Trials@uspto.gov
`571-272-7822
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`Paper No. 15
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`Entered: April 16, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, INC.,
`Petitioner,
`
`v.
`
`MONKEYMEDIA, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00059
`Patent 9,247,226 B2
`____________
`
`
`
`Before MARC S. HOFF, LYNNE E. PETTIGREW, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`HOFF, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`INTRODUCTION
`I.
`Unified Patents, Inc. (“Petitioner”) requested an inter partes review of
`claims 1–12 (the “Challenged Claims”) of U.S. Patent No. 9,247,226 B2
`(Ex. 1001, “the ’226 patent”). Paper 2 (“Petition” or “Pet.”).
`MONKEYmedia, Inc. (“Patent Owner”) filed a Preliminary Response.
`Paper 8 (confidential version), Paper 12 (redacted version) (“Prelim.
`Resp.”). Petitioner then filed a Reply to that Preliminary Response.
`Paper 11 (“Pet. Reply”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless it is determined that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least one of the claims challenged in the
`petition. Based on the information presented in the Petition and Preliminary
`Response, we are persuaded that there is a reasonable likelihood Petitioner
`would prevail with respect to claims 1 and 7 on Petitioner’s asserted
`combination of Lavallee, Gibson, Cohen, and Strickland. We are not
`persuaded, however, that there is a reasonable likelihood Petitioner would
`prevail with respect to claims 1–10 on Petitioner’s asserted combination of
`Davenport and Efrat because Petitioner does not properly account for all the
`limitations of independent claims 1 and 7 in its analysis of Davenport.
`Similarly, we are also not persuaded that there is a reasonable likelihood
`Petitioner would prevail with respect to claims 11 and 12 based on
`Petitioner’s asserted combination of Davenport, Efrat, and Bartok.
`Accordingly, we institute an inter partes review of claims 1 and 7 on
`the ground specified below. We further decline to institute an inter partes
`review of claims 2–6 and 8–12, for the reasons set forth below.
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`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far. This is not a final
`decision as to patentability of claims for which inter partes review is
`instituted.
`
`BACKGROUND
`II.
`The ’226 patent (Ex. 1001)
`A.
`The ’226 patent concerns a method for playing a stored content
`providing a plurality of segments which collectively contain the stored
`content. Ex. 1001, 7:31–33. Each of the segments has a first terminus and a
`second terminus, where the content in each of the segments has a temporal
`flow from the first terminus to the second terminus. Id. at 7:33–36. At least
`one segment is associated with a plurality of links to a corresponding
`plurality of other segments. Id. at 7:36–38. “The method includes playing
`at least one segment with the temporal flow, determining whether a content
`expansion is desired prior to reaching the second terminus. If content
`expansion is desired, the method links to an expansion segment and playing
`the expansion segment.” Id. at 7:39–43. If content expansion is not desired,
`the method “links to a continuing segment and playing the continuing
`segment.” Id. at 7:44–45. “The method includes an additional link from the
`expansion segment to the continuing segment such that the continuing
`segment is played after the expansion segment has been played.” Id. at
`7:39–48.
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`Figure 3B of the ’226 patent is reproduced below.
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`Figure 3B “schematically depicts the segment links between
`continuous play media segments.” Id. at 11:25–26. As described in the ’226
`patent, Figure 3B illustrates a continuous play media segment 100 having
`“two links 114 and 116 to other continuous play media segments.” Id. at
`12:42–43. Continuity link 114 connects to the start 120 of continuous play
`media segment 104. Id. at 12:44–45. The temporal start of a segment or
`frame sequence is denoted as the first terminus and the temporal end of a
`segment of frame sequence is denoted as the second terminus. Id. at 12:45–
`48. “Continuous play media segment 100 contains an expansion link 116 to
`continuous play media segment 102. Continuous play media segment 102
`contains a link 118 to continuous play media segment 104.” Id. at 12:48–52.
`The method of the invention includes playing the stored content
`segment with temporal flow [e.g., segment 100 in Figure 3B] and
`determining whether a content expansion is desired prior to reaching the
`second terminus. Id. at 9:42–45. If the content expansion is desired, the
`method calls for linking to an expansion segment (e.g., segment 102 in
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`Figure 3B) and playing said expansion segment. Id. at 9:45–46. If the
`content expansion is not desired, the method calls for linking to a continuing
`segment of stored content (e.g., segment 104 in Figure 3B) and playing said
`continuing segment. Id. at 9:47–49. There is an additional link from the
`expansion segment of stored content to the continuing segment of stored
`content, such that the continuing segment of stored content is played after
`the expansion segment of stored content has been played. Id. at 9:45–53.
`During prosecution, the claims of the ’226 patent were amended to
`include the phrase “interruption terminus of the first portion” in place of “the
`second terminus of the first segment.” The claims were further amended to
`include the phrase “resume-point terminus of a continuing portion” in place
`of “the first terminus of a continuing segment.” Compare Ex. 1002, 51
`(Prosecution History of the ’226 patent) with Ex. 1002, 97. Thus, the claim
`phrases “interruption terminus of the first portion” and “resume-point
`terminus of a continuing portion” do not appear in the originally filed
`Specification or claims.
`Challenged Claims
`B.
`Claims 1 and 7 are independent. Claims 2–6 depend from claim 1.
`Claims 8–12 depend from claim 7. Claim 1 is reproduced below:
`1. One or more tangible computer readable storage
`media (wherein said computer readable storage media is
`not a propagated signal(s)) storing instructions that when
`executed by a computer are capable of causing the
`computer to:
`a. begin fetching a primary content comprising a
`primary content continuous play media stream;
`b. generate a signal to display a first portion of the
`primary content continuous media stream comprising a
`first stored audio and/or visual content of the primary
`content continuous play media stream, wherein an
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`interruption terminus of the first portion and a resume-
`point terminus of a continuing portion of the primary
`content continuous media stream that continues the
`primary content continuous play media stream from the
`interruption terminus of the first portion in the primary
`content continuous play media stream are established
`during display of the first portion at an expansion decision
`point if a content expansion is selected by a user;
`c. provide a highlighted expansion cue to the user
`during display of the first portion indicating an option for
`the user to elect to access the content expansion
`comprising an optional content continuous play media
`stream, whereby the display of the expansion cue is
`distinct from the display of the first portion;
`d. determine whether the content expansion is
`selected and establish the expansion decision point and a
`beginning of the content expansion based on when the user
`elected the content expansion;
`e. generate a signal to display a change in the
`expansion cue if the content expansion is elected by the
`user during display of the first portion;
`f. interrupt the display of the first portion at the
`interruption terminus of the first portion if the content
`expansion is elected by the user during display of the first
`portion;
`g. provide an expansion link from the first portion
`to an expansion portion of the optional content continuous
`play media stream comprising a second stored audio
`and/or visual content, and generate a signal to display the
`second stored audio and/or visual content of the expansion
`portion if the content expansion is selected, wherein the
`displayed second stored audio and/or visual content is
`spatiotemporally continuous with the displayed first stored
`audio and/or visual content and with a displayed third
`stored audio and/or visual content of the continuing
`portion whereby the display of the second stored audio
`and/or visual content replaces the display of the first stored
`audio and/or visual content after at most a small amount
`of time and whereby the display of the third stored audio
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`and/or visual content replaces the display of the second
`stored audio and/or visual content after at most a small
`amount of time, and wherein a transition is played from
`the displayed first stored audio and/or visual content to the
`displayed second stored audio and/or visual content;
`h. provide a continuity link from the expansion
`portion to the continuing portion and generate a signal to
`display a third stored audio and/or visual content of the
`continuing portion after finishing the display of the
`expansion if the content expansion is elected; and
`i. provide a continuity link from the first portion to
`the continuing portion and generate a signal to display the
`third stored audio and/or visual content of the continuing
`portion if the content expansion is not elected, wherein the
`displayed third stored audio and/or visual content is
`spatiotemporally continuous with the displayed first stored
`audio and/or visual content whereby the display of the
`third stored audio and/or visual content replaces the
`display of the first stored audio and/or visual content after
`at most a small amount of time.
`
`Ex. 1001, 27:23–28:16.
`Independent claim 7 is a method claim that largely parallels
`independent claim 1, but recites the additional limitation of “playing a
`transition from the first stored content to the second stored content.”
`Compare Ex. 1001, 27:14–28:16 with id. at 28:38–30:3.
` Proposed Grounds of Unpatentability and Evidence Relied
`C.
`Upon
`Petitioner advances the following challenges under 35 U.S.C.
`§ 103(a):
`1. Claims 1 and 7 as unpatentable over Lavallee et al., U.S. Patent
`No. 5,737,552, issued Apr. 7, 1998 (“Lavallee”) (Ex. 1004) in view of
`Gibson, U.S. Patent No. 5,539,871, issued July 23, 1996 (“Gibson”)
`(Ex. 1005), Strickland et al., U.S. Patent No. 5,465,215, issued Nov. 7, 1995
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`(“Strickland”) (Ex. 1006), and Cohen et al., U.S. Patent No. 5,359,712,
`issued Oct. 25, 1994 (“Cohen”) (Ex. 1007);
`2. Claims 1–10 as unpatentable over Davenport et al., U.S. Patent
`No. 5,101,364, issued Mar. 31, 1992 (“Davenport”) (Ex. 1009) in view of
`Efrat et al., PCT International Publication No. WO98/04984 (“Efrat”)
`(Ex. 1010); and
`3. Claims 11 and 12 as unpatentable over Davenport in view of Efrat
`and Bartok, U.S. Patent No. 5,737,553, issued Apr. 7, 1998 (“Bartok”)
`(Ex. 1017).
`Petitioner supports its challenges with a declaration of Dr. Michael
`Kotzin (Ex. 1003). Patent Owner disputes Petitioner’s challenges and offers
`in support of its position a declaration of Mr. Christen Armbrust (Ex. 2001).
`Related Proceedings
`The ’226 patent is asserted in litigation by Patent Owner in
`MONKEYmedia, Inc. v. Samsung Electronics America, Inc., et al., 2:17-cv-
`00460 (E.D. Tex.). Pet. 1; Ex. 2007.
`
`
`III. ANALYSIS
`A. Overview of Asserted Reference Lavallee
`Lavallee relates to conveying program information to a user in a linear
`fashion, while allowing the user to request additional program information
`relating to a particular “scene” being viewed. See Ex. 1004, Abstract.
`Figure 1 of Lavallee is reproduced below.
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`Figure 1 depicts a hierarchical scene structure contemplated by
`embodiments of the invention of Lavallee. Id. at 3:23–24. “Each of scenes
`1, 2, 3, . . . etc. to infinity is contemplated to be initially conveyed to the user
`for viewing. Each of these scenes can be thought of as logical program
`segments of the program information conveyed to the user.” Id. at 4:28–31.
`Assume, for example,
`that in “Scene 2” as shown in the Figure, an athlete is endorsing
`his brand of home fitness equipment. If the user wanted more
`information concerning the endorsed products, he or she can
`indicate this (e.g., by activating a control device) while that
`particular endorsement is being viewed. A signal would then be
`sent to the device that actually conveys and/or stores the program
`information . . . indicating that additional program information
`should be sent to the user.
`
`Id. at 4:52–61.
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`In this particular example, Scene 2.1 represents a first portion of the
`additional program information concerning the home fitness equipment. Id.
`at 4:54–64. When the end of scene 2.n is eventually reached, embodiments
`of the invention contemplate that the program information subsequently
`conveyed to the user will be the original requesting scene (i.e., Scene 2) or,
`in other embodiments, it might be the scene after the requesting scene (i.e.,
`Scene 3). See id. at 5:7–13. Potentially, “any number of different
`hierarchical levels can be implemented. For example, if the user is viewing
`scene 2.2 concerning the bench-press, and wants even more detailed
`program information, they can indicate this, and obtain Scene 2.2.1, showing
`detailed information concerning the bench-press.” Id. at 5:36–42.
`B. Overview of Asserted Reference Gibson
`Gibson concerns a method and system for associating datasets with an
`animated element depicted in a multimedia presentation operating within a
`data processing system, and notifying a user of the existence of an associated
`data set during a relevant portion of the multimedia presentation. Ex. 1005,
`2:1–9. Figure 3B of Gibson is reproduced below:
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`According to Gibson, Figure 3B is a pictorial representation of a data
`processing system display at a point in time during a multimedia
`presentation. Id. at 2:45–47. Figure 3B depicts “first running person 302
`leaving the field of view, and second running person 304 entering the field
`of view. Graphic indicator 306 . . . may be utilized to indicate the presence
`of an associated data set stored within data processing system 50 . . . which
`is also currently relevant to this portion of the multimedia presentation.
`Such an associated data set may . . . contain additional information
`concerning second running person 304, and may be in the form of text,
`graphics, sounds, animated graphics, synthesized speech, or video. A data
`processing system user may choose to view or listen to the associated data
`set,” by requesting that the additional dataset be presented. Id. at 4:7–20.
`C. Overview of Asserted Reference Strickland
`Strickland concerns machine control manual data input facilities.
`Touch-screen displays are provided to lead an operator through selection of
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`desired functions and entry of required parameter data. See Ex. 1006, 1:34–
`55. Figure 3 of Strickland is reproduced below:
`
`
`
`Figure 3 is a main graphical manual data input (MDI) display. See id.
`at 2:1. Push button displays 141, 142, 144, and 145, inter alia, are used to
`select various functions. See id. at 7:12–22. For example, push button
`display 142 is used to select graphic assisted MDI mode. Id. at 7:17–18.
`Display 142 is made to appear depressed when the graphic assisted MDI
`mode is active. Id. at 7:19–20.
`D. Overview of Asserted Reference Cohen
`Cohen concerns a computer controlled display system, including
`method and apparatus for transitioning between two sequences of digital
`information stored in a computer system. Ex. 1007, 4:64–68.
`The method involves a process for user definition and
`manipulation of a transition resource for defining the transition
`between one audio stream of information and another audio
`stream of information. The method also involves a process for
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`user definition and manipulation of a rate of transition control
`means which specifies the rate of transition during the transition
`between the first sequence of information and the second
`sequence of information.
`
`Id. at 5:1–9.
`Figures 1A–1E of Cohen are reproduced below:
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`Figures 1A–1E of Cohen illustrate five types of transitions from a first
`sequence of images to a second sequence of images. Id. at 6:41–50.
`E. Overview of Asserted Reference Davenport
`Davenport concerns a common data structure that permits designation
`of relationships between video and/or image segments. See Ex. 1009, 2:61–
`3:1.
`
`[A] displayed video segment of portion thereof is accompanied
`by simultaneous on-screen presentation of a set of motion icons
`(’micons’) that has been chosen by the user or the author of the
`video segment, and “linked” thereto. During presentation of the
`video segment (or portion thereof), the viewer may select any of
`the displayed micons and thereby interrupt the current video
`segment with the segment represented by the chosen micon. On-
`screen presentation of the new video segment will feature a new
`set of micons. Preferably, if the viewer does not cause a further
`interruption by selection of one of the new micons, the system
`completes presentation of the selected segment and thereafter
`returns to the location of the interrupt on the original segment.
`The remainder of the original segment is then presented.
`
`Id. at 3:56–4:3.
`F. Overview of Asserted Reference Efrat
`Efrat concerns a system and method for linking information to and
`accessing information from a video. The method for linking information
`includes the steps of defining a hotspot in a frame of video and linking the
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`hotspot to a target. In one embodiment, the hotspot is tracked in other
`frames, such as later or earlier frames, of the video. See Ex. 1010 at 1:33–
`2:4. The method for accessing information includes the steps of displaying
`the video, and executing a target in the video. In another embodiment, a
`hotspot may be actuated. In yet another embodiment, the video may be
`displayed on a television. Id. at 2:5–8.
`G. Overview of Asserted Reference Bartok
`Bartok concerns an apparatus and method for mapping a graphical
`object of arbitrarily complex shape to a “hot spot object” of virtually the
`same shape. Ex. 1017, 2:34–37. “Hot spots” are overlaid on an image
`within a “hot spot object” to allow selection of content associated with the
`“hot spots.” Id. at 2:38–41; Figs. 2, 3. Figure 2 illustrates examples of “hot
`spot objects” such as a file cabinet and a desk, displayed in an image, each
`containing “hot spots” such as drawers within them. See id. at 6:5–32;
`Fig. 2.
`H. Claim Construction
`Claims of an unexpired patent that will not expire before issuance of a
`final written decision are interpreted using the broadest reasonable
`interpretation in light of the specification. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).
`Although the ’226 patent’s expiration date is not mentioned by either party,
`we note that the ’226 patent issued from an application filed September 10,
`2012, and is a continuation of a chain of applications, the oldest of which
`was filed April 23, 1999. Ex. 1001, 1. Accordingly, the ’226 patent is not
`scheduled to expire before the expected issuance of a final written decision
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`in this review. See 35 U.S.C. § 154(a)(2). Thus, we apply the broadest
`reasonable construction standard. See id.
`Under the broadest reasonable construction standard, claim terms
`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). The claims, however, “‘should always be read in light of the
`specification and teachings in the underlying patent,’” and “[e]ven under the
`broadest reasonable interpretation, the Board’s construction ‘cannot be
`divorced from the specification and the record evidence.’” Microsoft Corp.
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations omitted).
`Further, any special definition for a claim term must be set forth in the
`specification with reasonable clarity, deliberateness, and precision. See In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
`definition, limitations are not to be read from the specification into the
`claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`Petitioner proposes a construction of the claim phrase “highlighted
`expansion cue,” as “any type of display element that indicates to a user that a
`content selection is available.” Pet. 22. Patent Owner responds that
`Petitioner’s proposed construction would improperly read the term
`“highlighted” out of the claim, because the claim already recites “indicating
`an option for a user to elect to access the content expansion” or “indicating
`an option for a user to elect to access the optional expansion content.”
`Prelim. Resp. 13. Thus, Patent Owner contends that a “highlighted
`expansion cue” requires both (a) a user interface element that constitutes an
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`expansion cue, and (b) an effect applied to that user interface element that
`draws attention to that user interface element. See id.
`We construe claim terms to the extent necessary for our analysis on
`whether to institute a trial. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999) (explaining that only claim terms in
`controversy need to be construed, and only to the extent necessary to resolve
`the controversy). Consequently, we address below Petitioner’s and Patent
`Owner’s proposed construction of the term “highlighted expansion cue” in
`the context of claims 1 and 7.
`“highlighted expansion cue”
`Claim 1 recites “provid[ing] a highlighted expansion cue to the user
`during display of the first portion indicating an option for the user to elect to
`access the content expansion comprising an optional content continuous play
`media stream, whereby the display of the expansion cue is distinct from the
`display of the first portion.” Claim 7 recites
`providing a highlighted expansion cue to a user that is integrated
`with the display of the at least one segment indicating an option
`for the user to elect to access optional expansion content
`comprising an optional content continuous play media stream,
`whereby the display of the expansion cue is distinct from the
`display of the at least one segment.
`
`Petitioner’s declarant, Dr. Kotzin, testifies:
`[T]he feature “highlighted expansion cue” refers to any type of
`visual cue that is perceivable by a user during a multimedia
`presentation to indicate that the user can make a selection to view
`optional content. In this regard, although the limitation uses the
`term “highlighted,” the feature itself can be met by any display
`element that is visible to the user and provides an indication that
`a content selection is available.
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`Ex. 1003 ¶ 71.
`Patent Owner’s declarant, Mr. Armbrust, states that “highlighting”
`refers to an effect in the user interface applied to a user interface element to
`draw attention to that user interface element. Ex. 2001 ¶¶ 38, 39; Prelim.
`Resp. 13. Patent Owner further asserts that the word “highlighted” must be
`given meaning in accordance with its dictionary definition. Prelim. Resp.
`13–14.
`
`Patent Owner cites intrinsic evidence in the Specification in support of
`its proposed construction. The description of Figure 4A, cited by Patent
`Owner, explains that “[t]he visual cue in certain preferred embodiments of
`the invention may be specifically chosen shapes. In certain preferred
`embodiments, the visual cues may be visually highlighted shapes.”
`Ex. 1001, 13:4–7. The description of Figure 5A uses nearly identical
`language. Id. at 13:52–56.
`Figure 5B of the ’226 patent is reproduced below:
`
`
`“Figure 5B shows the user view of multiple expansion cues 152 and 156
`with expansion cue 156 contained in an expansion cue container 150 in
`accordance with an embodiment of the invention where expansion cue 152 is
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`further highlighted 160. Visual cue 152 is highlighted as depicted by region
`160.” Id. at 13:63–67.
`The intrinsic evidence supports Patent Owner’s argument that a
`“highlighted” expansion cue differs from a mere “expansion cue” in that
`some visual effect is applied to an expansion cue that tends to draw a user’s
`eye. For example, in Figure 5B, circular region 160 is added around the
`display of expansion cue 152, in order to increase the visual prominence of
`expansion cue 152.
`Having reviewed the evidence of record at this stage of this
`proceeding, we agree with Patent Owner that the intrinsic evidence supports
`construing the term “highlighted expansion cue” to require both “(1) a user
`interface element that constitutes an expansion cue, and (2) an effect applied
`to that user interface element that draws attention to that user interface
`element.” Prelim. Resp. 13. For purposes of this Decision, we construe the
`term “highlighted expansion cue” in this manner. However, we further
`direct the parties to address fully the meaning of this term at trial,
`particularly as to whether the construction applied in this Decision is the
`broadest reasonable construction. In so doing, the parties should indicate all
`evidence in support of their positions, including citations to any relevant
`portions of the prosecution history.
`Legal Standard for Obviousness
`I.
`A claim is unpatentable under § 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
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`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) when in evidence, objective indicia of non-obviousness
`(i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot
`employ mere conclusory statements. The petitioner must instead articulate
`specific reasoning, based on evidence of record, to support the legal
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the
`Board must consider whether a person of ordinary skill would have been
`motivated to combine the prior art to achieve the claimed invention. In re
`Nuvasive, 842 F.3d 1376, 1381 (Fed. Cir. 2016).
`Asserted Obviousness of Claims 1 and 7 over Lavallee, Gibson,
`J.
`Strickland, and Cohen
`Petitioner contends that claims 1 and 7 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Lavallee, Gibson, Strickland, and Cohen.
`Pet. 11–46.
`Relying on Dr. Kotzin, Petitioner alleges that the combination of
`references discloses or suggests all of the limitations of challenged claims 1
`and 7 and that a person having ordinary skill in the art would have combined
`the references in the manner asserted. Id.; Ex. 1003 ¶¶ 48–130. Petitioner
`relies on Lavallee for a teaching of a predominance of the claim limitations,
`with the following exceptions. See Pet. 13–20, 25–26, 29–39, 41–45; Ex.
`1003 ¶¶ 51–70, 87–89, 98–111, 118–127.
`Petitioner contends that Lavallee teaches limitation “c,” providing a
`“highlighted expansion cue,” by teaching “+” and “-” “pointers” in Figure 1;
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`Petitioner further contends in the alternative that Gibson teaches such a
`“highlighted expansion cue” through its disclosure of a “graphical
`indicator.” Pet. 20–24; Ex. 1004, Fig. 1; Ex. 1005, Fig. 3B. Petitioner
`asserts that it would have been obvious to modify Lavallee to display
`Gibson’s graphical indicator because indication of the presence of a
`selectable data set would have been recognized as beneficial for the user;
`because it would facilitate or simplify the selection of additional or
`alternative content; and because it would be merely the application of a
`known technique to a known system ready for improvement to yield
`predictable results. Pet. 24–25.
`Petitioner asserts that limitation “e,” regarding displaying a change in
`the expansion cue if the content expansion is elected, is taught by Lavallee,
`Gibson, and Strickland. Pet. 26. Petitioner asserts that Lavallee and Gibson
`teach displaying a change in the expansion cue by simply presenting
`additional content that replaces displayed content, upon user selection.
`Pet. 27; Ex. 1004, 4:52–5:15; Ex. 1005, 2:10–27. Strickland is cited for its
`teaching of a user interface that changes the appearance of “push buttons” in
`relation to received user input. Pet. 28; Ex. 1006, 7:44–67.
`Petitioner argues that Cohen discloses playing a transition from the
`displayed first stored audio and/or visual content to the displayed second
`stored audio and/or visual content. Pet. 39–40; Ex. 1007, 1:32–45.
`In response, Patent Owner argues that the combination of references
`fails to disclose that “an interruption terminus of the first portion and a
`resume-point terminus of a continuing portion . . . are established during
`display of the first portion,” as recited in claim 1. Prelim. Resp. 3–8.
`Patent Owner further argues that the references fail to disclose or suggest
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`Patent 9,247,226 B2
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`“providing a highlighted expansion cue to the user during display.” Id. at 8–
`17. Patent Owner also contends that the references do not disclose or render
`obvious “display[ing] a change in the expansion cue.” Id. at 17–21. Finally,
`Patent Owner argues that a person having ordinary skill in the art would not
`have been motivated to combine the references. Id. at 21–26.
`Claim 1, limitation (b): Establishing interruption terminus of the first
`portion and resume-point terminus of a continuing portion during display of
`the first portion
`Petitioner’s witness explains that Lavallee discloses that “user
`
`selection during a scene creates an intermediate point at which ‘additional
`program information’ is conveyed to the user. This then ‘establishes’ the
`‘interruption terminus’ of a first part of ‘scene 2’ prior to the intermediate
`point and the ‘resume point terminus’ of a second part of ‘scene 2’ after the
`selection point.” Ex. 1003 ¶ 67.
`
`Patent Owner argues that Lavallee fails to disclose establishing (both)
`an interruption terminus of the first portion, and a resume-point terminus of
`a continuing portion, during display of the first portion. Prelim. Resp. 3–7.
`According to Patent Owner:
`information’
`[E]ven assuming
`that Lavallee’s ‘additional
`operation discloses ‘establishing’ an ‘interruption terminus’
`‘during display’ of a first portion/segment, Petitioner’s expert
`wholly fails to explain how or why the ‘resume-point terminus’
`would necessarily or inherently be ‘established’ at the same time.
`Indeed, Lavallee’s disclosures are silent
`regarding
`the
`mechanism and timing of establishing a ‘resume-point terminus’
`in its ‘additional information’ operation.
`
`Prelim. Resp. 5–6.
`
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`IPR2018-00059
`Paten