DISH Network L.L.C.v.Dragon Intellectual Property, LLC

Patent Trial and Appeal Board

Jun 15, 2016

08234727 (P.T.A.B. Jun. 15, 2016)

Trials@uspto.gov Paper 34
571-272-7822 Entered: June 15, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

DISH NETWORK L.L.C., and SIRIUS XM RADIO INC.,
Petitioner,

v.

DRAGON INTELLECTUAL PROPERTY, LLC,
Patent Owner.
____________

Case IPR2015-004991
Patent 5,930,444
____________

Before NEIL T. POWELL, STACEY G. WHITE, and J. JOHN LEE,
Administrative Patent Judges.

WHITE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

1 Case IPR2015-01735 has been joined with this proceeding
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I. INTRODUCTION
DISH Network L.L.C. filed a Petition requesting inter partes review
of claims 1–10, 13, and 14 of U.S. Patent No. 5,930,444 (Ex. 1001, “the
’444 patent”). Paper 1 (“Pet.”). Dragon Intellectual Property, LLC (“Patent
Owner”) filed a Preliminary Response. Paper 6. Based on our review of
these submissions, we instituted inter partes review of claims 1–4, 7–10, 13,
and 14 of the ’444 patent on the proposed grounds of unpatentability under
35 U.S.C. § 103. Paper 7 (“Dec.”). Specifically, we authorized this inter
partes review to proceed as to the following grounds: (1) claims 1, 7–10,
and 14 as obvious over Goldwasser2 and Yifrach;3 and (2) claims 2–4 and 13
as obvious over Goldwasser, Yifrach, and Vogel.4 Id. at 20.
After institution, Sirius XM Radio Inc. filed a petition requesting inter
partes review of the ’444 patent on the same grounds asserted by Dish
Network and a motion seeking joinder with this proceeding. Sirius XM
Radio Inc. v. Dragon Intellectual Prop., LLC, Case IPR2015-01735, Papers
1 (petition), 3 (motion for joinder). Patent Owner filed a partial opposition
to Sirius XM’s motion for joinder. IPR2015-01735, Paper 7. We instituted
an inter partes review and joined it with the case at bar. Paper 30.

2 U.S. Patent No. 5,241,428, filed Mar. 12, 1991, issued Aug. 31, 1993
(“Goldwasser”) (Ex. 1005).

3 U.S. Patent No. 5,126,982, filed Sept. 10, 1990, issued June 30, 1992
(“Yifrach”) (Ex. 1003).

4 PCT Pub. WO 90/15507, published Dec. 13, 1990 (“Vogel”) (Ex. 1004).
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Patent Owner filed a Patent Owner’s Response (Paper 12, “PO
Resp.”), and Petitioner5 filed a Reply (Paper 27, “Reply”). An oral hearing
was conducted on February 9, 2016. A transcript of the oral hearing is
included in the record. Paper 33 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
as to the patentability of claims 1–4, 7–10, 13, and 14. For the reasons
discussed below, Petitioner has demonstrated by a preponderance of the
evidence that claims 1–4, 7–10, 13, and 14 are unpatentable.
A. Related Proceedings
Petitioner informs us that the ʼ444 patent is at issue in Dragon
Intellectual Property, LLC v. DISH Network L.L.C., No. 13–CV–2066
(RGA) (D. Del). Pet. 1. In addition, the ’444 patent was at issue in
IPR2014-01252, and a final written decision was entered in that proceeding
finding claims 1, 2, 7, 8, 10, 13, and 14 to be unpatentable. Unified Patents
Inc., v. Dragon Intellectual Prop., LLC, Case IPR2014-01252, slip op. at 21
(Feb. 5, 2016) (Paper 64). An appeal of that case currently is pending before
the Federal Circuit.
B. The ’444 Patent (Ex. 1001)
The ’444 patent discusses disadvantages in regards to known video
cassette recorders’ (“VCRs”) inability to record and playback
simultaneously. Ex. 1001, 1:47–2:35. The ’444 patent notes that a person
may encounter interruptions such as telephone calls while viewing a
program. Id. at 1:47–49. The ’444 patent explains that known VCRs allow

5 We refer to Dish Network and Sirius XM Radio collectively as
“Petitioner.”
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a user to record the portion of the program starting at the time of the
interruption for later viewing. Id. at 1:50–58. Such VCRs, however, did not
allow the user to watch immediately the remainder of the program from the
point of the interruption to the end of the program. Id. at 1:50–2:14.
The ’444 patent addresses these issues with an audiovisual recording
and playback device that provides substantially simultaneous recording and
playback, allowing user-controlled programming delay. Id. at Abstract. An
embodiment of such a recording and playback device is depicted in Figure 3
of the ’444 patent, reproduced below.

Figure 3 depicts recorder 10 and its components, including memory unit 12;
control circuit 14; inputs 22a, 22v, and 22m; outputs 24a, 24v, and 24m;
tuner 26; modulator 32; and receiver 42. Id. at 3:54–64, 4:35–53, 4:59–5:4,
6:7–18. An embodiment of a remote control unit for use with recorder 10 is
depicted in Figure 5, reproduced below.
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Figure 5 shows remote control unit 46 and its components, including
keyboard 16 and transmitter 44. Id. at 6:7–12, 6:25–28. Transmitter 44 of
remote control unit 46 and receiver 42 of recorder 10 provide
communication between remote control unit 46 and recorder 10. Id. at 6:8–
28. Keyboard 16 has a number of keys, including record key 18 and
playback key 20. Id. at 3:65–67.
A user may actuate record key 18, for example, when a telephone call
interrupts a program. Id. at 5:20–24. In response, control circuit 14 begins
storing within memory unit 12 information received via input 22. Id. at
5:24–25. When the interruption ends, the user may actuate playback key 20.
Id. at 5:25–27. In response, the system retrieves and displays the recorded
information, starting from the point of the interruption, while simultaneously
continuing to store information from input 22. Id. at 5:25–36.
C. Illustrative Claim
Petitioner challenges claims 1–4, 7–10, 13, and 14 of the ’444 patent
of which claims 1 and 14 are independent. Claim 1 is illustrative of the
challenged claims and is reproduced below:
1. A recording and playback apparatus for the
substantially immediate and seamless resumption
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of interrupted perception of broadcast6 program
information based upon audio or video signals, or
both, without missing the program information
presented during the interruption, comprising:
means for powering the apparatus;
a keyboard having a record key and a playback
key;
a control circuit coupled responsively to said
keyboard;
a memory unit coupled responsively to said control
circuit, said memory unit having a medium for
storage of information, said storage medium
having structure which enables substantially
random access to information stored in said
medium for retrieval of the stored information
from said storage medium;
at least one input, said input being connected to a
user’s audio/video program signal source and
also being coupled to said memory unit so as to
enable program information presented by the
signal source to be transferred to and stored in
said memory unit; and
at least one output, said output being connected to
a user’s audio or video display device or both,
said output further being connected to said
memory unit so as to enable the transfer of
program information from said memory unit to
the user’s display device, said control circuit
being configured so that substantially
simultaneous recording and playback of
program information is achieved when said

6 A Certificate of Correction was issued March 5, 2013, replacing
“perception of program information” with “perception of broadcast program
information.” Ex. 1001, 14.
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record key is first actuated to begin a recording
by initiating storage of the broadcast program
information in said memory unit, and said
playback key is subsequently and solely
actuated to begin time delay playback of the
recording from the beginning thereof by
initiating retrieval of the stored program
information in said memory unit, with the
interval of the time delay being the same as the
time elapsed between the actuation of said
record key and the subsequent actuation of said
playback key.
Ex. 1001, 8:29–64.
II. ANALYSIS
A. Claim Interpretation
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); see Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012). Pursuant to
that standard, the claim language should be read in light of the specification,
as one of ordinary skill in the art would interpret it. In re Suitco Surface,
Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, absent any special
definitions, we give claim terms their ordinary and customary meaning, as
would be understood by one of ordinary skill in the art at the time of the
invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). Any special definitions for claim terms must be set forth with
reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
For purposes of the Decision to Institute, we construed the terms (1)
“means for powering the apparatus,” (2) “means for wireless communication
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between said remote control and said control circuit,” and (3) “key means.”
Dec. 8–9. Neither party raised any concerns regarding these constructions
during trial. Based on our review of the full record, we discern no reason to
modify or further discuss in this Final Written Decision our constructions for
these claim phrases. For convenience, those claim constructions are
reproduced in the table below.

Term Support Recited Function / Corresponding
Structure
“means for powering
the apparatus”
(Claim 1)
Ex. 1001,
6:20–24
Function: “powering the apparatus”

Structure: A/C power source or
alternative power sources such as D/C
power or batteries
“means for wireless
communication
between said remote
control and said
control circuit”
(Claim 3)
Ex. 1001,
6:7–18,
Figs. 3, 4
Function: “wireless communication
between said remote control and said
control circuit”

Structure: Receiver and transmitter
interposed between the control circuit
and keyboard for communication there
between
“key means”
(Claim 8)
Ex. 1001,
6:24–45,
Fig. 5
Function: “enabling user control of the
rate or sequence or both of transfer of
program information from said memory
unit to the user’s display device, and such
variation of rate or sequence results in a
corresponding variation of the interval of
the time delay”

Structure: keys on the keyboard that,
when actuated, cause the control circuit
to vary the rate or sequence or both of the
transfer of program information from the
memory unit to the user’s display device
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B. Obviousness of Claims 1, 7–10, and 14 over Goldwasser and Yifrach
Petitioner alleges that claims 1, 7–10, and 14 of the ’444 patent are
unpatentable under 35 U.S.C. § 103 over Goldwasser and Yifrach. Pet. 41–
56. Petitioner relies on a Declaration from Anthony J. Wechselberger.
Ex. 1010. For the reasons discussed below, we conclude that Petitioner has
established by a preponderance of the evidence that claims 1, 7–10, and 14
would have been obvious over Goldwasser and Yifrach.
1. Overview of Goldwasser (Ex. 1005)
Goldwasser is a United States Patent titled “Variable-Delay Video
Recorder” that issued August 31, 1993, from an application filed March 12,
1991. Ex. 1005, at [22], [45], [54]. Goldwasser describes “[a] video
recorder and playback device allowing simultaneous recording and playback
of program material.” Id. at Abstract. One of the problems that Goldwasser
purports to solve is the inconvenience that arises from the inability of
conventional VCRs to allow a user to view material as it is being recorded.
Id. at 1:29–42. For example, “often one will be watching a particular
program when one must temporarily cease watching it, for example, to take
a telephone call or the like. It would obviously be convenient to be able to
record the program from that point forward, complete the telephone call, and
simply watch the remainder delayed by the length of time of the
interruption.” Id. at 1:43–49.
One embodiment disclosed by Goldwasser is a “‘random access’
embodiment” whereby the video signal is converted to a digital signal and
recorded in random access memory, which could include magnetic or optical
media or solid state memory. Id. at 2:16–21. This random access
embodiment is depicted in Figure 3 of Goldwasser, reproduced below.
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Goldwasser’s Figure 3 is a schematic diagram of its random access
embodiment. Id. at 3:49–50. The recording device depicted in Figure 3
includes signal sampling circuit 51 and analog-to-digital converter 52, which
are used together to create digital samples of the video signal being record.
Id. at 6:25–28. These samples are stored in random access memory 53. Id.
at 6:28–29. Address controller 58 controls the storage of these digitized
video samples and is responsive to commands from user control panel 50.
Id. at 6:44–48. Playback can take place from any portion of the memory at
any speed without impacting the recording. Id. at 6:38–40.
2. Overview of Yifrach (Ex. 1003)
Yifrach is a United States Patent titled “Radio Receiver and Buffer
System Therefore” that issued June 30, 1992, from an application filed
September 10, 1990. Ex. 1003, at [22], [45], [54]. Figure 2 of Yifrach is
reproduced below.
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Figure 2 is a block diagram of an embodiment that “enables the listener not
only to hear the radio broadcasts in a real-time manner, but also to freeze a
portion of the broadcast for later playback.” Id. at 4:14–18. Yifrach’s
“Normal-Listening Mode” allows users to listen to a broadcast in real time.
Id. at 3:40–44. A user may interrupt the real-time broadcast by depressing
freeze button 32. Id. at 4:46–47. Freeze button 32 controls logic circuit 31,
and depressing this button causes the system to enter Freeze Mode. Id. In
Freeze Mode, the last sixty seconds of the broadcast are stored in further
storage device 30, and cyclic storage device 22 continues to store the audio
signal. Id. at 4:51–56. The listener can playback the frozen portion of the
broadcast at any time by depressing Playback button 33, which controls
logic circuit 31 and causes the device to enter Playback Mode. Id. at 4:63–
67. After the frozen portion has been played, the system automatically
returns to Normal-Listening Mode. Id. at 5:3–6.
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3. Analysis
Independent claim 1 recites a recording and playback apparatus for
the substantially immediate and seamless resumption of interrupted
perception of program information. Ex. 1001, 8:28–31. Independent claim
14 recites a method for enabling the substantially immediate resumption of
perception of broadcast program information. Id. at 10:4–6. We analyze
these claims together because there is considerable overlap as to their
limitations.
Petitioner relies upon Goldwasser’s teaching for essentially all of the
elements of independent claims 1 and 14 with the exception of the claimed
keyboard with a record and playback key. Tr. 5:19–21. Specifically,
Petitioner relies upon Goldwasser’s teaching of a recording device that
allows for simultaneous playback and recording of a broadcast program.
Pet. 41–42; see also PO Resp. 10 (describing Goldwasser as disclosing a
device in which “reading and writing [of video signals] may be done
simultaneously”). As described in Goldwasser, recording is controlled by
address controller 58, which is responsive to commands received from user
control panel 50. See Pet. 40–41; see also PO Resp. 10–11 (noting that the
address controller controls where video signals are stored and is responsive
to the user control panel). The user control panel may be used to send an
interrupt that varies the playback of video recorded by the device. Ex. 1005,
7:7–18. Goldwasser, however, does not provide a detailed description of the
user control panel and thus lacks an explicit teaching of a keyboard.
Pet. 43–46. Thus, Petitioner relies upon the teaching of Yifrach, specifically
its freeze and playback buttons, to disclose the claimed keyboard with
playback and record keys. Id. Petitioner’s contentions and evidence
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demonstrate persuasively that the combination of Goldwasser and Yifrach
teach or suggest the limitations of claims 1 and 14.
Patent Owner raises several arguments in response to Petitioner’s
assertions. Specifically, Patent Owner contends that (1) the cited art does
not teach the recited keyboard having a record key and a playback key (PO
Resp. 12–23), (2) the cited art does not teach the recited control circuit (id. at
23–29), and (3) there is no motivation to combine Goldwasser and Yifrach
(id. at 29–38). We shall address each argument in turn.
First, Patent Owner argues that “a keyboard having a record key and a
playback key” is not taught by the cited art. Id. at 12–23. Petitioner relies
upon Goldwasser to teach a “user control panel” that controls the location
from which video is stored and by which a user can control the recording
and playback of video. Pet. 45 (citing Ex. 1005, 6:44–49; Ex. 1010 ¶ 132).
Goldwasser, however, does not provide details as to the user control panel.
In addition, Goldwasser indicates that a key pad could be used to control at
least one embodiment of its device. See Ex. 2004, 43:16–44:5; Ex. 1005,
8:9–13 (describing a “multiple tape” embodiment that is controlled by a
microprocessor “responsive to user controls input at a key pad, remote
control device or the like”). As with the aforementioned user control panel,
however, there is no discussion or description of what is to be found on this
key pad. See Ex. 2001 ¶ 27. Goldwasser discloses that a user can pause a
recording and resume playback, but it does not provide specifics as to the
user interface that allows the user to perform these actions. See Pet. 45–46
(citing Ex. 1005, Abstract, 1:56–60). Thus, Petitioner relies upon Yifrach to
provide a teaching of record and playback keys. Id. at 46. Yifrach teaches
freeze button 32 and playback button 33, which, in conjunction with the
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teachings of Goldwasser’s user control panel, are relied upon to teach the
claimed record and playback buttons. Pet. 45.
Petitioner cites Yifrach’s freeze and playback keys, which are used in
“Normal-Listening Mode.” Pet. 46 (citing Ex. 1003, Fig. 2, 4:63–5;6;
Ex. 1010 ¶¶ 135–137). In Normal-Listening Mode, audio is stored
continuously to cyclic storage device 22. Ex. 1003, 3:18–24. This buffering
permits the user to hear the broadcast in a continuous manner and allows the
user to rehear portions of the broadcast on demand. Id. at 1:52–58; Ex. 1010
¶ 136. The freeze button allows users to record the last sixty seconds of the
broadcast to another buffer, the further storage device. This recorded audio
may then be played back when the user depresses the playback button.
Pet. 45 (citing Ex. 1003, 4:63–5:6, Fig. 2). Under the Petitioner’s proposed
ground, this teaching is to be viewed in conjunction with the teaching of
Goldwasser, which allows the user “to pause playback for a variable period
of time without interrupting the recording.” Ex. 1005, Abstract; Pet. 44.
Patent Owner argues that these teachings are insufficient to render
obvious the claimed record and playback key. According to Patent Owner,
Yifrach’s freeze key is “manifestly different” from the recited record key.
PO Resp. 17 (citing Ex. 2001 ¶¶ 33–37). As noted by Patent Owner,
actuating Yifrach’s freeze key causes the device to “transfer[] the already
recorded content in the cyclic storage device to the further storage device.”
Id. (citing Ex. 2004, 60:19–61:3). Patent Owner’s declarant, Mr. Adam
Goldberg, asserts that a button that causes the transfer of previously
recorded data to another storage device does not render obvious the claimed
record button because it does not “begin a recording.” Ex. 2001 ¶¶ 36–39;
PO Resp. 19. Patent Owner asserts that transferring previously recorded
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data from one buffer to another would have been understood by one of
ordinary skill in the art to be copying and not recording. PO Resp. 19–20.
Petitioner responds by stating that “the functionality that occurs in
Yifrach when these buttons are activated is irrelevant to the Grounds of
unpatentability. As to the claimed functionality, Petitioner relies on the
control circuit functionality of Goldwasser, not Yifrach.” Reply 3 (citing
Pet. 43–47, 56). In other words, Petitioner is relying upon Yifrach to teach
the two-button interface and not the actions that occur when those buttons
are pushed. Petitioner’s declarant Mr. Wechselberger testifies that “the use
of a separate ‘Freeze’ and ‘Playback’ buttons, as disclosed in Yifrach . . .
was a well-known user interface design choice to a person of ordinary skill
in the art at the time of the alleged invention.” Ex. 1010 ¶ 91. Yifrach is a
reference that uses such a two-button interface. Goldwasser included a
detailed description of the simultaneous recording and playback found in the
limitations of claims 1 and 14. Thus, when the teachings are viewed
together, they would have taught the whole of the disputed limitations.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Therefore, our
analysis must go further than reviewing what is taught by each isolated
reference. Instead, we must focus on what one of ordinary skill in the art
would learn from the combination of teachings found in the cited references.
Id. Pursuant to such analysis, we find that Yifrach’s playback and freeze
keys combined with Goldwasser’s simultaneous recording and playback
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would have taught one of ordinary skill in the art the claimed “keyboard
having a record key and a playback key.”
Patent Owner further notes that Goldwasser discloses starting a
recording using stored instructions and not by actuating a record key. PO
Resp. 22 (citing Ex. 1005, Abstract). According to Patent Owner, one of
ordinary skill in the art would not have been motivated to modify
Goldwasser’s user control panel to use keys instead of stored instructions.
Id. Goldwasser, however, does not describe the user control panel’s user
interface. Mr. Wechselberger testified that the use of buttons as disclosed in
Yifrach “was a well-known user interface design choice to a person of
ordinary skill in the art at the time of the alleged invention.” Ex. 1010 ¶¶ 91,
151. Mr. Wechselberger also testified that record and playback buttons were
found on all VCRs since at least the 1980s. Id. ¶ 26. We find that it would
not have been beyond the skill of an ordinarily skilled artisan to implement
Goldwasser’s user control panel with keys as recited in Yifrach. See KSR
Int’l v. Teleflex, 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”). Thus, we
find that one of ordinary skill in the art would have been motivated to
implement Goldwasser’s user control panel with buttons as described in
Yifrach.
Second, Patent Owner asserts the cited art does not teach the recited
control circuit. PO Resp. 23–29. Patent Owner argues that Goldwasser’s
address controller is not described as being configured to perform the actions
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recited in the claims. Id. at 25. Claim 1 recites a control unit responsively
coupled to a keyboard and a memory unit in which
said control circuit being configured so that substantially
simultaneous recording and playback of program information is
achieved when

said record key is first actuated to begin a recording by
initiating storage of the broadcast program information in said
memory unit, and

said playback key is subsequently and solely actuated to begin
time delay playback of the recording from the beginning thereof
by initiating retrieval of the stored program information in said
memory unit,

with the interval of the time delay being the same as the time
elapsed between the actuation of said record key and the
subsequent actuation of said playback key.

Ex. 1001, 8:52–64. Thus, the claims require that the control circuit be
configured (1) to achieve substantially simultaneous recording and playback
when the record key is actuated to begin a recording; (2) to begin playback
when the playback key is subsequently and solely actuated; and (3) such that
the interval of the time delay is the same as the time that has elapsed
between actuating the record and playback keys.
Patent Owner argues that “[b]ecause Goldwasser lacks a record and a
playback key, it cannot disclose the control circuit of the ’444 Patent.” PO
Resp. 24. In an obviousness analysis, however, a single reference’s lack of
disclosure as to an aspect of the claims is not fatal to an asserted ground of
unpatentability. As discussed above, we look to the teachings of the cited
references to see what one of ordinary skill in the art would have learned
from the combination of teachings put forth by the Petitioner. Here, we have
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found that the record and playback keys would have been obvious in light of
the teachings of Goldwasser and Yifrach. The analysis as to whether
Goldwasser and Yifrach would have taught the recited control circuit flows
from our previous discussion of the record and playback keys. Thus, we
look to see whether Goldwasser teaches the recited configuration for the
control circuit, and we do this in light of our finding that the combination of
Goldwasser and Yifrach would have taught the recited keys.
Goldwasser discloses
[a] video recorder and playback device allowing simultaneous
recording and playback of program material, including means
for controllably varying a time delay between the recording and
playback of recorded material. This allows, for example,
playback of previously recorded material to be temporarily
stopped and then resumed without interrupting the recording of
new material.
Ex. 1005, Abstract. According to Petitioner, Goldwasser describes address
controller 58, which controls the location where video signals are stored or
accessed and is responsive to commands received from user control panel
50. See Pet. 47 (citing Ex. 1005, Figs. 3, 4; Ex. 1010 ¶ 139). Petitioner
argues that this disclosure teaches or at least suggests the claimed control
circuit. Id. We find that Goldwasser’s address controller, when viewed in
light of Yifrach’s two-button interface and Goldwasser’s user control panel,
would have taught one of ordinary skill in the art a control circuit configured
to allow for simultaneous recording when the record key is actuated to begin
a recording and playback when the playback key is subsequently and solely
actuated to begin playback. We also find that these disclosures would have
taught a control circuit configured such that the interval of the time delay is
the same as the time that has elapsed between actuating the record and
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playback keys. Thus, we find that the cited art would have taught the
claimed control circuit.
Finally, Patent Owner contends that one of ordinary skill in the art
would not have been motivated to combine the teachings of Goldwasser and
Yifrach. PO Resp. 29–38. Patent Owner argues that Petitioner has not
provided sufficient evidence to support its assertion that one of ordinary skill
would have combined these references. Id. at 29. Mr. Goldberg testifies on
behalf of Patent Owner that combining Yifrach’s freeze and playback
buttons with Goldwasser’s control panel would not result in the claimed
invention. Id. at 32 (citing Ex. 2001 ¶¶ 37, 55, 56). In addition, Patent
Owner contends that Goldwasser and Yifrach are directed to different
problems in different fields of inquiry and, thus, a person of ordinary skill
would not have combined them. Id. at 34–35.
Petitioner responds by stating that Patent Owner has mischaracterized
Petitioner’s argument. Reply 7. Petitioner is not arguing that Goldwasser
should be modified to include the freeze and playback functionality of
Yifrach; instead, Petitioner’s ground is directed to implementing
Goldwasser’s user control panel with a two-button user interface as
described in Yifrach. Id. at 7–8. As discussed above, we find that one of
ordinary skill in the art would have been motivated to implement
Goldwasser’s user control panel with buttons and that such a modification
would have been within the knowledge of one of ordinary skill in the art.
As to the problems addressed by the Goldwasser and Yifrach, Patent
Owner asserts that “‘problems’ articulated in the references demonstrate that
they are not ‘the same,’ or even similar in a meaningful way.” PO Resp. 34.
We disagree with Patent Owner’s assertion. Yifrach’s device is designed to
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remedy the problem of a listener missing a portion of a previously broadcast
program by allowing the listener to playback a portion that may have been
missed due to the listener’s inattentiveness. Id. at 34–35 (citing Ex. 1003,
1:9–20, 1:24–28). Goldwasser allows a user to cease watching a program in
order to handle an interruption such as a phone call and then resume viewing
the program after the completion of the interruption. Id. (citing Ex. 1005,
1:13–18, 1:26–32, 1:43–49). We find that Petitioner’s description of the
field of common inquiry (“delayed playback of audio or visual information”)
is reasonable in light of the evidence. See Pet. 56; Ex. 1010 ¶ 154. Like the
’444 patent, both cited references are directed to providing individuals with
the ability to enjoy a broadcast program despite interruptions that may cause
the user to step away from, or provide less than his or her full attention to,
the broadcast. The references describe different reasons for the user’s
distraction, but the common thread is that the user is not paying full attention
to the broadcast and the user seeks a way to record and playback content that
the user would have missed due to that distraction. Thus, we find that the
cited references are analogous art because they are from the same field of
endeavor, and that they are pertinent to the particular problem addressed in
the ’444 patent. Based on the full record, we find that Petitioner has
provided sufficient evidence of a motivation to combine Goldwasser and
Yifrach. Accordingly, we are persuaded that Petitioner has demonstrated by
a preponderance of the evidence the unpatentability of independent claims 1
and 14 over Goldwasser and Yifrach.
Claims 7–10 depend from claim 1. We have reviewed Petitioner’s
arguments and supporting evidence with respect to these claims (Pet. 51–
54), and we determine that Petitioner has demonstrated by a preponderance
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of the evidence that the combination of Goldwasser and Yifrach also teaches
or suggests the limitations of those claims, as set forth in the Petition. For
example, claim 7 depends from claim 1 and further recites that the storage
medium comprises solid state random access memory. Ex. 1001, 9:11–13.
Petitioner asserts that Goldwasser stores the recorded video in random
access memory 53 and notes that it may be desirable to use a solid state
FIFO buffer. Pet. 51 (citing Ex. 1005, 6:25–29, 7:59–66). We agree with
this assertion and the other factual assertions related to these dependent
claims. Patent Owner did not direct any additional arguments to these
dependent claims.
Accordingly, we find that Petitioner has demonstrated by a
preponderance of the evidence that claims 1, 7–10, and 14 would have been
obvious, under 35 U.S.C. § 103(a), over the combination of Goldwasser and
Yifrach.
C. Obviousness of Claims 2–4 and 13 over Goldwasser, Yifrach, and Vogel
Petitioner asserts that claims 2–4 and 13 would have been obvious
over Goldwasser, Yifrach, and Vogel. Pet. 57–58. Claims 2–4 and 13 each
depend directly or indirectly from claim 1. Patent Owner did not direct any
additional arguments to these dependent claims. Claims 2–4 further recite a
remote control unit for use with the recording device. Petitioner asserts that
Vogel taken in combination with Goldwasser and Yifrach would have
rendered obvious the claimed remote control. Pet. 36–37, 57 (citing
Ex. 1004, 7, Fig. 1). Vogel discloses a system and method for selecting
television programs. Ex. 1004, Abstract. Specifically, Vogel describes “a
device which communicates with the VCR via an infra-red (IR) control
signal.” Id. at 6:24–25. This remote control allows the user to control the
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functions of the VCR. Id. Petitioner contends that Vogel’s remote control
in conjunction with the above-discussed disclosures from Goldwasser and
Yifrach would have rendered obvious claims 2–4. We are persuaded by
Petitioner’s contentions and find that Petitioner has demonstrated by a
preponderance of the evidence the unpatentability of claims 2–4.
Claim 13 also depends from claim 1. It further recites a timer circuit
adapted to enable the preprogrammed unattended initiation of recording. As
noted by Petitioner, Vogel states that “[m]any VCRs are equipped with
timing means for starting and stopping recording of programs at times
selected by the user.” Pet. 37 (quoting Ex. 1004, 3). We find that Petitioner
has demonstrated by a preponderance of the evidence the unpatentability of
claim 13, as set forth in the Petition.
Accordingly, we find that Petitioner has demonstrated by a
preponderance of the evidence that claims 2–4 and 13 would have been
obvious, under 35 U.S.C. § 103(a), over the combination of Goldwasser,
Yifrach and Vogel.

III. CONCLUSION
Based on the arguments in the Petition, as well as the evidence of
record, we determine that Petitioner has demonstrated by a preponderance of
the evidence that claims 1, 7–10, and 14 would have been obvious, under
35 U.S.C. § 103(a), over the combination of Goldwasser and Yifrach. We
further determine that claims 2–4 and 13 would have been obvious under 35
U.S.C. § 103 (a) over the combined teachings of Goldwasser, Yifrach, and
Vogel.

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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–4, 7–10, 13, and 14 of the ’444 patent are
held unpatentable;
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

PETITIONER:

Eliot D. Williams
eliot.williams@bakerbotts.com

G. Hopkins Guy
hop.guy@bakerbotts.com

PATENT OWNER:

Kai Zhu
kz@dragonipllc.com

Timothy Devlin
tdevlin@devlinlawfirm.com