Paper 7
`Trials@uspto.gov
`571-272-7822 Entered: January 16, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`QUANTUM STREAM INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01672
`Patent 9,047,626 B2
`____________
`
`
`
`Before BARRY L. GROSSMAN, BEVERLY M. BUNTING, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: January 16, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`QUANTUM STREAM INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01672
`Patent 9,047,626 B2
`____________
`
`
`
`Before BARRY L. GROSSMAN, BEVERLY M. BUNTING, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-01672
`Patent 9,047,626 B2
`
`
`I. INTRODUCTION
`Unified Patents Inc. (“Petitioner”) filed a Petition for inter partes
`review of claims 1–17 of U.S. Patent No. 9,047,626 B2 (Ex. 1001, “the
`’626 patent”). Paper 2 (“Pet.”), 1. Quantum Stream Inc. (“Patent Owner”)
`filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Institution of an
`inter partes review is authorized by statute only when “the information
`presented in the petition . . . and any response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37
`C.F.R. § 42.108. For the reasons set forth below, we conclude that the
`information presented in the Petition establishes a reasonable likelihood that
`Petitioner will prevail in showing the unpatentability of claims 1–17 of the
`’626 patent. Accordingly, we institute an inter partes review as to those
`claims.
`
`A. Related Matters
`Petitioner and Patent Owner identify the following proceedings in the
`U.S. District Court for the Southern District of New York as related matters:
`Quantum Stream Inc. v. Charter Communications, Inc., No. 1:17-cv-01696-
`PAE (pending); Quantum Stream Inc. v. Neptune Holding US Corp., No.
`1:16-cv-08604 (terminated); and Quantum Stream Inc. v. DirecTV, LLC, No.
`1:15-cv-08240 (terminated). Pet. 1; Paper 4, 1.
`
`B. The ’626 Patent
`The ’626 patent describes a video distribution system that provides
`secondary content for inclusion within video content. Ex. 1001, 1:25–32,
`15:42–43. A primary content provider, such as a television station or
`Internet publisher, typically enters into agreements with secondary content
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`providers, such as advertisers, long before the transmission of the content to
`user devices. Id. at 1:43–53. According to the ’626 patent, “there is a need
`for a system that can combine the diverse area of commerce into a single
`universally accessible system to all content providers . . . that permits digital
`content providers to explicitly target consumers” and maximize revenues.
`Id. at 2:50–57.
`The system contemplated by the ’626 patent discloses matching
`“vacancies” within the primary content with secondary content. Id.,
`Abstract. Vacancies are the places in the video content reserved to hold a
`unit of secondary content created by a content provider. Id. at 3:27–30,
`5:27–28. “Both the vacancies and the content units that fill them have
`attributes that may be used to determine how and when a vacancy will be
`filled by a unit of content, or how and when a unit of content can be used.”
`Id. at 3:5–8. The ’626 patent further describes these attributes in the
`following manner:
`Static attributes may include required secondary content type
`(such as teenage advertising, sales opportunity, syndicated
`news, an audio stream), the physical size and location of the
`vacancy, time and date qualifications for the vacancy, or
`classification of the vacancy. Dynamic attributes are defined as
`attributes that can change or be derived at any time, or attributes
`that are evaluated just-in-time as the vacancy is offered.
`Depending on the medium, dynamic attributes may contain any
`combination of changing information—for example, about the
`specific consumer, the content environment, or previous
`consumer interactions with the content environment.
`Id. at 6:41–52.
`
`The ’626 patent describes advertising as one of the possible
`applications of the disclosed system. Id. at 7:62–63. According to the ’626
`patent, the marketplace system that involves matching vacancies with
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`secondary content “enables digital content providers to dynamically seek the
`most favorable placement opportunities based on real-time data.” Id. at
`7:64–67. In addition, such providers “can create robust campaigns that
`match digital content in real-time to any targeted criteria, including full
`consumer profiles, contextual content, and search keywords.” Id. at
`7:67–8:3.
`
`C. Claims
`Claim 1 is the only independent claim of the ’626 patent and is
`reproduced below:
`1. A system for providing secondary content for inclusion in
`video content, the system comprising:
`a consumer device comprising:
`at least one network connector for receiving secondary content
`selected based on targeted criteria and for receiving (a) video
`content having at least one vacancy, and (b) information
`relating to the video content, wherein the information relating
`to the video content includes one or more attributes associated
`with the at least one vacancy;
`at least one storage device for storing the secondary content and
`information relating to the secondary content, wherein the
`information relating to the secondary content includes one or
`more attributes; and
`at least one processor for inserting the secondary content to fill
`the at least one vacancy of the video content, wherein the
`insertion is based on matching the one or more attributes
`associated with the at least one vacancy with the one or more
`attributes of the information relating to the secondary content;
`and
`at least one server interface for transferring the video content and
`the secondary content to the consumer device;
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`wherein the consumer device outputs the secondary content
`within the at least one vacancy of the video content.
`Ex. 1001, 15:41–64.
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–17 based on the following grounds
`(Pet. 4–5):
`
`Ground
`
`Reference(s)
`
`Basis Challenged Claims
`
`1
`
`2
`
`3
`
`4
`
`5
`
`Arazi1 and Rosser2
`
`§ 1033 1–6, 8–12, and 14–17
`
`Arazi, Rosser, and Zigmond4
`
`§ 103 7
`
`Arazi, Rosser, and Brown5
`
`§ 103 13
`
`Eldering ’0396 and Eldering
`’2777
`
`§ 103 1, 7, and 10
`
`Eldering ’039, Eldering ’277,
`and Gupta8
`
`§ 103 13
`
`
`1 WO 97/19560 (published May 29, 1997) (Ex. 1006, “Arazi”).
`2 WO 98/28906 (published July 2, 1998) (Ex. 1007, “Rosser”).
`3 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (September 16, 2011), took effect on
`March 16, 2013. Because the application from which the ’626 patent issued
`was filed before that date, our citations to Title 35 are to its pre-AIA version.
`4 US 6,698,020 B1 (filed June 15, 1998) (Ex. 1008, “Zigmond”).
`5 US 5,887,133 (filed Jan. 15, 1997) (Ex. 1009, “Brown”).
`6 US 6,615,039 B1 (provisional filed May 10, 1999) (Ex. 1010, “Eldering
`’039”).
`7 US 6,820,277 B1 (provisional filed Apr. 20, 1999) (Ex. 1012, “Eldering
`’277”).
`8 US 6,487,538 B1 (filed Nov. 16, 1998) (Ex. 1015, “Gupta”).
`5
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`Ground
`
`Reference(s)
`
`Basis Challenged Claims
`
`6
`
`Eldering ’039, Eldering ’277,
`and Eldering ’5199
`
`§ 103 15–17
`
`Petitioner also relies on the Declaration of Dr. Kevin C. Almeroth. Ex. 1005
`(“Almeroth Declaration”).
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, a claim in an unexpired patent shall be given
`its broadest reasonable construction in light of the specification of the patent
`in which it appears. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). Consistent with the broadest reasonable
`construction, claim terms are presumed to have their ordinary and customary
`meaning as understood by a person of ordinary skill in the art in the context
`of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`Petitioner proposes constructions for “vacancy,” “attribute,” and
`“dynamic attribute.” Pet. 9–10. For the purposes of this decision, we
`determine that no claim term needs express interpretation. See Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
`those terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”).
`
`
`9 US 6,324,519 B1 (filed Mar. 12, 1999) (Ex. 1016, “Eldering ’519”).
`6
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`This determination does not preclude the parties from arguing their
`proposed constructions of the claims during trial. Indeed, the parties are
`hereby given notice that claim construction, in general, is an issue to be
`addressed at trial. Claim construction will be determined at the close of all
`the evidence and after any hearing. The parties are expected to assert all
`their claim construction arguments and evidence in the Petition, Patent
`Owner’s Response, Petitioner’s Reply, or otherwise during trial, as
`permitted by our rules.
`
`B. Status of the Prior Art
`We first address the effective priority date of the ’626 patent because
`of its potential impact on the scope of the prior art to the ’626 patent.
`Petitioner asserts that the earliest effective priority date for the ’626 patent is
`March 21, 2000, the filing date of a now-abandoned application in the
`priority chain of the ’626 patent. Pet. 8; Ex. 1001 (63). Petitioner contends
`that the ’626 patent is not entitled to priority back to the earliest application
`in the priority chain, US Provisional App. No. 60/155,015 (Ex. 1004), filed
`on September 21, 1999, because that application does not adequately
`disclose “video content” or “snap-in” insertion of content. Pet. 8–9; Ex.
`1001 (63). Patent Owner does not contest these assertions in the Preliminary
`Response. See generally, Prelim. Resp. 1. Based on the present record, and
`for purposes of this decision only, we determine that Petitioner establishes
`sufficiently that the ’626 patent is not entitled to a priority date any earlier
`than March 21, 2000.
`Petitioner asserts that two of the references it relies upon—Eldering
`’039 and Eldering ’277—are prior art under 35 U.S.C. § 102(e) because they
`are entitled to the priority dates associated with their respective provisional
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`applications. Pet. 3–4; 51–55. Petitioner bears the burden of proving that
`the potential prior art references are entitled to the benefit of the filing date
`of the respective provisional applications. Dynamic Drinkware, LLC v.
`National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2016). To do so,
`Petitioner must compare the claims of the alleged prior art to the provisional
`application. Id. at 1381. “A reference patent is only entitled to claim the
`benefit of the filing date of its provisional application if the disclosure of the
`provisional application provides support for the claims in the reference
`patent in compliance with § 112, ¶ 1.” Id.
` In support of its argument, Petitioner alleges that Eldering ’039 and
`Eldering ’277 are prior art under 35 U.S.C. § 102(e) because their respective
`provisional applications provide support for claim 1 in each respective
`patent. Pet. 3–4; 51–55 (citing Dynamic Drinkware). Petitioner includes
`claim charts containing the language of claim 1 and the alleged support for
`each claim limitation from the provisional applications. Id. at 51–55.
`Patent Owner argues that Eldering ’039 is not entitled to the benefit of
`the filing date of its provisional application10 because the Eldering ’039
`Provisional does not support the “subgroup” limitation found in claim 1 of
`Eldering ’039. Prelim. Resp. 1–12.11 More specifically, Patent Owner
`alleges that the Eldering ’039 Provisional only discloses subgroups
`comprising multiple subscribers, while “subgroup” in claim 1 of Eldering
`
`
`10 U.S Provisional App. No. 60/133398 (filed May 10, 1999) (Ex. 1011)
`(“Eldering ’039 Provisional”).
`11 Patent Owner’s argument that Eldering ’039 is not prior art to the ’626
`patent due to the lack of adequate support in the Eldering ’039 Provisional
`was the focus of the entire Preliminary Response. Prelim. Resp. 1–12.
`8
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`’039 is broader, based on additions made to the specification, and
`encompasses subgroups having only a single subscriber. Id. at 2. Based on
`this lack of support in the Eldering ’039 Provisional, according to Patent
`Owner, Eldering ’039 is not prior art to the ’626 patent. Id. at 6–9. Patent
`Owner does not contest, in the Preliminary Response, Petitioner’s assertion
`that Eldering ’277 is prior art to the ’626 patent or Petitioner’s related
`analysis.
`We first address Patent Owner’s argument that “subgroup” as used in
`claim 1 of Eldering ’039 encompasses subgroups having a single subscriber.
`The specification of Eldering ’039 supports Patent Owner’s position and
`states that “[e]ach subgroup corresponds to one or more subscribers” and
`that the “subgroup may comprise . . . an individual subscriber or a single
`household.” Ex. 1010, 2:19–21, 2:28–30 (emphasis added); see also id. at
`4:8–11 (“[E]ach subgroup may comprise one or more subscribers, or one or
`more households.”), 6:33–35. Moreover, we have not been directed to any
`evidence in the claim language or specification that suggests “subgroup”
`must be read narrowly to exclude subgroups having a single subscriber or
`household. At this stage of the proceeding, Patent Owner argues sufficiently
`that “subgroup” in claim 1 of Eldering ’039 encompasses subgroups having
`a single subscriber or single household.
`Turning to the Eldering ’039 Provisional, the issue is whether the
`disclosure of subgroups having multiple subscribers adequately supports
`claims broad enough to encompass single subscribers or households. For the
`“subgroups” language in Eldering ’039 claim 1, Petitioner cites to language
`from the provisional referring to “different subgroups.” Pet. 51 (citing Ex.
`1011, 10:19–31). Petitioner also relies on the Almeroth Declaration for
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`support. See id. (citing Ex. 1005 ¶ 231). Dr. Almeroth opines that the
`“Eldering ’039 provisional provides written description support for at least
`claim 1 of Eldering ’039” and identifies specific portions of the Eldering
`’039 Provisional to support the opinion. Ex. 1005 ¶ 231. Patent Owner, on
`the other hand, appears to assume, without adequate analysis, that a
`disclosure of subgroups having multiple subscribers cannot support a claim
`broad enough to encompass single subscribers. Prelim. Resp. 5, 8. Patent
`Owner does not directly address the possibility that disclosure of
`“subscribers” may encompass the singular “subscriber” in this context to one
`of ordinary skill in the art, or that disclosure of a species (plural subscribers)
`within the genus (plural subscribers and single subscribers) can in some
`instances adequately support a claim limitation. See Bilstad v. Wakalopulos,
`386 F.3d 1116, 1124 (Fed. Cir. 2004) (“[D]isclosure of a species may be
`sufficient written description support for a later claimed genus including that
`species.”). Moreover, Patent Owner does not support its written description
`assertions with testimony from one of ordinary skill in the art at this time.
`See id. at 1123 (stating that written description inquiry “requires
`consideration of whether the [] disclosure, as filed, ‘reasonably conveys to a
`person skilled in the art that the inventor had possession of the claimed
`subject matter at the time of the earlier filing date.’” (quoting Eiselstein v.
`Frank, 52 F.3d 1035, 1039 (Fed. Cir. 1995)).
`Based on the supporting Almeroth Declaration and our independent
`review of the evidence, we determine that Petitioner, for purposes of this
`decision only, has established a sufficient showing that both Eldering ’039
`and Eldering ’277 are prior art to the ’626 patent.
`
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`
`C. Obviousness Based on Arazi and Rosser
`Relying on the Almeroth Declaration, Petitioner alleges that Arazi and
`Rosser render claims 1–6, 8–12, and 14–17 obvious under 35 U.S.C.
`§ 103(a). Pet. 11–42. We determine, on the current record, that Petitioner
`has established a reasonable likelihood of prevailing on its assertion that
`claims 1–6, 8–12, and 14–17 would have been obvious obvious.
`1. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`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 skill in the art; and (4) where in evidence, so-called secondary
`considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–
`18 (1966).
`2. Overview of Arazi
`Arazi discloses a system for efficient distribution of video programs
`while facilitating distribution of encoded video programs. Ex. 1006 (57).
`Arazi describes a system that creates a “customized augmented video
`program” at a particular receiver “by inserting selected portions of the
`Auxiliary Data into a selected encoded video program.” Id. The “Auxiliary
`Data need not be transmitted in real time but can be stored locally at the
`receiver for real-time presentation at a later time.” Id. The Auxiliary Data
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`may include advertising or other encoded video, with the augmented video
`data stream carrying the Auxiliary data in the portion of the primary video
`stream “that would otherwise be wasted.” Id. at 15:4–10.
`Arazi’s Figure 4 is reproduced below:
`
`
`Figure 4 depicts a system that receives video distribution data,
`extracts a primary video program and Auxiliary Data stream, associates
`selected portions of the Auxiliary Data stream with the selected video
`program to create an augmented video data stream, and decodes and displays
`the augmented video data stream at a receiver. Id. at 12:25–13:3; 19:22–27.
`According to Arazi, “the system may be used for inserting narrowcast
`(targeted) advertising” into the primary video program. Id. at 19:28–29.
`Arazi describes a system where the Auxiliary Data may remain in local
`storage until ready for combination with the primary video program. Id. at
`23:14–17. Arazi discloses an Insertion Detector 620 that automatically
`
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`inserts the Auxiliary Data whenever presentation delays of sufficient
`duration can accommodate the Auxiliary Data. Id. at 24:9–14.
`3. Overview of Rosser
`Rosser discloses a television set-top box used for targeted insertion of
`indicia into video broadcasts. Ex. 1007 (57). Rosser’s set-top box monitors
`the usage and viewing habits of the television viewer, and derives a viewer
`profile from the data acquired from monitoring the viewer’s usage. Id.
`Rosser describes transmitting the viewer profile to a centralized database
`that then “link[s] specific insertable indicia with matching specific viewer
`profiles.” Id. According to Rosser, “the set-top box decodes the broadcast
`video and performs insertion of the indicia,” allowing “advertisers to target
`specific ads or indicia to specific viewing profiles.” Id.
`Rosser also discloses an alternative, “more generalized set top device”
`that can receive data streams from a telephone/internet connection as well as
`cable video, broadcast video, or a satellite dish. Id. at 14:16–19. A central
`controller, such as a programmable microprocessor, controls a selection
`device, such as a modem or television tuner, to select the data stream
`desired. Id. at 14:20–25. The video signal passes from the selection device
`to a router linked to a storage device and controlled by the central controller.
`Id. at 25–28. The central controller also monitors the viewer’s choices and
`uses inputs from other units to build up and store a viewer usage profile. Id.
`at 15:34–16:2. At the appropriate time for advertising insertion, such as a
`commercial break, the central controller uses a router and potentially the
`local storage device to place an appropriate advertisement on the viewing
`device. Id. at 17:32–18:1. The advertisement may be based on a match
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`between the viewer’s usage profile and the profile associated with the
`advertisement. Id. at 18:1–3.
`4. Discussion
`a. Claim 1
`Petitioner sets forth how the combination of Arazi and Rosser
`discloses each limitation in claim 1. Pet. 15–29. Petitioner also sets forth
`various reasons to combine Arazi and Rosser. Id. at 13–14, 20, 27. Patent
`Owner does not challenge Petitioner’s explanations and supporting evidence
`as to claim 1.
`Petitioner relies on Arazi’s display device 480 and Rosser’s set-top
`box as evidence that both Arazi and Rosser disclose the claimed “consumer
`device.” Pet. 15–17 (citing Ex. 1005 ¶¶ 91–92; Ex. 1006, 19:22–27, Fig. 4;
`Ex. 1007, Abstract, 10:24–25, 14:13–14, Fig. 1). For the “network
`connector” limitation,12 Petitioner relies on (1) Arazi’s Auxiliary Data as the
`secondary content and its description in Arazi as “narrowcast (targeted)
`advertising,” and (2) Arazi’s Primary Encoded Video Program as the
`claimed video content having at least one vacancy. Id. at 18–19 (citing Ex.
`1005 ¶¶ 97–98; Ex. 1006, 11:9–16, 19:22–20:1, 24:9–14, 24:29–30:1).
`Petitioner also contends that Arazi renders obvious the claimed “network
`connector” because one of ordinary skill in the art would have understood
`that Arazi’s “receiver connected to a network” teaches the use of a network
`
`
`12 Claim 1 requires “at least one network connector for receiving secondary
`content selected based on targeted criteria and for receiving (a) video content
`having at least one vacancy, and (b) information relating to the video
`content, wherein the information relating to the video content includes one
`or more attributes associated with the at least one vacancy.” Ex. 1001,
`15:45–51.
`
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`connector. Id. at 19 (citing Ex. 1005 ¶ 99; Ex. 1006, 2:61–65). Petitioner
`also relies on Rosser’s modem 138 and cable modem 140 as expressly
`disclosing a network connector. Id. at 19–20 (citing Ex. 1005 ¶ 100, Ex.
`1007, 10:24–29, 14:16–22). Petitioner relies on Arazi’s description of
`encoded video programs including “special signals . . . to mark the
`appropriate points for Local Auxiliary Data insertion” as evidence that Arazi
`discloses the claimed “information relating to the video content includes one
`or more attributes associated with the at least one vacancy.” Pet. 20–21
`(quoting Ex. 1006, 24:30–30:1) (citing Ex. 1005 ¶¶ 103–104). Petitioner
`relies on Rosser’s disclosure of “viewer usage profile keys 120” inserted
`“into the vertical blanking interval of [] video” as evidence that Rosser
`discloses the same limitation. Id. at 21 (quoting Ex. 1007, 9:6–14) (citing
`Ex. 1005 ¶ 105–106).
`Petitioner relies on Arazi’s Local Auxiliary Data Storage as disclosing
`the claimed “at least one storage device,” and the duration of Arazi’s
`Auxiliary Data segments as corresponding to the claimed “information
`relating to the secondary content.” Pet. 21–22 (citing Ex. 1005 ¶¶ 108–109;
`Ex. 1006, 22:21–29). Petitioner contends that it would have been obvious
`for Arazi’s system “to store the duration of the Auxiliary Data, since it is
`used each time the Auxiliary Data is used” and “storing duration was a
`common and well-understood option” known in the art at the time. Id. at 22
`(citing Ex. 1005 ¶ 109). Petitioner also relies on Rosser’s disclosure of
`storing an “alternative feed . . . in video and audio storage unit 152” as
`evidence that Rosser expressly discloses the claimed “storing . . .
`information relating to the secondary content.” Id. (quoting Ex. 1007,
`17:25–32) (emphasis omitted) (citing Ex. 1005 ¶ 110). Petitioner relies on
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`Arazi’s disclosure of the duration of the Auxiliary Data and Rosser’s
`disclosure of the usage profile as evidence that both disclose the claimed
`“information relating to the secondary content includes one or more
`attributes.” Id. at 23 (citing Ex. 1005 ¶¶ 113–114; Ex. 1006, 24:21–24; Ex.
`1007, 18:1–6).
`For the “processor for inserting the secondary content” limitation,13
`Petitioner contends that Arazi’s description associated with the insertion of
`Auxiliary Data into a vacancy using Augmentation MUX 630 renders the
`claimed processor an obvious alternative because Arazi’s Augmentation
`MUX performs the same functions as the claimed processor. Pet. 24 (citing
`Ex. 1005 ¶¶ 117–118; Ex. 1006, 10:12–15, 19:30–20:1). Arazi also relies on
`Rosser’s disclosure of central controller 146—a microprocessor—as
`expressly disclosing the claimed processor. Id. (citing Ex. 1005 ¶ 119; Ex.
`1007, 14:22–25, 19:23–25). Claim 1 also requires insertion “based on
`matching” the attributes associated with the vacancy and the secondary
`content. Ex. 1001, 15:57–60. Here, Petitioner relies on Arazi’s Comparator
`626 that compares the Presentation Delay (attribute associated with the
`vacancy in the video stream) with the duration of the next Auxiliary Data
`segment (attribute associated with the secondary content), as well as the
`alternative “special signals” that mark appropriate points for insertion and
`
`
`13 Claim 1 requires “at least one processor for inserting the secondary
`content to fill the at least one vacancy of the video content, wherein the
`insertion is based on matching the one or more attributes associated with the
`at least one vacancy with the one or more attributes of the information
`relating to the secondary content.” Ex. 1001, 15:55–60.
`16
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`necessarily include the same Presentation Delay value. Id. at 25–26 (citing
`Ex. 1005 ¶ 122; Ex. 1006, 24:21–27, 25:2–11).
`With respect to the “server interface” limitation, Petitioner contends
`that Arazi’s depiction of a system that produces a data stream and
`transferring the Distribution Data Stream teaches a server that transfers
`information. Pet. 26–27 (citing Ex. 1005 ¶ 125; Ex. 1006, 15:1–10,
`19:22–27, Fig. 1). Petitioner also contends that Rosser teaches a server
`interface when it describes distributing a signal from the central studio site
`via a distribution means, such as a cable network or computer network. Id.
`at 27–28 (quoting Ex. 1007, 9:27–31, 14:16–19). According to Petitioner,
`one of ordinary skill in the art would have understood that the sender in a
`system distributing content to recipients over an internet connection “is a
`server” and would have a corresponding connection to the Internet, i.e., a
`“server interface” as claimed. Id. at 27.
`Claim 1’s system also requires the consumer device to “output[] the
`secondary content within the at least one vacancy of the video content.” Ex.
`1001, 15:63–64. Petitioner contends that Arazi expressly discloses this
`limitation by describing a primary video program passed to a video
`augmentation unit for combination with Auxiliary Data, then passed to
`Display 480 for viewing. Pet. 28–29 (citing Ex. 1005 ¶ 130, Ex. 1006
`19:22–27, 23:14–24, 29:11–17, Fig. 4).
`Petitioner also sets forth various reasons to combine Arazi and Rosser.
`Id. at 13–14, 20, 27. For example, Petitioner contends that both references
`discuss targeted advertising systems that insert advertisements into a
`program stream, allowing advertisers to target specific receivers or viewers.
`Pet. 13 (citing Ex. 1005 ¶ 82; Ex. 1006, 10:27–29; Ex. 1007, Abstract).
`
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`Petitioner also contends that Rosser “provides an express motivation to use
`its teachings in the system of Arazi” by focusing on the need for direct
`marketing without the need for a centralized database. Id. (citing Ex. 1007,
`4:1–7). According to Petitioner, Arazi teaches that targeting groups of
`households is desirable, Rosser’s set-top box helps to identify those groups,
`and it would have been obvious to incorporate Rosser’s set-top box into the
`receiving system of Arazi because “doing so would have achieved a system
`with a ‘targeting mechanism’ that ‘does not require a centralized database of
`all potential clients.’” Id. (quoting Ex. 1005 ¶¶ 83–84) (citing Ex. 1006,
`21:13–15; Ex. 1007, Abstract). Petitioner also contends that one of ordinary
`skill in the art would have recognized Rosser’s ability to narrowcast to
`single households as an advantage over Arazi’s narrowcasting to a group,
`providing an additional advantage and reason to incorporate Rosser’s
`teachings with Arazi’s system. Id. at 14.
`Based on the supporting Almeroth Declaration and our independent
`review of the evidence, we determine that Petitioner has established a
`sufficient showing that the combination of Arazi and Rosser discloses all of
`the limitations of claim 1. We also determine, based on the current record,
`that Petitioner established sufficiently that one of ordinary skill would have
`been motivated to apply the teachings of Rosser to Arazi.
`b. Claims 2–6, 8–12, and 14–17
`Each of claims 2–6, 8–12, and 14–17 depend directly or indirectly
`from claim 1, and recite additional limitations. Patent Owner does not
`challenge Petitioner’s explanations and supporting evidence as to these
`claims. Based on the present record, Petitioner explains sufficiently how the
`
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`combination of Arazi and Rosser satisfies the limitations recited in these
`claims. Pet. 29–42.
`5. Summary
`Based on the evidence in the present record, Petitioner demonstrates
`sufficiently, for purposes of this decision, a reasonable likelihood of
`prevailing on its assertion that Arazi and Rosser render obvious claims 1–6,
`8–12, and 14–17.
`D. Obviousness Based on Arazi, Rosser, and Zigmond
`Relying on the Almeroth Declaration, Petitioner alleges that Arazi,
`Rosser, and Zigmond render claim 7 obvious under 35 U.S.C. § 103(a). Pet.
`36–37. Patent Owner does not challenge Petitioner’s explanations and
`supporting evidence as to claim 7. We determine, on the current record, that
`Petitioner has established a reasonable likelihood of prevailing on its
`assertion that claim 7 would have been obvious.
`Zigmond teaches selecting and inserting advertisements into video
`programming at a household level. Ex. 1008, Abstract. Zigmond describes
`an advertisement insertion device that receives multiple advertisements and
`“selects one of the advertisements for display to a viewer according to
`advertisement selection criteria.” Id.
`Claim 7 depends from claim 1 and further requires “wherein at least
`one of the one or more attributes associated with the at least one vacancy is
`based on information received from the consumer device.” Ex. 1001,
`16:20–22. Petitioner contends that “Zigmond discloses this limitation by
`describing changing advertisement selection criteria, which include
`advertisement selection rules, based on ‘viewer response information’
`collected from the viewer feedback.” Pet. 44 (citing Ex. 1008, 4:60–67).
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`Petitioner further contends that Zigmond’s ad selection rules correspond to
`the claimed “attributes” and that the ad insertion device compiles feedback
`information, and the “ad insertion devices are, or are part of, a consumer
`device” as claimed. Id. (citing Ex. 1005 ¶¶ 205–206; Ex. 1008, 7:37–46,
`9:21–25, 11:42–49). According to Petitio
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