By Thomas Long, J.D.
A patent related to creating and distributing videos with clickable links was invalid as anticipated by a prior art European patent, the U.S. Court of Appeals for the Federal Circuit has held. A decision of the Patent Trial and Appeal Board in a covered business method (CBM) review was affirmed (Intertainer, Inc. v. Hulu, LLC, September 26, 2016, Prost, S.).
Patent at issue. Intertainer, Inc., held U.S. Patent No. 8,479,246 ("the ’246 patent"), entitled "System and Method for Interactive Video Content Programming." The ’246 patent related to creating and distributing videos with clickable links. When a user clicked on a link, the video was paused and the user was directed to a webpage with "ancillary content." After the user was done viewing the "ancillary content," the user could click on a link to return to the original video and resume play. For the links in the videos to be clickable, the links had to be "programmed" so that they were coordinated with the video itself. To accomplish this, links could be embedded in the video so that the video and links were streamed over the Internet as a whole, or links could be delivered separately and overlaid on top of the video. All of the asserted claims recited the use of a "link program" that helped manage the interplay between the video and the links. The interface link program could be delivered over a network, and did not necessarily have to be delivered at the same time as the video, since the link program would already be at the user’s visual display.
CBM review. Online video service provider Hulu, LLC, filed a petition with the Board seeking CBM review of the ’246 patent. The Board granted review in part, on the ground of anticipation in view of EP 0 840 241 to Chen ("Chen"). The Board construed "link program" as "a set of instructions that tells the computer what to do when a link is selected." Intertainer did not explicitly challenge this construction, but it contended that Chen did not disclose a "link program" because it did not, as required by the claims of the ’246 patent, disclose a single program that both (1) interrupted the streaming video and (2) accessed ancillary content. The Board decided that, under its construction, the "link program" did not need to be limited to a single program, and it concluded that the challenged claims of the ’246 patent were anticipated by Chen. According to the Board, Chen’s disclosure of pausing the video and displaying the linked page on the computer, in response to clicking a "hot-link" disclosed both limitations cited by Intertainer. Therefore, the Board determined that Chen anticipated the ’246 patent. Intertainer appealed to the Federal Circuit.
Construction of "link program." Intertainer argued that the Board erred in construing "link program" as not requiring that a single program perform both the functions of interrupting streaming and accessing ancillary video content. Although Intertainer did not explicitly challenge this construction before the Board, it did not waive its argument, the court said. Intertainer’s essential argument had not changed; Intertainer argued to the Board that the plain language of the claims required the interpretation that the link program performed both functions, distinguishing the ’246 patent from Chen. It was not until the Board issued its final written decision that it clarified its construction of "link program" to explain that, in its view, one single program did not have to embody both functions of interrupting and accessing.
The court agreed with the Board, however, on the merits of its claim construction. In a CBM review, claims are given their broadest reasonable construction in light of the specification. Given their broadest reasonable interpretation in light of the specification and the prosecution history, the claims of the ’246 patent imposed no requirement that a single link program both interrupt the streaming video and access ancillary content. First, the claim language was silent on the question. Second, the specification imposed no restrictions on how a link program must be structured or programmed. Finally, during prosecution, to overcome a rejection by the examiner for lack of written description of the "providing the link program over the network" limitation, Intertainer argued that the claimed link program was merely the list of instructions that performed the disclosed functions. This conception of "link program" was broad enough to cover any implementation—one program or several—the court said. As long as there was a computer performing the link program functions, a "link program" existed.
Construction of "associating the link program with the video" and "providing the link program over the network." The court also rejected Intertainer’s challenges to the Board’s construction of the terms "associating the link program with the video" and "providing the link program over the network." The Board explained in its final written decision that neither of these phrases required that the entire link program be provided over the network or associated with the video, but that providing and associating a stream of links was sufficient. In order to overcome written description and anticipation rejections during prosecution, Intertainer had relied on interpretations of these limitations that only provided and associated interface links, not an entire link program.
Anticipation. Intertainer did not dispute that, under the Board’s claim constructions, Chen anticipated the ’246 patent. Accordingly, the court affirmed the Board’s decision that the ’246 patent was invalid under 35 U.S.C. §102.
The case is No. 2015-2065.
Attorneys: Dirk D. Thomas (McKool Smith, P.C.) for Intertainer, Inc. Eliot Damon Williams (Baker Botts LLP) for Hulu, LLC.
Companies: Intertainer, Inc.; Hulu, LLC
MainStory: TopStory Patent FedCirNews
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