of
a single media type, such as books or movies or television programs or
music, or can be of more than one media type. Ex. 1001, 3:10–22; Ex. 2021
¶ 8. The information or content can be from a single source such as the
Internet, a broadcast television signal, a radio signal, or a cable signal. Id.
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D. Petitioner’s Motion to Strike
Petitioner filed a Motion to Strike directed to Exhibits 2009–2017 and
portions of the Sur-reply. Paper 22. Patent Owner filed an Opposition.
Paper 24.
In considering the Motion to Strike, it has been necessary for us to
analyze the evidence and arguments that Petitioner moves to strike and to
consider how this evidence and these arguments relate to the other evidence
and arguments submitted in this proceeding. We conclude, based on the
quality and weight of all the evidence and arguments submitted in this
proceeding, that Petitioner prevails as to unpatentability of the challenged
independent claims and as to the specific issues to which the evidence and
arguments sought to be struck relate. And, we determine that the evidence
and arguments which are the subject of the Motion to Strike are entitled to
much less weight than the evidence provided by the cited art, particularly the
teachings of Easty and Hendricks as they relate to the patentability of the
challenged claims of the ’680 patent. Stated differently, the evidence and
arguments that are the subject of the Motion to Strike, regardless of whether
they are considered on the merits, do not change any of our factual findings
or legal conclusions, or otherwise affect the outcome of this proceeding.
Accordingly, we deny the Motion to Strike.
E. Grounds Based on Easty and Hendricks
Petitioner contends that claims 1, 4, 8, 10–13, and 16–18 of the ’680
patent would have been obvious in view of Easty and Hendricks. Pet. 7, 10–
59. Patent Owner argues that this combination of references fails to teach a
“virtual library.” PO Resp. 27–43. Patent Owner also argues that the
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limitation recited in dependent claim 1022 is not taught by the cited art. Id.
at 38–40. Based on the detailed analysis set forth below, we conclude that
Petitioner has shown by a preponderance of the evidence that claims 1, 4, 8,
12, 13, and 16–18 would have been obvious, but has not shown claim 10
would have been obvious.
1. Easty
Easty was filed on April 3, 1998. Ex. 1004, code (22). The earliest
priority date claimed for the ’680 patent is based on its filing date of
September 30, 1999. Ex. 1001, code (22). Therefore, Easty is prior art to
the ’680 patent under 35 U.S.C. § 102(e). Patent Owner does not contest the
prior art status of Easty. See generally PO Resp.
Easty is titled, “Dynamic Digital Asset Management.” Ex. 1004,
code (54). Easty is directed to a “[m]ethod and apparatus . . . utilized in a
system for distributing digital contents from a central server to a plurality of
endpoint servers for further distribution to end users for automatically
managing the digital assets of the endpoint servers.” Id., code (57)
(Abstract). Easty relates to “dynamically managing the digital assets of the
endpoint servers based on aggregate profile information reflecting the
preferences of the user population served by the endpoint server.” Id. at
1:7–10.
2. Hendricks
Hendricks was filed on December 2, 1993, and issued on August 25,
1998. Ex. 1005, codes (22), (45). The earliest priority date claimed for the
’680 patent is based on its filing date of September 30, 1999. Ex. 1001,

22 Claim 10 recites, “The method as in claim 1 further comprising storing
results of the searching step as media collections in the unified space for
browsing by the user.” Ex. 1001, 11:29–31.
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code (22). Therefore, Hendricks is prior art to the ’680 patent under 35
U.S.C. § 102(b) and (e). Patent Owner does not contest the prior art status
of Hendricks. See generally PO Resp.
Hendricks is titled, “Terminal for Suggesting Programs Offered on a
Television Program Delivery System.” Ex. 1005, code (54). It is directed to
“[a] set top terminal . . . which suggests programs for viewing.” Id.,
code (57) (Abstract). “The terminal is capable of applying several methods
of analysis and a variety of informational sources to solve the problem of
choosing a program that the subscriber is most likely to watch.” Id. at 2:65–
3:1. The analysis may use “mood, personal profile, and historical program
watched and network watched data.” Id. at 3:3–4. “A menu display of the
suggested programs is offered to the subscriber. Within the suggested group
of programs, the terminal can also prioritize the programs and determine
each programs menu position.” Id. at 3:22–26.
3. Independent Claims 1, 11, and 16
Claim 1
“A method operable in a computer-enabled apparatus, said method
comprising:”
Petitioner relies on Easty as teaching the preamble of claim 1. Pet. 13
(“To the extent it is limiting, Easty teaches, or at least renders obvious, the
preamble.”). Cf. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336,
1346 (Fed. Cir. 2002) (“Generally, the preamble does not limit the claims.”).
Easty states, “[e]ach end user may be a personal computer (PC), a network
computer, a set-top box for a television set or other types of computers or
devices connected to a communications network.” Ex. 1004, 2:32–35.
Patent Owner does not take a position as to whether the preamble is limiting.
See generally PO Resp. Regardless of whether the preamble is limiting,
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Petitioner has shown that the recitation in the preamble is satisfied by the
prior art.

“establishing a user profile for a user based on various interests of
the user;”
Petitioner relies on Easty as teaching this limitation. Pet. 14–15.
Easty states:
The endpoint server 13 also includes an agenting
Section 13a which cooperates with a client agenting Section 16a
of the client software 16 on a user's PC to act as a “personal
assistant” for the user. The assistant may, for example,
recommend contents to the user based on a user profile which
reflects the user's habits and preferences, and allow a user to
submit feedback information to the server, such as the user's
rating of the delivered contents. The user profile is generated
and continuously updated based on user information acquired
by the agenting Section 13a.

Ex. 1004, 4:14–24 (emphasis added). Patent Owner does not argue this
limitation. See generally PO Resp. We find Easty teaches this limitation.

“establishing a virtual unified space including a virtual library on the
computer-enabled apparatus;”
Petitioner relies on Easty alone and, in the alternative, the
combination of Easty and Hendricks as teaching this limitation. Pet. 15–20.
Petitioner contends, “[w]hile Easty alone renders this limitation obvious,
Easty in view of Hendricks also renders this limitation obvious to the extent
that this term requires that a graphical interface (i.e., virtual unified space)
display the virtual library contents according to categories.” Id. at 16.
Easty states, “[e]ach end user 16 may be a programmed computer
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such as a personal computer (PC), a network computer, or the like running
client software.” Ex. 1004, 3:42–45. “Preferably, the client provides a
variety of interfacing capabilities, including video on demand, music
download, agenting, electronic commerce, video conferencing and so on.”
Id. at 3:60–63.
Figure 8 of Hendricks is reproduced below.

Figure 8 depicts “an example of one possible structure for a series of
menus.” Ex. 1005, 16:27–28. “[T]he sequence of menus is structured with
an introductory menu, a home menu, various major menus and a multitude
of submenus.” Id. at 16:28–30. Hendricks also depicts the display of
menus. Figures 12a and 12b of Hendricks are reproduced below.
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Figures 12a and 12b depict “broadcast television menu[s] and submenu[s].”
Id. at 4:20–21.
With regard to combining these teachings of Easty and Hendricks, the
Petition states:
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A PHOSITA [person having ordinary skill in the art]
would have been motivated to use a category-based media
browsing and searching interface, as in Hendricks, for
implementing the graphical user interface in Easty. Easty
teaches a recommender system for various types of media
(movies, videos, television, music) and various genres (e.g.,
rock, jazz, history, the Civil War, etc.); therefore, a PHOSITA
would have appreciated that Hendricks’ category-based interface
would have been a user-friendly means to browse and search
recommended content by category in Easty. See Terveen Decl.
(Ex. 1003) at ¶¶52–53; see also Hendricks (Ex. 1005), at
Abstract (Hendricks provides a “user friendly menu based
approach” to accessing media content); see also id. at 6:30–34,
25:10–17, 26:2–3. A PHOSITA would have appreciated that
such well-known category-based browsing would have enhanced
the user’s ability to view recommended content in Easty by
allowing the user to navigate categories of content. See Terveen
Decl. (Ex. 1003) at ¶¶52–53. Further, a PHOSITA would have
had a reasonable expectation of success in implementing
Hendricks’s interface in Easty’s system, as Easty and Hendricks
both categorize media content, both make personalized media
content recommendations using these categories, and both teach
similar end-user devices (Easty’s client device can be a “set-top
type of device”/“set-top box” that is compatible with “a variety
of interfacing capabilities” such as “video on demand” and
“music download,” and Hendricks’s interface is designed for a
“set top terminal” with a conventional cable TV system). Id. at
¶52; see also Easty (Ex. 1004) at 2:25–35, 3:50–4:7; Hendricks
(Ex. 1005) at 4:61–5:16, 9:21–34, 13:34–42. Therefore,
establishing a virtual unified space including a virtual library on
a computer-enabled apparatus would have been obvious over the
combination of Easty’s integrated recommender system in view
of the menu-driven graphical interface of Hendricks.

Pet. 19–20. Petitioner’s reasoning with regard to combining the teachings of
Easty and Hendricks that are relevant to this limitation is reasonable and
well-supported. Based on Petitioner’s showing, we find a motivation to
combine the cited teachings existed because using the category-based media
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browsing and searching interface of Hendricks to view the recommended
content in the system of Easty would have enhanced the user’s ability to
view the recommended content.
Patent Owner does not dispute Petitioner’s articulated reasons to
combine the teachings of Easty and Hendricks. Instead, Patent Owner
argues that “claims 1, 4, 8, 10-13, and 16–18 are not obvious in light of
Easty in view of Hendricks when applying the correct construction of
‘virtual library.’” PO Resp. 3, 27–37; see also PO Sur-reply 10–16.
However, Patent Owner’s arguments are based on its proposed construction
of “virtual library” which, as stated above (see Section II.C.), we have not
adopted because it lacks support and is too restrictive. Based on the plain
and ordinary meaning of “virtual library,” and the evidence cited by
Petitioner, we find that Easty, and the combination of Easty and Hendricks,
teaches the subject matter of this limitation, and that Petitioner has presented
adequate reasoning to support the proposed combination.

“populating the virtual library with a plurality of different virtual
media collections in accordance with the user profile, wherein the plurality
of the different virtual media collections includes information obtained
directly from at least a broadcasted television signal; and”
Petitioner relies on Easty as teaching this limitation. Pet. 20–23.
Easty states, “[t]he categories of contents that may be delivered through this
distribution system may include movies, videos, television programs, music,
music videos, concerts, books, style, software, games, travel and the like.”
Ex. 1004, 2:11–16 (emphasis added). The distribution system sources may
include the “headend of a cable company” connected through a “cable
network” to end users which may be a “set-top box for a television set.” Id.
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at 2:18–34. Easty teaches calculating user profiles. Id. at 4:50–65. Easty
states:
The agenting section 13a generates an affinity profile of a
user by weighing and correlating the intrinsic parameters of the
contents and the activity information obtained from the user. The
affinity profile therefore reflects the individual user's
preferences. The agenting section 13a may also compare the
profiles of individual users against those of other users served by
the same server to identify users with similar demographics or
preferences.

Id. at 4:58–65. Except for disputing that the cited art does not teach a
“virtual library,” Patent Owner does not argue this limitation. See generally
PO Resp. As discussed above, we are not persuaded by Patent Owner’s
arguments with respect to Petitioner’s showing of a “virtual library.” We
find Easty teaches this limitation.

“browsing the virtual library by moving between the plurality of
different media collections under user control;”
Petitioner relies on a combination of the teachings of Easty and
Hendricks for this limitation. Pet. 23. Petitioner also contends, “[t]he
specification of the ’680 Patent confirms that media browsing systems were
already known in the art.” Id. (citing Ex. 1001, 1:13–15 (“Web browsers
and electronic program guides permit a user to browse various information
sources such as Web sites, television program listings, and music
collections.”)).
Easty states, “[t]he client provides a variety of interfacing capabilities,
including video on demand, music download, agenting, electronic
commerce, video conferencing and so on.” Ex. 1004, 3:60–62. Petitioner
contends, “[t]his would have prompted a PHOSITA to look to user-friendly
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interfaces for browsing media from different categories, such as that of
Hendricks.” Pet. 24. Hendricks teaches “Menu-Driven Program Selection.”
Ex. 1005, 11:23 et seq. Hendricks states: “[t]he menu-driven scheme
provides the subscriber with one-step access to all major menus, ranging
from hit movies to sport specials to specialty programs. From any of the
major menus, the subscriber can in turn access submenus and minor menus
by cursor or alpha-character access.” Id. at 11:24–28.
With regard to combining these teachings of Easty and Hendricks, the
Petition states:
A PHOSITA would have been motivated to incorporate
Hendricks’ ability to move between different categories of media
in Easty’s system at least because both teach systems with similar
goals—distributing and recommending relevant media content to
users based on user profiles. See supra at 1[a]; see also, e.g.,
Hendricks (Ex. 1005) at 33:58–34:19 (describing the “personal
profile” of a user). Further, like Hendricks, Easty teaches that
the client may be implemented using a cable set-top box device.
See Easty (Ex. 1004) at 2:32–35, 3:50–53, 3:64–4:7; compare
with Hendricks (Ex. 1005) at 13:34–42. Additionally, both Easty
and Hendricks teach organizing media by program genre and/or
type. See Easty (Ex. 1004) at 2:10–15 (“categories of contents
that may be delivered through this distribution system may
include movies, videos, television, music . . .”), 4:53–57 (type,
genre), 7:59–60 (“the contents may be categorized according to
the type of programming or other criteria”); see also Hendricks
(Ex. 1005) at Fig. 8; 4:58–59. A PHOSITA would have
recognized that the browsing capabilities of Hendricks would
better allow a user to navigate their recommended content and
would have had a reasonable expectation of success in
implementing such concepts into the system of Easty given all of
these technical and functional similarities. See Terveen Decl.
(Ex. 1003) at ¶¶52–53. Such changes would have only required
minor software modifications and yielded predictable results
related to refining a user’s search and browsing content in an
organized fashion, because of the similarities of the systems and
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given the well-known nature of category-based media browsing
systems. See id.; see also Hendricks (Ex. 1005) at 11:59–60.
Therefore, this limitation is obvious over the combination of
Easty and Hendricks.

Pet. 24–25. Petitioner’s rationale for combining the teachings of Easty and
Hendricks that are relevant to this limitation is reasonable and well-
supported by sufficient rational underpinning. Based on Petitioner’s
showing, we find that a motivation to combine the cited teachings existed
because implementing the browsing capabilities of Hendricks into the
system of Easty would better allow a user to navigate the recommended
content. Except for disputing that the cited art does not teach a “virtual
library,” Patent Owner does not argue this limitation. See generally PO
Resp. We find that the combination of Easty and Hendricks teaches the
subject matter of this limitation, and that Petitioner has presented adequate
reasoning to support the proposed combination.

“searching the virtual unified space with a search engine under user
control”
Petitioner relies on a combination of the teachings of Easty and
Hendricks for this limitation. Pet. 25. Petitioner also contends, “[t]he
specification of the ’680 Patent confirms, search engines enabling users to
search media were already well-known.” Id. (citing Ex. 1001, 1:29–32 (“For
example, a person may use a web browser to access a search engine to
obtain a list of recommended Web sites based on the person’s historical
browsing activities.”)).
With regard to Easty, Petitioner contends, “Easty teaches that users
may view available media collections in the user interface (i.e., the virtual
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unified space) and submit requests for content, but it does not explicitly
disclose specific details regarding the interface or how users submit these
requests.” Pet. 26 (citing Ex. 1004, 2:36–40, 3:2–6, 3:54–63). With regard
to Hendricks, Petitioner contends, “Hendricks, however, goes into such
detail. Hendricks teaches searching collections of media content with a
search engine, such as by allowing a user to search an actor’s name or
performing a Boolean search based on a user’s selections.” Id. (citing
Ex. 1005, 32:24–26 (“Any typical search tool can be used to search the
program abstract database. For example, a Boolean search can be used to
search the database.”)).
With regard to motivation to combine these teachings, the Petition
states:
A PHOSITA would have been motivated to incorporate
Hendricks’ teachings of performing a Boolean search or a text-
type search for an actor in Easty because these were “typical”
methods of generating desired content. See id. at 32:20–32; see
also Terveen Decl. (Ex. 1003) at ¶¶28, 54. And, indeed, Boolean
search systems, including for multimedia, were well known in
the art long before the ’680 Patent. Terveen Decl. (Ex. 1003) at
¶54. Further, given that Easty expressly teaches that known
interfacing capabilities such as those for “video on demand,”
“music download,” and “electronic commerce” could be
provided in Easty’s client (Easty (Ex. 1004) at 3:60–63), a
PHOSITA would have appreciated that Easty contemplated
using a search engine in submitting requests for media content,
because user searches for content were commonplace in digital
content distribution systems by 1999, and a PHOSITA would
have appreciated that search capabilities would have made
Easty’s system more user-friendly. See Terveen Decl. (Ex. 1003)
at ¶54. Such a combination would have required the
incorporation of well-known techniques into an existing prior art
system and would have yielded predictable results related to
more user-friendly browsing. Id. Given the commonplace
nature of search-enabled content databases and the similarities
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noted between Hendricks and Easty, a PHOSITA would have
had a reasonable expectation of success in making this
combination. Id.

Pet. 26–27. Petitioner’s reasoning with regard to combining the teachings of
Easty and Hendricks that are relevant to this limitation is reasonable and
well-supported. Based on Petitioner’s showing, we find that a motivation to
combine the search technology teachings of Hendricks into the system of
Easty would have made the system more user-friendly. Patent Owner does
not argue this limitation. See generally PO Resp. We find the combination
of Easty and Hendricks teaches the subject matter of this limitation, and that
Petitioner has presented adequate reasoning to support the proposed
combination.

“filtering the results of the searching step in accordance with the user
profile and the browsing step, wherein said filtering comprises explicit and
implicit filtering, wherein said explicit filtering provides filtering of from
[sic] information from said plurality of different media collections and said
implicit filtering draws from collaborative data among said plurality of
different media collections and similar user profiles;”
Petitioner relies on a combination of the teachings of Easty and
Hendricks for this limitation. Pet. 27. Petitioner also relies on statements in
the Specification of the ’680 patent as to existing knowledge. Id. (citing
Ex. 1001, 8:22–25 (“Suitable algorithms and software for performing data
collection and filtering and for maintaining databases [such as the adaptive
user profile database 328 and the collaborative filtering database 316] is well
known to [persons of ordinary skill in the art].”)). And, Petitioner contends
the ’680 Patent confirms “that filtering search results of websites, movies,
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and television programs based on a user’s profile was also well-known.” Id.
(citing Ex. 1001, 1:26–37 (“Tools used for searching Web sites have been
improved by including a capability of generating recommendations based on
a profile of the user’s interests, as have tools for viewing television and tools
for listening to music.”)). Petitioner further points out that during
prosecution of the application for the ’680 patent, “the Examiner found that
implicit filtering using collaborative data was also a ‘known technique’ in
the field of recommender systems.” Id. at 27–28 (citing Ex. 1002 at 482,
488, 490 (“Using the known technique of implicit filtering which draws
from collaborative data to provide improved search results . . . would have
been obvious to one of ordinary skill in the art.”)).
With regard to Easty, Petitioner contends, “Easty teaches explicit
filtering because the user profile is updated based on a user’s content ratings
as well as answers to demographic questions” (id. at 28 (citing Ex. 1004,
2:40–43, 4:22–28, 4:33–34, 4:50–63)) and “Easty teaches implicit filtering
because the user profile is updated based on user ‘activities’ such as
‘contents requested, contents purchased, date and time of each request, [and]
actual playing time of requested content,’ called ‘affinity information’” (id.
(citing Ex. 1004, 4:27–35, 4:58–61)). And, Petitioner argues, “[w]hile Easty
does not expressly teach filtering results of a searching step or in accordance
with a browsing step, this would have been obvious over Easty in light of
Hendricks.” Id.
With regard to Hendricks, Petitioner contends, “Hendricks teaches
‘intelligent methods’ (i.e., implicit filtering) for suggesting content as a
viewer browses menus and submenus, where the contents are based on the
subscribers’ behavioral patterns (i.e., implicit filtering) and via ‘responsive
methods’ (i.e., explicit filtering), such as the subscriber’s explicit menu
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selections regarding preferred content or inquiries about the particular
subscriber.” Id. at 28–29 (citing Ex. 1005, 29:1–56, 34:1–3). Petitioner also
contends, “Hendricks further teaches filtering of results of the searching step
in accordance with the browsing step and the user profile.” Id. at 29 (citing
Ex. 1005, 32:54–33:4 (“The weight a program is assigned could be based on
either most watched program information, favorite channel, or personal
profile as described below.”)). And, Petitioner states, “Hendricks also
teaches filtering the results of a user’s browsing and search in accordance
with a personal profile.” Id. at 30 (citing 32:54–62 (“searching program
abstract databases can be combined with the other methods described below,
including viewer profile data and most often watched information”)).
With regard to the motivation for combining these teachings of Easty
and Hendricks, the Petition states:
[A] PHOSITA would have been motivated to implement
Hendricks’s browsing and searching in Easty’s user interface.
See supra claims 1[c]–1[d]. For the same reasons, a PHOSITA
would have been motivated to combine Hendricks’ filtering
concepts with Easty to perform implicit and explicit filtering of
search results to refine the results in accordance with the user’s
profile and their browsing selections. See Terveen Decl.
(Ex. 1003) at ¶¶55–56. This would have further enhanced the
user’s ability to locate desired media by allowing refining of
search results in a flexible manner and thus would have
predictably enhanced user-friendliness. Id. Further, given the
similarities in Hendricks and Easty discussed and that Easty
already uses implicit and explicit filtering to recommend content,
it would have required only minor modifications in software to
implement filtering to refine search results in accordance with
the user profile and the user’s browsing by categories. Because
these browsing, filtering, and searching concepts were already
prevalent in search-engine systems, a PHOSITA would have had
a reasonable expectation of success in modifying Easty so as to
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achieve the predictable result of enhancing the quality of search
results. Id. at ¶¶55–56, 54, 28.

Id. at 30–31. Petitioner’s reasoning with regard to combining the teachings
of Easty and Hendricks that are relevant to this limitation is reasonable and
well-supported. Based on Petitioner’s showing, we find that a motivation to
combine the teachings of Hendricks relating to filtering concepts into the
system of Easty would have existed, because the combination would have
enhanced user-friendliness. Patent Owner does not argue this limitation.
See generally PO Resp. We find the combination of Easty and Hendricks
teaches the subject matter of this limitation, and that Petitioner has presented
adequate reasoning to support the proposed combination.

“prioritizing results of said filtering step”
Petitioner relies on Hendricks as teaching this limitation. Pet. 33–34
(citing Ex. 1005, 33:7–13 (“Those programs suggested from the program
abstract search can then be prioritized . . .”) (emphasis omitted), 36:25–29
(“The matching algorithm involves . . . determining priority of desired
programs.”).
With regard to combining these teachings from Hendricks with the
relevant teachings of Easty, the Petition states:
[I]t would have been obvious to incorporate Hendricks’
teachings of providing a search engine into the system taught by
Easty. Further, a PHOSITA would have been motivated to list
the results of the system of Easty according to an order of
priority, as taught by Hendricks. A PHOSITA would have
recognized that some prioritization is necessary, as presenting
results in a random order would defeat the purpose of filtering
results and recommending relevant results to a user. See Terveen
Decl. (Ex. 1003) at ¶57. There were many different algorithms
known in the art for presenting results in some predetermined
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order, and positioning the “best” (i.e., highest-priority) results at
the top was a known, user-friendly practice in the art. Id.
Implementing Hendricks’s teachings therefore would have
required only minor software modifications to the system in
Easty and would have yielded the predictable result of presenting
search results to provide the most relevant results first. Id. Such
modifications would have been met with a reasonable
expectation of success, given the conventional nature of
prioritizing recommendation results in the art. Id.

Pet. 33–34. Petitioner’s reasoning with regard to combining the teachings of
Easty and Hendricks that are relevant to this limitation is reasonable and
well-supported. Based on Petitioner’s showing, we find that a motivation to
combine the cited teachings existed because failure to prioritize the filtered
results would defeat the purpose of filtering. Patent Owner does not argue
this limitation. See generally PO Resp. We find the combination of Easty
and Hendricks teaches the subject matter of this limitation, and that
Petitioner has presented adequate reasoning to support the proposed
combination.

“updating the user profile in accordance with at least one selection of
the results of the filtering step, wherein said updating is reflected in a ratio
in responding to said user’s current programming choice or specific
requests.”
Petitioner relies on a combination of the teachings of Easty and
Hendricks for this limitation. Pet. 34. With regard to Easty, the Petition
states, “Easty teaches or at least renders obvious, updating the user profile in
accordance with at least one selection of the results of the filtering step in
that the selection of a recommended media item results in the user profile
being updated.” Id. (citing Ex. 1004, 4:22–31, 4:66–5:3, 7:8–15). In the
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first cited passage, Easty teaches, “[t]he user profile is generated and
continuously updated based on user information acquired by the agenting
section 13a . . . user information may be acquired from the information
transmitted by the client relating to the user’s activities, such as [the] . . .
contents requested.” Ex. 1004, 4:22–31. (emphasis omitted). Petitioner also
argues:
Easty does not explicitly teach that updating is “reflected
in a ratio” used in responding to the user’s current programming
choice or specific requests. However, Easty provides an express
motivation to “weigh[]” and “correlate” the category attributes
of content (e.g., media type, genre, etc.) with the user’s activity
(contents requests, purchases) to store an affinity profile of
preferences for those categories. Easty (Ex. 1004) at 4:57–62,
4:28–36. This would have motivated a PHOSITA to review
known weighting methods for updating user profiles in
recommender systems, such as that used by Hendricks and
discussed below. See Terveen Decl. (Ex. 1003) at ¶60.

Pet. 35.
With regard to Hendricks, Petitioner argues, “[l]ike Easty, Hendricks
teaches updating a personal profile (i.e., a user profile) based on a learning a
user’s habits.” Id. (citing Ex. 1005, 35:9–18 (“A subscriber’s viewing habits
may be ‘learned’ by maintaining historical data on the subscriber and
analyzing this data.”) (emphasis omitted), 35:42–44). Petitioner points to
teachings in Hendricks related to using weights to update a user’s personal
profile. Id. at 36 (citing Ex. 1005, 36:1–12). With regard to teaching the use
of a ratio, Petitioner argues:
A PHOSITA would have recognized that the “weights” in
Hendricks reflect a ratio used in deciding how often to
recommend a certain category of content as compared to the
other categories of content, just like described by the ’680 Patent.
See Terveen Decl. (Ex. 1003) at ¶59; see also ’680 Patent
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(Ex. 1001) at 6:65–7:2 (“For example, if advertising information
rather than reference material is usually selected, the adaptive
user profile database reflects the user’s behavior in a ratio and
uses the ratio in responding to the user’s current programming
choice or specific requests.”). Indeed, the preliminary mood and
profile weights add to 100, indicating that these are percentages,
or ratios per 100. See Terveen Decl. (Ex. 1003) at ¶38 (citing
Schield (Ex. 1018)). Further, the weight of 40 for sports and the
weight of 20 for comedy, for example, would reflect a 40:20 (or
2:1) ratio reflecting that sports content should be recommended
twice as often as comedy. Id. at ¶¶58-60.

Id. at 36–37.
With regard to the motivation to combine these teachings of Easty and
Hendricks, the Petition states:
A PHOSITA would have been motivated to incorporate
Hendricks’ technique of using a weights system to update a user
profile into the system of Easty. First, Easty provides an express
motivation to use “weighing” of the categories of media content
determined from user interactions with those categories of
content, which would have prompted a PHOSITA to look to
known methods of assigning weights in a recommender system,
such as the percentage-based weights taught by Hendricks. See
Terveen Decl. (Ex. 1003) at ¶60 (citing Easty (Ex. 1004) at 4:57–
62, 4:28–36). Second, Easty does not provide specifics on its
weights used, so a PHOSITA would have looked to known ways
of doing so, including Hendricks’s simple percentage-based
category weighting system. See id. Third, a PHOSITA would
have appreciated that this would have provided a
computationally inexpensive way to update the user profile in
Easty to provide better recommendations of Easty’s categories of
content; for example, if a user begins to watch sports 10% more
and drama 10% less than previously, adjusting these category
weights in the profile would be straightforward. Id. Fourth,
given the similarities between Easty and Hendricks, this
combination would have simply required the incorporation of
known techniques into similar prior art and would have required
only minor software modifications to the mathematical
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computations performed to update user profiles in Easty. Id.
Performing percentage weight-related computations in the
manner taught by Hendricks would have been a natural step for
Easty, which already teaches weighing among categories and
allocating percentages to categories of content to maintain in
endpoint servers. Id.; see also Easty (Ex. 1004) at 7:59–65.
Therefore, modifying Easty to allocate weights to categories and
thereby reflect a ratio in updating the user profile, as taught by
Hendricks, would have been obvious to a PHOSITA. See
Terveen Decl. (Ex. 1003) at ¶60.

Id. at 37–38. Petitioner’s reasoning with regard to combining the teachings
of Easty and Hendricks that are relevant to this limitation is reasonable and
well-supported. Based on Petitioner’s showing, we find that a motivation to
combine the technique of using weights from Hendricks into the system of
Easty would have improved the recommendations of the system. Patent
Owner does not argue this limitation. See generally PO Resp. We find
Easty and Hendricks teach the subject matter of this limitation, and that
Petitioner has presented adequate reasoning to support the proposed
combination.
We find that Petitioner’s showing that claim 1 of the ’680 patent
would have been obvious in light of Easty and Hendricks to be well-
supported and sound. Petitioner has shown by a preponderance of the
evidence that all the limitations of claim 1 are taught by the cited art and that
a skilled artisan would have had motivations to combine the relevant
teachings. In contrast, we find Patent Owner’s arguments regarding claim 1
to lack merit and to be unsupported. Thus, the weight and quality of the
arguments and evidence presented by the parties greatly favor the positions
taken by Petitioner. We conclude that claim 1 of the ’680 patent would have
been obvious in view of the combination of Easty and Hendricks.
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Claim 11
Although claim 1 is directed to a method and claim 11 is directed to
an apparatus, these two independent claims contain many similar limitations.
Petitioner relies heavily on its showing with regard to claim 1 in presenting
its arguments and evidence as to claim 11. See Pet. 44–53. Patent Owner
relies on its argument that the cited art fails to teach a “virtual library” and
presents no specific argument related to claim 11. See PO Resp. 41 (“For
the reasons set forth above, neither Easty nor Hendricks teach the virtual
library of claim 11.”). Accordingly, we rely on our analysis of claim 1 in
our analysis of claim 11, particularly as it relates to combining the relevant
teachings of the cited references. We conclude that claim 11 of the ’680
patent would have been obvious in view of the combination of Easty and
Hendricks.

“A receiver apparatus for obtaining content from multiple
information sources for viewing by a viewer, comprising:”
With regard to the preamble of claim 11, the Petition states:

To the extent the preamble is limiting, Easty teaches it.
Easty discloses a digital content delivery system including an
endpoint server and end user computer (collectively, a receiver
apparatus) that obtains media content for viewing by a viewer.
See Easty (Ex. 1004) at 3:44–48 (“The computer typically
includes . . . display devices such as a video display, an audio
display or the like . . . .); see also supra, Sec. IV.A.i (Claim 1),
IV.A.iv (Claim 10). Further, Easty teaches that its system
integrates content delivery of a variety of media types from
multiple entertainment services (i.e., multiple information
sources) into a single service. Id. at 2:6–17, 4:50–65, 5:3–13.

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Pet. 44. We have reviewed and considered the passages in Easty that
Petitioner cites and, based on this unopposed showing, we find that Easty
teaches all the elements of the preamble of claim 11. Regardless of whether
the preamble is limiting, Petitioner has shown that the recitation in the
preamble is satisfied by the prior art.

“an input/output (‘I/O’) controller including an Internet
connection input, a video output, and a selector input;”

Petitioner relies on Easty as teaching this limitation. See Pet. 45–46.
As cited by Petitioner (id. at 45), Easty teaches that an “end user” may be a
“personal computer (PC)” with “display devices such as a video display”
and “input devices such as a mouse, a keyboard or the like.” Ex. 1004,
3:43–49. And Easty teaches, “The computer may be connected to the
network via a cable modem, a telephone modem, a satellite dish or the like”
(id. at 3:49–50) and “the subscriber may dial up a local service such as an
Internet service provider (ISP) over a standard analog modem” (id. at 1:59–
61). We find that Easty teaches the elements of this limitation.

“an adaptive user profile database;”

Petitioner contends that both Easty and Hendricks individually and, in
combination, teach “an adaptive user profile database.” Pet. 45–47.
Petitioner contends Easty teaches “user profiles are stored and updated in
real-time in a database at the endpoint server” and that Hendricks teaches
that “the user profile is stored locally at a set-top terminal” (i.e., at the
“receiver apparatus” as recited in claim 11). See id. at 46.
Petitioner cites the following passage (id. at 46) in Easty as teaching
an “adaptive user profile database:” “The user profiles are stored at the
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endpoint server 13, and are continuously updated in real time. In other
words, each time a request is received from a client, the agenting section 13a
parses the new information, recalculates the correlations and updates the
user profiles stored in the database.” Ex. 1004, 4:65–5:3. We find that
Easty teaches an “adaptive user profile database.”
Petitioner cites the following passage (Pet. 46) in Hendricks:
[C]lues as to the subscribers behavioral pattern must be
saved in the set top terminals memory. These clues, such as
programs watched and time periods of television viewing, are
analyzed as necessary to develop a profile of the viewer. Most
of this information is gathered and stored by the set top
terminal 220 unbeknownst to the subscriber.

Ex. 1005, 29:31–37. We find that Hendricks teaches an “adaptive user
profile database.”
With regard to the combination of these teachings of Easty and
Hendricks, the Petition states:
A PHOSITA would have been motivated to combine Hendricks’
teachings on storing user profile information locally with the
Easty’s system (which teaches using a client set-top device) so
that a user device could update the profile with less latency and
while offline. See Terveen Decl. (Ex. 1003) at ¶62. Such would
have required only minor modifications in software, with a
reasonable expectation of success, for storing both a local copy
of the user profile database, in addition to the server copy taught
in Easty; and it would have yielded predictable results related to
storing a user profile. See id. Storing an adaptive user profile
database locally also would have been an obvious and routine
design choice from among a finite number of known options (i.e.,
either storing the user profile locally, remotely, or both), and,
thus, at a minimum, would have been obvious to try. See id. A
PHOSITA would have been motivated to store the adaptive user
profile database locally (in addition to on the server) to allow the
profile database to collect information unavailable remotely,
such as how long the user had played downloaded content
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offline, a stated feature of both Easty. Id.; see also Easty
(Ex. 1004) at 4:47–49. Easty’s aggregate profiling would still be
possible when the user returned online, as it would have been
simple enough to update the server version of the profile with
changes made to the local version. Id. Indeed, Easty describes
the client-side software as already including agenting section 16a
for interfacing with the end server; therefore, a PHOSITA would
have had a reasonable expectation of success in implementing a
local adaptive user profile database on the end user computer in
Easty. See Terveen Decl. (Ex. 1003) at ¶62; see also Easty
(Ex. 1004) at Fig. 1, 4:15–18.

Pet. 46–47. We find that a skilled artisan would have been motivated to
combine the teachings of Easty and Hendricks in the manner suggested by
Petitioner to allow the locally stored adaptive user profile database as taught
by Hendricks “to collect information unavailable remotely, such as how long
the user had played downloaded content offline.” We find that the
combination of Easty and Hendricks teaches an “adaptive user profile
database,” and that Petitioner has presented adequate reasoning to support
the proposed combination.

“a filter coupled to the adaptive user profile database, the
filter being coupled to the I/O controller for filtering information
from the Internet connection input in accordance with the
adaptive user profile database, wherein said filtering comprises
explicit and implicit filtering, wherein said explicit filtering
provides filtering of information from said plurality of different
media collections and said implicit filtering draws from
collaborative data among said plurality of different media
collections and similar user profiles,”

With regard to this limitation, the Petition states:

As discussed regarding Claim 1[f], this limitation is
obvious over the combination of Easty and Hendricks. See
supra, Sec. IV.A.i (Claim 1[f]). Further, Easty teaches that its
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filtering is provided through cooperation between a client
agenting section 16a residing on the client device and a server
agenting section 13a residing on the server. Easty (Ex. 1004) at
4:15–22, Fig. 1. Thus, to the extent the claimed “filter” must be
local to the client, Easty teaches the same. In the alternative, it
would have been obvious over Easty and Hendricks for the filter
to reside on the client with the local copy of the user profile
database for the reasons discussed regarding Claim 11[b]. See
supra Sec. IV.A.v (Claim 11[b]); see also Terveen Decl.
(Ex. 1003) at ¶62. Further, for the reasons it would have been
obvious from Easty’s teachings for the end user device to include
an internet connection input to receive media content, it would
have been obvious to filter the media content received “from the
Internet connection input.” See id.

Pet. 48–49. Petitioner’s showing with regard to this limitation is reasonable
and well-supported. Based upon this unopposed showing, we find that the
combination of Easty and Hendricks teaches the subject matter of this
limitation, and that Petitioner has presented adequate reasoning to support
the proposed combination.

“an output display device configured to display a virtual
unified space including a virtual library transmitted through the
video output;”
With regard to this limitation, the Petition states:

Easty teaches, or renders obvious, the requirement
including an output display device that displays the client user
interface (such as a “video on demand” and “music download”
interface) for receiving recommendations and displaying media
content. See Easty (Ex. 1004) at 3:45–49 (“display devices such
as a video display”); 3:54-63 (user may “view” the received
content in the interface or store it “for display at a later time”). A
PHOSITA would have understood that Easty’s video display
would use a video output. Terveen Decl. (Ex. 1003) at ¶40 n.27.
For the same reasons discussed above, Easty teaches displaying
a virtual unified space including a virtual library. See supra
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Claim 1[b]. Also, for the same reasons discussed above, Easty
in view of Hendricks also renders this limitation obvious. See id.

Pet. 49. Petitioner’s showing with regard to this limitation is reasonable and
well-supported. Based upon this unopposed showing, we find that the
combination of Easty and Hendricks teaches the subject matter of this
limitation, and that Petitioner has presented adequate reasoning to support
the proposed combination.

“a populater that populates the virtual library with virtual
multiple media collections using the filtered information from the
filter;”

With regard to this limitation, the Petition states:

This limitation is obvious over the combination of Easty
and Hendricks. See supra Sec. IV.A.i. (Claims 1[b], 1[c]). As
discussed, Easty teaches this limitation. See id. (Claim 1[c]). As
discussed, Easty teaches that the populating of the virtual library
is done in accordance with the user profile as it filters the media
collections’ contents to recommend to the user. See id. And, as
discussed, Easty in view of Hendricks renders obvious the
claimed “filtering.” See id. (Claims 11[c], 1[f]).

Pet. 50. Petitioner’s showing with regard to this limitation is reasonable and
well-supported. Based upon this unopposed showing, we find that the
combination of Easty and Hendricks teaches the subject matter of this
limitation, and that Petitioner has presented adequate reasoning to support
the proposed combination.

“a browser that browses the virtual library by moving
between multiple media collections in accordance with the
selector input;”

With regard to this limitation, the Petition states:
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Hendricks teaches, or renders obvious, this limitation.
Hendricks teaches browsing the virtual library by moving
between multiple media collections. See supra, Sec. IV.A.i
(Claim 1[d]). Hendricks teaches doing so in accordance with a
selector input, such as buttons on the set-top box or on a remote
control. See Hendricks (Ex. 1005) at 5:47–64; see also id. at
10:64–11:22 (describing remote control), 16:38–41. As
discussed regarding Claim 1[d] it would have been obvious to
incorporate these teachings of Hendricks into the system of
Easty.

Pet. 50–51. Petitioner’s showing with regard to this limitation is reasonable
and well-supported. Based upon this unopposed showing, we find that
Hendricks teaches all the elements of this limitation.

“and a recommender that recommends virtual media in
the virtual multiple media collections in the virtual library to a
user based on a user profile for the user, and”

With regard to this limitation, the Petition states:

Easty teaches, or renders obvious, this limitation. See
supra, Sec. IV.A.i (Claims 1[c], 1[f]). Throughout its disclosure,
Easty teaches an agenting section (i.e., a recommender) that
recommends content from the virtual media collections in the
virtual library based on the user’s profile. Easty (Ex. 1004) at
5:3–7 (“When making content recommendations for an
individual user, the agenting section uses the user’s profile to
recommend contents from the endpoint database 14 that match
the user’s preferences.”). To the extent the recommender must
be local to the client device, Easty teaches client agenting section
16a residing on the client device. See supra, Sec. IV.A.v
(Claim 11[c], citing Easty (Ex. 1004) at 4:15–22, Fig. 1). Further,
it would have been obvious for the recommender to reside on the
client along with the local copy of the user profile database for
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the reasons discussed regarding Claim 11[b]. See supra
Claim 11[b]; see also Terveen Decl. (Ex. 1003) at ¶62.
Further, Hendricks also teaches or renders obvious this
limitation because it teaches that the set-top terminal includes a
memory and microprocessor (together, a recommender) running
a matching algorithm that uses a user’s personal profile to
suggest media content to the user. Hendricks (Ex. 1005) at
33:50–65; see also id. at 2:62–3:4, 29:28–33, 29:55–57.

Pet. 51–52. Petitioner’s showing with regard to this limitation is reasonable
and well-supported. Based upon this unopposed showing, we find that the
combination of Easty and Hendricks teaches the subject matter of this
limitation, and that Petitioner has presented adequate reasoning to support
the proposed combination.

“an updater for updating the user profile based on at least one
selection of the recommended virtual media, wherein said
updating is reflected in a ratio in responding to said user’s
current programming choice or specific requests.”

With regard to this limitation, the Petition states:

Easty teaches, or renders obvious, this limitation. As
discussed regarding Claim 1[h], Easty teaches that the agenting
section (i.e., an updater) continuously updates the user profile
based on the user’s activities, including the user’s selection of
recommended virtual media. See supra, Sec. IV.A.i
(Claim 1[h]). As discussed in 1[h], the concept of the updating
being reflected in a ratio in responding to said user’s current
programming choice or specific requests is obvious over the
combination of Easty and Hendricks. See id.

Pet. 52–53. Petitioner’s showing with regard to this limitation is reasonable
and well-supported. Based upon this unopposed showing, we find that the
combination of Easty and Hendricks teaches the subject matter of this
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limitation, and that Petitioner has presented adequate reasoning to support
the proposed combination.
We find that Petitioner’s showing that claim 11 of the ’680 patent
would have been obvious in light of Easty and Hendricks to be well-
supported and sound. Petitioner has shown that all the limitations of
claim 11 are taught by the cited art and that a skilled artisan would have had
motivations to combine the relevant teachings. We conclude that claim 11
of the ’680 patent would have been obvious in view of the combination of
Easty and Hendricks.

Claim 16
Although claim 1 is directed to a method and claim 16 is directed to a
computer program product, these two independent claims contain many
similar limitations. Here again, Petitioner relies heavily on its showing with
regard to claim 1 in presenting its arguments and evidence as to claim 16.
See Pet. 54–58. Patent Owner relies on its argument that the cited art fails to
teach a “virtual library” and presents no specific argument related to
claim 16. See PO Resp. 42 (“[N]either Easty nor Hendricks teach the virtual
library of claim 16. The Board should, thus, uphold the validity of claim 16
on this basis alone.”). Accordingly, we rely on our analysis of claim 1 in our
analysis of claim 16, particularly as it relates to combining the relevant
teachings of the cited references. We conclude that claim 16 of the ’680
patent would have been obvious in view of the combination of Easty and
Hendricks.

“A computer program product comprising a computer
readable medium having program logic recorded thereon for
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enabling a computer-enabled apparatus to display personalized
information for a user from multiple information sources,
comprising:”

With regard to the preamble of claim 16, the Petition relies on Easty.
Pet. 54–56. Petitioner cites the following two passages (id.) from Easty:
The technological developments also create a demand for
integrated digital content delivery systems and services that
integrate various categories of information and entertainment
services in a single subscription service. The presently described
digital content distribution system is such an integrated
information and entertainment content provider service. The
categories of contents that may be delivered through this
distribution system may include movies, videos, television
programs, music, music videos, concerts, books, style, software,
games, travel and the like.
* * *
Each end user 16 may be a programmed computer such
as a personal computer (PC), a network computer, or the like,
running client software. The computer typically includes a
processor, a memory; storage devices such as magnetic storage
devices, re-writeable CDS or the like; display devices such as a
video display, an audio display or the like; and input devices such
as a mouse, a keyboard or the like. The computer may be
connected to the network via a cable modem, a telephone
modem, a satellite dish or the like. The end user may also be a
set-top type of device that provides access to the network though
a television set.
The client software residing on the user's PC serves as an
interface between the human user and the endpoint server.
Through the client, the user may submit requests for delivery of
contents to the endpoint server, input information requested by
the endpoint server, view or listen to the information received
from the endpoint server, or store the received information for
display at a later time. Preferably, the client provides a variety of
interfacing capabilities, including video on demand, music
download, agenting, electronic commerce, video conferencing
and so on.

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Ex. 1004, 2:6–17, 3:42–63 (emphasis added). We have reviewed and
considered the passages in Easty that Petitioner cites and, based on this
unopposed showing, we find that Easty teaches all the elements of the
preamble of claim 16.

“a populater for populating a virtual library with a
plurality of different virtual media collections in accordance
with a user profile, wherein the virtual library is populated with
different types of media obtained from different media sources;
and”

With regard to this limitation, the Petition states:

This limitation is obvious over the combination of Easty
and Hendricks. See supra Sec. IV.A.i (Claim 1[c]); see also
supra, Sec. IV.A.v (Claims 11[c], 11[e]). Further, as discussed
regarding Claim 16[P], Easty teaches that its system integrates
content of a variety of media types from multiple entertainment
services (i.e. multiple media sources) into a single service. See
supra Claim 16[P]. Similarly, Hendricks teaches integrating
different types of content from multiple programming sources,
including movies, sports programming, children’s programming,
HDTV content from HDTV sources, and digital audio stations,
among others. Hendricks (Ex. 1005), at 6:10-13 (“Fig. 2 shows
an embodiment of the operations center receiving signals from
various external sources 212. Examples of the external program
sources are sporting events, children’s programs, specialty
channels, news or any other program source that can provide
audio or visual signals.”); see also id. at Fig. 2; Fig. 8, 6:6–13,
10:53–55, 14:18–20.

Pet. 56–57. Based upon this unopposed showing, we find that the
combination of Easty and Hendricks teaches the subject matter of this
limitation, and that Petitioner has presented adequate reasoning to support
the proposed combination.

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“a browser for browsing the virtual library by moving
between the plurality of different media collections under user
control;”

With regard to this limitation, the Petition states: “This limitation is
obvious over the combination of Easty and Hendricks. See supra, Sec.
IV.A.i, v (Claims 1[d], 11[f]).” Pet. 57. Based upon this unopposed
showing and for the reasons discussed regarding claims 1 and 11, we find
that the combination of Easty and Hendricks teaches the subject matter of
this limitation, and that Petitioner has presented adequate reasoning to
support the proposed combination.

“a search engine for searching the virtual library under
user control; and”

With regard to this limitation, the Petition states: “This limitation is
obvious over the combination of Easty and Hendricks. See supra, Sec.
IV.A.i, v (Claims 1[e]).” Pet. 57. Based upon this unopposed showing and
for the reasons discussed regarding claim 1, we find that the combination of
Easty and Hendricks teaches the subject matter of this limitation, and that
Petitioner has presented adequate reasoning to support the proposed
combination.

“a filter for filtering the results of the searching step in
accordance with the user profile and said browsing step, wherein
said filtering comprises explicit and implicit filtering, wherein
said explicit filtering provides filtering of information from said
plurality of different media collections and said implicit filtering
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draws from collaborative data among said plurality of different
media collections and similar user profiles;”

With regard to this limitation, the Petition states: “This limitation is
obvious over the combination of Easty and Hendricks. See supra, Sec.
IV.A.i, v (Claims 1[f], 11[c]).” Pet. 57. Based upon this unopposed
showing and for the reasons discussed regarding claims 1 and 11, we find
that the combination of Easty and Hendricks teaches the subject matter of
this limitation, and that Petitioner has presented adequate reasoning to
support the proposed combination.

“a prioritizer for prioritizing results of the filtering step;
and”

With regard to this limitation, the Petition states: “This limitation is
obvious over the combination of Easty and Hendricks. See supra, Sec.
IV.A.i, v (Claims 1[g]).” Pet. 58. Based upon this unopposed showing and
for the reasons discussed regarding claim 1, we find that the combination of
Easty and Hendricks teaches the subject matter of this limitation, and that
Petitioner has presented adequate reasoning to support the proposed
combination.

“an updater for updating the user profile in accordance
with at least one selection of the results of the filtering step,
wherein said updating is reflected in a ratio in responding to said
user’s current programming choice or specific requests.”

With regard to this limitation, the Petition states: “This limitation is
obvious over the combination of Easty and Hendricks. See supra,
Sec. IV.A.i, v (Claims 1[h], 11[h]).” Pet. 58. Based upon this unopposed
showing and for the reasons discussed regarding claims 1 and 11, we find
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that the combination of Easty and Hendricks teaches the subject matter of
this limitation, and that Petitioner has presented adequate reasoning to
support the proposed combination.
We find that Petitioner’s showing that claim 16 of the ’680 patent
would have been obvious in light of Easty and Hendricks to be well-
supported and sound. Petitioner has shown that all the limitations of
claim 16 are taught by the cited art and that a skilled artisan would have had
motivations to combine the relevant teachings. We conclude that claim 16
of the ’680 patent would have been obvious in view of the combination of
Easty and Hendricks.

4. Dependent Claims 4, 8, 12, 13, 17, and 18
Petitioner’s showing with regard to dependent claims 4, 8, 12, 13, 17,
and 18 and the combination of Easty and Hendricks is reasonable and well-
supported. Pet. 38–40 (claim 4), 40–42 (claim 8), 53 (claim 12), 54 (claim
13), 58 (claim 17), 59 (claim 18). With the exception of claim 10, Patent
Owner relies on the arguments already discussed in relation to claim 1. PO
Resp. 38 (claims 4 and 8), 41–42 (claims 12 and 13), 42–43 (claims 17 and
18).
Claim 4
“The method as in claim 1 wherein the user profile
establishing step comprises:
presenting a variety of questions to the user about the
user’s interests; and
creating a user profile based on the user’s answers to the
questions.”

In addition to relying upon its showing with regard to claim 1,
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Petitioner presents additional argument based on the combination of Easty
and Hendricks relating to the additional elements of claim 4. Pet. 38–40.
With regard to Easty, the Petition states, “Although Easty does not explicitly
teach asking the user questions about his or her interests directly when
creating a new profile, Easty does teach asking demographic questions to
derive information about the user’s interests when creating the profile.” Id.
at 38 (citing Ex. 1004, 4:21–27, 4:62–65, 5:56–63). Within the cited
passages of Easty, Easty states: “information may be obtained from a user
when he or she subscribes to the service, including the user’s name, age, sex,
locality and other demographic information” and “[t]he agenting section 13a
may also compare the profiles of individual users against those of other
users served by the same server to identify users with similar demographics
or preferences.” Ex. 1004, 4:25–28, 4:62–65.
With regard to Hendricks, the Petition states, “In addition to asking
demographic questions, like Easty, Hendricks also teaches presenting the
user with express questions about the user’s interests.” Pet. 39 (citing
Ex. 1005, 34:1–9). The cited passage in Hendricks states:
To build a personal profile, the viewer answers a series of
questions presented on a series of menu screens. These personal
profile screens request the viewer to input information such as
name, sex, age, place of birth, place of lower school education,
employment type, level of education, amount of television
program viewing per week, and the number of shows in
particular categories that the viewer watches in a given week
such as, sports, movies, documentaries, sitcoms, etc.

Ex. 1005, 34:1–9. With regard to combining these teachings of Easty and
Hendricks, the Petition states:
A PHOSITA would have been motivated incorporate
Hendricks’ teaching of asking specific questions about a user’s
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interests when creating the user profile in Easty, as doing so
would better tailor Easty’s user profile to an individual user. See
Terveen Decl. (Ex. 1003) at ¶56. Indeed, as discussed regarding
Claim 1[f], supra, the inventors of Easty already expressed the
desire to update a user profile based on the user’s interests and
responses to explicit questions, such as by soliciting user ratings
for content. Incorporating Hendricks’ teachings would therefore
have required only minor software modifications for including
questions about a user’s interests when creating the profile and
yielded predictable results with a reasonable expectation of
success having a new profile immediately account for a user’s
directly expressed interests. See id.

Pet. 39–40. We find that Petitioner has shown that the combination of Easty
and Hendricks teaches or suggests all the limitations of claim 4 and that a
motivation to combine the relevant teachings existed because doing so
would better tailor the user profile to an individual user. Patent Owner
presents no arguments specifically relating to claim 4. See generally PO
Resp. We conclude that claim 4 of the ’680 patent would have been obvious
over the combination of Easty and Hendricks.
Claims 8, 12, and 17
“8. The method as in claim 1 wherein the media
collections comprises [sic] respective pluralities of similarly
classifiable information items, further comprising:
identifying a selection of at least one of the information
items by the user from one of the media collections; and
updating the user profile in accordance with the
identifying step.”

“12. The receiver apparatus as in claim 11 wherein the
media collections comprises [sic] respective pluralities of
similarly classifiable information items, further comprising:
an identifier that identifies a selection of one of the
information items by the user from one of the media collections;
and
an updater that updates the adaptive user profile database
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in accordance with the identifying step.”

“17. The computer program product as in claim 16
wherein the media collections comprises [sic] respective
pluralities of similarly classifiable information items, further
comprising:
an identifier for identifying a selection of one of the
information items by the user from one of the media collections;
and
an updater for updating the user profile in accordance
with the identifying step.”

We analyze claims 8, 12, and 17 together because they contain the
same or similar limitations. In addition to relying upon its showing with
regard to claim 1, Petitioner presents additional argument based on the
combination of Easty and Hendricks relating to the additional elements of
claims 8, 12, and 17. Pet. 40–42 (claim 8), 53 (claim 12), 58 (claim 17).
With regard to “media collections compris[ing] respective pluralities of
similarly classifiable information items,” Petitioner contends both Easty and
Hendricks teach this limitation. As quoted by Petitioner (id. at 40), Easty
states, “The categories of contents that may be delivered through this
distribution system may include movies, videos, television programs, music,
music videos, concerts, books, style, software, games, travel, and the like”
and “the contents may be categorized according to the type of programming
or other criteria.” Ex. 1004, 2:12–16, 7:59–60. The Petition states (Pet. 40),
“Figure 8 of Hendricks [reproduced above] shows organizing media into
categories and subcategories of ‘similarly classifiable’ items” such as
“sporting events categories,” “children’s programming,” etc. Hendricks
states, “The programs are grouped by category so that similar program
offerings are found on the same menu.” Ex. 1004, 4:58–59.
With regard to “an identifier that identifies/identifying a selection of
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at least one of the information items by the user from one of the media
collections,” Easty states, “user information may be acquired from the
information transmitted by the client relating to the user’s activities, such as
. . . contents requested” (Ex. 1004, 4:28–31) and Hendricks states, “the
subscriber can sequence the menus and select a program from any given
menu” (Ex. 1005, 4:56–58).
With regard to “an updater for updating/updating the user profile in
accordance with the identifying step,” Easty states, “[t]he user profile is
generated and continuously updated based on user information” (Ex. 1004,
4:22–24; see also id. at 4:67–5:3 (“each time a request is received from a
client, the agenting section 13a parses the new information, recalculates the
correlations and updates the user profiles in the database”). Hendricks
states,
Instead of the set top terminal 220 requiring an input of
personal profile information, the terminal may also “learn” the
personal profile information. A subscriber's viewing habits may
be “learned” by maintaining historical data on the subscriber and
analyzing this data. The historical data may include the channels
(or networks) and types of programs the viewer has most
frequently watched, time of viewing, duration of viewing,
duration of programs viewed etc. This information must then be
analyzed to profile the viewer.

* * *
Once it is gathered, it may be stored (and updated as necessary)
for future use. The indicators may be newly calculated for each
subscriber entry into the program selection system.

Ex. 1005, 35:9–18, 35:41–44.
We find that Petitioner has shown that the combination of Easty and
Hendricks teaches or suggests all the limitations of claims 8, 12, and 17 and
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that a motivation to combine the relevant teachings existed as discussed
above with relation to independent claims 1, 11, and 16. Patent Owner
presents no arguments specifically relating to claims 8, 12, and 17. See
generally PO Resp. We conclude that claims 8, 12, and 17 of the ’680
patent would have been obvious over the combination of Easty and
Hendricks.
Claims 13 and 18
“13. The receiver apparatus as in claim 12 wherein the
virtual media collections include information obtained from a
broadcasted television signal and the Internet.”
“18. The computer program product as in claim 17
wherein the different media sources include internet data and a
broadcasted television signal.”

We analyze claims 13 and 18 together because they contain the same
or similar limitations. In addition to relying upon its showing with regard to
claims 12 and 17, Petitioner presents argument based on the combination of
Easty and Hendricks relating to the additional elements of claims 13 and 18.
Pet. 54 (claim 13), 59 (claim 18).
With regard to claim 13, the Petition states:
As discussed, Claim 12 is obvious over the combination
of Easty and Hendricks. See supra, Sec. IX.A.vi (Claim 12).
Further, as discussed, Easty teaches or at least renders obvious
the inclusion of information from a broadcasted television signal
based, for example, on its teachings of including “television
programs” in its media content distribution system and its
teachings that its system can be implemented using a cable
company headed, cable network, and cable set-top box, including
a cable modem. See supra, Sec. IV.A.i (Claim 1[c]). Further, as
discussed, Easty teaches or at least renders obvious including
content from the Internet [ ]. See supra, Sec. IV.A.v
(Claim 11[a]).

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Id. at 54.
With regard to claim 18, the Petition states, “As discussed, Claim 17
is obvious over the combination of Easty and Hendricks. See supra,
Sec. IX.A.ix (Claim 17). Further, this limitation is obvious over the
combination of Easty and Hendricks[.] See supra, Sec. IX.A.vii (Claim
13).” Id. at 59.
The assertions by Petitioner relating to claims 13 and 18 are supported
by the cited art. We find that Petitioner has shown that the combination of
Easty and Hendricks teaches or suggests all the limitations of claims 13 and
18 and that a motivation to combine the relevant teachings existed as
discussed above with relation to independent claims 11 and 16. Patent
Owner presents no arguments specifically relating to claims 13 and 18. See
generally PO Resp. We conclude that claims 13 and 18 of the ’680 patent
would have been obvious over the combination of Easty and Hendricks.
5. Dependent Claim 10
“The method as in claim 1 further comprising storing
results of the searching step as media collections in the unified
space for browsing by the user.”

We separately analyze Petitioner’s showing with regard to claim 10
because this is the only challenged claim for which we conclude that
Petitioner has failed to establish it would have been obvious. For teaching
the further limitation of claim 10, Petitioner relies (Pet. 42) on the following
passage in Hendricks:
Once the main menu screen 1130 is displayed, the viewer may
choose to begin a completely new search, or alternatively, may
refine the prior search. If the viewer chooses to perform a refined
search, the viewer can access the various submenus and choose
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further preference entries resulting in a more precise search and
fewer number of program selections.

Ex. 1005, 32:47–53. Based on this passage, Petitioner contends:
Because Hendricks allows a user to navigate away from a search
results display but still revise or refine a previously executed
search, the search results must be stored in the unified space for
later browsing by a user, or at least it would have been obvious
to store such information on Hendricks’s set-top box. See
Terveen Decl. (Ex. 1003) at ¶61. Without such storage, the user
would be unable to start a new search without navigating away
from the results display and losing existing work. Therefore, a
PHOSITA would have been motivated to store the search results
to prevent a user from having to re-do an identical search. Thus,
Hendricks discloses, or at least renders obvious storing the
results of the searching step as media collections.

Pet. 42–43. Petitioner’s contentions do not follow from the cited passage in
Hendricks. The passage does not say the results of the searching step are
stored as media collections in the unified space and we do not discern how
the cited passage teaches or suggests the limitation of claim 10. We accept
that this passage teaches or suggests that the search must be stored so that it
can be refined, but this does not teach or suggest that the results of the
search are stored as media collections. There is a clear and apparent
distinction between storing the search itself and storing the results of the
search as media collections.
With regard to the paragraph from the Terveen Declaration (Ex. 1003)
that Petitioner cites in support of its contention, cited paragraph 61 states:
In my opinion, it would have been obvious to store
searches in light of Hendricks’s teaching that a user may “refine
a prior search” to prevent a user from having to perform a new,
identical search to one performed already. Because Hendricks
allows a user to navigate away from a search results display but
still allows revision and refinement of a previously executed
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search, this would have indicated to a PHOSITA that the system
would store the previous search so that a user may return to it, or
at least it would have been obvious to a PHOSITA to do so.
Without such storage, the user would be unable to start a new
search without navigating away from the results display and
losing existing work. It would have therefore been obvious to
store the search itself, or at least search parameters that would
automatically return a user to the point in the search they wanted
to refine. Thus, Hendricks discloses, or at least renders obvious,
storing the results of the searching step in a media collection.

Ex. 1003 ¶ 61. The conclusion in the last sentence of this quote that
“Hendricks discloses, or at least renders obvious, storing the results of the
searching step in a media collection” does not follow from: (1) storing a
search so that a user may refine it; (2) storing a search so that a user may
return to it; (3) storing a search so that a new search may be performed
without navigating away from the results display and losing existing work;
or (4) storing a search, or at least search parameters, so that a user may
return to the point in the search the user wants to refine. Again, storing the
search (or its parameters) is not the same as storing the results of the
searching step in a media collection. Dr. Terveen provides no explanation or
reasoning to support his opinion and we accord it little or no weight. See 37
C.F.R. § 42.65(a) (2019) (“Expert testimony that does not disclose the
underlying facts or data on which the opinion is based is entitled to little or
no weight.”).
With regard to claim 10, Patent Owner argues:
Moreover, regarding Claim 10, neither Hendricks nor
Easty teach or suggest “storing results of the search step as media
collections in the unified space for browsing by the user.”
(Ex. 1001 at 11:29–31.) Petitioner suggests that Hendricks’
ability to go back and “refine” a prior search query equates to
storing results of the search step as media collections. (Pet. at
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42; see Ex. 1005 at 32:33–53 (citing search query recall
capabilities.)
Petitioner’s argument fails to recognize the “media
collections” language. (Pazzani Decl. at ¶ 85.) A POSITA
would understand that refining a search requires only saving the
query for editing, not the results of the query. (Pazzani Decl. at
¶ 85.) Hendricks is not saving the results of the query as a media
collection so a user can come back to the results days later, for
example. (Pazzani Decl. at ¶ 85.) While Hendricks indeed
allows a user to go back to search queries, it does not store results
as media collections as required by claim 10.

PO Resp. 38. We find Patent Owner’s argument to be convincing. We
agree that the passage Petitioner cites in Hendricks fails to teach or suggest
“storing the results of the search step as media collections.”
For these reasons, we find that Petitioner failed to establish that the
cited art teaches the limitation of claim 10 and, based on this record, we
conclude that claim 10 has not been shown to have been obvious.
6. Summary
We conclude that Petitioner has shown that claims 1, 4, 8, 11–13, and
16–18 of the ’680 patent would have been obvious in view of Easty and
Hendricks. We conclude that Petitioner has not shown that claim 10 would
have been obvious.
F. Grounds Based on Easty, Hendricks, and Kittaka
Petitioner contends that claims 1, 4, 8, 10–13, and 16–18 are
unpatentable over Easty, Hendricks, and Kittaka. Pet. 7, 59–63.
1. Kittaka
Kittaka was filed on March 5, 1998. Ex. 1006, code (22). The
earliest priority date claimed for the ’680 patent is based on its filing date of
September 30, 1999. Ex. 1001, code (22). Therefore, Kittaka is prior art to
the ’680 patent under 35 U.S.C. § 102(e). Patent Owner does not dispute
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that Kittaka is prior art. See generally PO Resp.
Kittaka is directed to, “[a]n on-line information scheme capable of
dynamically accounting for user’s interest with respect to information and
providing appropriate information presentation according to the user’s
interest.” Ex. 1006, code (57) (Abstract). Kittaka provides for “dynamically
updat[ing] the user’s interest.” Id. Figure 1 of Kittaka is reproduced below.

Figure 1 depicts “a block diagram for an information providing system.” Id.
at 5:49–50.
2. Analysis
Petitioner cites Kittaka for teaching a ratio as recited in the last
limitations of independent claims 1, 11, and 16. Pet. 63 (“Kittaka is relied
upon only for the ‘ratio’ requirement of claim limitations 1[h], 11[h], and
16[f].”). “Otherwise, Petitioner relies on the same mappings and
obviousness arguments contained above in Ground 1 for the remainder of
the limitations of Claims 1, 11, and 16, as well as for each of the dependent
claims set forth above in Ground 1.” Id. Patent Owner argues that “Kittaka
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does not solve the inadequacies of Easty and Hendricks” and “[t]hus
claims 1, 4, 8, 10-13, and 16-18 are not obvious in light of Easty, Hendricks,
and Kittaka.” PO Resp. 43. Patent Owner does not otherwise argue against
the challenge based on this combination of references. See id. Thus,
because Patent Owner argues only the “virtual library” limitation and the
limitation of claim 10, our findings and conclusions with regard to the
combination of Easty, Hendricks, and Kittaka are fully supported by our
conclusions above with regard to the combination of Easty and Hendricks.
However, for completeness, we consider Kittaka and Petitioner’s arguments
relating to Kittaka.
Kittaka discloses a system in which a user completes a questionnaire
(“registers information fields of his/her own interest”) that “[t]he
information provider then stores in a user DB (database) as information
indicating the user’s interest (user attribute value) in correspondence to a
user ID.” Ex. 1006, 1:19–26. The user attribute value is referred to in
Kittaka with the letter “U.” See, e.g., id. at 7:40–49. Figure 10 of Kittaka is
reproduced below.

Figure 10 depicts “information selection using user vector U.” Figure 9C of
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Kittaka is reproduced below.

Figure 9C depicts the calculation used to update the user vector U. Kittaka
states, “as shown in FIG. 9C . . . in a case of updating the user vector U,
using the coefficient C1 described above, an interior division point that
divides a line segment joining the user vector U and the information vector
G at a ratio of C1:1–C1 is obtained first.” Id. at 11:32–36 (emphasis added).
Kittaka also states, “the information selection unit 12 selects a set of
information that suits the user’s interest, by using the updated user attribute
value U (109).” Id. at 7:61–63. We find that Kittaka teaches the “ratio”
limitation of the independent claims of the ’680 patent.
With regard to motivation to combine, the Petition states:
A PHOSITA would have been motivated to combine
Kittaka with Easty and Hendricks because Hendricks expressly
teaches that “more sophisticated methods of weighing the
importance of the data may be used.” Hendricks (Ex. 1005) at
36:19- 21. This teaching would have prompted a PHOSITA to
look to other, more sophisticated methods for updating a user’s
profile, such as those in Kittaka. See Terveen Decl. (Ex. 1003)
at ¶65. A PHOSITA would have also been motivated to use a
ratio like the C1:1-C1 ratio of Kittaka because C1 is an
“attenuation coefficient” designed to account for declines in
interest as time elapses (Kittaka at 9:9–16), and a PHOSITA
would have appreciated that such an approach would have
improved the sophistication and reliability of the
recommendations of Easty and Hendricks by accounting for
time-based changes in user interest. Terveen Decl. (Ex. 1003) at
¶65; see also Easty (Ex. 1004) at 4:31–32 (considering dates and
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times of content requests in updating a user profile). A
PHOSITA would have had a reasonable expectation of success
with this combination, because it would have involved minor
software modifications to similar systems and yielded
predictable results related to the computations performed to
update user profiles. Terveen Decl. (Ex. 1003) at ¶65. Like
Easty and Hendricks, Kittaka relates to a system that
recommends content to users based on their interests stored and
dynamically updated in a user profile. Id. And the combination
of Easty and Hendricks already recites systems using adjusted
weights to update the user profile based on the user’s interactions
and selections of content, like in Kittaka. The “ratio”
requirement of claim limitations 1[h], 11[h], and 16[f], therefore,
would have been obvious over the combination of Easty,
Hendricks, and Kittaka. Id.

Pet. 62–63. Petitioner’s reasoning with regard to combining the teachings of
the cited references that are relevant to this limitation is reasonable and well-
supported. Based on Petitioner’s showing, we find that a motivation to
combine the relevant teachings of the cited references existed, because it
would have improved the sophistication and reliability of the
recommendations by accounting for the changes of user interests over time.
Patent Owner does not present any separate arguments relating to the
combination of Easty, Hendricks, and Kittaka. PO Resp. 43 (“Kittaka does
not solve the inadequacies of Easty and Hendricks discussed above in
Sections VIII.B-G. Thus, claims 1, 4, 8, 10–13, and 16–18 are not obvious
in light of Easty, Hendricks, and Kittaka.”). Specifically, Patent Owner does
not dispute that Kittaka teaches the limitations in the independent claims that
recite a ratio or that a motivation to combine the relevant teachings of Easty,
Hendricks, and Kittaka existed. See id.
3. Summary
Kittaka teaches the limitations in the independent claims which recite
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a ratio. However, Petitioner does not contend that Kittaka teaches or
suggests the limitation of claim 10. Based on the cited teachings in Kittaka
and our findings that the limitations in the challenged claims are taught by
Easty and Hendricks, except the limitations of claim 10, and that there was a
motivation to combine these teachings, we conclude that Petitioner has
established that claims 1, 4, 8, 11–13, and 16–18 would have been obvious
in view of Easty, Hendricks, and Kittaka. Petitioner has not established that
claim 10 would have been obvious in view of Easty, Hendricks, and Kittaka.
III. CONCLUSION23
For the foregoing reasons, we conclude that Petitioner has established
that claims 1, 4, 8, 11–13, and 16–18 would have been obvious in light of
the cited art. And, we conclude that Petitioner has not established that claim
10 would have been obvious in light of the prior art.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 4, 8, 11–13, and 16–18 of the ’680 patent
are unpatentable and claim 10 is not unpatentable.

23 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
IPR2019-00471
Patent 7,734,680 B1
71
In summary:

Claims

35
U.S.C. §
References/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 4, 8,
10–13,
16–18
103(a) Easty, Hendricks 1, 4, 8, 11–13,
16–18
10
1, 4, 8,
10–13,
16–18
103(a) Easty, Hendricks,
Kittaka
1, 4, 8, 11–13,
16–18
10
Overall
Outcome
1, 4, 8, 11–13,
16–18
10
IPR2019-00471
Patent 7,734,680 B1
72

FOR PETITIONER:

Michelle Callaghan
michelle@unifiedpatents.com

Ashraf Fawzy
afawzy@unifiedpatents.com

Eric Buresh
eric.buresh@eriseip.com

Roshan Mansinghani
roshan@unifiedpatents.com

Jason Mudd
jason.mudd@eriseip.com

FOR PATENT OWNER:

Timothy Devlin
td-ptab@devlinlawfirm.com

Andrew DeMarco
ademarco@devlinlawfirm.com