Intertainer, Inc. v. Hulu, LLC ( 2016 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
INTERTAINER, INC.,
Appellant
v.
HULU, LLC,
Appellee
______________________
2015-2065
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2014-
00052.
______________________
Decided: September 26, 2016
______________________
DIRK D. THOMAS, McKool Smith, P.C., Washington,
DC, argued for appellant. Also represented by JOEL
LANCE THOLLANDER, Austin, TX.
ELIOT DAMON WILLIAMS, Baker Botts LLP, Palo Alto,
CA, argued for appellee. Also represented by HARPER
BATTS.
______________________
2 INTERTAINER, INC. v. HULU, LLC
Before PROST, Chief Judge, CHEN and STOLL, Circuit
Judges.
PROST, Chief Judge.
Intertainer, Inc. (“Intertainer”) appeals from the Pa-
tent Trial and Appeal Board’s (“Board”) Final Written
Decision in a covered business method (“CBM”) review
finding that U.S. Patent No. 8,479,246 (“’246 patent”) is
anticipated under 35 U.S.C. § 102. For the reasons stated
below, we affirm.
BACKGROUND
Intertainer owns the ’246 patent, which was filed on
June 13, 2012 and is titled “System and Method for
Interactive Video Content Programming.” The ’246
patent relates to creating and distributing videos with
clickable links. ’246 patent col. 1 l. 58–col. 2 l. 15. When
a user clicks on a link, the video is paused and the user is
directed to a web page with “ancillary content.” Id. at col.
2 ll. 8–10, col. 6 l. 61–col. 7 l. 2, col. 8 ll. 4–10, col. 9 ll. 27–
30. After the user is done viewing the “ancillary content,”
the user can click on a link to return to the original video
and resume play. Id. at col. 7 ll. 22–26, col. 8 ll. 48–50.
Figure 5 of the ’246 patent provides an example that
illustrates this process:
INTERTAINER, INC. v. HULU, LLC 3
To make the videos clickable, links must be “pro-
grammed” such that they are coordinated with the video
itself. Id. at col. 5 ll. 23–26 (explaining that “interface
links are programmed according to the intended method
of presentation and associated with a piece of video con-
tent”). For example, links may be embedded in the video
such that the video and links are streamed over the
internet as a whole. Id. at col. 5 ll. 27–30. Alternatively,
4 INTERTAINER, INC. v. HULU, LLC
links may be delivered as a separate stream and overlaid
on top of the video. Id. at col. 5 l. 63–col. 6 l. 4.
In addition, all of the asserted claims recite the use of
a “link program” that helps manage the interplay between
the video and the links. The specification provides no
information about how the “link program” is programmed.
It does, however, disclose that the “interface link pro-
gram” can be delivered over a network, and that “delivery
of the interface link program need not be simultaneously
delivered with the video to the user since the interface
link program would already be at the user’s visual dis-
play.” Id. at col. 6 ll. 24–27.
Independent claim 1 and dependent claims 2, 3, 5, 8,
10, 11, and 13–15 (“the challenged claims”) are at issue. 1
Claim 1 is representative:
1. A method for creating an interactive video, the
method comprising:
encoding and storing the video onto a remote stor-
age medium at a first site;
creating a link program adapted to both:
(a) interrupt streaming of the video at the remote
storage medium to prevent streaming of the video
over an Internet Protocol (IP)-based network to a
second site; and
(b) access ancillary content accessible over the net-
work with a universal resource locator (URL) to a
remote site where the ancillary content is stored,
the link program linking the ancillary content and
the video to a point in time when the streaming of
1 These are the only remaining claims in the ’246
patent. Intertainer has filed a statutory disclaimer under
37 U.S.C. § 1.321(a) disclaiming all others.
INTERTAINER, INC. v. HULU, LLC 5
the video from the remote storage medium is inter-
rupted;
associating the link program with the video;
streaming the video over the network for display;
providing the link program over the network;
receiving an indication of an interaction with the
link program;
interrupting, at the first site, the streaming of the
video in response to receiving the indication of the
interaction with the link program; and
continuing the streaming of the video over the
network from the point in time when the stream-
ing of the video was interrupted.
Id. at col. 9 l. 45–col. 10 l. 3 (emphases added).
On December 20, 2013, Hulu filed a petition with the
Board seeking CBM review of the ’246 patent. The Board
instituted review of the ’246 patent, in part, on the ground
of anticipation in view of EP 0 840 241 to Chen (“Chen”).
In its Institution Decision, the Board construed the claim
term “link program” as “a set of instructions that tells the
computer what to do when a link is selected.” J.A. 122.
In its Patent Owner Response, Intertainer did not explic-
itly challenge this construction, but instead argued direct-
ly that Chen did not disclose a “link program” because it
did not disclose a single program that both (1) interrupted
the streaming video and (2) accessed ancillary content.
On June 12, 2015, the Board issued a Final Written
Decision finding that the challenged claims of the ’246
patent were anticipated by Chen. It reaffirmed its con-
struction and clarified that, under its construction, the
“link program” did not need to be limited to a single
program. It then concluded that Chen anticipated the
’246 patent because, in relevant part, “Chen’s disclosure
6 INTERTAINER, INC. v. HULU, LLC
of pausing the video and displaying the linked page on the
computer, in response to clicking a hot-link” disclosed the
“creating a link program adapted to both: (a) interrupt
streaming of the video at the remote storage medium . . .
and (b) access ancillary content . . .” limitation. J.A. 12.
It also construed the terms “associating the link program
with the video” and “providing the link program over the
network” as not requiring that the entire link program be
“provid[ed]” with the video or “associat[ed]” over the
network and concluded that Chen disclosed these limita-
tions. J.A. 9-10, 15-16.
Intertainer appeals from the Board’s decision. We
have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal conclusions de novo and
its findings of fact for substantial evidence. In re Gart-
side, 203 F.3d 1305, 1316 (Fed. Cir. 2000). We review the
Board’s claim construction under the standard set forth in
Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S.
Ct. 831, 841 (2015).
In this appeal, Intertainer challenges the Board’s con-
struction of three claim terms: (1) “link program,”
(2) “associating the link program with the video,” and
(3) “providing the link program over the network.” We
address each in turn.
I
First, Intertainer argues that the Board erred in con-
struing “link program” because its construction does not
require that a “single” “program” perform both functions
of “interrupt[ing] streaming of the video at the remote
storage medium . . .” and “access[ing] ancillary content
accessible over the network . . . .” Hulu counters that
Intertainer waived its ability to challenge the Board’s
construction, and that in any event the Board’s construc-
tion is correct.
INTERTAINER, INC. v. HULU, LLC 7
A
Waiver is a doctrine that is limited in application. In-
teractive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323,
1346 (Fed. Cir. 2001). In the context of claim construc-
tion, “the doctrine has been applied to preclude a party
from adopting a new claim construction position on ap-
peal.” Id. However, waiver “has not been invoked . . . to
prevent a party from clarifying or defending the original
scope of its claim construction, or from supporting its
existing claim construction position with new citations to
the specification.” Id.
Hulu contends that Intertainer waived its ability to
challenge the Board’s construction because its Patent
Owner Response neither explicitly challenged the Board’s
construction of “link program,” nor proposed an alternate
construction. Intertainer does not disagree with these
facts but argues that it preserved its challenge because it
asserts the same position that it took in its Patent Owner
Response.
We agree with Intertainer. Although Intertainer did
not explicitly challenge the Board’s construction of “link
program” in its Patent Owner Response (indeed, it ap-
pears to cite to it approvingly, see J.A. 147), it took the
same position that it raises on appeal: that the claims
require that the “link program” is a single program that
performs both “interrupt[ing] . . .” and “access[ing] . . .”
functions. See J.A. 150–52. The only difference is that,
before the Board, Intertainer did not integrate this posi-
tion into a proposed construction of “link program;” in-
stead, it argued that the plain language of the claims
required this interpretation, drawing a distinction from
Chen. Id. In effect, the locus of the dispute has shifted,
but the dispute itself has not. This shift is understanda-
ble, as it was not until the Final Written Decision that the
Board clarified that its construction of “link program” (“a
set of instructions that tells the computer what to do
8 INTERTAINER, INC. v. HULU, LLC
when a link is selected,” J.A. 122) did not require the
“interrupt[ing] . . .” and “access[ing] . . .” functions to be
embodied in the same program. Accordingly, because its
arguments are consistent with the original scope of Inter-
tainer’s claim construction position, Intertainer has not
waived its ability to challenge the Board’s construction.
See Interactive Gift, 256 F.3d at 1346.
B
Turning to the merits, in a CBM review claims are
given their “broadest reasonable construction in light of
the specification of the patent in which [they] appear[].”
37 C.F.R. § 42.300(b); see also Cuozzo Speed Techs., LLC
v. Lee, 136 S. Ct. 2131, 2142–45 (2016). “The protocol of
giving claims their broadest reasonable interpretation . . .
does not include giving claims a legally incorrect interpre-
tation.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
1298 (Fed. Cir. 2015) (quoting In re Skvorecz, 580 F.3d
1262, 1267 (Fed. Cir. 2009)). Accordingly, the Board’s
construction “cannot be divorced from the specification
and the record evidence and must be consistent with the
one that those skilled in the art would reach.” Id. (inter-
nal quotation marks omitted). In addition, “[t]he [Board]
should also consult the patent’s prosecution history in
proceedings in which the patent has been brought back to
the agency for a second review.” Id.
Intertainer argues that the Board’s construction of
“link program,” as clarified in its Final Written Decision,
is incorrect because it does not require that the “inter-
rupt[ing] . . .” and “access[ing] . . .” functions be performed
by a “single” “program.” Its primary argument rests on
the language of the claims: according to Intertainer, the
claims recite that the “link program” is “adapted to both”
functions, so it should be construed to be a single program
whose corpus of instructions fully executes both functions.
In technical terms, Intertainer argues that the “link
program” must be “a single compilation of instructions”
INTERTAINER, INC. v. HULU, LLC 9
such that the main program and all sub-routines accessi-
ble to it (i.e., present at compile-time) are sufficient to
accomplish both “interrupt[ing] . . .” and “access[ing] . . .”
functions. Opening Br. 30 & n.2; see also Oral Argument
at 2:35–3:38, available at http://oralarguments.cafc.
uscourts.gov/default.aspx?fl=2015-2065.mp3.
Hulu counters that Intertainer reads the claims too
narrowly. According to Hulu, the claims and the specifi-
cation only describe “link program” in functional terms
and are silent as to whether the “interrupt[ing] . . .” and
“access[ing] . . .” functions must be structured as one “link
program” or several. Hulu also argues that only this
position is consistent with the prosecution history because
arguments that Intertainer made to overcome written
description and anticipation rejections require that “link
program” be broad enough to cover any computer imple-
mentation (i.e., one program or several) of the claimed
functions.
The parties’ dispute here rests not with what a link
program does, but what a link program is; specifically,
whether the “interrupt[ing] . . .” and “access[ing] . . .”
functions require a single “link program.” On this nar-
rower question, we agree with Hulu that the claims, given
their broadest reasonable interpretation in light of the
specification and prosecution history, impose no such
requirement.
First, the claim language is silent on this question.
The claims require that “a link program” is “adapted to”
“interrupt[ing] . . .” and “access[ing] . . .” functions, but
impose no limits on how these two functions must be
programmed. The step of “creating a link program” could
involve creating two separate executables that are in-
voked serially, or a single executable that only need be
called once. It could also involve creating a single execut-
able with multiple parameters such that the executable
can be invoked once with one set of arguments to perform
10 INTERTAINER, INC. v. HULU, LLC
the “interrupt[ing] . . .” function and invoked a second
time with another set of arguments to perform the “ac-
cess[ing] . . .” function. Further, the claims only require
that the “link program” be “adapted to” perform these
functions, so it could also be programmed such that it only
helps initiate these functions, as opposed to performing
these functions itself.
The specification also imposes no restriction on how a
“link program” must be structured, as it describes the
“interrupt[ing] . . .” and “access[ing] . . .” operations in
only functional terms. See, e.g., ’246 patent col. 2 ll. 32–
37, col. 7 ll. 1–12, col. 8 ll. 8–11, 37–50, col. 9 ll. 27–36. In
fact, its sole discussion of the “interface link program”
appears in a single paragraph and is primarily concerned
with how the program can be delivered to a client com-
puter. See id. at col. 6 ll. 21–32. There is no discussion of
how a “link program” should be programmed.
Finally, the prosecution history confirms that the
“link program” cannot be limited to certain programmatic
implementations. During prosecution, the examiner
rejected claims reciting “link program” for lack of written
description under 35 U.S.C. § 112, ¶ 1, in part because
she believed the specification only disclosed delivering a
stream of links over a network, as opposed to an entire
“link program.” J.A. 409. According to the examiner, this
was insufficient written description support for the
“providing the link program over the network” limitation.
Id. To overcome this rejection, Intertainer argued that
the specification did in fact disclose delivery of an entire
“link program” because disclosure of “link program”
functionality meant that an entire “link program” was
necessarily present:
[T]he fact that the computer performs the dis-
closed functions when a user interacts with an in-
terface link necessarily requires that there is a
link program instructing the computer to perform
INTERTAINER, INC. v. HULU, LLC 11
those functions. As such, one having ordinary
skill in the art would appreciate that the claimed
‘link program’ is merely the list of instructions
that perform the disclosed functions.
J.A. 339.
In addition, the examiner also rejected the claims as
anticipated under § 102 by U.S. Patent No. 7,139,813 to
Wallenius (“Wallenius”). J.A. 408. Intertainer attempted
to swear behind Wallenius by claiming priority to a “GAP
Demo” embodiment which it had previously released, 2 but
the examiner rejected this attempt because she believed
that the “GAP Demo” also only delivered a stream of links
over a network, not an entire “link program.” To over-
come this rejection, Intertainer repeated this same ra-
tionale:
[T]he fact that the computer performs the dis-
closed functions when a user interacts with an in-
terface link necessarily requires that there is a
link program instructing the computer to perform
those functions. As such, one having ordinary
skill in the art would appreciate that the claimed
‘link program’ is merely the list of instructions
that perform the disclosed functions.
J.A. 349–50.
In both contexts, Intertainer’s argument to the exam-
iner advances a conception of “link program” that is broad
enough to cover any implementation (i.e., one program or
2 The “GAP Demo” was an interactive video show-
ing dancers wearing GAP clothing. J.A. 609. A user could
click on certain clothing items, such as a pair of khaki
pants that a dancer was wearing, and be directed to a web
page with details and purchasing information. J.A. 609–
10.
12 INTERTAINER, INC. v. HULU, LLC
several). This is because it assumes that, as long as there
is a computer performing the “link program” functions
(i.e., “interrupt[ing] . . .” and “access[ing] . . .”), a “link
program” exists. Indeed, had the examiner operated
under a narrower construction of “link program” that
required a certain programmatic structure (i.e., one
executable program), it is unclear whether Intertainer
would have been able to overcome the § 112 and § 102
rejections because the specification does not disclose
details about how the “link program” is structured and
the § 1.131 declarations that Intertainer submitted on its
“GAP Demo” do not identify a “link program” that is a
single executable. 3 Accordingly, prosecution proceeded
based on a structure-independent interpretation of “link
program” and the Board correctly concluded that its
broadest reasonable interpretation must be at least as
broad.
For these reasons, the Board did not err in construing
“link program” to not require that the “interrupt[ing] . . .”
and “access[ing]. . .” functions be performed by a “single”
“program.”
II
Intertainer also challenges the Board’s construction of
the terms “associating the link program with the video”
and “providing the link program over the network.” The
3 Instead, the GAP Demo relied on a library of re-
mote methods to deliver compressed streams of hyper-
linked video to devices running PersonalJava. J.A. 350,
612–15, 643–48, 651–52, 692. Intertainer identified a
remote method that initiated a command to interrupt
streaming from Intertainer’s remote databases as per-
forming the “interrupt[ing] . . .” step and a separate (but
unspecified) command to access a URL as performing the
“access[ing] . . .” step. J.A. 614–15.
INTERTAINER, INC. v. HULU, LLC 13
Board did not construe these terms in its Institution
Decision, see J.A. 7–9, but clarified in its Final Written
Decision that neither of these phrases requires that the
entire link program be provided over the network or
associated with the video, J.A. 9–10. Instead, in its view,
providing and associating a stream of links was sufficient.
J.A. 15–16.
On appeal, Intertainer argues that the Board’s con-
structions contradict the plain language of the claims,
which require that “the link program” is “provid[ed]” and
“associat[ed].” It also presses that the specification and
the prosecution history are consistent with this position
because the specification never discloses “providing” or
“associating” only part of the “link program,” and that
arguments that it made during prosecution are consistent
with interpreting the “link program” as a single, multi-
element program.
Hulu counters that Intertainer’s position runs afoul of
the prosecution history because, in order to overcome
written description and anticipation rejections, it relied
on interpretations of these limitations that only
“provid[ed]” and “associate[ed]” interface links, not an
entire link program.
We agree with Hulu. As discussed above, during
prosecution, the examiner rejected Intertainer’s claims for
lack of written description because she believed the
specification did not disclose “providing the link program
over the network.” J.A. 409. Intertainer disagreed and
argued that, because the specification disclosed providing
a stream of links over the network and associating the
links with video content, it necessarily disclosed the
“providing” and “associating” steps. J.A. 339 (“[I]t would
be clear to a person of ordinary skill in the art that inter-
face links are elements of the interface link program, that
the interface link program is the same as the link pro-
gram, and that the link program is delivered to client
14 INTERTAINER, INC. v. HULU, LLC
software in the manner described by the ’884 applica-
tion.”); see also Oral Argument at 9:14–33 (citing this
passage and summarizing that “when you’re providing the
interface links, you’re necessarily providing the link
program”). Intertainer did not identify any portion of the
specification that disclosed that the remaining aspects of
the link program (such as “interrupt[ing] . . .” or “ac-
cess[ing] . . .”) were provided over the network or associat-
ed with a video; instead, in its view, providing and
associating “elements” of the link program was sufficient.
Accordingly, Intertainer conceded during prosecution that
the steps of “providing the link program over the network”
and “associating the link program with the video” can be
satisfied when only a portion (e.g., a stream of links) of a
link program is “provid[ed]” and “associat[ed].”
Arguments that Intertainer made with respect to the
examiner’s anticipation rejections also support the
Board’s constructions. As discussed above, Intertainer
used its “GAP Demo” embodiment to swear behind Walle-
nius, the examiner’s anticipation reference. J.A. 349–51.
However, as the examiner found, the GAP Demo only
transmitted “hypervideo streams” and “additional data
streams” (e.g., supporting metadata) over the network.
See J.A. 408, 648. Indeed, in mapping the “GAP Demo”
onto the particular elements of the claim, Intertainer
argued that the “providing” step was disclosed because
“‘current prototypes use RMI to deliver compressed hy-
pervideo streams’ over the network.” J.A. 615. The GAP
Demo did not transmit or associate other aspects of the
“link program,” such as code to “interrupt streaming of
the video at the remote storage medium.” So here too
Intertainer conceded that the claims do not require that
an entire link program is “provid[ed]” or “associat[ed].”
In sum, the Board’s constructions correctly capture
the positions that Intertainer took during prosecution to
obtain allowance. It did not err in construing these terms.
INTERTAINER, INC. v. HULU, LLC 15
III
Intertainer does not dispute that, under the Board’s
constructions, Chen anticipates the ’246 patent. Accord-
ingly, because we affirm the Board’s constructions, we
affirm the Board’s decision that the ’246 patent is invalid
under § 102. We need not reach Hulu’s alternative
grounds for affirmance.
AFFIRMED