Takeaway: A petition must take into account all words in a claim.

In its Decision, the Board denied institution of inter partes review, finding that Petitioner did not establish a reasonable likelihood of prevailing with respect to any of challenged claims 1-4 and 7-11 of the ‘336 patent.  The ‘336 patent “relates to a method for enabling the converting, navigating, and displaying of video content from a video content provider on an open online network to a discrete digital TV service provider network.”

With respect to claim construction, the Board stated that although Petitioner provided constructions for several terms, no terms needed to be construed in deciding whether to institute trial.  The Board then turned to the sole ground of unpatentability asserted in the Petition – obviousness of claims 1-4 and 7-11 based on White, Samaan, Dunn, and Shoff.

The Board was persuaded by Patent Owner’s arguments that Petitioner failed to establish that the proposed combination would render obvious all the features recited in the claims.  In particular, the Board found that Petitioner did not explain adequately how the prior art discloses “(i) the inclusion of ‘a title and a hierarchical address of hierarchically-arranged categories and subcategories as metadata’ for the content uploaded through the Internet; and (ii) listing the content uploaded through the Internet ‘in an electronic program guide . . . using the same hierarchically-arranged categories and subcategories as used in the uploaded metadata for the hierarchical address for the video content in the electronic program guide.’”  The Board acknowledged that although the prior art discloses electronic guides having hierarchical structures of categories and subcategories, Petitioner had not established that the categories “are the same as those in the metadata associated with the content.”

Unified Patents, Inc. v. Broadband iTV, Inc., IPR2014-01222
Paper 8: Decision Denying Institution of Inter Partes Review
Dated: January 5, 2015
Patent: 7,631,336 B2
Before: Justin T. Arbes, Michelle R. Osinski, and Tine E. Hulse
Written by: Osinski
Related Proceeding: Broadband iTV, Inc. v. Hawaiian Telecom, Inc., Case No. 1:14-cv-00169 (D. Haw.)