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`Paper No. 8
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`TikTok, Inc.,
`Petitioner
`
`v.
`
`10Tales, Inc.,
`Patent Owner
`_______________________
`
`Case IPR2021-00476
`U.S. Patent 8,856,030
`____________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`

`

`Patent Owner’s Preliminary Response
`
`
`
`IPR2021-00476
`U.S. Patent No. 8,856,030
`
`
`
`
`
`TABLE OF CONTENTS
`Introduction .................................................................................................... 1
`I.
`Overview of the ’030 Patent ........................................................................... 3
`II.
`Summary of Prior Art Considered During Original Prosecution ................... 6
`III.
`IV. Summary of Petitioner’s Prior Art ............................................................... 12
`V.
`The Board Should Deny the Petition Under 35 U.S.C. § 325(d) ................. 19
`VI. The Challenged Claims are Patentable ......................................................... 23
`A. Ground 1: Claims 1 and 2 are Patentable Over Bar-El in View
`of Reisman Because Petitioner has not Demonstrated that Bar-
`El in View of Reisman Discloses the Claimed Social Network
`User Attributes ................................................................................... 24
`Ground 2: Claims 1 and 2 are Patentable Over Bar-El in View
`of Leeke and Further in View of Reisman Because Petitioner
`has not Demonstrated that Bar-El in View of Leeke and
`Reisman Discloses the Claimed Social Network User Attributes ..... 34
`Ground 3: Claims 1 and 2 are Patentable Over Leeke in View
`of Reisman Because Petitioner has not Demonstrated that
`Leeke in View of Reisman Discloses the Claimed Social
`Network User Attributes .................................................................... 34
`VII. The Board Should Deny the Petition Under Its Section 314(a)
`Discretion Based on Faster-Concluding Parallel Litigation That Will
`Resolve Substantially the Same Issues ......................................................... 39
`A.
`Fintiv Factor 1 .................................................................................... 40
`B.
`Fintiv Factor 2 .................................................................................... 41
`C.
`Fintiv Factor 3 .................................................................................... 42
`D.
`Fintiv Factor 4 .................................................................................... 42
`E.
`Fintiv Factor 5 .................................................................................... 45
`F.
`Fintiv Factor 6 .................................................................................... 45
`VIII. Discretionary Denial is Important and Appropriate to Deter Certain
`Types of Petitions that Undermine the Economy and the Integrity of
`the Patent System, and Where Extrinsic Factors Might Threaten
`Timely Completion, Under the Board’s Authority Under 35 U.S.C. §§
`314(a) and 316(b) ......................................................................................... 46
`IX. CONCLUSION ............................................................................................ 56
`
`B.
`
`C.
`
`
`
`i
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`

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`Patent Owner’s Preliminary Response
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`TABLE OF AUTHORITIES
`
`IPR2021-00476
`U.S. Patent No. 8,856,030
`
`
`Cases
`Acumed LLC v. Stryker Corp.,
`483 F.3d 800 (Fed. Cir. 2007) ............................................................................... 4
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 (Feb. 13, 2020) ..................................................... passim
`Amazon.com, Inc. v. Freshub, Ltd.,
`IPR2020-01145, Paper 10 (PTAB Jan. 11, 2021) ............................................... 44
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ................................... passim
`Boragen, Inc. v. Syngenta Participations AG,
`IPR2020-00124, Paper 16 (P.T.A.B. May 5, 2020) ............................................ 22
`Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC,
`677 F.3d 1361 (Fed. Cir. 2012) ............................................................................. 4
`In re Apple,
`979 F.3d 1332 (Fed. Cir. 2020) ........................................................................... 41
`In re Nuvasive,
`842 F.3d 1376 (Fed. Cir. 2016) ........................................................................... 33
`K/S Himpp v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ........................................................................... 25
`Kiosoft Techs., LLC v. Payrange Inc.,
`CBM2020-00026, Paper 11 (P.T.A.B. Mar. 22, 2021) ....................................... 40
`Regeneron Pharma., Inc. v. Kymab Ltd.,
`IPR2019-01580, Paper 9 (P.T.A.B. Mar. 18, 2020) ............................................ 22
`Samsung Elec. Co. Ltd. v. Clear Imaging Research, LLC,
`IPR2020-01402, Paper 12 (P.T.A.B. Mar. 4, 2021) ............................................ 44
`Sony Interactive Entertainment LLC v. BOT M8, LLC,
`IPR2020-01218, Paper 8 (P.T.A.B. Jan. 27, 2021) ............................................. 23
`Sotera Wireless, Inc. v. Massimo Corp.,
`IPR2020-01019, Paper 12 (P.T.A.B. Dec. 1, 2020) ............................................ 41
`T-Max (Hangzhou) Tech. Co., Ltd. v. Lund Motion Prods., Inc.,
`IPR2019-00503, Paper 7 (P.T.A.B. May 2, 2019) .............................................. 24
`
`
`
`ii
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`

`

`IPR2021-00476
`U.S. Patent No. 8,856,030
`
`
`Patent Owner’s Preliminary Response
`
`
`
`
`
`Travelocity.com L.P. v. Cronos Techs., LLC,
`CBM2014-00082, Paper 12 (P.T.A.B. Oct. 16, 2014) .......................................... 2
`Statutes
`35 U.S.C. § 103 ....................................................................................................... 23
`35 U.S.C. § 314(a) ...................................................................................... 23, 39, 46
`35 U.S.C. § 316(b) ............................................................................................ 46, 55
`35 U.S.C. § 325(d) ............................................................................................ 22, 23
`Other Authorities
`PTAB Consolidated Trial Practice Guide, November 2019 ................................... 25
`
`
`
`
`iii
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`Patent Owner’s Preliminary Response
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`EXHIBIT LIST
`
`
`Ex. No.
`
`Description
`
`IPR2021-00476
`U.S. Patent No. 8,856,030
`
`
`U.S. Patent No. 8,856,030 to Russek
`
`U.S. Patent No. 8,856,030 File History
`
`Declaration of Kevin Almeroth
`
`WO 1999/026415A1 to Bar-El
`U.S. Patent Pub. No. 2011021941 to
`Reisman
`
`Identifier
`
`’030 Patent
`
`’030 Patent File
`History
`Almeroth
`Declaration
`
`Bar-El
`
`Reisman
`
`TTI- 1001
`
`TTI- 1002
`
`TTI- 1003
`
`TTI- 1004
`
`TTI- 1005
`
`TTI- 1006
`
`TTI- 1007
`
`TTI- 1008
`
`TTI- 1009
`
`TTI- 1010
`
`TTI- 1011
`
`TTI- 1012
`
`
`
`
`
`
`
`U.S. Patent No. 6587491 to Leeke et. al
`
`Leeke
`
`
`
`
`
`
`
`Reisman Provisional 60/455,433
`
`Reisman Provisional 60/408,605
`
`Reisman Provisional 60/379,635
`
`PCT Pub. WO2003015406 to Dempski
`Nielsen Adrelevance. Available at
`web.archive.org/web/20030210102338/http:
`//www.adrelevance.com/services/services_t
`our.jsp
`Nielsen NetRatings. Available at
`web.archive.org/web/20021010055740/http:
`//www.nielsen-
`netratings.com/corporate/partners.htm
`
`Reisman
`Provisional ’433
`
`Reisman
`Provisional ’605
`
`Reisman
`Provisional ’635
`
`Dempski
`
`Nielsen
`Netratings
`
`Nielsen Monitor
`
`iv
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`

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`Patent Owner’s Preliminary Response
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`IPR2021-00476
`U.S. Patent No. 8,856,030
`
`
`Ex. No.
`
`TTI- 1013
`
`TTI- 1014
`
`TTI- 1015
`
`TTI- 1016
`
`TTI- 1017
`
`TTI- 1018
`
`TTI- 1019
`
`TTI- 1020
`
`Description
`Nielsen Monitor. Available at
`web.archive.org/web/20030208081141/http:
`//nielsen.com/nielsen_monitor-plus.html
`Recommending and Evaluating Choices in a
`Virtual Community of Use to Hill
`
`Social Information Filtering for Music
`Recommendation to Shardanand
`
`Virtual Communities of Transaction to
`Schubert
`, “Content-Based Collaborative
`Recommendation,” Comm. ACM, Mar. 1997,
`to Balabanovic et. al.
`Data Mining Industry Emerging Trends to
`Aldana
`
`U.S. Patent No. 7483871 to Herz
`
`U.S. Patent 7483871 to Patel et. al.
`
`TTI- 1021
`
`WO 1999046702A1 to Hjelsvold
`
`TII- 1022
`
`WO 2001/077876A2 to Bolnick
`
`Identifier
`
`Nielsen
`Adrelevance
`
`Hill
`
`Shardanand
`
`Schubert
`
`Balabanovic
`
`Aldana
`
`Herz
`
`Patel
`
`Hjelsvold
`
`Bolnick
`
`TTI- 1023
`
`U.S. Patent No. 7,472,110 to Achlioptas
`
`Achlioptas
`
`
`
`v
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`Patent Owner’s Preliminary Response
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`IPR2021-00476
`U.S. Patent No. 8,856,030
`
`
`Ex. No.
`
`
`TTI- 1024
`
`TTI- 1025
`
`Description
`Groove Networks’ Groovy Collaboration
`Tool (December 31, 2001), available at:
`https://www.mcpressonline.com/social/colla
`boration-messaging/groove-networks-
`groovy-collaboration-tool/print
`Amazon.com Recommendations to Linden et.
`al
`
`TTI- 1026
`
`U.S. Patent No. 3595987 to Vlahos
`
`Identifier
`
`Groove Networks
`
`Linden
`
`Vlahos
`
`TTI- 1027
`
`U.S. Patent Pub. 20030066078 to Bjorgan
`
`Bjorgan
`
`TTI- 1028
`
`U.S. Patent No. 6,357,042 to Srinivasan et. al. Srinivasan
`
`TTI- 1029
`
`U.S. Patent No. 6,272584 to Stancil
`
`Stancil
`
`TTI- 1030
`
`U.S. Patent No. 6,442,657 to Hunt
`
`Hunt
`
`TTI- 1031
`
`U.S. Patent No. 10,679,822 File History
`
`‘822 Patent File
`History
`
`TTI- 1032
`
`U.S. Patent No. 5754787 to Dedrick
`
`Dedrick
`
`TTI- 1033
`
`U.S. Patent 7,904,922 to Haberman
`
`Haberman
`
`TTI- 1034
`
`10Tales’ Preliminary Infringement
`Contentions
`
`Infringement
`Contentions
`
`
`
`vi
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`Patent Owner’s Preliminary Response
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`IPR2021-00476
`U.S. Patent No. 8,856,030
`
`
`Ex. No.
`
`Description
`
`Identifier
`
`TTI- 1035
`
`U.S. Patent Pub. 20030177063 to Currans
`
`Currans
`
`TTI- 1036
`
`Scheduling Order in Parallel Case 6:20-cv-
`00810-ADA
`
`Scheduling Order
`
`TTI- 1037
`
`Western District Texas COVID Order
`
`COVID Order
`
`TTI- 1038
`
`MV3 v Roku Docket
`
`TTI- 1039
`
`Email Stipulation
`
`MV3 v Roku
`Docket
`
`Stipulation
`
`
`
`
`TTI- 1040
`
`10Tales-2001
`
`10Tales-2002
`
`Those Who Tied Fortune to GeoCities Yell
`Yahoo! All the Way to the Bank (January 29,
`1999), available at:
`https://www.mcpressonline.com/social/collab
`oration-messaging/groove-networks-
`groovy-collaboration-tool/print
`Defendants’ Motion for a Preliminary
`Injunction in Case No. 1:20-cv-02658-CJN
`(D.D.C.), filed September 25, 2020
`Proposed Prohibited Transactions Related to
`TikTok Pursuant to Executive Order 13942
`
`10Tales-2003 Memorandum Opinion in Case No. 1-20-cv-
`02658-CJN, filed September 27, 2020
`
`GeoCities
`
`Ex. 2001
`
`Ex. 2002
`
`Ex. 2003
`
`10Tales-2004 Expert Declaration of Mark Cohen
`
`Ex. 2004
`
`10Tales-2005 Expert Declaration and Report of Suzanne
`Harrison
`
`Ex. 2005
`
`
`
`vii
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`Patent Owner’s Preliminary Response
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`IPR2021-00476
`U.S. Patent No. 8,856,030
`
`
`Ex. No.
`Description
`10Tales-2006 Defendants’ Invalidity Contentions in Case
`No. 6:20-cv-810-ADA
`
`Identifier
`
`Ex. 2006
`
`
`
`
`
`
`
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`viii
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`Patent Owner’s Preliminary Response
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`Patent Owner 10Tales, Inc. (“10Tales”) respectfully opposes Petitioner
`
`IPR2021-00476
`U.S. Patent No. 8,856,030
`
`
`TikTok Inc.’s (“TikTok’s”) Petition for Inter Partes Review of U.S. Patent No.
`
`8,856,030 (EX. 1001, “the ’030 Patent”). The Board should deny that Petition and
`
`decline to institute. TikTok did not establish a reasonable likelihood of proving the
`
`challenged claims unpatentable by a preponderance of the evidence. The proposed
`
`references lack the claimed retrieval of social network information containing user
`
`attributes, used for the provision of content that is enhanced for a user.
`
`In the alternative, the Board should use its discretion to decline to institute.
`
`
`
`I.
`
`Introduction
`
`The challenged claims of the ’030 Patent cover a novel system that
`
`personalizes digital media for a user. Recognizing that it can be “difficult to keep
`
`the interest of individuals within [a] market segment” because a media presentation
`
`“may be so generic that the user cannot respond to or relate to the work,” inventor
`
`David Russek set out to devise an improved digital media presentation system.
`
`(See EX. 1001 2:41-52). Mr. Russek realized the great sway a person’s interactions
`
`with an online community can hold over a person’s self-identification. (EX. 1001
`
`8:1-6, 9:53-59, 13:16-17, 20:9-37). In other words, what we do in a community,
`
`among our friends, helps us define for ourselves who we are and what our interests
`
`and inclinations are, both consciously and subconsciously. In turn, this realization
`
`set the stage for development to add a “social” element for provision of media
`
`
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`1
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`Patent Owner’s Preliminary Response
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`content that is “enhanced and more impacting for a user.” (EX. 1001 Abstract;
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`IPR2021-00476
`U.S. Patent No. 8,856,030
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`12:11-62).
`
`As eventually claimed after a thorough examination, the claims focus on the
`
`retrieval of social network information containing user attributes, used for the
`
`provision of content that is enhanced for a particular user. (EX. 1001 21:13-22:15;
`
`Abstract). Those user attributes facilitate creation of a user specific composite
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`digital media display, to further personalize a feed.
`
`The Board should deny the Petition as Petitioner has not demonstrated that
`
`the cited references disclose the claimed retrieval of social network information
`
`containing user attributes, used for the provision of content that is enhanced for a
`
`user. At most, each of the three references named by Petitioner (Bar-El, Leeke,
`
`Reisman) selects digital media assets in the well-known conventional way: through
`
`user demographics, affinities selected by a user, and other attribute sources that are
`
`not social networks. As such, Petitioner’s references are less relevant than the prior
`
`art considered during original examination.
`
`Although a variety of reasons exist for why the ’030 Patent is valid over
`
`Petitioner’s asserted references, this Preliminary Response focuses on only limited
`
`reasons why inter partes review should not be instituted. See Travelocity.com L.P.
`
`v. Cronos Techs., LLC, CBM2014-00082, Paper 12 (P.T.A.B. Oct. 16, 2014), at 10
`
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`2
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`Patent Owner’s Preliminary Response
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`(“[N]othing may be gleaned from the Patent Owner’s challenge or failure to
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`IPR2021-00476
`U.S. Patent No. 8,856,030
`
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`challenge the grounds of unpatentability for any particular reason.”).
`
`
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`II. Overview of the ’030 Patent
`
`The ’030 Patent is directed to systems for presenting a personalized digital
`
`experience for a user, informed by the user’s online social networking activity. The
`
`’030 Patent dates back to the nascent stages of online social networking. David
`
`Russek was the first to devise a system for tapping into online social networking
`
`information to tailor content for users to enrich their experience.
`
`Claim 1 of the ’030 Patent is directed to a system that identifies a first set of
`
`digital content for transmitting to a user based on that user’s profile. The claimed
`
`system acquires additional information about the user based on the user’s
`
`interaction with a social network. Based upon that additional information, the
`
`system identifies a second, more personalized set of digital content to transmit to
`
`the user to improve the user’s experience.
`
`As explained in the ’030 Patent specification, the invention “allow[s] for
`
`customizing and personalizing content based on a combination of the user’s
`
`demographics, psychodemographics, cognitive states, emotional states, social
`
`placement and group interaction dynamics within an online community, and/or
`
`affinity for certain elements (images, sounds, segments, graphics, video, text,
`
`dialog), self-provided narrating content, internal narrative traits preference
`
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`3
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`Patent Owner’s Preliminary Response
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`topology, and expectation level and temporal spacing of assets within the
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`IPR2021-00476
`U.S. Patent No. 8,856,030
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`narrative.” (EX. 1001 2:65-3:7, emphasis added). Although the specification as just
`
`quoted names nearly a dozen possible parameters, only one ended up as an express
`
`personalization claim limitation: social network user attributes. See Chicago Bd.
`
`Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361, 1690 (Fed. Cir. 2012)
`
`(different specification terms are presumed to convey different meanings); Acumed
`
`LLC v. Stryker Corp., 483 F.3d 800, 807 (Fed. Cir. 2007) (same).
`
`The relevant claim language notably does not use the term “user attributes”
`
`unmodified. Such language is modified and narrowed to be “user attributes found
`
`in the user social network information.” (EX. 1001 22:1-2). This plain language
`
`and ordinary meaning distinguish conventionally-known user attribute sources,
`
`such as mere demographic, psychographic, behavioral or questionnaire-based
`
`information. Thus, despite Petitioner’s repeated citation to the patent’s definition
`
`of “user attributes,” this definition standing alone is of limited use in the
`
`patentability analysis. In other words, “user attributes” may broadly be “aspects,
`
`characteristics, and qualities of the user that are useful for determining (matching,
`
`correlating, and selecting) digital media assets” (EX. 1001 6:32-38), but the
`
`property rights defined by the personalization features of the claims only
`
`encompass those “user attributes” sourced from “social network information.”
`
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`4
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`Patent Owner’s Preliminary Response
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`Figure 5A in the ’030 Patent illustrates this diagrammatically.
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`IPR2021-00476
`U.S. Patent No. 8,856,030
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`The specification describes the relevant part of this figure to show that “user 501
`
`may participate in an online community system 521 in which the server 590 sends
`
`the user ID 520 to the online community system and receives lists of community
`
`user attributes 515 and active vs. inactive status.” (EX. 1001 12:22-28). The
`
`specification further explains that this may involve consultation of databases “such
`
`as a group and social dynamics database 518,” illustrated in Figure 5B. (EX. 1001
`
`12:47-62). Consistently during prosecution, the applicant distinguished Srinivasan
`
`(EX. 1028) (a reference described by the examiner as “the closest prior art” (EX.
`
`1002 at 12)), by noting that it “does not utilize social network information obtained
`
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`5
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`Patent Owner’s Preliminary Response
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`
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`from a source external to the presentation (e.g. video display of Srinivasan).” (EX.
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`IPR2021-00476
`U.S. Patent No. 8,856,030
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`1002 at 102). The examiner agreed, noting that Srinivasan “gets user attribute
`
`information by asking the users.” (EX. 1002 at 12).
`
`
`
`Thus, as the specification explains, the system can receive “user attributes”
`
`from interactions with an online community, which can be used to personalize the
`
`user’s experience. (EX. 1001 12:22-30). The specification distinguishes this source
`
`for “user attributes” from others by describing it independently as “social
`
`placement and group interaction dynamics within an online community.” (EX.
`
`1001 2:65-3:7, emphasis added; see also 3:18-23; 8:1-6; 9:53-59; 11:11-16). Claim
`
`1 and the intrinsic record shows that “user social network information” means
`
`information relating to a particular user’s interaction within a networked
`
`community. It is this information that supplies the “user attributes” used in claims
`
`1 and 2, and that the ultimate personalized composite media experience is “based
`
`on.” (EX. 1001 21:18).
`
`
`
`III. Summary of Prior Art Considered During Original Prosecution
`
`The ’030 Patent underwent a thorough examination during original
`
`prosecution. Virtually ignored in the Petition, the examiner applied and considered
`
`several items of prior art that were more relevant than the references Petitioner
`
`cites today.
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`6
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`Patent Owner’s Preliminary Response
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`In the time before the “social network user attribute” terminology was a
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`IPR2021-00476
`U.S. Patent No. 8,856,030
`
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`claim limitation, the examiner rejected the claims over Dedrick, U.S. Patent No.
`
`5,754,787 (EX. 1032). (See EX. 1002, at 132-34). Dedrick discloses the
`
`personalization of targeted advertising in a video content-delivery system based on
`
`a user profile created from demographics and psychographics, and updating the
`
`profile based on user activity. (EX. 1032 Fig. 7a; 3:59-4:32; 6:21-31; 7:15-25). At
`
`that time, the claims recited classification of media (i.e., not classification of users)
`
`based on “at least one of significance of affinity, self narrating audience generated
`
`content classification, defined topologies, time sensitive sequencing, and
`
`collective/collaborative classification.” (EX. 1002, at 199-200). In an unsuccessful
`
`attempt to use a claim amendment to overcome the anticipation rejection, the
`
`applicant revised the claims to require the generation of personalized display
`
`content based upon a series of user responses to a digital media asset (i.e., not
`
`based on social network interaction information). (EX. 1002, at 117-22). This led
`
`the examiner to issue a final rejection, now using Srinivasan (EX. 1028) as the
`
`anticipation reference. (EX. 1002, at 110).
`
`The following quotation from the prosecution history shows that the
`
`examiner found in Srinivasan anticipating disclosures for every then-recited claim
`
`limitation:
`
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`Patent Owner’s Preliminary Response
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`IPR2021-00476
`U.S. Patent No. 8,856,030
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`
`
`identifying a digital media asset (a main video data stream, col. 1
`lines 17-20) stored on a computer-readable storage medium (mass
`storage devices, col. 2 lines 1-8).
`
`presenting, to a user via a display server, the digital media asset as a
`video sequence (presenting the dynamic result as a display on the TV
`screen, col. 2 lines 1-8);
`
`receiving, from the user in response to the presenting, user responses
`to interactive opportunities (col. 15 lines 51-56);
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`generating personalized content based upon the user responses (col.
`31 lines 48-57);
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`associating the personalized content with at least one trigger in the
`digital media asset (preferences made by users interactively, col. 31
`lines 51-53), wherein each trigger indicates a time in the digital media
`asset when the personalized content is directly associated with the
`digital media asset (col. 32 line 57 to col. 33 line 3);
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`storing a personalized digital media asset on a computer-readable
`storage medium, the personalized digital media asset comprising the
`digital media asset, the trigger, and the personalized content (col. 31
`line 58 to col. 32 line 21); and
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`8
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`Patent Owner’s Preliminary Response
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`
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`presenting the personalized digital media asset as a video sequence to
`a user via a display screen so that the personalized content is
`presented at a point in the video sequence corresponding to the trigger
`(col. 31 lines 51-53 and col. 32 lines 15-21).
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`IPR2021-00476
`U.S. Patent No. 8,856,030
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`(EX. 1002, at 110). Indeed, like many of Petitioner’s references, Srinivasan
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`disclosed the conventional technique of using user profiles to determine what ads
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`to insert to personalize a video stream. (EX. 1028 31:58-32:22). Those profiles
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`included “such parameters as age, group, sex, income groups and area”—i.e., at
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`least demographics of a user. (EX. 1028 32:1-4).
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`
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`In response, the applicant filed a request for continued examination,
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`canceling claims 1-14 and adding new application claims 15-16. After this
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`amendment, the claims now recited the “social network user attribute” claim
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`limitations at issue here. These application claims are verbatim what became the
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`challenged ’030 Patent claims 1 and 2. Along with the amendment, the applicant
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`explained that Srinivasan did not anticipate, because “among other things,
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`Srinivasan does not utilize social network information obtained from a source
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`external to the presentation (e.g. video display of Srinivasan).” (EX. 1002, at 102).
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`The applicant further explained that “creation of the second set of digital media
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`assets [occurs] through rule based substitution.” (EX. 1002, at 102).
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`Patent Owner’s Preliminary Response
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`After a further prior art search, the examiner allowed the claims without
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`IPR2021-00476
`U.S. Patent No. 8,856,030
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`requiring further amendment. (EX. 1002, at 12). The examiner’s statement of
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`reasons for allowance explained:
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`the closest prior art, Srinivasan et al., does not teach or suggest,
`retrieving user social network information from at least one
`source external to the presented first composite digital media
`display, wherein the user social network information contains one
`or more user attributes. Herz (US 7,483,871 B2, claims 17 and 21)
`teaches this limitation, but the prior art does not teach or suggest
`adding this teaching from Herz to the teachings of Srinivasan et al.
`Srinivasan et al. gets user attribute information by asking the users.
`The prior art does not teach or suggest that the benefits of going to
`social networks to get user attribute information would outweigh the
`costs.
`
`
`(EX. 1002, at 12, emphasis in original).
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`
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`Importantly here, the examiner found that a separate reference (Herz, EX.
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`1019) does teach the “retrieving user social network information” claim
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`limitation.1 The examiner found this limitation in Herz’s disclosure of a “user
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`1 The Examiner made this finding about Herz under the “broadest reasonable
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`interpretation” standard, not the Phillips claim construction standard applicable
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`both at the Board and in federal court.
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`10
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`Patent Owner’s Preliminary Response
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`target profile summary” that gets built from a user’s interaction with a plurality of
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`IPR2021-00476
`U.S. Patent No. 8,856,030
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`bulletin boards. (EX. 1002, at 12 n.1, citing EX. 1019 4:51-5:8; see also 58:42-
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`59:41, disclosing how profiles are updated based on user interaction with the
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`bulletin boards). The examiner found that Herz’s plurality of bulletin boards is a
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`social network. (EX. 1002, at 12 n.1). The examiner conversely noted that a mere
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`“electronic program guide” for television in a separate reference (Ward III) is “not
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`a social network.” (EX. 1002, at 13).
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`
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`Even though the examiner found a disclosure in Herz of an early form of
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`“social network user attributes” being retrieved and used within that social
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`network, the examiner still allowed the claims. The examiner reasoned that “if one
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`of ordinary skill in the art at the time of the invention, wanted to improve
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`Srinivasan et al., he or she would more likely have done so by using an EPG
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`[electronic program guide], as taught by Ward, III et al., than by using social
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`networks, as taught by Herz.” (EX. 1002, at 13). Petitioner omits this prosecution
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`history from its Petition. As discussed in the next section, none of Petitioner’s
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`references disclose retrieving or putting to the claimed use “social network user
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`attributes.” Petitioner’s inter partes review attack is less relevant, and is at most
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`cumulative of, grounds already considered during prosecution.
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`11
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`Patent Owner’s Preliminary Response
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`IV. Summary of Petitioner’s Prior Art
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`IPR2021-00476
`U.S. Patent No. 8,856,030
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`Patent Owner discusses here aspects of Petitioner’s references insofar as
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`they relate to user attributes, and their alleged use in the context of personalized
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`media presentations. The issues raised in this Patent Owner Preliminary Response
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`make it unnecessary to delve into many areas that Petitioner tries to address. The
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`rank absence of the claimed “social network user attributes” renders such analysis
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`moot, since the Board may easily deny the Petition on grounds raised here.
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`1.
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`Bar-El is entitled METHOD AND SYSTEM FOR
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`PERSONALIZING IMAGES INSERTED INTO A VIDEO STREAM. Like
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`Dedrick and Srinivasan, Bar-El generates personalized content based on a user
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`profile. Like Dedrick and Srinivasan, there is media substitution. Also like Dedrick
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`and Srinivasan, substitution of media is based conventionally on profiled
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`demographics. As shown in Figure 2 and discussed in the specification:
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`the video might include the movement of a person 29 along a street 30 to
`a building 32. For a first user who is known to be a young person, the
`advertisement might be for a drink. Fig. 1 shows a drink bottle 34 on one
`wall 35 of a building along the street, in the monitor labeled 28A. For a
`user who is known to be a soccer fan, the advertisement might be for a
`sports company. Monitor 28B shows a soccer ball 36 on wall 35.
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`(EX. 1004, at 8, 25).
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`Patent Owner’s Preliminary Response
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`Just like Dedrick and Srinivasan, updating of this profile occurs internally to
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`IPR2021-00476
`U.S. Patent No. 8,856,030
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`personalization system 10 with its video server 11, and clients 12. Bar-El expressly
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`states that each user profile is “created and updated based on his or her input,”
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`which can be “in answer to a questionnaire,” “gathered from the user’s responses
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`to advertising images previously implanted,” “based on the user’s address on the
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`network,” or “any other fact about the user which the server 11 has the ability to
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`gather.” (EX. 1004, at 8:19-24). When a user first sets up the subscription to the
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`system, a questionnaire is used, and thereafter at future logins, like Dedrick, an
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`already-built user profile is retrieved and activity is monitored to update the
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`profile. (EX. 1004, at 10:3-13).
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`Server 11, in turn, is a self-contained and traditional bidirectional server that
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`performs client-server operations through login sessions. (EX. 1004, at 10:3-13). It
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`communicates “via a network of some kind, such as a local area network and/or the
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`internet,” whereby “network communication is typically bi-directional as described
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`hereinbelow.” (EX. 1004, at 7:13-19). In other words, Bar-El does not fathom
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`retrieving or using profiles of any sort that were gathered elsewhere, such as on a
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`distinct server or a distinct database. It certainly does not describe retrieving user
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`attributes from a social network. This is explicit, since in Bar-El’s words, the
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`system limits itself to profiles generated from “fact[s] about the user which the
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`server 11 has the ability to gather.” (EX. 1004, at 8:23-24, emphasis added).
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`Patent Owner’s Preliminary Response
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`Having no communications with other servers, Bar-El’s “server 11” only has an
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`IPR2021-00476
`U.S. Patent No. 8,856,030
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`“ability to gather” facts that come to it via the disclosed client-server bidirectional
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`communication.
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`It is plainly evident that Bar-El is cumulative of both Dedrick and
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`Srinivasan, already considered during prosecution.
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`2.
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`Leeke is entitled CONTENT PLAYER METHOD AND SERVER
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`WITH USER PROFILE. In Leeke, content such as ads will be delivered to a user
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`in the conventional way, i.e., dependent on the conventional user profile. (EX.
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`1006 Abstract). Leeke discloses what in modern parlance would be considered a
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`“skin” for a media player, with particular focus on playing audio streamed by radio
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`stations. Specific demographic information and listening preferences are requested
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`from the end user before granting customer services. (EX. 1006 6:37-43; 29:30-
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`37). An advertising component delivers user-specific advertisements to the content
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`player. (EX. 1006 48:15-24). Those are selected for the end user based on “online
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`and off-line purchasing, demographics, psychographics, geographies, sonagraphics
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`(e.g. listening preferences), and listener behavior.” (EX. 1006 48:15-24). User
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`profiles are updated by monitoring such information on a user-specific basis as
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`each user interacts with the client player apparatus. (EX. 1006 50:28-37).
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`Without giving any detail, Leeke indicates only once and never again that
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`optional functionality is possible, including “a chat room among listeners of a radio
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`14
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`Patent Owner’s Preliminary Response
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`station.” (EX. 1006 15:8-9). Nothing in the figures illustrates such “chat room”
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`IPR2021-00476
`U.S. Patent No. 8,856,030
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`functionality, and no detail is provided. In particular, Leeke provides no disclosure
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`suggestive of updating a user profile with a user’s interaction with the “chat room.”
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`Leeke discloses somewhat more detail about a “rating room” as a feature of
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`the content player. With this