iTakeaway: If a prior art reference has distinct embodiments, one cannot conflate them in order to show disclosure of the claim limitation without adequate explanation and evidence for the combination.
In its Decision, the Board denied institution of an inter partes review of claims 1-20 of the ’768 Patent. The ’768 Patent describes a system for integrating video programming with information resources of the Internet by using URLs to retrieve related Web pages and synchronizing the content to the video for display.
The Board began with claim construction, stating that claims must be construed with the broadest reasonable interpretation in light of the specification. Petitioner proposed multiple definitions for means-plus-function terms. Because the Patent Owner did not dispute these constructions, the Board adopted Petitioner’s constructions.
The Board then examined the asserted grounds of unpatentability, beginning with the challenge to claims 1-3 and 19 as obvious over Throckmorton. The Board disagreed with Petitioner’s arguments, finding that Throckmorton has very distinct embodiments that Petitioner conflated in order to show full disclosure of the claim limitations. Specifically, the Board agreed with Patent Owner that Petitioner failed to provide sufficient evidence that Throckmorton’s browser retrieves the requested Internet segments under the direction and control of the controller means. The Board also found that there was insufficient evidence to conclude that the combination of embodiments teaches the claimed limitations.
The Board then examined the remaining grounds of unpatentablility, which all combined Throckmorton with an additional prior art reference. Because the Board found that none of the additional prior art references cured the deficiency in the interpretation of Throckmorton, the Board also declined to institute trial based on those grounds.
Netflix, Inc. v. OpenTV, Inc., IPR2014-00274
Paper 12: Decision Denying Inter Partes Review
Dated: June 30, 2014
Patent 6,018,768
Before: Sally C. Medley, James T. Moore, and Justin Busch
Written by: Moore
Related Proceedings: OpenTV Inc. v. Netflix, Inc., No. 1-12-cv-01733 (D. Del.); IPR2014-00252; IPR2014-00267; IPR2014-00269
