Trials@uspto.gov
`571.272.7822
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`Paper No. 11
`Filed: November 13, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK L.L.C.,
`Petitioner,
`
`v.
`
`MULTIMEDIA CONTENT MANAGEMENT LLC,
`Patent Owner.
`____________
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`IPR2019-01015
`Patent 8,799,468
`____________
`
`Before MICHELLE N. WORMMEESTER, MELISSA A. HAAPALA, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`Petitioner, Dish Network L.L.C., filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 1, 6, 13, 15, 19, 23‒25, 27‒30,
`32, 33, and 41 of U.S. Patent No. 8,799,468 (“the ’468 patent”). Petitioner
`filed a supporting Declaration of Anthony J. Wechselberger (Ex. 1006) with
`its Petition. Multimedia Content Management LLC (“Patent Owner”) filed a
`
`
`571.272.7822
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`Paper No. 11
`Filed: November 13, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK L.L.C.,
`Petitioner,
`
`v.
`
`MULTIMEDIA CONTENT MANAGEMENT LLC,
`Patent Owner.
`____________
`
`IPR2019-01015
`Patent 8,799,468
`____________
`
`Before MICHELLE N. WORMMEESTER, MELISSA A. HAAPALA, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`Petitioner, Dish Network L.L.C., filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 1, 6, 13, 15, 19, 23‒25, 27‒30,
`32, 33, and 41 of U.S. Patent No. 8,799,468 (“the ’468 patent”). Petitioner
`filed a supporting Declaration of Anthony J. Wechselberger (Ex. 1006) with
`its Petition. Multimedia Content Management LLC (“Patent Owner”) filed a
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`Preliminary Response (Paper 6, “Prelim. Resp.”) and a Declaration of Dr.
`Edwin A. Hernandez-Mondragon (Ex. 2001) in support of its Preliminary
`Response. With permission from the panel, Petitioner filed a Reply Brief
`(Paper 7, “Reply”) and Patent Owner filed a Sur-reply Brief (Paper 8, “Sur-
`reply”).
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`§ 314(a), we may not authorize an inter partes review unless the information
`in the petition and any preliminary 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.” Having considered the
`Petition, Preliminary Response, Reply, and Sur-reply, as well as the parties’
`supporting evidence, we determine that Petitioner has not demonstrated a
`reasonable likelihood that it would prevail in showing the unpatentability of
`any of claims 1, 6, 13, 15, 19, 23, 24, 25, 27, 28, 29, 30, 32, 33, and 41 of
`the ’468 patent. We, therefore, do not institute an inter partes review of
`claims 1, 6, 13, 15, 19, 23, 24, 25, 27, 28, 29, 30, 32, 33, and 41 of the ’468
`patent.
`
`I. INTRODUCTION
`A. Related Matters
`Petitioner indicates that Patent Owner asserted the ’468 patent against
`Petitioner in Multimedia Content Management, LLC v. Dish Network Corp.,
`No. 6:18-cv-00207-ADA (W.D. Tex.). Pet. vi.
`B.
`The ’468 Patent
`The ’468 patent relates to regulating access to and managing
`distribution of content in a network comprising communication gateways
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`installed at a subscriber site and internet control points installed remotely.
`Ex. 1001, Abstract.
`The ’468 patent teaches that at the time of the invention, the Internet
`provided a convenient medium for the delivery of electronic content such as
`movies, video, games, and broadband data. Id. at 1:24‒28. The distribution
`network for such content includes content providers for generating content,
`service providers for delivering content, subscriber terminals for receiving,
`displaying, and playing content, and various additional network elements
`aiding in the distribution. Id. at 1:30‒35.
`The ’468 patent teaches that service providers and content providers
`need assurance that the intellectual property distributed over these networks
`is safe from illegal downloading and transmission, a major source of lost
`revenue. Id. at 1:52‒56. The ’468 patent endeavors to provide new access
`regulation and data traffic control techniques that can be made available to
`service providers and content providers to avoid such illegal downloading
`and transmission. Id. at 2:11‒19.
`To accomplish these objectives, among others, the ’468 patent
`discloses a system for regulating access to a network, where the system
`includes gateway units, or Communication Gateways (CGs), installed at a
`subscriber’s site. Ex. 1001, 3:34‒40. The network also includes controller
`nodes, or Internet Control Points (ICPs), installed in an Internet Service
`Provider (ISP) network. Id. at 3:43‒48. ICPs control operation of CGs. Id.
`Figure 1 of the ’468 patent, which is reproduced below, depicts an example
`embodiment according to these teachings.
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`Figure 1 depicts a service preference architecture (SPA) including at least
`one ICP 50 connected to a network 52. Id. at 4:54‒58. Network 52 may be,
`for example, the Internet, and may include SPA-controlled network elements
`54 as well as non-SPA-controlled network elements 55. Id. at 4:57‒60. Also
`connected to network 52 are CGs 581 to 58n, which are each connected to a
`respective subscriber terminal 601 to 60n. Id. at 4:64‒5:3. ICP 50 controls the
`operation of CGs 58 by generating instructions which are transmitted over
`network 52 to CGs 58 and SPA-controlled network elements 54, where the
`instructions are executed. Id. at 5:19‒23.
`Petitioner notes that the ’468 patent issued from an application that
`was a continuation of U.S. Application No. 10/989,012, which was filed on
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`November 16, 2014 and issued as U.S. Patent No. 8,122,128 (“the
`’128 patent”). Pet. 3. The ’128 patent claims priority to U.S. Provisional
`Application No. 60/523,057, which was filed November 18, 2013. Thus,
`according to Petitioner, the earliest claimed priority date for the ’468 patent
`is November 18, 2013, based on the filing date of U.S. Provisional
`Application No. 60/523,057. Id. at 2. As discussed below, Petitioner
`establishes that the asserted references qualify as prior art. See Pet 2.
`Of the challenged claims, claims 1 and 23 are independent. Claims 6,
`13, 15, and 19 depend from claim 1. Claims 24, 25, 27‒30, 32, 33, and 41
`depend from claim 23. Claim 1 is illustrative of the challenged claims and
`recites:
`A system for regulating access to a service provider
`1.
`network, the system comprising:
`a controller node coupled to the service provider network,
`the controller node comprising:
`a first processor configured to generate controller
`instructions, and
`a first network interface configured to transmit the
`controller instructions over the service provider network
`to a plurality of gateway units; and
`the plurality of gateway units, each of the plurality of
`gateway units comprising:
`a user interface configured to receive user-entered
`content requests for the service provider network;
`a second network interface coupled to the service
`provider network and configured to receive the controller
`instructions from the controller node through the service
`provider network; and
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`a second processor coupled to the user interface and
`the second network
`interface, wherein
`the second
`processor is configured to selectively transmit the content
`requests to the service provider network in accordance
`with the controller instructions, and transfer received
`content data responsive to the transmitted content requests
`from the service provider network via the second network
`interface.
`Ex. 1001, 18:30‒54.
`
`C.
`Evidence Relied Upon
`Petitioner relies on the following prior art:
`Publication
`United
`States
`Patent Application
`No. 2002/0049980 A1, published April 25, 2002 (Ex. 1008,
`“Hoang ’980”);
`United States Patent No. 5,974,503, issued October 26,
`1999 (Ex. 1015, “Venkatesh”);
`United States Patent No. 6,725,267 B1, issued April 20,
`2004 (Ex. 1009, “Hoang ’267”);
`United States Patent Application Publication No.
`2003/0208561 A1, published November 6, 2003 (Ex. 1010,
`“Hoang ’561”);
`OpenCableTM Architecture, Michael Adams, published
`2000 (Ex. 1011, “Open Cable”);
`Canadian Patent No. 2,321,462, issued April 6, 2004 (Ex.
`1013, “Cameron”); and
`United States Patent Application Publication No.
`2002/0162109 A1, published Oct. 31, 2002 (Ex. 1014,
`“Shteyn”).
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`D.
`The Asserted Grounds
`Petitioner asserts the following grounds of unpatentability:
`Claim(s)
`Challenged
`1, 23, 24, 25, 30
`
`35 U.S.C. §
`
`Reference(s)
`
`103(a)
`
`Hoang ’980
`
`6, 28
`
`13, 27
`
`19, 29
`
`15, 32
`
`33
`
`41
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Hoang ’980 and Venkatesh
`
`Hoang ’980 and Hoang ’267
`
`Hoang ’980 and Hoang ’561
`
`Hoang ’980 and OpenCable
`
`Hoang ’980 and Cameron
`
`Hoang ’980 and Shteyn
`
`II. ANALYSIS
`A. Claim Construction
`Because this inter partes review is based on a petition filed after
`November 13, 2018,1 we construe each 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). Accordingly, our claim construction standard is the
`
`
`1 On October 11, 2018, the USPTO revised its rules to harmonize the
`Board’s claim construction standard with that used in civil actions under
`35 U.S.C. § 282(b) in federal district courts. Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(now codified at 37 C.F.R. pt. 42 (2019)). This rule change applies to
`petitions filed on or after November 13, 2018.
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`same as that applied by a district court in a civil action under 35 U.S.C.
`§ 282(b). See id. Under this standard, claim terms are generally given their
`plain and ordinary meaning as would be understood by a person of ordinary
`skill in the art at the time of the invention and in the context of the entire
`patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
`2005) (en banc). “There are only two exceptions to this general rule: 1)
`when a patentee sets out a definition and acts as his own lexicographer, or 2)
`when the patentee disavows the full scope of a claim term either in the
`specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am.
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`Petitioner proposes constructions for the following terms: “to
`generate[ing . . .] controller instructions” (Pet. 8‒9); “a controller node” (Pet.
`9‒10); “a service provider network” (Pet. 10‒12); “selectively transmit[ting,
`by the plurality of gateway units,] the content requests to the service
`provider network in accordance with the controller instructions” (Pet. 13);
`and “gateway units” (Pet. 13‒14). Patent Owner proposes constructions for
`the same terms. Prelim. Resp. 3‒5. The District Court in the related case
`identified above construed each of the proposed terms. See Ex. 2003.
`Based on the current record and as explained further below, we
`determine that no terms require explicit construction. 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))).
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`B.
`Level of Ordinary Skill in the Art
`With regard to the level of ordinary skill in the art, Petitioner states a
`person of ordinary skill in the art at the time of the alleged invention “would
`have a bachelor’s degree in Electrical Engineering, Computer Engineering,
`Computer Science or a similar technology degree and at least two years of
`relevant industry experience, including Internet networking architectures,
`digital programming delivery in broadcast, cable or satellite television
`networks, and associated set top boxes.” Pet. 7. Petitioner further states that
`“the prior art reflects the level of skill in the art.” Pet. 7. Mr.
`Wechselberger’s testimony supports Petitioner’s position. Ex. 1006 ¶ 38.
`Patent Owner proposes a different level of ordinary skill in the art,
`which Patent Owner asserted in a prior petition. Prelim. Resp. 2. Patent
`Owner asserts that for the purposes of determining whether to institute the
`Petition, the differences between its previously-proposed definition and
`Petitioner’s proposed definition are not dispositive. Id. at 2‒3.
`We are satisfied that Petitioner’s proposed definition comports with
`the qualifications a person would need to understand and implement the
`teachings of the ’468 patent and the prior art of record. Accordingly, we
`apply Petitioner’s definition of the level of ordinary skill in the art for
`purposes of this Decision.
`C. Ground 1: Alleged Obviousness of Claims 1, 23, 24, 25, and 30
`over Hoang ’980
`We have reviewed the Petition, Preliminary Response, Reply, and
`Sur-reply, as well as the parties’ supporting evidence, and we determine that,
`on the present record, Petitioner has not shown a reasonable likelihood that it
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`would prevail in establishing the unpatentability of any of claims 1, 23, 24,
`25, and 30 as obvious over Hoang ’980.
`1.
`Hoang ’980
`Hoang ’980 is a United States patent application publication directed
`to a method for controlling client access to data on demand (DOD) services.
`Ex. 1008, Abstract. Hoang ’980 teaches that the prior art provided a variety
`of mechanisms for controlling client access to DOD services through set top
`boxes (STB), but that one problem faced in the industry was being able to
`provide such control mechanisms without using bidirectional
`communications. Id. ¶ 5. Hoang ’980 teaches that set top boxes allow cable
`providers to send a mixed signal with some programs being scrambled to
`allow only clients with special set top boxes to receive particular programs.
`Id. However, this did not address the issue of delinquent payments or
`changes in level of service without exchanging set top boxes. Id.
`Bidirectional set top boxes fix these problems, but at the cost of significant
`processing and bandwidth resources, and require changing existing
`unidirectional systems. Id.
`Hoang ’980 describes the operation of both prior art bidirectional
`systems (see, e.g., Ex. 1008 ¶¶ 12‒25) and the disclosed and claimed
`invention involving unidirectional systems (see, e.g., Ex. 1008 ¶¶ 49‒93).
`Broadly speaking, Hoang ’980 teaches the prior art bidirectional system
`includes a DOD server and a number of DOD clients, where the server sends
`an electronic program guide to each client depending on factors such as
`subscription levels, available services, personalized settings, and payment
`history. Id. ¶ 20. A client sends demands for specific data to the server,
`which determines whether the client is authorized to receive the requested
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`data. Id. ¶ 21. If the server determines the client is authorized, the server
`transmits the requested data to the client. Id. In other words, the
`determination of whether the client may access a particular service is
`performed at the server, not at the client. Hoang ’980 teaches the prior art
`did not teach a method for easily controlling a client’s access to DOD
`services without bidirectional communication, and noted that it is desirable
`to provide such control in a unidirectional system. Id. ¶ 25.
`Hoang ’980 teaches an improvement to the disclosed prior art systems
`wherein the DOD server communicates a client’s DOD account status to a
`client using unidirectional communications. Id. ¶ 49. In particular, the DOD
`server transmits a subscription data packet for controlling which DOD
`services are available to selected clients. Id. ¶ 61. The subscription data
`packet includes, for example, a version identifier, client identification codes,
`subscription service, codes, and warning codes. Id. This subscription data
`packet is transmitted to the client’s set top box at regular intervals, allowing
`the service provide to control which DOD services each client may access.
`Id.
`
`Hoang ’980 teaches that from a client perspective, the client uses a set
`top box to request access to a particular DOD service, such as selecting a
`program from an electronic program guide. Ex. 1008 ¶ 73. The set top box
`retrieves the subscription level corresponding to the selected DOD service
`and determines whether the client’s subscription level is sufficient to access
`the selected service. Id. ¶¶ 74‒78. In other words, the determination of
`whether the client may access a particular service is performed at the client,
`not at the server.
`We agree with Petitioner (Pet. 4) that Hoang ’980 qualifies as prior art
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`under at least 35 U.S.C. § 102(b)2 because Hoang’s publication date of April
`25, 2001 is more than one year before the earliest possible priority date of
`the ’468 patent, which is November 18, 2003. See Ex. 1002, code (60);
`Ex. 1008, code (43).
`2.
`Independent Claim 1
`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.” See 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. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We analyze Petitioner’s obviousness grounds with the principles identified
`above in mind.
`Petitioner relies on both the unidirectional and bidirectional systems
`taught by Hoang ’980 to meet the limitations of claim 1. For example,
`Petitioner relies on the unidirectional embodiment that employs a central
`controlling server to generate subscription data packets to be transmitted to
`client’s set top boxes for the limitation “a controller node coupled to the
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the priority
`date of the ’468 patent is before the effective date of the applicable AIA
`amendments, the pre-AIA versions of 35 U.S.C. §§ 102 and 103 apply.
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`service provider network.” See Pet. 20‒25 (citing Ex. 1008, Fig. 7).
`Petitioner relies on the bidirectional embodiment that transmits content
`requests to the cable system service provider network for the limitation “a
`second processor coupled to the user interface and the second network
`interface, wherein the second processor is configured to selectively transmit
`the content requests to the service provider network in accordance with the
`controller instructions.” See Pet. 37‒44 (citing Ex. 1008, Figs. 3, 4, 6).
`Petitioner contends an ordinarily skilled artisan would have been
`motivated to combine the prior art bidirectional system with the improved
`unidirectional system because Hoang ’980 discloses that “all aspects of the
`present invention can be implemented within the bi-directional
`communication paradigm, the only difference being that even more features
`can be provided to the digital broadcast DOD user when a bidirectional
`communication link is available.” See, e.g., id. at 17‒18 (citing Ex. 1008
`¶ 49) (emphasis omitted). Petitioner contends that if Hoang’s preferred
`embodiment were implemented with only a unidirectional communications
`link between the DOD server and the client’s set top box, the user would not
`be able to control when programming is delivered from the DOD server to
`the set top box because there would be no communications link to allow the
`user to specify when the user wants to view the programming. Id. at 17‒18.
`Petitioner asserts that a unidirectional system would, therefore, be limited to
`controlling access to linear programming, not user-initiated on-demand
`programming. Id. at 18 (citing Ex. 1006 ¶ 109). Mr. Wechselberger’s
`testimony supports Petitioner’s assertions. Ex. 1006 ¶ 109.
`Petitioner asserts there are several reasons an ordinarily skilled artisan
`would have been motivated to include access to video on demand
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`programming in the disclosed systems. Pet. 18‒19. For example, Petitioner
`contends video on demand programming puts control into the customer’s
`hands (Id. at 18 (citing Ex. 1011, 223)), customer response to video on
`demand programming is enthusiastic (Pet. 19 (citing Ex. 1011, 227)), video
`on demand services emulate the video rental business (id.), on-demand
`services add value for customers (Pet. 19 (citing Ex. 1011, 226), and on-
`demand services enhance the customer’s perception of the overall cable
`system (id.). Mr. Wechselberger’s testimony supports Petitioner’s assertions.
`Ex. 1006 ¶ 110.
`Patent Owner argues Petitioner has failed to meet its burden in
`establishing that an ordinarily skilled artisan would have been motivated to
`combine the prior art bidirectional system with the improved unidirectional
`system disclosed in Hoang ’980. Prelim. Resp. 12‒15. In particular, Patent
`Owner argues the unidirectional and bidirectional systems are not easily
`interchangeable or interoperable. Id. at 12. Patent Owner also argues
`Petitioner has not shown that the unidirectional and bidirectional systems are
`predictable variations of each other. Id. at 14. According to Patent Owner,
`Hoang ’980 disparages the bidirectional system to extoll the virtues of
`unidirectional systems. Id. at 14 (citing Ex. 1008 ¶ 5).
`Patent Owner also argues that Petitioner’s reliance on Hoang’s
`teaching that “those skilled in the art will recognize that all aspects of the
`present invention can be implemented within the bidirectional
`communication paradigm” is misplaced because Petitioner does not address
`Hoang ’980’s teachings that processing and bandwidth resources are a
`significant limitation on the extent to which the unidirectional and
`bidirectional systems may be combined. Id. at 14 (citing Ex. 1008 ¶¶ 5, 49).
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`Patent Owner argues combining the bidirectional and unidirectional systems
`would require the expenditure of significant processing and bandwidth in
`order to function, defeating the purpose of implementing access control
`using unidirectional communications, the primary benefit identified in
`Hoang ’980. See Prelim. Resp. 14‒15. Dr. Hernandez’s testimony supports
`Patent Owner’s assertions. See Ex. 2001 ¶¶ 54‒62.
`Hoang ’980 teaches that one problem in the video-on-demand and
`data-on-demand industry is being able to control the access of a client’s set
`top box to on-demand programming without using bidirectional
`communications. Ex. 1008 ¶ 5. Hoang ’980 teaches traditional unidirectional
`communications had limitations in controlling access to programming,
`necessitating the use of bidirectional communications at the cost of a
`significant increase processing and bandwidth resources. Id. ¶ 5. Hoang ’980
`explains the manner in which bidirectional communications were used in
`prior art systems to control access to programming, detailing such
`communications in embodiments described in Figures 4‒6. Id. ¶¶ 15‒24.
`Hoang ’980 teaches that its invention replaces the bidirectional
`communications used to control access to programming in prior art systems
`with an improved method that only needs unidirectional communications. Id.
`¶¶ 25‒27.
`Petitioner contends that an ordinarily skilled artisan would have been
`motivated to combine the prior art method of controlling access to
`programming using bidirectional communications with the improved method
`of controlling access to programming using only unidirectional
`communications because Hoang ’980 teaches “those skilled in the art will
`recognize that all aspects of the present invention can be implemented within
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`the bi-directional communication paradigm, the only difference being that
`even more features can be provided to the digital broadcast and DOD user
`when a bi-directional communication link is available.” Ex. 1008 ¶ 49.
`Petitioner relies on Hoang ’980’s teaching that its invention can be
`implemented within the bidirectional communication paradigm, but
`Petitioner has not sufficiently explained why an ordinarily skilled artisan
`would have been motivated to use both the prior art access control using
`bidirectional communication and the improved access control using
`unidirectional communication at the same time. Hoang ’980 teaches “the
`present invention teaches methods and systems for communicating a client’s
`DOD account status to a client using uni-directional communications.” Ex.
`1008 ¶ 49. Thus, unidirectional communications are used to send a client’s
`on-demand account status from a server to a client.
`Hoang ’980’s teaching that “all aspects of the present invention can be
`implemented within the bi-directional communication paradigm” indicates
`that a server within a system with bidirectional communication capabilities
`could transmit a client’s on-demand status to a client. However, Petitioner’s
`inference that this system would then also utilize account control using the
`resource-intensive bidirectional communications is speculative and not
`sufficiently supported by the evidence of record.
`Moreover, Petitioner’s proposed combination would use both
`unidirectional access control and bidirectional access control for the same
`data request. Petitioner argues the benefits of on-demand video would have
`motivated an ordinarily skilled artisan to implement access control using
`both unidirectional and bidirectional communications (Pet. 18‒20). Mr.
`Wechselberger’s testimony that user-initiated video-on-demand
`
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`IPR2019-01015
`Patent 8,799,468
`
`programming was a beneficial feature that cannot be used in a unidirectional
`system explains why an ordinarily skilled artisan may have been motivated
`to use bidirectional communications to control access to on-demand video
`content. Ex. 1006 ¶¶ 109‒110. But Petitioner has failed to establish why an
`ordinarily skilled artisan would have used both access control paradigms for
`the same data request. More specifically, with respect to the proposed
`combination, Petitioner does not explain persuasively why an ordinarily
`skilled artisan would have continued to use unidirectional communications
`to provide access control for a data request when using bidirectional
`communications already provides access control for the same data request.
`For these reasons, we conclude that Petitioner has not demonstrated a
`reasonable likelihood of prevailing on its challenge of independent claim 1.
`3.
`Claims 23, 24, 25, and 30
`Independent claim 23 recites a method with similar limitations to
`claim 1. Petitioner contends Hoang ’980 teaches the limitations of claim 23
`for the same reasons as claim 1 and does not provide any additional
`reasoning to support combining the different embodiments. See Pet. 44. We,
`therefore, conclude that Petitioner has not demonstrated a reasonable
`likelihood of prevailing on its challenge of independent claim 23 for the
`same reasons as independent claim 1. We also conclude Petitioner has not
`demonstrated a reasonable likelihood of prevailing on claims 24, 25, and 30,
`which depend from claim 23.
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`D. Grounds 2‒7: Alleged Obviousness of Claims 6, 13, 15, 19, 27,
`28, 29, 32, 33, and 41 over Hoang ’980 in view of Venkatesh
`(Claims 6 and 28), Hoang ’267 (Claims 13 and 27), Hoang ’561
`(Claism 19 and 29), OpenCable (Claims 15 and 32), Cameron
`(Claim 33), and Shteyn (Claim 41)
`Claims 6, 13, 15, and 19 each depend from claim 1. Claims 27, 28, 29,
`32, 33, and 41 each depend from claim 23. Petitioner does not contend that
`the additional references relied upon in Grounds 2‒7 teach or suggest the
`limitations of claims 1 and 23, instead relying on Hoang ’980 in the same
`manner as described above with respect to claim 1. We, therefore, conclude
`that Petitioner has not demonstrated a reasonable likelihood of prevailing on
`its challenge of dependent claims 6, 13, 15, 19, 27, 28, 29, 32, 33, and 41 for
`the same reasons as independent claim 1.
`
`III. CONCLUSION
`Petitioner has not demonstrated a reasonable likelihood of prevailing
`
`on its challenges to claims 1, 6, 13, 15, 19, 23‒25, 27‒30, 32, 33, and 41 of
`the ’468 patent as set forth above.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied and no inter partes review is
`instituted.
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`IPR2019-01015
`Patent 8,799,468
`
`For PETITIONER:
`Eliot Williams
`Hopkins Guy
`Ali Dhanani
`Kurt Pankratz
`Bradley Bowling
`BAKER BOTTS LLP
`eliot.williams@bakerbotts.com
`hop.guy@bakerbotts.com
`ali.dhanani@bakerbotts.com
`kurt.pankratz@bakerbotts.com
`brad.bowling@bakerbotts.com
`
`
`For PATENT OWNER:
`Benjamin Johnson
`Jeffrey Toler
`TOLER LAW GROUP PC
`bjohnson@tlgiplaw.com
`jtoler@tlgiplaw.com
`
`
`
`
`19
`
`
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