Unified Patents, LLC v. Robocast, Inc.

• Decision Date: 20 January 2023
• Docket Number: IPR2022-01125,Patent 8,965,932 B2
• Parties: UNIFIED PATENTS, LLC, Petitioner, v. ROBOCAST, INC., Patent Owner.
• Court: Patent Trial and Appeal Board

1

UNIFIED PATENTS, LLC, Petitioner, v. ROBOCAST, INC., Patent Owner.

No. IPR2022-01125

Patent 8,965,932 B2

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 20, 2023

Denying Institution of Inter Partes Review 35 U.S.C. § 314(a)

Before PATRICK M. BOUCHER, NABEEL U. KHAN, and MICHAEL T. CYGAN Administrative Patent Judges.

DECISION

BOUCHER, Administrative Patent Judge.

Unified Patents, LLC ("Petitioner") filed a Petition pursuant to 35 U.S.C. §§ 311-319 to institute an inter partes review of claims 1-9, 13-15, 17, 18 20, 22-27, and 33-43 of U.S. Patent No. 8,965,932 B2 (Ex. 1001, "the '932 patent"). Paper 2 ("Pet."). Robocast, Inc. ("Patent Owner") filed a Preliminary Response. Paper 9 ("Prelim. Resp."). With our authorization, Petitioner filed a Reply and Patent Owner filed a Sur-reply. Papers 11 ("Reply"), 12 ("Sur-reply").

We have authority under 35 U.S.C. § 314 and 37 C.F.R § 42.4. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny the Petition and do not institute an inter partes review.

I. BACKGROUND

A. The '932 Patent

The '932 patent is a continuation of U.S. Patent No. 7,155,451 (Ex. 2007, "the '451 patent") and "relates generally to computer networks, and specifically to a method of sequencing and scheduling web pages." Ex. 1001, code 63, 1:22-24. The '932 patent explains that, at the time of filing, methods for a user "to access services, information and entertainment on the Web . . . typically require[d] a significant amount of user effort and decision-making to drive the web surfing experience." Id. at 5:51-6:4. For example, the user might "make certain choices, position the mouse pointer and click the mouse buttons appropriately to indicate the decisions," or "may type in a URL or access a bookmark to visit a favorite search engine." Id. at 5:51-61. This perceived difficulty is addressed by the patent by responding to a "triggering event, such as a mouse click on a single 'link' [with] the presentation of a series of resources instead of one resource at a time." Id. at 2:59-61. "This arrangement of resources[] is defined as a 'show structure' or 'structure,' which contains a set of nodes," each of which "represents a resource such as a web page, an executable file, or a data file stored at a predetermined location and accessed via its corresponding address." Id. at 2:61-65.

Figure 2B of the '932 patent is reproduced below.

(Image Omitted)

Figure 2B illustrates an array 300 of nodes 302, 304, 306, 308, 310, 312 that are available for presentation, with each node in the array accessible from the other nodes. Id. at 7:3-6. "For a typical show or presentations, an arrangement of these nodes or a portion of these nodes is selected for presentation." Id. at 7:6-9. Examples of such arrangements or portions of nodes are provided in Figures 2C-2F (not reproduced here), and include such structures as "a show structure that simultaneously spans multiple paths from the same starting node" or "spans multiple paths concurrently." Id. at 7:12-15,7:26-28.

B. Illustrative Claims

Challenged independent claims 1 and 22 are representative of the challenged claims, and are reproduced below.

1. A method for providing content via a communications network on a user's computer, obtained from a plurality of resources in an organized arrangement comprising the steps of:

creating a show structure of nodes, each node identifying a resource from a plurality of accessible resources, at least some of which are network accessible resources;

without requiring user input, automatically accessing a plurality of said network accessible resources identified by a corresponding node; and

causing content from said network accessible resources corresponding to each of said accessed resources to be automatically accessed and presented through said user's computer in accordance with said show structure such that during said presentation of at least some of said content from said accessed resources, at least some of said other network accessible resources are being accessed,

wherein said step of creating further comprises the step of providing interactively variable duration information, representing the duration that said content corresponding to said resource is presented so as to enable a user to vary said duration.

Ex. 1001, 17:42-64

22. A method for providing in a sequential arrangement to a user's computer, content derived via a communications network from a plurality of resources, the method comprising the steps of:

receiving a request for a user defined online search from a remote user;

providing a plurality of search results and their corresponding resource locators in response to said request, automatically creating a show structure of nodes based on said search results, each node identifying a resource from a plurality of accessible resources via said communications network;

without requiring user input automatically accessing a plurality of said resources;

retrieving content corresponding to each of said accessed resources; and automatically accessing and presenting said retrieved content through said user's computer in accordance with said show structure such that during said presentation of at least some of said content from said accessed resources, at least some of said other network accessible resources are being accessed.

Id. at 18:54-19:8.

C. Evidence

Petitioner relies on the following references:

Henley

US 5,761,417

June 2, 1998

Ex. 1013

Reisman

US 6,594,692 B1

July 15, 2003

Ex. 1014

Shoham

US 5,855,015

Dec. 29, 1998

Ex. 1015

Richardson

US 5,809,247

Sept. 15, 1998

Ex. 1016

In addition, Petitioner relies on a Declaration by Benjamin Bederson, Ph.D. Ex.1012. Patent Owner relies on a Declaration by Kevin Almeroth, Ph.D. Ex. 2005.

D. Asserted Grounds of Unpatentability

Petitioner challenges claims 1-9, 13-15, 17, 18, 20, 22-27, and 33-43 on the following grounds. Pet. 3.

Claim(s) Challenged

35 U.S.C. §^[1]

References

1, 2, 4, 5, 7-9, 13-15, 20

102

Henley

Claim(s) Challenged

35 U.S.C. §

References

1, 2, 4, 5, 7-9, 13-15, 20

103(a)

Henley

3, 5, 6, 17, 18

103(a)

Henley, Reisman

22-27, 33-43

103(a)

Shoham, Richardson

E. Real Parties in Interest

The parties identify only themselves as real parties in interest. Pet. 1; Paper 4, 2.

F. Related Matters

Both parties identify the following related matters as involving the '932 patent: (1) Robocast, Inc. v. Netflix, Inc., No. l:22-cv-00305 (D. Del); and (2) Robocast, Inc. v. YouTube, LLC, No. l:22-cv-00304 (D. Del.) (collectively, "the related litigation"). Pet. 1; Paper 4, 2.

II. JURISDICTION OVER EXPIRED PATENTS

Patent Owner states that "[t]he '932 Patent expired long before the Petition was filed on June 30, 2022," and that "[w]ith the expiration of the patent, the Board ceased to have jurisdiction over the '932 Patent." Prelim. Resp. 10. Petitioner does not dispute that the '932 patent had expired when the Petition was filed, but contends that the Board nonetheless "has jurisdiction in this [inter partes review]." Reply 1. We agree with Petitioner that such jurisdiction is consistent with our statutory authority in view of Supreme Court and Federal Circuit precedent, and USPTO regulations,.

Patent Owner grounds its argument on the Supreme Court's pronouncement that "patents are public franchises that the Government grants to the inventors of new and useful improvements." Prelim. Resp. 8-9; Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, 138 S.Ct. 1365, 1373 (2018). According to Patent Owner, "so long as the public franchise exists, the [U.S. Patent and Trademark Office] may have jurisdiction to amend and cancel the claims of the patent (e.g., via inter partes review.)" Prelim. Resp. 9. But "[w]hen a patent expires," Patent Owner says, "the public franchise ceases to exist and the franchisee (e.g., the patent owner) no longer has the right to exclude others." Id. Patent Owner reasons that, after the patent expires, "[a]t most, the franchisee may be entitled to collect damages" and thereby that "[e]xpiration of the patent removes the patent from the [Office's] jurisdiction and returns it to the sole jurisdiction of the Article III courts, which have exclusive authority to govern claims for damages." Id.

In Oil States, the Supreme Court also explained that "[i]nter partes review is 'a second look at an earlier administrative grant of a patent." Oil States, 138 S.Ct. at 1374 (quoting Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2144 (2016)). Other panels of the Board have relied on this statement in concluding that the Board has jurisdiction over expired patents in inter partes review proceedings. Apple, Inc. v. Gesture Tech. Partners, LLC, IPR2021-00922, Paper 10 at 17-18 (PTAB Nov. 29, 2021); Apple, Inc. v. Gesture Tech. Partners, LLC, IPR2021-00921, Paper 24 at 36-38 (PTAB Dec. 5, 2022).

Patent Owner criticizes such reliance because, in Oil States, the Supreme Court "emphasize[d] the narrowness of [its] holding" as addressing "only the precise constitutional challenges that Oil States raised." Sur-reply 1 (quoting Oil States, 138 S.Ct. at 1379 (alterations by Patent Owner)). According to Patent Owner, "[t]he 'precise constitutional challenge' in Oil States ... did not involve an expired patent as is the case here, and the Supreme Court has yet to address the PTAB's jurisdiction to conduct inter partes review of expired patents." Id. But even if Patent Owner is correct that the Supreme Court has not specifically addressed whether the Board has jurisdiction over expired patents, that fact does not warrant discounting the logical...