Rovi Guides, Inc.

Patent Trials and Appeals Board

May 8, 2020

IPR2019-00231 (P.T.A.B. May. 8, 2020)

Trials@uspto.gov Paper No. 44
571-272-7822 Entered: May 8, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

COMCAST CABLE COMMUNICATIONS, LLC,
Petitioner,

v.

ROVI GUIDES, INC.,
Patent Owner.
____________

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Patent 9,369,741 B2
____________

Before KARL D. EASTHOM, BARBARA A. PARVIS, and
SCOTT E. BAIN, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
Comcast Cable Communications, LLC, (“Petitioner”) filed a Petition
pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
claims 1–26 of U.S. Patent No. 9,369,741 B2 (Ex. 1001, “the ’741 Patent”).
Paper 1 (“Pet.”). Rovi Guides, Inc., (“Patent Owner”) filed a Preliminary
Response. Paper 6 (“Prelim. Resp.”). Additionally, Petitioner filed a Reply
to Patent Owner’s Preliminary Response (Paper 9) and Patent Owner filed a
Sur-Reply (Paper 10). Upon consideration of the parties’ contentions and
supporting evidence, we instituted an inter partes review pursuant to 35
U.S.C. § 314, as to the challenged claims of the ’741 Patent. Paper 14
(“Inst. Dec.”).
After institution, Patent Owner filed a Patent Owner Response (Paper
19, “PO Resp.”); Petitioner filed a Reply (Paper 24, “Pet. Reply”); and
Patent Owner filed a Sur-Reply (Paper 27, “PO Sur-Reply”). A transcript of
the hearing held on February 13, 2020, has been entered into the record as
Paper 40 (“Tr.”).
This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
For the reasons that follow, we determine that Petitioner has demonstrated
by a preponderance of evidence that challenged claims 1–26 of the ’741
Patent are unpatentable.
II. BACKGROUND
A. Real Parties in Interest
Petitioner identifies as the real parties in interest the following:
Comcast Corp.; Comcast Cable Communications, LLC; Comcast Cable
Communications Management, LLC; Comcast Business Communications,
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LLC; Comcast Holdings Corp.; Comcast Shared Services, LLC; Comcast of
Santa Maria, LLC; Comcast of Lompoc, LLC; Comcast Financial Agency
Corp.; and Comcast STB Software I, LLC. Pet. 7. Patent Owner names as
the real parties in interest Rovi Guides, Inc. and Rovi Corp. Paper 5, 1.
B. Related Matters
As required by 37 C.F.R. § 42.8(b)(2), each party identifies a judicial
matter that would affect, or be affected by, a decision in this proceeding. In
particular, the parties inform us that the ’741 Patent is asserted in Rovi
Guides, Inc. v. Comcast Corp., No. 2-18-cv-00253 (C.D. Cal.) (“related
district court case”), filed January 10, 2018, and Digital Video Receivers and
Related Hardware and Software Components, Inv. No. 337-TA-1103 (ITC),
filed February 8, 2018 (the “ITC investigation”). Pet. 7–8; Paper 5, 1.
Petitioner additionally filed IPR2019-00232 also challenging claims 1–26 of
the ’741 Patent. We exercised our discretion under 35 U.S.C. § 314 and
denied institution of an inter partes review in that proceeding. Comcast
Cable Communications, LLC v. Rovi Guides, Inc., IPR2019-00232, Paper 14
(PTAB May 20, 2019) (Decision Denying Institution).
C. The ’741 Patent
The ʼ741 Patent is directed to interactive television systems such as
interactive television program guide systems. Ex. 1001, 1:25–26. Figure 1
of the ’741 Patent is reproduced below.
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Figure 1 of the ’741 Patent, above, illustrates interactive television system
10 including television distribution facility 14. Id. at 4:50–55. Television
distribution facility 14 is connected to user equipment devices 18 located in
the homes of users, including user television equipment 20 and user
computer equipment 22. Id. at 5:1–4. User equipment devices 18 receive
television and music programming and other information from television
distribution facility 14 over communications paths 26, 27, and 28. Id. at
5:6–8. Data source 30 provides program schedule information and other
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data to television distribution facility 14 over communications path 32 and to
user equipment 18 via communications network 34 and paths 38 and 42. Id.
at 5:30–40.
In one embodiment, the system provides a reminder to watch a video
“at a time later than the scheduled broadcast time” after “the program will
have been recorded.” Ex. 1001, 24:62–64. “Accordingly, selection of a
watch now option . . . will direct the network-based video recorder to play
back the program . . . .” Id. at 24:65–68 (referring to Figure 21).
D. Illustrative Claim
Petitioner challenges claims 1–26 of the ’741 Patent. Pet. 7. Claims
1, 8, 15, and 21 are independent claims. Claims 2–7, 9–14, 16–20, and 22–
26 depend, directly or indirectly, from claims 1, 8, 15, and 21, respectively.
Independent claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system comprising:
storage circuitry for storing archived copies of videos;
control circuitry configured to:
transmit a video to a plurality of user equipment, wherein
the transmitting begins at a start time and ends at an
end time;
access a database to determine whether an archived copy
corresponding to the video is available to a user after
the start time;
based on determining that the archived copy is available
to the user after the start time, cause an indication
corresponding to the archived copy to be displayed
simultaneously with the video after a specified time
after the start time but before the end time, wherein the
specified time was configured prior to the start time;
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receive a user response to the indication that is displayed;
and
based on the received user response, retrieve, from the
storage circuitry, the archived copy.
Ex. 1001, 37:62–38:13.
E. Evidence Relied Upon
Petitioner relies on the following references:
U.S. Patent Publication No. 2002/0095510 A1, filed June 8, 2001,
published July 18, 2002 (Ex. 1003, “Sie”);
International Application Publication No. WO 01/56285 A1, filed
January 19, 2001, published August 2, 2001 (Ex. 1005, “Berberet”);
U.S. Patent No. 7,073,189 B2, filed November 22, 2002, issued July
4, 2006 (Ex. 1006, “McElhatten”);
U.S. Patent No. 6,804,825 B1, filed November 30, 1998, issued
October 12, 2004 (Ex. 1007, “White”); and
U.S. Patent No. 6,769,127 B1, filed June 16, 2000, issued July 27,
2004 (Ex. 1008, “Bonomi”).
Additionally, Petitioner relies on the Declaration of Dr. Gary Tjaden
(Ex. 1002) and the Second Declaration of Dr. Tjaden (Ex. 1036). Patent
Owner relies on the Declaration of Dr. Kevin Almeroth (Ex. 2007).
F. Grounds Asserted
Petitioner asserts the following grounds of unpatentability set forth in
Table 1 of this Decision below. Pet. 16.
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Claims Challenged 35 U.S.C. §1 Reference(s)/Basis
1, 5–8, 12–15, 19–21, 25,
26
103(a) Sie
1, 3, 5–8, 10, 12–15, 17,
19–21, 23, 25, 26
103(a) Sie, Berberet
2, 9, 16, 22 103(a) Sie, White
2, 9, 16, 22 103(a) Sie, Berberet, White
4, 11, 18, 24 103(a) Sie, Bonomi
4, 11, 18, 24 103(a) Sie, Berberet, Bonomi
1, 3, 5–8, 10, 12–15, 17,
19–21, 23, 25, 26
103(a) Sie, McElhatten
2, 9, 16, 22 103(a) Sie, McElhatten, White
4, 11, 18, 24 103(a) Sie, McElhatten, Bonomi

Table 1 of this Decision summarizes the grounds in the instant proceeding.

1 Petitioner asserts “[t]he ’741 Patent was filed as App. No. 14/741,034 (the
‘’034 Application’) on June 16, 2015, sixth in a chain of applications
claiming priority to App. No. 10/357,001, which was filed Jan. 30, 2003.
(Ex. 1009, 1-8). The ’741 Patent is at best entitled to the Jan. 30, 2003
priority date of App. No. 10/357,001. (Ex. 1002, ¶¶50-51).” Pet. 14.
Neither party disputes the priority claim. Because the challenged claims of
the ’741 Patent have an effective filing date before March 16, 2013, the 35
U.S.C. §§ 102 and 103 provisions of the Leahy-Smith America Invents Act
(“AIA”), Pub. L. No. 112-29, §§ 3(b)–3(c), 3(n)(1), 125 Stat. 284, 285–87,
293 (2011), do not apply and we apply the pre-AIA versions of these
statutes.
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III. DISCUSSION
A. Principles of Law Relating to Obviousness
A patent claim is unpatentable if the differences between the claimed
subject matter and the prior art are such that the subject matter, as a whole,
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains.
35 U.S.C. § 103(a). The question of obviousness is resolved on the basis of
underlying factual determinations, including (1) the scope and content of the
prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of skill in the art; and (4) objective evidence of
nonobviousness, i.e., secondary considerations. See Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966). When evaluating a combination of
teachings, we also “determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at issue.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We analyze the
ground based on obviousness in accordance with the above-stated principles.
B. Level of Ordinary Skill
Petitioner contends, relying on the testimony of Dr. Tjaden, that a
person having ordinary skill in the art would have had a Bachelor of Science
degree in computer science, electrical engineering, computer engineering, or
a similar discipline, and two years of experience with interactive program
guides, set-top boxes, and techniques for delivering video-on-demand
content over communication networks, such as a cable system, a local-area
network, or the Internet. Pet. 17 (citing Ex. 1002 ¶¶ 29–31). Petitioner
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contends, alternatively, a person having ordinary skill in the art could have
had equivalent industry or research experience. Id.
Patent Owner submits the testimony of Dr. Almeroth that
the characteristics of a person of ordinary skill in the field of art
would be a person with a Bachelor of Science degree, or its
equivalent, in electrical engineering, computer engineering,
computer science, or a related field and either a Master of
Science degree, or its equivalent, in one of those fields or
approximately two years of related experience in the field of
multimedia content distribution and user interfaces.
Ex. 2007 ¶ 42. In its Patent Owner Response, however, Patent Owner does
not dispute Petitioner’s proposed level of ordinary skill or discuss any
differences between Dr. Almeroth’s and Dr. Tjaden’s level of ordinary skill
in a meaningful way. See generally PO Resp.
In determining the level of ordinary skill in the art, various factors
may be considered, including the “type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(citation omitted). On the record before us, we determine that Petitioner’s
assessment of a person with ordinary skill in the art is consistent with the
problems and solutions in the prior art of record. We further find that the
’741 Patent Specification tracks Petitioner’s assessment. Also, the prior art
of record in the instant proceeding reflects the appropriate level of ordinary
skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
2001) (the prior art itself can reflect the appropriate level of skill in the art).
We, however, consider both Petitioner’s and Patent Owner’s proposals in
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our analyses herein and our conclusions do not turn on which definition is
selected.
C. Claim Construction
In this inter partes review, we construe claim terms according to their
broadest reasonable construction in light of the specification of the patent in
which they appear. 37 C.F.R. § 42.100(b) (2018).2 The parties’ contentions
regarding claim construction are discussed below.3
1. “archived copies”/“archived copy”
Petitioner provides claim construction contentions for “archived
copies”/“archived copy” recited in independent claims 1, 8, 15, and 21. Pet.
18–19. In particular, Petitioner contends in the related ITC investigation
“Patent Owner argued that the proper construction for this term is ‘stored
copy’ or ‘stored copies’” and “Petitioner submits that this is the broadest
reasonable construction of this term.” Id. at 18 (citing Ex. 1010, 7;
Ex. 1011, 47–51; Ex. 1001, 2:14–21, 2:41–44, 28:21–23; Ex. 1019, 74,
Ex. 1002 ¶ 34; Ex. 1021, 6–9). Petitioner also contends “[a]lternatively, a
narrower construction of this term (as adopted by the ITC) is ‘a real or

2 The claim construction standard to be employed in an inter partes review
has changed. See Changes to the Claim Construction Standard for
Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R.
§ 42.100(b) effective November 13, 2018). At the time of the filing of the
Petition in this proceeding, however, the applicable claim construction
standard was set forth in 37 C.F.R. § 42.100(b) (2018).
3 The effective filing date of the ’741 Patent is before September 16, 2012.
See supra § II.F. We, therefore, use the pre-AIA version of 35 U.S.C. § 112
in our discussion below, but the requirements of § 112 are the same under
the pre- and post-AIA versions of the statute.
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virtual copy of a program retained by a system.’” Id. at 19 (citing Ex. 1021,
6–9; Ex. 1002 ¶¶ 35–38; Ex. 1001, 19:49–59, 25:30–37, 28:18–24, 33:31–
40).
Patent Owner “does not dispute [Petitioner’s] proposed broadest
reasonable construction for ‘archived copy.’” PO Resp. 16.
Consistent with Petitioner’s contentions, the ’741 Patent Specification
describes that “[e]ach user may be provided with a personal area that reflects
that user’s collection of recorded or archived programming.” Ex. 1001,
2:14–21 (emphasis added). The ’741 Patent Specification also includes the
following description:
Due to storage restrictions, it may not be desirable to
maintain copies of all broadcast programs in the network-based
or local personal video recorder for an indefinite period.
Accordingly, these programs may be erased or moved to a more
remote storage location after an appropriate time has elapsed
from their initial broadcast. To avoid losing ready access to a
desired program, the user may wish to archive the program in
that user’s personal area or local PVR. The user may be charged
a one-time or periodic fee for this service by the system.
Archived virtual or real copies can be maintained on the network
or local PVR for ready access by the user. Copies that are not
archived may be impossible or at least more difficult to access.
Id. at 28:21–36 (emphases added).
We, therefore, determine that the broadest reasonable interpretation of
“archived copies”/“archived copy” is “stored copy or stored copies.”4

4 This construction is necessary for our analysis of obviousness over Sie
alone, but, for the reasons discussed below, is not needed for our analysis of
the other obviousness grounds in light of Petitioner’s showing that each of
Berberet and McElhatten teaches the narrower of the constructions. See
infra § III.D.4.
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2. “available to a user after the start time”
Patent Owner asserts that the broadest reasonable interpretation of
“available to a user after the start time” is “available to a user at times other
than the scheduled broadcast time for the video.” PO Resp. 16. Patent
Owner relies on portions of the ’741 Patent Specification for its proposed
construction (see, e.g., PO Resp. 17; PO Sur-Reply 15–16), which support
Patent Owner’s proposal. See, e.g., Ex. 1001, 2:29–32 (describing making
“a program available to the user at times other than the scheduled broadcast
time”), 36:39–42 (“An advertiser or program provider may wish to ensure
that a specific program or programs on a specific channel are made available
to users for an extended period of time (and may be charged for the
privilege)”).
With its Patent Owner Response, Patent Owner submits the testimony
of Dr. Almeroth in support of its claim construction above. PO Resp. 18
(citing Ex. 2007 ¶¶ 54–59). Dr. Almeroth testifies that he agrees with Patent
Owner’s construction that “available to a user after the start time” means
“available to a user at times other than the scheduled broadcast time for the
video.” Ex. 2007 ¶¶ 53–54.
In his Declaration, Dr. Almeroth also testifies regarding the “plain
language” of “to a user” within this same term. Id. ¶¶ 82–87; see also PO
Resp. 21. Dr. Almeroth testifies that “the meaning of the claim limitation
changes if the phrase ‘to a user’ is removed from the limitation,” and, more
specifically, that “[t]he ‘to a user’ clause changes the determination from
merely determining whether an archived copy is available to a determination
whether it is available to a user.” Ex. 2007 ¶ 82.
Patent Owner also asserts the following:
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[T]he ALJ specified that “[t]he ’741 patent appears to treat
availability as immediate accessibility, not possible accessible in
the future to users who become ‘club members.’” Id.
Accordingly, there is “a primary distinction between Sie and the
asserted claims.” Id. Specifically, where “Sie displays its ‘club
program’ indications to all users (even those to whom the video
is unavailable after the start time). The ’741 patent, by contrast,
requires that the indication be displayed only to users for whom
the content is ‘available.’” Id. The ALJ further found that “Sie’s
determination of whether a club program is ‘available’ to a user
(whether the user is a ‘club’ member) occurs only after the user
sees the ‘club program’ indication” which is “the inverse” of
what the ’741 patent requires. Id., 0283.
PO Resp. 20.
In its Sur-Reply, Patent Owner argues that “available to a user” should
be read in light of the ’741 Patent Specification and, further, that the ’741
Patent Specification “discloses embodiments where two determinations are
made—(i) that an archived program exists; and (ii) that the user has the
appropriate rights, privileges, and/or premium service subscriptions to be
able to access the program.” PO Sur-Reply 15–16 (citing Ex. 1001, 20:11–
13, 24:26–27, 36:39–42). Taking into consideration Patent Owner’s
arguments in its Patent Owner Response including those regarding the ITC
investigation (see, e.g., PO Resp. 20), Dr. Almeroth’s testimony (see, e.g.,
Ex. 2007 ¶¶ 82–87), and Patent Owner’s arguments in its Sur-Reply (see,
e.g., PO Sur-Reply 15–16), Patent Owner implicitly argues that “available to
a user” requires advanced purchase by the user.
That requirement, however, is not supported by the language of the
claims, which do not recite a requirement pertaining to when payment is
made. The ’741 Patent Specification also does not support Patent Owner’s
advanced purchase requirement. For example, one portion relied upon by
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Patent Owner states “each user may have access to all previously recorded
content to which they had rights when originally broadcast” (Ex. 1001,
20:11–13), but even that portion does not state the user must pre-pay as a
user has rights to television programming when it is originally broadcasted
(id. at 11:63–12:9, 23:59–63). Another portion relied upon by Patent Owner
specifically states that payment is made at the time of selection. Id. at
24:26–30 (describing that “a fee may be imposed in association with the
user’s selection”). Patent Owner, additionally, acknowledges that not all
portions of the ’741 Patent Specification are required by the claims. See,
e.g., Tr. 33:4–11. We determine that “available to a user after the start time”
does not require that the user purchase the rights to that availability in
advance.
We have considered Patent Owner’s assertions regarding the ITC
investigation, including the assertion above, as well as the evidence
submitted in this proceeding regarding determinations made in the ITC
proceeding. See, e.g., PO Resp. 19–20 (citing Ex. 2010, 1, 282–285). Claim
1 recites simply “access a database to determine whether an archived copy
corresponding to the video is available to a user after the start time.”
Ex. 1001, 38:1–3. We do not discern any recitation in claim 1 or any of the
independent claims that specifies requirements regarding when payment is
made. Patent Owner’s arguments require reading an advanced purchase
requirement into the claims. For the reasons given above, however,
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including our consideration of the ’741 Patent Specification, the claims do
not require the argued limitations based on advance purchases.5
Accordingly, we adopt the construction urged in Patent Owner’s
Response. See PO Resp. 16 (“available to a user after the start time” means
“available to a user at times other than the scheduled broadcast time for the
video”).
We need not construe the term further to resolve a controversy in this
proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe
terms ‘that are in controversy, and only to the extent necessary to resolve the
controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999)).
3. “storage circuitry” and “control circuitry”
Claims that include the language “means” or “means for” are
presumed to invoke 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online,
LLC, 792 F. 3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part)
(“[U]se of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.”).
However, the terms “storage circuitry” and “control circuitry” do not contain
the language “means” or “means for.” In the instant proceeding, neither
party contends that 35 U.S.C. § 112, ¶ 6 should apply to “storage circuitry”
and “control circuitry.” Pet. 17–25; PO Resp. 16–18. Additionally, Patent
Owner does not point us to a determination made in the related ITC
investigation that 35 U.S.C. § 112, ¶ 6 applies to either “storage circuitry” or

5 We need not make determinations regarding Patent Owner’s arguments
relating to the ITC investigation in light of Petitioner’s showing, as will be
discussed in more detail below. See infra § III.D.4.
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“control circuitry,” and instead, evidence has been submitted indicating that
the determination in the related ITC investigation is that 35 U.S.C. § 112, ¶ 6
does not apply to those terms. Ex. 1021, 35, 45 (ITC Order construing terms
of ’741 Patent indicating that the parties agreed “storage circuitry for storing
archived copies of videos” is “[n]ot 112(6)” and determining that “control
circuitry configured to” “is not a means-plus-function claim term”).
Accordingly, based on the complete record now before us, neither
“storage circuitry” nor “control circuitry” invokes § 112, ¶ 6. With respect
to “control circuitry,” in light of Petitioner’s showing (see supra § III.D.4),
we maintain our determination in the Decision to Institute that “control
circuitry” performs the five functions recited in claim 1. Inst. Dec. 17.6 See
Nidec, 868 F.3d at 1017.
4. Means-Plus-Function Terms
Petitioner provides claim construction contentions for the means-plus-
function terms recited in independent claim 15 and dependent claims 16, 17,
19, and 20. Pet. 17–25. Patent Owner does not dispute Petitioner’s claim
construction contentions or the accuracy of Petitioner’s identification of the
function and corresponding structure identified for any means-plus-function
term. See generally PO Resp.
Based on specific citations to the ’741 Patent Specification by
Petitioner, we determine that Petitioner’s identification of the functions and
corresponding structures identified for the recited means-plus-function terms
is correct. See Pet. 17–25.

6 We, likewise, maintain our determination that “server” recited in claim 21
performs the corresponding functions recited in claim 21. Id.
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D. Obviousness— Independent Claims 1, 8, 15, and 21 and
Dependent Claims 3, 5–7, 10, 12–14, 17, 19, 20, 23, 25, and 26
Petitioner contends each of claims 1, 5–8, 12–15, 19–21, 25, and 26 of
the ’741 Patent is unpatentable, under 35 U.S.C. § 103, as obvious over Sie.
Pet. 16, 27–59. Petitioner also contends each of claims 1, 3, 5–8, 10, 12–15,
17, 19–21, 23, 25, and 26 of the ’741 Patent is unpatentable, under
35 U.S.C. § 103, as obvious over (1) Sie and Berberet and (2) Sie and
McElhatten. Id. at 16, 27–59, 65–75. Patent Owner disagrees. See
generally PO Resp. In our discussion below, we first provide a brief
overview of the prior art, and then we address the parties’ contentions in
turn.
1. Overview of Sie
Sie is directed to a method for sending a program from a content
provider to a user location. Ex. 1003, (57). Figure 1 of Sie is reproduced
below.
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Figure 1 of Sie, above, illustrates a block diagram of program delivery
system 100, including components of a cable television provider’s system,
such as set top boxes 120-1 through 120-n that are connected via
transmission system 108, to subscriber management system 124.
Ex. 1003 ¶ 47, Fig. 1. The cable television provider’s system also includes
subscriber server 128, which is connected to subscriber management system
124 and transmission system 108. Id. Program delivery system 100 also
includes program server 132 and program request database 136, which are
part of an additional content provider’s system and are connected to
subscriber server 128. Id.
Subscriber management system 124 contains users’ account
information used to enable programs on the set top boxes 120-1 through
120-n, such as customer names, addresses, set top box addresses, credit
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history, subscription status, and Video on Demand (VOD) status. Id. ¶ 48.
Subscriber server 128 stores content, preferably compressed in a format
standardized by the Moving Picture Experts Group (MPEG), such as MPEG-
2 or MPEG-4. Id. ¶ 49. Subscriber server 128 provides the content to the
transmission system 108 for distribution to the set top boxes 120. Id.
Program server 132 stores programs associated with an additional content
provider. Id. ¶ 53. Subscriber management system 124 checks with
program request database 136 to determine if a program is available. Id.
2. Overview of Berberet
Berberet describes a system for providing broadcast programming to
subscriber locations including an intermediate video supplier, subscriber
location equipment, and one or more video sources. Ex. 1005, at code (57).
Berberet’s system archives and indexes programs to create a searchable
archive of programs broadcasted over a specified period of time. Id. at
10:4–6. For instance, Berberet describes Program Archive 2.15 and
Program Archive Index 2.16 that allow subscribers to search for
programming previously broadcasted by the system. Id. at 26:7–9. As
Program Archive 2.15 stores programs, the system indexes them manually,
automatically, or by a combination of manual and automatic techniques, so
that subscribers may retrieve them. Id. at 28:7–9.
3. Overview of McElhatten
McElhatten is directed to a system and method for accessing and
reserving entertainment programs through a cable network. Ex. 1006, 1:12–
16. Figure 1 of McElhatten is reproduced below.
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Figure 1 of McElhatten, above, illustrates cable system 100 including
headend 105 and set-top terminals 158-1 through 158-L interconnected via
hub 120, hybrid fiber coax (HFC) cable network 140, and service area node
150. Id. at 5:25–34. Headend 105 includes library manager 113 for long-
term storage. Id. at 8:4. Set-top terminal 158-1 is associated with remote
control 900. Id. at 10:43–44, 13:55–57.
McElhatten describes when the user at set-top terminal 158-1 presses
record key 910 of remote control 900 to save a program for subsequent
viewing, set-top terminal 158-1 marks the program or event that has been
recorded and/or stored at headend 105. Id. at 13:60–63. The marking and
other information, such as an Internet Protocol (IP) and media access control
(MAC) address, are transmitted to media processor 119 in headend 105. Id.
at 13:63–14:2. Based on the received IP address, processor 119 retrieves a
user record associated with terminal 158-1, and registers in the record the
identifier of the asset containing the reserved program, which is identifiable
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by the received marking information and program channel information. Id.
at 14:2–8. The user record is maintained in storage in headend 105 and a
collection of identifiers of the assets reserved by the user. Id. at 14:8–10.
4. Discussion of Claim 1
Below we discuss the element-by-element analysis in the Petition, as
well as the arguments and evidence presented by both parties.7
a) Limitation [1A]: “system comprising: storage circuitry for storing
archived copies of videos”
Petitioner contends “storage circuitry” is taught by Sie’s program
server and “archived copies of videos” is taught by Sie’s description of club
programs. Pet. 32 (citing, e.g., Ex. 1003 ¶¶ 53, 70, 72, 147, 159, 177, Fig. 6;
Ex. 1002 ¶¶ 101–103); see also id. at 28 (citing, e.g., Ex. 1003 ¶¶ 46, 70, 71;
Ex. 1002 ¶¶ 91–92 (describing Sie storing “club programs”). Petitioner
contends that “Sie’s club programs are ‘archived copies’ under the broadest
reasonable interpretation” of that term “because they are ‘stored copies’ of
videos” and they are stored by Sie’s program server. Id. at 32–33 (citing,
e.g., Ex. 1003 ¶¶ 95, 189; Ex. 1002 ¶ 103).
Petitioner provides alternative contentions regarding “archived
copies” if that term is construed more narrowly. In particular, Petitioner
points to alternatives as follows: (1) Berberet’s description that its system
“‘archive[s] and index[es] programs’ from a video buffer to ‘create a
searchable archive of all programs broadcast by all systems over a specified
period of time’” (id. at 32–33 (citing, e.g., Ex. 1005, 10:4–6, 20:17–22,

7 Petitioner’s designations of [1A]–[1G] are inserted and used herein for ease
of reference. Pet. 32, 36–38, 41, 42.
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26:7–12, 28:6–9, 29:7–11; Ex. 1002 ¶¶ 105–106)); and (2) McElhatten’s
description that users “have the opportunity to archive [a] ‘reserved
program,’ which creates an actual copy of the program in the head-end” (id.
at 68 (citing Ex. 1006, 2:54–3:6, 7:65–8:17, 12:48–65, 13:46–63, 15:65–
16:3, 17:34–61, 18:1–22; Ex. 1002 ¶¶ 189–193)). Petitioner relies on the
testimony of Dr. Tjaden regarding reasons one having ordinary skill in the
art would have had to make the proposed modifications to Sie. Id. at 34–36,
65–69 (citing, e.g., Ex. 1002 ¶¶ 110–114, 184, 185–187, 190, 195–197).
Regarding the proposed combinations, Dr. Tjaden testifies that a
person having ordinary skill in the art would have “recognized that
combining Sie and Berberet would have been no more than implementing
the well-known concept of using user preferences to determine which video
content to store (Berberet) to improve a similar head-end video storage
system (Sie).” Ex. 1002 ¶ 112. Dr. Tjaden also testifies that a person
having ordinary skill in the art would have recognized Berberet’s system
“provides useful features which may satisfy subscribers’ needs for access to
content (e.g., start-over functionality for an unpopular show)” and “Sie itself
suggests the combination.” Id. ¶ 111. Dr. Tjaden also testifies that
combining Sie and Berberet would have advantageously mitigated the need
for routine deletion of stored content and would have provided “subscribers
with their desired content while simultaneously managing storage space.”
Id. ¶¶ 112–114. Dr. Tjaden further testifies that the proposed combination
“would have been within the level of ordinary skill in the art” and his
testimony provides supporting explanation. See, e.g., id. .
Regarding McElhatten, Dr. Tjaden testifies “it would have been
obvious for a POSA [person of ordinary skill in the art] to improve Sie’s
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club program system to incorporate user reservation and preservation of
head-end programs, as shown at least by McElhatten.” Id. ¶ 190. Dr.
Tjaden further testifies an “advantage” of such incorporation is “that a user
may ‘reserve multiple programs having overlapping broadcast times’
without being limited by the number of tuners in their set-top box.”
Id. ¶ 191. Also, Dr. Tjaden testifies regarding other advantages and that
combining Sie with McElhatten would have been “particularly useful in
providing users access to content they’d like to watch in view of practical
storage limitations.” Id. ¶¶ 195–197. Dr. Tjaden further testifies that the
functionality of McElhatten would have been “relatively easily implemented
into Sie” and that a person having ordinary skill in the art would have
“readily” understood how to implement McElhatten’s functionality into Sie
and Dr. Tjaden’s testimony includes supporting explanation. See, e.g., id.
¶¶ 195–197.
Patent Owner’s dispute regarding limitation [1A] pertains to the
alternative contentions and reasoning to combine. See generally PO Resp.
In particular, relying on the testimony of Dr. Almeroth, Patent Owner asserts
that a person having ordinary skill in the art would not have made the
combinations proposed by Petitioner. PO Resp. 60–61 (citing Ex.
2007 ¶¶ 202–204). Dr. Almeroth testifies that Dr. Tjaden’s testimony lacks
explanation and that “modifying where programs are stored in Sie’s system
would require changes to the interaction between those content provider-
controlled and cable television provider-controlled systems” thereby
requiring software changes. Ex. 2007 ¶ 204.
After considering the arguments and evidence of both parties, we
agree with Petitioner’s contentions, and we credit and give significant
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weight to the testimony of Dr. Tjaden over that of Dr. Almeroth because
Petitioner’s contentions and Dr. Tjaden’s testimony are consistent with the
evidence of record including the evidence cited therein. We start with
Petitioner’s undisputed assertion regarding the “storage circuitry” recited in
claim 1. Consistent with Petitioner’s contentions and Dr. Tjaden’s
testimony, Sie describes “[t]he program server 132 stores programs
associated with an additional content provider.” Ex. 1003 ¶ 53. Sie’s
“program server 132 can load the programs onto the subscriber server 128 or
directly couple the program to the transmission system 108.” Id. Sie
describes storage as “a magnetic disk, tape drive, video recorder, optical disk
or the like” (id. ¶ 72) and that storage may be local or remote to the user
location (id. ¶¶ 147, 159, 177).
Also consistent with Petitioner’s contentions and Dr. Tjaden’s
testimony are Sie’s teachings regarding “archived copies of videos” relied
on by Petitioner. For example, Sie describes “[t]he program server 132
stores programs associated with an additional content provider.” Id. ¶ 53.
Sie describes “the club programs may be stored remotely, such as in a
headend, a neighborhood node, or may be stored locally, such as in the set-
top box 600” and that “[t]he various embodiments illustrated in FIG. 7–7D
make no particular distinction where the club programs are stored.”
Ex. 1003 ¶ 95. Sie further teaches a purchase arrangement that allows a user
to “copy a club version of the club program onto another device, such as a
PVR [Personal Video Recorder], VCR [Videocassette Recorder], or
removable media.” Id. ¶ 189.
The evidence of record also supports Petitioner’s alternative
contentions and Dr. Tjaden’s testimony that Berberet teaches “archived
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copies of videos” recited in claim 1. For instance, Berberet describes
moving programs “to longer-term storage in a Program Archive 2.15
database” and “[a]s programs are stored in the Program Archive 2.15, they
are indexed manually, automatically, or by a combination of manual and
automatic techniques, so that subscribers may retrieve them.” Ex. 1005,
28:6–9; see also id. at 26:7–16 (describing Program Archive 2.15 as
“archival storage”). As is shown in Figure 6 of Berberet, Program Archive
2.15 is within INTERMEDIATE VIDEO SUPPLIER 1.2, which is remote
from the subscriber. Id. at Fig. 6.
Additionally, the evidence of record also supports Petitioner’s
alternative contentions and Dr. Tjaden’s testimony that McElhatten teaches
“archived copies of videos” recited in claim 1. For instance, McElhatten
describes “offering the user the opportunity to archive the reserved
program” and that “[a]rchiving a program permits a user accessibility to the
program for an extended period of time.” Ex. 1006, 17:42–50 (emphases
added). McElhatten also describes that broadcast programs are recorded at
headend 105 and on-demand and other content is stored at headend 105. Id.
at 13:52–54; see also id. at 15:65–67 (“Reservable programs are those that
have been recorded and stored at headend 105.”). For program reservation,
in response to the user depressing record key 910, “terminal 158-1 marks the
program or event that has been recorded and/or stored at headend 105.” Id.
at 13:60–63.
We also agree with Petitioner’s contentions, and we credit and give
significant weight to the testimony of Dr. Tjaden over that of Dr. Almeroth
that one having ordinary skill in the art would have combined the teachings
in the manner recited in claim 1 as Petitioner’s contentions and Dr. Tjaden’s
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testimony are consistent with the evidence of record including the cited
evidence therein. For example, consistent with Dr. Tjaden’s testimony that
Berberet’s system “provides useful features which may satisfy subscribers’
needs for access to content (e.g., start-over functionality for an unpopular
show)” and “Sie itself suggests the combination” (Ex. 1003 ¶ 111), Sie
describes that in some embodiments “the content provider selects the
programs that are stored . . . as part of the club,” but “[t]his process could be
refined,” such that “only some of the club programs are stored based upon
the user’s preferences.” Ex. 1003 ¶ 190.
Also, the disclosures of each of Berberet and McElhatten are
consistent with Dr. Tjaden’s testimony that combining Sie with Berberet or
McElhatten would have provided subscribers access to desired content while
managing storage space in view of practical storage limitations.
Ex. 1002 ¶¶ 112, 113, 195–197. For instance, Berberet describes “a virtual
VCR” that “provides subscribers to the service with all of the features of a
VCR without their having to purchase or maintain a physical VCR
apparatus.” Ex. 1005, 4:12–15. Similarly, McElhatten describes “offering
the user the opportunity to archive the reserved program,” which “permits a
user accessibility to the program for an extended period of time (e.g., up to
one or more years from broadcast),” as well as allowing “a user to reserve a
program within a predetermined period after the program’s broadcast,”
which makes a program available for viewing “within a limited time (e.g.,
two weeks) from the broadcast date.” Ex. 1006, 17:45–61; see also id. at
18:10–22 (describing “[o]nce a program has been reserved, the user can
access the reserved program” and navigate through the program with “PVR-
like functions,” such as “play, pause, stop, fast-forward and rewind”).
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Also, the evidence of record supports Dr. Tjaden’s testimony that
making the proposed combinations of Sie and Berberet and Sie and
McElhatten would have been within the level of ordinary skill in the art.
Ex. 1002 ¶¶ 113, 196–197. Contrary to Dr. Almeroth’s testimony that Dr.
Tjaden’s testimony lacks explanation, Dr. Tjaden’s testimony provides
detailed explanations as to why a person having ordinary skill in the art
would have been motivated to combine with Sie the teachings of head-end
archival including, for example, Berberet’s “Program Archive 2.15” and a
“Video Scrapbook 2.4” and McElhatten’s archival of reserved programs.
Ex. 1002 ¶¶ 105, 110–114, 184, 185–187, 190, 191, 195–197. Dr. Tjaden’s
testimony provides detailed explanations showing that the skilled artisan
would have had a reasonable expectation of success in doing so. Id.
Regarding Dr. Almeroth’s testimony “modifying where programs are
stored in Sie’s system would require changes to the interaction between
those content provider-controlled and cable television provider-controlled
systems” thereby requiring software changes (Ex. 2007 ¶ 204), the evidence
of record supports Dr. Tjaden’s testimony (Ex. 1002 ¶¶ 113, 196–197). For
instance, Berberet and McElhatten provide detailed descriptions of how to
implement their respective archival features. See generally Ex. 1005;
Ex. 1006. Even assuming that the software is “standardized” (Ex.
2007 ¶ 204), simply because “a given combination would not be made by
businessmen for economic reasons does not mean that persons skilled in the
art would not make the combination because of some technological
incompatibility.” In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983). On
this record, Petitioner has provided sufficient evidence to show that
implementing Berberet and McElhatten archival features would not be
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“uniquely challenging or difficult for one of ordinary skill in the art” at the
time of the invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
For the reasons given, we determine that Petitioner’s arguments and
evidence show that Sie alone and in combination with each of Berberet and
McElhatten teaches limitation [1A], i.e., “system comprising: storage
circuitry for storing archived copies of videos.” Ex. 1001, 37:62–63.
Additionally, we are persuaded that Petitioner has articulated reasoning with
a rational underpinning as to why one of ordinary skill in the art would have
combined the teachings of the asserted art in the manner recited and has
shown that the skilled artisan would have had a reasonable expectation of
success. We determine Patent Owner’s arguments and evidence do not
undermine Petitioner’s showing.
b) Limitation [1B]: “control circuitry configured to: transmit a video to
a plurality of user equipment”
Petitioner contends
Sie discloses the claimed “control circuitry,” (limitations
[1B]–[1G]) which may be “any suitable processing circuitry,”
(Ex. 1001, 12:10–13), through at least its “transmission system”
and/or “set-top box.” (Ex. 1002, ¶117). For example, Sie’s
“transmission system” “takes the various programs and
multiplexes them onto a conduit coupled to the set top boxes
120.” (Ex. 1003, ¶0054; Ex. 1002, ¶¶116–117).
Pet. 36.
In the Decision to Institute, we determined that the Petition identifies
subscriber management system 124 with respect to “control circuitry.” Inst.
Dec. 28. More specifically, we said “[a]t this juncture in the proceeding, we
are persuaded by Petitioner’s citation to paragraph 54 of Sie, which
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describes the operation of subscriber management system 124, as well as
Petitioner’s reliance on the disclosure of multiplexing and transmitting,
which involve control by subscriber management system 124.” Id. at 26–28.
Relying on the testimony of Dr. Almeroth, Patent Owner asserts that
the Petition identifies only set top boxes and the transmission system for the
“control circuitry,” but not subscriber management system 124. PO Resp.
39–42, 62–66 (citing Ex. 2007 ¶¶ 137–146). Patent Owner asserts
“[a]llowing Comcast to later rely on an element of Sie that was not identified
in Comcast’s Petition or in its expert declaration is improper” based on “the
absence of any reliance in the petition or the declaration.” Id. at 62. Dr.
Almeroth’s testimony repeats Patent Owner’s arguments that subscriber
management system 124 is not identified. Ex. 2007 ¶¶ 137–140, 145. Dr.
Almeroth’s other testimony regarding deficiencies in Sie does not take into
account Sie’s teachings with respect to subscriber management system 124.
Ex. 2007 ¶¶ 137–146.
After considering the arguments and evidence of both parties, we
maintain our determination in the Decision to Institute and we agree with
Petitioner’s contentions, and we credit and give significant weight to the
testimony of Dr. Tjaden over that of Dr. Almeroth as Petitioner’s
contentions and Dr. Tjaden’s testimony are consistent with the evidence of
record including the evidence cited therein. It is undisputed that the Petition
points to Sie’s “transmission system.” PO Resp. 39–42, 60–61 (emphasis
added). Contrary to Patent Owner’s assertion regarding a lack of
identification, Petitioner points to Sie’s transmission system and its
operations as well as Sie’s express disclosure (Pet. 36 (citing, e.g., Ex.
1003 ¶ 54)) that subscriber management system 124 “controls the
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transmission system 108 to route the appropriate program streams to the
desired set top box 120 of the user.” Ex. 1003 ¶ 54 (emphasis added).
In the portions of Dr. Tjaden’s Declaration relied upon in the Petition
(Pet. 36), Dr. Tjaden testifies “Sie describes a ‘transmission system’
depicted as communicatively coupled to multiple set-top boxes.”
Ex. 1002 ¶ 116 (citing Ex. 1003 ¶ 54). Regarding “Sie’s ‘control
circuitry,’” Dr. Tjaden also testifies “the transmission system is configured
to provide the necessary information for and cause Sie’s set-top box to
perform certain steps and thus meets the claimed ‘control circuitry.’”
Id. ¶ 117 (citing Ex. 1003, Fig. 1). Dr. Tjaden further testifies “[i]n my
view, the PTAB properly recognized, in its Institution Decision, that ‘control
circuitry’ may include Sie’s set-top boxes, transmission system, and
subscriber management system.” Ex. 1036 ¶ 43. Dr. Tjaden also testifies
a POSA [person of ordinary skill in the art] would of course have
recognized that the functions undertaken by the computer
systems of Sie described at length in this and my previous
declaration are being controlled by various computer processors
configured to perform the functions that they are described as
performing.
Id.
Relying on the testimony of Dr. Almeroth, Patent Owner contends
Comcast’s position along with Dr. Tjaden’s testimony,
leads to a logical inconsistency — Sie’s set-top boxes partly
teach the claimed “control circuitry” and the claimed “user
equipment,” but all components of Sie’s set-top boxes teach the
claimed “control circuitry.” Id., ¶¶144-146. As such, there is
nothing left over in Sie’s set-top boxes that teach the claimed
“user equipment.” Id., ¶¶144-146.
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PO Resp. 41–42. Dr. Almeroth testifies that Petitioner asserts “that all
components of Sie’s set-top boxes teach the claimed ‘control circuitry,’” so
Petitioner “cannot also rely on the set-top box to teach the claimed ‘user
equipment’ because there are no other components in the set-top box to
perform the claimed functions of the ‘user equipment.’” Ex. 2007 ¶ 144.
Patent Owner’s contentions and Dr. Almeroth’s testimony, however, do not
provide explanations that undermine Petitioner’s showing that “control
circuitry” that includes both head-end and user equipment can transmit from
its head-end to its user equipment.
We maintain our view, in agreement with Patent Owner, that the
“control circuitry” performs five functions recited in claim 1. See supra
III.C.3; Dec. on Inst. 17 (citing Prelim. Resp. 29, 44–45). In particular, at
issue here, claim 1 recites “control circuitry configured to” “transmit a video
to a plurality of user equipment,” as well as other steps including “receive a
user response to the indication that is displayed,” and “based on the received
user response.” Ex. 1001, 37:64–38:13 (emphases added). The “receive a
user response” and “received user response” limitations do not preclude
employing some portion of the control circuitry at “user equipment” to
generate the required responses, in addition to control circuitry to transmit
the video, such as a head-end transmitter. Claim 1 broadly recites a “system
comprising . . . control circuitry” without precluding distributed control
circuitry or otherwise restricting the location of the circuitry.
Patent Owner’s dispute and Dr. Almeroth’s testimony (see, e.g., PO
Resp. 40–41; Ex. 2007 ¶¶ 144–146) are not consistent with the language of
the claim, which broadly recites “control circuitry” and does not restrict that
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circuitry so as to exclude user equipment, even though “control circuitry”
transmits to that user equipment.8
Patent Owner also cites to the deposition testimony of Dr. Tjaden to
assert that the Petition does not provide Patent Owner with notice as to what
teaches “control circuitry.” PO Resp. 39–42, 62–66 (citing, e.g., Ex. 2009,
131:4–132:7, 132:18–133:17, 136:3–18, 143:8–11, 144:6–14). Contrary to
Patent Owner’s arguments, Dr. Tjaden testified during his deposition
consistent with his declaration testimony and, for example, testified in detail
regarding elements of Sie that teach “control circuitry.” Ex. 2009, 131:4–
132:7 (testifying regarding tuner 506, controller 504, and transceiver 528),
143:8–11 (testifying regarding Figure 1 of Sie illustrating “control
circuitry”).
Other of Dr. Tjaden’s testimony relied upon by Patent Owner pertains
to claims 22–26, which depend from independent claim 21. Ex. 2009,
132:18–133:17, 136:3–18. With respect to claims 21–26, Patent Owner
argues that Dr. Tjaden testifies in his declaration that “the use of ‘control
circuitry’ and ‘user equipment’ in these claims is interchangeable.” PO
Resp. 41 (citing Ex. 1002 ¶ 178). Patent Owner, however, relies on Dr.

8 Consistent with Petitioner’s arguments and Dr. Tjaden’s testimony, the
’741 Patent states that “[c]ontrol circuitry 106 may be based on any suitable
processing circuitry 110 such as processing circuitry based on one or more
microprocessors, microcontrollers, digital signal processors, programmable
logic devices, etc.” Ex. 1001, 12:10–13 (cited in Pet. 36; Ex. 1002 ¶ 117).
Patent Owner does not point to any portion of the ’741 Patent Specification
in support of Patent Owner’s position and, indeed, Sie’s disclosure of a cable
system headend and set top box user equipment is the same as an exemplary
embodiment in the ’741 Patent Specification. Compare Ex. 1003 ¶¶ 47–49,
Fig. 1, with Ex. 1001, 4:50–61, 5:1–4, 6:52–60, 8:8–10.
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Tjaden’s declaration and deposition testimony regarding claims 21–26 in
Patent Owner’s arguments for claim 1. PO Resp. 39–42. Patent Owner’s
reliance on contentions relating to claims 21–26, which do not recite
“control circuitry,” is misplaced.
Patent Owner asserts that Petitioner “merely cited a paragraph that
mentions the missing element” and that Patent Owner has “to speculate”
because the Petition includes “open-ended allegations.” PO Resp. 62–66
(citing 35 U.S.C. § 312(a)(3)). Patent Owner acknowledges that Petitioner
cited to paragraph 54, for example. Id. Patent Owner’s arguments are based
on a mischaracterization of the Petition. Consistent with the requirements of
35 U.S.C. § 312(a)(3), Petitioner identified in the Petition its challenge of
claim 1 of the ’741 Patent as unpatentable, under 35 U.S.C. § 103, as
obvious over Sie, Sie and Berberet, and Sie and McElhatten. Pet. 16, 27–59,
65–75. Petitioner provided copies of the prior art (see, e.g., Ex. 1003), as
well as Dr. Tjaden’s Declaration (Ex. 1002), along with detailed
explanations of the asserted prior art including identifying with particularity
Petitioner’s reliance on paragraph 54 of Sie, i.e., “[f]or example, Sie’s
‘transmission system’ ‘takes the various programs and multiplexes them
onto a conduit coupled to the set top boxes 120.’” Pet. 36 (citing Ex.
1003 ¶ 54; Ex. 1002 ¶¶ 116–117). Petitioner relies on Sie’s “transmission
system” (id. (emphasis added)) and in paragraph 54 relied upon in the
Petition, Sie describes “[t]he subscriber management system 124 controls
the transmission system 108.” Ex. 1003 ¶ 54 (emphasis added).
For the reasons discussed in more detail below in Sections III.D.4.c–
III.D.4.g, we determine that Petitioner’s arguments and evidence show that
the asserted art teaches the remaining functions performed by “control
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circuitry.” We determine Patent Owner’s arguments do not undermine
Petitioner’s showing.
For the reasons given, we determine that Petitioner’s arguments and
evidence show that Sie teaches limitation [1B], i.e., “control circuitry
configured to: transmit a video to a plurality of user equipment.” Ex. 1001,
37:64–65. We determine Patent Owner’s arguments and evidence do not
undermine Petitioner’s showing.
c) Limitation [1C]: “wherein the transmitting begins at a start time and
ends at an end time”
Petitioner points to Sie’s “‘linear schedule of programming’ and a
‘fixed schedule of programs played throughout a given time period.’” Pet.
37–38 (citing, e.g., Ex. 1003 ¶¶ 46, 75, 78, 99, Fig. 8B; Ex. 1002 ¶¶ 118–
120). Patent Owner does not dispute Petitioner’s contentions with respect to
the limitation.
We agree with Petitioner’s contentions, and we credit and give
significant weight to the testimony of Dr. Tjaden as Petitioner’s contentions
and Dr. Tjaden’s testimony are consistent with the evidence cited therein.
For instance, Sie describes transmitting a schedule of programs that start at a
start time and end at an end time. Figure 8B of Sie is reproduced below.
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Figure 8B of Sie, above, illustrates a schematic of a schedule of programs
840 of varying length on seven distinct channels labeled “Ch. A” through
“Ch. G” over a time period from 6:00 to 11:00. Ex. 1003 ¶ 99.
For the reasons given, we determine that Petitioner’s arguments and
evidence show that Sie teaches limitation [1C], i.e., “wherein the
transmitting begins at a start time and ends at an end time.” Ex. 1001,
37:66–67.
d) Limitation [1D]: “access a database to determine whether an
archived copy corresponding to the video is available to a user after
the start time”
Petitioner points to Sie’s determination of whether a program being
shown is a club program. Pet. 38–39 (citing, e.g., Ex. 1003 ¶¶ 46, 53, 85,
97, 99, 115, 189; Ex. 1002 ¶¶ 121–124). Dr. Tjaden testifies as follows:
In Sie, a “determination is made whether the program being
shown on the accessed subscription channel is a club program.”
(Ex. 1003, ¶0085). This is “determin[ing] whether an archived
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copy corresponding to the video is available to a user after the
start time.” Note that Sie states that the determination is made
regarding “whether the program being shown on the accessed
subscription channel” is a club program. (See Ex. 1003 ¶0085
(emphasis added)). Because this language indicates that the
program is “being shown,” the determination must be “after the
start time” of the program—after all, prior to that time, the
program is not “being shown” in the first place. (See id.). Note
also, that the determination is whether the program “is a club
program.” (Ex. 1003, ¶0085).
Ex. 1002 ¶ 122. Dr. Tjaden also testifies that “[t]he aforementioned
determination in Sie is made by ‘check[ing] . . . the program request
database 136 to determine if a program is available.’” Id. ¶ 123 (citing
Ex. 1003 ¶ 53; Ex. 1015 ¶¶ 204–206).
Patent Owner argues the “Petition arguments, which largely mirror its
ultimately unpersuasive arguments in the concurrent ITC investigation,
effectively excise the ‘to a user’ clause from the limitation ‘determin[ing]
whether an archived copy corresponding to the video is available to a user
after the start time.’” PO Resp. 1.9 Patent Owner, more specifically, argues
that the Petition does not take into account that Sie’s system does not
determine whether a user is a club member prior to displaying a symbol
indicating that a program is a club program so “[i]n Sie’s system, the
notification service merely indicates that a program that is currently being
viewed is a club program, not necessarily that it is available to the user
currently viewing the program.” PO Resp. 22–28 (citing, e.g., Ex. 2007
¶¶ 96–103; Ex. 1003, Figs. 7A–D). Relying on the testimony of Dr.
Almeroth, Patent Owner asserts that “[b]oth the subscriber/non-club

9 We discuss Patent Owner’s arguments regarding redundancy and the ITC
investigation below. See infra § III.G.
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members and the subscriber/club members can view a subscription program
at its linearly scheduled time,” but “only subscriber/club members have
access to the club program ‘at times other than the scheduled broadcast time
for that program.’” Id. at 29–32 (citing, e.g., 2007 ¶¶ 82–89, 113, 114).
Certain of Patent Owner’s contentions and Dr. Almeroth’s testimony
regarding the operation of Sie’s system are correct. In particular, Sie
describes that “a subset of the users who subscribe to the additional content”
are “hereinafter called the ‘club.’” Ex. 1003 ¶ 46. Sie describes “[a]t step
763, a determination is made whether the program being shown on the
accessed subscription channel is a club program.” Id. ¶ 85. Sie further
describes “[i]f a club program is being displayed, then a club notification
symbol is shown on the identifier at step 764.” Id. Sie describes with
respect to Figure 7B determining “(1) whether the subscription channel is
showing a club program and (2) whether the user is a member of the club
and therefore entitled to access.” Ex. 1003 ¶ 89. Petitioner has not pointed
us to and we do not discern an express teaching in Sie’s Figure 7A regarding
determining whether the user is a member of the club, similar to (2) set forth
with respect to Figure 7B (id. ¶ 89). As discussed below, however, other of
Patent Owner’s contentions and Dr. Almeroth’s testimony regarding the
operation of Sie’s system are not consistent with Sie’s disclosures.
Patent Owner’s arguments and Dr. Almeroth’s testimony that Sie is
deficient because its system does not determine whether a user is a club
member prior to displaying a symbol indicating that a program is a club
program (PO Resp. 22–32; Ex. 2007 ¶¶ 82–89, 96–103, 113, 114) are not
consistent with the recitation in claim 1, even under Patent Owner’s
construction. Patent Owner’s arguments and Dr. Almeroth’s testimony are
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premised not only on the claim construction in the Patent Owner Response
that we adopt here, i.e., “available to a user at times other than the scheduled
broadcast time for the video” (PO Resp. 16), but also on a requirement that
the user purchase the club membership in advance of the indication being
displayed. See supra Section III.C.2.
However, we determine above that “available to a user” does not
require advanced purchase. See id.
Nevertheless, Sie teaches forms of payment and options to pay, as
well as the disputed recitation and, therefore, we agree with Petitioner’s
assertions. We also credit and give significant weight to Dr. Tjaden’s
testimony over the testimony of Dr. Almeroth because Petitioner’s assertions
and Dr. Tjaden’s testimony are consistent with the evidence of record,
including Sie’s teachings regarding payment. For instance, consistent with
Petitioner’s assertions and Dr. Tjaden’s testimony, Sie describes “[i]n some
embodiments, this VOD-like functionality . . . may be paid for an individual
program where VOD-like functionality is desired.” Ex. 1003 ¶ 46 (cited in
Pet. 37–38). Sie also describes “[i]n still other embodiments, the user may
be given an option to purchase a copy of a club program permanently,” and
“upon agreement to pay a purchase fee, the subscriber management system
124 authorizes the user to retain a permanent copy.” Ex. 1003 ¶ 189 (cited
in Pet. 37–38). In accordance with these disclosures, the programs are
“available to a user at times other than the scheduled broadcast time for the
video” with respect to club members, as well as non-members, both of
which pay a fee in advance of obtaining the features as specified in Sie.
We also agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden that Sie’s complimentary
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access teaches the disputed limitation. With respect to complimentary
access, Petitioner, more specifically, points to Sie’s disclosure of
“embodiments in which all users can access the club programs without
further payment or club membership.” Pet. Reply 5, 8 (citing Ex. 1003
¶¶ 46, 76, 80–81, 89, 91, 93, 187; Ex. 1036 ¶¶ 24–25, 28–30). Consistent
with Petitioner’s contentions and Dr. Tjaden’s testimony, Sie describes
providing users with complimentary access to club programs. Ex. 1003 ¶ 46
(describing that “[i]n some embodiments, this VOD-like functionality does
not require club membership”), ¶ 76 (describing some embodiments that
“could provide the privileges of club membership without requiring
belonging to the subscription service”), ¶ 80 (describing that “[o]ne
particular aspect of the promotional feature may include a complimentary
access to the club benefits that the user attempted to access”), ¶ 89
(describing “[i]f either of the conditions is false, authorization is specifically
withheld,” but “[e]ven so, the attempted access has initiated a sequence that
may include . . . grant[ing] complimentary access to the club version as a
promotional feature”), ¶ 91 (describing determining “that complimentary
access to the particular club program should be granted as part of a
promotional feature”), ¶ 187 (describing that “[l]imits may also be used in
other embodiments in order to implement promotional features”).
Patent Owner asserts with respect to Sie’s providing non-club
members access for promotional purposes “[a]ny such determination as to
whether to make the club program available to a non-club member only
occurs after the display of [ ] Sie’s notification.” PO Resp. 23 n. 5 (citing
Ex. 2007 ¶¶ 67, 104–106). Dr. Almeroth testifies that Sie’s promotional
features are deficient because the determination in step 752 occurs after the
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indication is displayed. Ex. 2007 ¶ 106. Nevertheless, Sie’s disclosures
above show that Sie’s complimentary program is available to the user when
the notification is displayed. As explained further below, claim 1 does not
preclude an extra step of signing up for complimentary viewing after the
system notifies the user of an available program.
Patent Owner also asserts that Petitioner’s Reply “includes a new
theory of non-patentability based on Sie’s alternative
promotional/complementary access embodiments.” PO Sur-Reply 1, 16–20.
The Petition, however, identifies relevant portions of Sie pertaining to
complimentary access. See, e.g., Pet. 38 (citing Ex. 1003 ¶¶ 46, 53, 85, 97,
99, 115). In portions relied upon in the Petition, Sie includes disclosure of
the ability to “rewind, fast-forward or pause playback of this content in
VOD-like fashion” as well as disclosure that “[i]n some embodiments, this
VOD-like functionality does not require club membership or may be paid for
an individual program where VOD-like functionality is desired.”
Ex. 1003 ¶ 46 (cited in Pet. 38). The Petition sets forth that availability of
the “VOD-like functionality” was relied upon for the disputed limitation.
Pet. 38–39; see also Ex. 1003 ¶ 99 (cited in Pet. 38) (describing an example
including programs that do not have the enhanced functionality “[o]f the
twelve distinct programs, four (840-2, 840-3, 840-6, and 840-7) in this
example are within the club and may be accessed with playback control”).
Also, such responsive evidence is not improper. See 37 C.F.R.
§ 42.23(b). We find Dr. Tjaden’s testimony in his Reply Declaration (Ex.
1036) regarding complementary access simply provides further details to
support that his testimony in his initial Declaration (Ex. 1002) is correct
regarding the knowledge of the skilled artisan and Sie’s disclosures showing
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payment need not be in advance for a program to be available to a user. The
Petition and Dr. Tjaden’s testimony in his first Declaration (Ex. 1002) set
forth Petitioner’s arguments in full including a detailed element-by-element
analysis identifying the portions of Sie that teach the elements of claim 1.
Dr. Tjaden’s Reply Declaration testimony does no more than fairly and
directly respond to Patent Owner’s Response and Dr. Almeroth’s testimony.
See 37 C.F.R. § 42.23(b); see also Belden Inc., v. Berk-Tek LLC, 805 F.3d
1064, 1078−80 (Fed. Cir. 2015) (holding that the Board may rely on new
evidence submitted with a reply because the evidence was legitimately
responsive to patent owner’s arguments and not needed for a prima facie
case of obviousness).
Petitioner further asserts “Sie’s club notification symbol indicates that
the particular user may retrieve the club program, even if the user might
have to (but in certain embodiments, need not) become a club member or
otherwise pay.” Pet. Reply 9 (citing Ex. 1036 ¶ 22). Dr. Tjaden testifies
“that subscribers (i.e., non-members) must pay to access the club program
does not mean that the program is somehow not ‘available’; rather, it simply
means that it is ‘available’ conditioned on paying to join the club.” Ex.
1036 ¶ 22. Dr. Tjaden further testifies by way of analogy “food in a grocery
store is ‘available’ to a shopper, even if the shopper must carry it to a cashier
and purchase it.” Id. We also agree with Petitioner’s contentions in this
regard, and we credit and give significant weight to the testimony of Dr.
Tjaden as Petitioner’s contentions and Dr. Tjaden’s testimony are consistent
with the evidence of record including the evidence cited therein.
Finally, we have considered Patent Owner’s assertions regarding the
ITC investigation, as well as the evidence submitted in this proceeding
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regarding determinations made in the ITC investigation. See, e.g., PO Resp.
18–20 (Ex. 2010, 1, 282–285). Sie’s disclosure is not limited to determining
whether a copy of a program exists. Instead, in Sie “a determination is made
whether the program being shown on the accessed subscription channel is a
club program.” Ex. 1003 ¶ 85. If not, the club notification symbol is not
shown. Id. Sie describes an exemplary schedule including “twelve distinct
programs” and, further “[o]f the twelve distinct programs, four (840-2, 840-
3, 840-6, and 840-7) in this example are within the club and may be
accessed with playback control by club members.” Id. ¶ 99. Sie does not
describe displaying the club notification symbol if archiving of a program is
in progress or if no copy of the program has been archived. The symbol is
displayed if the program is available and immediately accessible by
activating the “PLAY” key. See, e.g., id. ¶¶ 85, 88. As discussed above in
this sub-section, Sie discloses various payment methods, as well as
providing complimentary access.
Patent Owner’s arguments are dependent on reading an advanced
purchase requirement into the claims. Claim 1 recites simply “access a
database to determine whether an archived copy corresponding to the video
is available to a user after the start time.” Ex. 1001, 38:1–3. We are not
persuaded based on the record before us that we should read such a
requirement into the claims, for the reasons with respect to claim
construction. See supra III.C.2.
For the reasons given, we determine that Petitioner’s arguments and
evidence show that Sie teaches limitation [1D], i.e., “access a database to
determine whether an archived copy corresponding to the video is available
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to a user after the start time” (Ex. 1001, 38:1–3). We determine Patent
Owner’s arguments and evidence do not undermine Petitioner’s showing.
e) Limitation [1E]: “based on determining that the archived copy is
available to the user after the start time, cause an indication
corresponding to the archived copy to be displayed simultaneously
with the video”
For limitation [1E], Petitioner contends “[i]n Sie, ‘[i]f a club program
is being displayed,’ the system will present a ‘club notification symbol’
informing the user that club program services (e.g., playback and control of
a recorded copy) are available.” Pet. 39–40 (citing Ex. 1003 ¶ 85;
Ex. 1002 ¶ 126). Petitioner, additionally, points to other details in Sie
regarding display of the club notification symbol, as well as the testimony of
Dr. Tjaden. Id. at 40–41 (citing Ex. 1003 ¶¶ 83–86, 115; Ex. 1002 ¶¶ 127–
129).
Patent Owner argues that Sie does not teach “[d]etermining whether
an archived copy is available to a user after the start time” occurring prior to
“[b]ased on determining that the archived copy is available to the user,
displaying an indication.” PO Resp. 21–22. Patent Owner’s arguments are
premised on its arguments regarding limitation [1D]. PO Resp. 21–32. For
the reasons given with respect to limitation [1D] (see supra III.D.4.d), we
agree with Petitioner and determine that Patent Owner’s arguments do not
undermine Petitioner’s showing.
Turning back to limitation [1E], upon consideration of the arguments
and evidence of record, we agree with Petitioner’s contentions, and we credit
and give significant weight to the testimony of Dr. Tjaden as Petitioner’s
contentions and Dr. Tjaden’s testimony are consistent with the evidence of
record, including the evidence cited therein. For instance, Sie describes with
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respect to Figure 7A that “the club notification feature” includes monitoring
“as the user moves through different channels, waiting for the user to settle
on a particular subscription channel,” which “may b[e] determined, for
example, at step 761 by the fact that the user has stayed on that channel for a
certain period of time (e.g., five seconds).” Ex. 1003 ¶ 83. Sie next
describes “[a]t step 763, a determination is made whether the program being
shown on the accessed subscription channel is a club program.” Id. ¶ 85
(emphasis added). Sie further describes “[i]f a club program is being
displayed, then a club notification symbol is shown on the identifier at step
764.” Id. Sie provides additional description as follows: “[S]uch a club
notification symbol may comprise, for example, a special icon or
alphanumeric string recognizable to a club member or other subscriber to
denote that the special playback control is available.” Id. Sie also describes
that “[t]he overlaid identifier and notification symbol remain displayed for a
brief period (e.g., between 2 and 6 seconds), and are then removed at step
765 so that the user may continue to watch the subscription channel without
distraction.” Id. ¶ 85 (emphasis added).
For the reasons given, we determine that Petitioner’s arguments and
evidence show that Sie teaches limitation [1E], i.e., “based on determining
that the archived copy is available to the user after the start time, cause an
indication corresponding to the archived copy to be displayed
simultaneously with the video.” Ex. 1001, 38:4–7. We determine Patent
Owner’s arguments and evidence do not undermine Petitioner’s showing.
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f) Limitation [1F]: “after a specified time after the start time but before
the end time, wherein the specified time was configured prior to the
start time”
Petitioner points to Sie’s description that the identifier is displayed
when the user has settled on a channel, for example, “when ‘the user has
stayed on that channel for a certain period of time’” and the display “may be
repeated periodically, such as at 15-minute intervals.” Pet. 41 (citing, e.g.,
Ex. 1003 ¶¶ 83–85; Ex. 1002 ¶¶ 130–131). Patent Owner does not
separately dispute Petitioner’s showing. See generally PO Resp.
For the reasons discussed above with respect to limitations [1B]
through [1E] (see supra §§ III.D.4.b–III.D.4.e), upon consideration of the
complete record before us, we agree with Petitioner’s contentions, and we
credit and give significant weight to the testimony of Dr. Tjaden as
Petitioner’s contentions and Dr. Tjaden’s testimony are consistent with the
evidence cited therein.
Accordingly, we determine that Petitioner’s arguments and evidence
show that Sie teaches limitation [1F], i.e., “after a specified time after the
start time but before the end time, wherein the specified time was configured
prior to the start time.” Ex. 1001, 38:7–9. We determine Patent Owner’s
arguments and evidence do not undermine Petitioner’s showing.
g) Limitation [1G]: “receive a user response to the indication that is
displayed; and based on the received user response, retrieve, from the
storage circuitry, the archived copy”
For limitation [1G], Petitioner points to Sie’s description of allowing a
user to select a program for controlled viewing, such as playback, and
submits the testimony of Dr. Tjaden. Pet. 42 (citing, e.g., Ex. 1003 ¶¶ 78,
88, 89, 95, 98, 189; Ex. 1002 ¶¶ 132–133). Petitioner also points to Sie’s
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description of providing the user with playback control of the selected club
program. Id.
Patent Owner contends that Sie does not disclose that activation of the
PLAY key (or its equivalent) is in fact a response to the displayed
notification and also Sie’s system does not retrieve a club program “based
on” the user responding to the displayed indication. PO Resp. 32–39 (citing,
e.g., Ex. 2007 ¶¶ 118–136). Patent Owner, more specifically, argues that Sie
does not teach limitation [1G] because Sie discloses that the user may press
the PLAY key (step 782) regardless of, and without ever determining,
whether the notification symbol is displayed (step 764). See, e.g., PO Resp.
33–34; see also id. at 36–38 (arguing that retrieval does not occur by merely
proceeding through the notification embodiment). Dr. Almeroth testifies
that Figures 7A and 7B of Sie “are separate from each other and not
necessarily linked in any way.” Ex. 2007 ¶ 121.
We credit and give significant weight to Dr. Tjaden’s testimony
regarding the operation of Sie because Dr. Tjaden’s testimony is supported
by Sie’s disclosures. See, e.g., Ex. 1036 ¶ 37. For instance, Sie describes
that after step 712 (shown in Figure 7) processing is performed in
accordance with Figure 7A, which includes after a user has stayed on a
channel, for example for five seconds, a determination is made whether the
program being shown is a club program and, if so, a club notification symbol
is shown. Ex. 1003 ¶¶ 83, 85. After that, processing returns to step 712 and
the user may continue to view the program without distraction. Id. ¶ 85, Fig.
7. The steps of Figure 7B are performed after step 712, which include
monitoring to determine whether the PLAY key or its equivalent is activated
by the user. Id. ¶ 88, Figs. 7, 7B. Patent Owner’s contentions and Dr.
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Almeroth’s testimony (PO Resp. 32–39; Ex. 2007 ¶¶ 118–136) do not take
into account the full teachings of Sie and mischaracterize Sie’s disclosures.
We also are not persuaded by Patent Owner’s arguments and Dr.
Almeroth’s testimony because both are based on an overly narrow reading of
the prior art without sufficient consideration of the knowledge of a person
having ordinary skill in the art. Cf. In re Paulsen, 30 F.3d 1475, 1480 (Fed.
Cir. 1994) (rejecting an argument that “fails to recognize that a prior art
reference must be ‘considered together with the knowledge of one of
ordinary skill in the pertinent art.’”) (citing In re Samour, 571 F.2d 559, 562,
(CCPA 1978)). For instance, Patent Owner’s arguments and Dr. Almeroth’s
testimony do not take into account Sie’s disclosure that the display symbol
serves to advertise special club features and is displayed when the user
settles on a channel, such that the “PLAY” key is selected in response to
display of that symbol. Ex. 1003 ¶¶ 83, 85, 88, Fig. 7.
Patent Owner also argues that a conclusion in our Decision to Institute
is contrary to the language of claim 1, which expressly requires a user
response to the indication that “is” displayed. PO Resp. 35; Ex. 2007 ¶ 116–
117. We agree with Petitioner and the testimony of Dr. Tjaden (Pet. Reply
10; Ex. 1036 ¶¶ 33, 34) and we maintain our determination on our Decision
to Institute. Inst. Dec. 36. Contrary to Patent Owner’s contentions (PO
Resp. 35), claim 1 does not require that the user select play simultaneous
with display of the indication. Instead, claim 1 recites “receive a user
response to the indication that is displayed.” Ex. 1001, 38:10–11 (emphasis
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added). The receipt is of “a user response” and, therefore, may follow the
display. Id.10
Upon consideration of Patent Owner’s arguments and evidence (PO
Resp. 32–39; Ex. 2007 ¶¶ 118–136), we agree with Petitioner’s contentions,
and we credit and give significant weight to the testimony of Dr. Tjaden
over the testimony of Dr. Almeroth as Petitioner’s contentions and Dr.
Tjaden’s testimony are consistent with the evidence of record, including the
evidence cited therein. Pet. 42; Ex. 1002 ¶¶ 132–133; see also Pet. Reply 9–
12 (providing persuasive responses to arguments in Patent Owner’s
Response); Ex. 1036 ¶¶ 31–40 (testifying in response to Dr. Almeroth’s
testimony). Upon review of Dr. Tjaden’s deposition testimony, we also
determine that Dr. Tjaden’s deposition testimony (see, e.g., Ex. 2009, 93:23–
25, 94:8–12, 105:16–106:5, 160:2–6, 162:19–163:1, 168:17–24, 172:6–11;
174:9–20) is consistent with his declaration testimony and further supports
Petitioner’s positions.
For instance, consistent with Petitioner’s contentions and Dr. Tjaden’s
testimony, Sie describes
[a]t step 712, the subscription program is playing at its
previously scheduled time for the user. A notification service,
shown generically as step 760, may be implemented
automatically by the system to provide information to the user to
regarding whether the subscription program is a club program
permitting enhanced features for club members. Additionally,

10 We agree with Dr. Tjaden testimony that even if Patent Owner is correct
that the user response must be provided simultaneous with the display of the
indication, Sie teaches this feature to a person having ordinary skill in the
art. Ex. 1036 ¶ 35; Ex. 1003 ¶¶ 83–85 (describing display five seconds after
the user tunes to the channel and display periodically to advertise special
features).
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the controller 612 monitors for any of a variety of commands
(shown generically as steps 770, 780, and 790) that may be
activated by the user and which may be used to provide
controlled viewing access to a previously stored club program.
Ex. 1003 ¶ 78.
Sie also describes “[o]ne method for activating user playback control
of a club program is shown in FIG. 7B.” Id. ¶ 88. Sie further describes with
respect to Figure 7B that “controller 612 monitors in step 782 whether the
PLAY key or its equivalent is activated by the user” (id.) and after activation
includes processing proceeds to “[a]uthorization to access the club version
from its beginning,” which “may be obtained by querying the controller 612
in some embodiments, while in other embodiments it may be obtained by
querying the subscriber management system 124” (id. ¶ 89). Additionally,
Sie describes
[t]he various embodiments illustrated in FIG. 7–7D make
no particular distinction where the club programs are stored.
Different possibilities for such storage, all within the scope of the
invention, are described in detail above. Briefly, the club
programs may be stored remotely, such as in a headend, a
neighborhood node, or may be stored locally, such as in the set-
top box 600.
Ex. 1003 ¶ 95.11
We are persuaded by Petitioner’s showing that Sie teaches “receive a
user response to the indication that is displayed” because Sie describes
displaying an identifier, for example, five seconds after the user selects a

11 As discussed above (see supra § III.D.4.b), we determine that the Petition
sets forth reliance on paragraph 54 of Sie that describes the operation of
subscriber management system 124 for “control circuitry,” and Sie’s
disclosure of multiplexing and transmitting, which involve control by
subscriber management system 124.
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channel. In particular, Sie describes displaying the identifier “where the user
has just settled on that channel” (Ex. 1003 ¶ 84), which is determined “by
the fact that the user has stayed on that channel for a certain period of time
(e.g., five seconds).” Id. ¶ 83.
Patent Owner’s arguments also pertain to a subjective action by a
user. PO Resp. 32–39; Ex. 2007 ¶¶ 118–136. Sie’s symbol is being
displayed or in certain embodiments may already have been displayed (Ex.
1003 ¶¶ 83–85) when the user selects the PLAY key (see, e.g., id. at Fig. 7).
Sie discloses that an icon is used to reinforce “the meaning of the
notification symbol, serving both to sharpen its recognition value and to
increase its effectiveness in advertising the special club features.” Id. ¶ 85
(emphases added). In other words, the system displays the icon to obtain a
user response, by being recognized and advertising features.
For the reasons given, we determine that Petitioner’s arguments and
evidence show that the asserted art teaches limitation [1G], i.e., “receive a
user response to the indication that is displayed; and based on the received
user response, retrieve, from the storage circuitry, the archived copy.”
Ex. 1001, 38:10–13. We determine Patent Owner’s contentions and evidence
do not undermine Petitioner’s showing.
h) Conclusion—Claim 1
In summary, upon consideration of the contentions and evidence
presented by both parties in the complete record now before us, we
determine that Petitioner has shown that all recitations in claim 1 are taught
by (1) Sie alone, (2) Sie and Berberet, and (3) Sie and McElhatten. Also, we
are persuaded that Petitioner has articulated reasoning with a rational
underpinning as to why one of ordinary skill in the art would have modified
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and combined the teachings of the asserted art in the manner recited in claim
1. We also are persuaded that Petitioner has demonstrated that such person
would have had a reasonable expectation of success.
We have considered all Patent Owner’s arguments and evidence. We
determine that Patent Owner’s arguments and evidence do not undermine
Petitioner’s showing.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that claim 1 would have been obvious over (1) Sie alone, (2) Sie
and Berberet, and (3) Sie and McElhatten.
5. Discussion of Independent Claims 8, 15, and 21
Independent claims 8, 15, and 21 are similar to independent claim 1.
Claim 8 recites “[a] method” that comprises steps similar to the functions
performed by the “control circuitry” recited in system claim 1. Compare
Ex. 1001, 38:39–54, with id. at 37:62–38:13. Claim 15 recites a “system”
comprising means-plus-function elements corresponding to the method steps
recited in claim 8. Compare id. at 39:12–27, with id. at 38:39–54. Claim 21
recites a “system” comprising “user equipment” and “a server” configured to
perform functions similar to “control circuitry” recited in claim 1. Compare
id. at 39:48–40:25, with id. at 37:62–38:13.
Petitioner’s showing with respect to each of claims 8, 15, and 21 is
similar to its showing with respect to claim 1 and Petitioner points to many
of the same teachings discussed with respect to claim 1. Compare Pet. 47–
59, with id. at 32–43. Petitioner accounts sufficiently for all differences in
the claims. For instance, regarding the structure corresponding to the
claimed function for “means for transmitting a video to a plurality of user
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equipment, wherein the transmitting begins at a start time and ends at an end
time” recited in claim 15, Petitioner points to Sie’s “‘transmission system
108,’ the ‘set top boxes 120,’ the ‘set top box 600,’ the ‘subscriber server
128,’ and/or the connection(s) depicted in FIG. 1.” Id. at 48–49 (citing Ex.
1003 ¶¶ 49, 54, 57–75, 102, Fig. 1; Ex. 1002 ¶ 156). Regarding the structure
corresponding to the claimed function for “means for accessing a database to
determine whether an archived copy corresponding to the video is available
to a user after the start time” recited in claim 15, Petitioner points to Sie’s
“‘program request database 136,’ the ‘set top boxes 120,’ ‘set top box 600,’
the ‘subscriber server 128,’ and/or the ‘subscriber management system
124.’” Id. at 49 (citing Ex. 1003 ¶¶ 47, 49, 53, 72, 85, Figs. 5–6;
Ex. 1002 ¶¶ 157–158).
For claim 21, Petitioner asserts “Sie’s transmission system sends
programs to user ‘set top boxes 120.’” Pet. 56 (citing, e.g., Ex. 1003 ¶ 54;
Ex. 1002 ¶¶ 173–174). Petitioner also contends a person having ordinary
skill in the art “would have recognized that Sie’s head-end devices, such as
the ‘subscriber management system,’ ‘subscriber server,’ and ‘program
server’ (Petition at 57-58), would perform the claimed limitations.” Pet.
Reply 15 (citing, e.g., Ex. 1036 ¶ 52); see also Pet. 57–58 (referring to the
same teachings in Sie relied upon for claim 1). For “store, with storage
circuitry, archived copies corresponding to videos,” Petitioner relies upon
Sie’s program server, as well as teachings in Sie, Berberet, and McElhatten
relating to storing archived copies of videos. Pet. 32–36, 57, 65–71, 75.
For independent claims 8, 15, and 21 Patent Owner relies on the same
arguments discussed above in Section III.D.4 with respect to claim 1. PO
Resp. 42, 45. Patent Owner also argues with respect to claim 15 that
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Petitioner has not shown “how or why the identified structure from Sie is
equivalent to the structure identified in the ’741 Patent.” Id. As discussed
above in Section III.C.4, Patent Owner does not dispute Petitioner’s claim
construction contentions or the accuracy of Petitioner’s identification of the
function and corresponding structure identified (Pet. 17–25) for any means-
plus-function term. See generally PO Resp. We determine that Petitioner
also identified the structures in Sie and explained why these structures teach
each of the means-plus-function elements recited in claim 15. Pet. 48–55.
Patent Owner also asserts “Dr. Tjaden’s identification of the remote
control as the most relevant structure contradicts his prior assertion in
paragraphs 43 and 44 in which he identified the user equipment of the ’741
patent.” PO Resp. 43 (citing Ex. 1002 ¶¶ 43–44, 160). Patent Owner
mischaracterizes Dr. Tjaden’s testimony. Dr. Tjaden testifies that a remote
control may be used to operate user equipment. Ex. 1002 ¶ 160;
Ex. 1036 ¶ 49. We determine that his testimony is not contradictory.
Patent Owner also asserts that “Dr. Tjaden does not explain how Sie’s
set-top box (the alleged user equipment) and/or Sie’s remote control together
perform the functions of limitation 15F—i.e., receiving a user response and
retrieving from the storage the archived copy.” PO Resp. 43–44. Petitioner
points to Sie’s “remote control,” “program server 132,” “set top boxes 120,”
“set top box 600,” and “controller 612.” Pet. 50–51 (citing, e.g., Ex. 1003
¶¶ 45, 61, 78, 83–85, 88, 97–98, 115; Ex. 1002 ¶ 160). Consistent with
Petitioner’s contentions and Dr. Tjaden’s testimony, Sie describes “the
controller 612 monitors for any of a variety of commands (shown
generically as steps 770, 780, and 790) that may be activated by the user and
which may be used to provide controlled viewing access to a previously
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stored club program.” Ex. 1003 ¶ 78 (emphasis added). Sie further
describes “controller 612 monitors in step 782 whether the PLAY key or its
equivalent is activated by the user” and “[t]he PLAY key is used as a simple
single-key means for selecting the scheduled program currently showing and
accessing the stored club program from its beginning.” Id. ¶ 88.
Patent Owner further asserts that Petitioner’s position is undermined
because Sie discloses that the retrieval step is performed by subscriber
management system 124. PO Resp. 43. Patent Owner’s arguments do not
take into account and mischaracterize Petitioner’s contentions, which
identify subscriber management system 124 (see supra § III.D.4) and Sie’s
disclosure regarding storing programs locally or remotely (Ex. 1003 ¶ 147),
as well as Sie’s disclosure of controller 612 enabling playback of the stored
club program from the program server 132, where the program is stored
(id. ¶¶ 97–98).
For claim 21, Patent Owner asserts that despite different language,
Petitioner relies on the same teachings in Sie as relied upon in claim 1. PO
Resp. 45–47. Patent Owner does not point to a difference that Petitioner has
not accounted for. Id.
Patent Owner also asserts that Petitioner has not identified structure
for certain recitations in claim 21. Patent Owner mischaracterizes
Petitioner’s contentions with respect to, for example, subscriber
management system 124, for the reasons discussed with respect to claim 1.
See supra § III.D.4.
Regarding the “server” recited in claim 21, Patent Owner also asserts
that Petitioner “ambiguously refers to a conglomerate of Sie’s various
devices that somehow together perform the claimed functions.” PO Sur-
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Reply 24. Petitioner, however, points to Sie’s subscriber management
system 124, subscriber server 128, and program server 132. Pet. 57–58; Pet.
Reply 15; Ex. 1036 ¶ 52. Consistent with Petitioner’s contentions that these
devices are in the head-end and perform the claimed recitations, Sie
describes the following:
The program delivery system 100 includes a transmission system
108, set top boxes 120, a subscriber management system 124, a
subscriber server 128, a program server 132, a program request
database 136, and a satellite dish 116. The program server 132
and the program request database 136 are part of a system of an
additional content provider. The additional content provider
system interfaces with the other components that are part of a
system of a cable television provider.
Ex. 1003 ¶ 47.12
For claims 8, 15, and 21, Patent Owner asserts that Petitioner attempts
to recast or re-characterize Dr. Tjaden’s testimony in Petitioner’s Reply. PO
Resp. 16–17, 23. We find Dr. Tjaden’s testimony in his Reply Declaration
(Ex. 1036) simply provides further details to support that his testimony in
his initial Declaration (Ex. 1002) is correct regarding the knowledge of the
skilled artisan and Sie’s disclosures. The Petition and Dr. Tjaden’s
testimony in his first Declaration (Ex. 1002) set forth Petitioner’s arguments
in full including a detailed element-by-element analysis identifying the
portions of Sie that teach the elements of claims 8, 15, and 21. Dr. Tjaden’s
Reply Declaration testimony does no more than fairly and directly respond

12 Cf. Ex. 1001, 4:50–64 (describing an interactive television system 10 in
accordance with the present invention for providing content such as
television programming and digital music from programming sources 12 to
television distribution facility 14, which may be a cable system headend).
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to Patent Owner’s Response and Dr. Almeroth’s testimony. See 37 C.F.R.
§ 42.23(b); see also Belden, 805 F.3d at 1078−80 (holding that the Board
may rely on new evidence submitted with a reply because the evidence was
legitimately responsive to patent owner’s arguments and not needed for a
prima facie case of obviousness).
For the reasons discussed above in this section as well as the reasons
discussed above in Section III.D.4 with respect to claim 1, we are persuaded
by Petitioner’s showing that all recitations in claims 8, 15, and 21 are taught
by the asserted art. Also, we are persuaded that Petitioner has articulated
reasoning with a rational underpinning as to why one of ordinary skill in the
art would have modified and combined the teachings of the asserted art in
the manner recited in claims 8, 15, and 21. We also are persuaded that
Petitioner has demonstrated that such person would have had a reasonable
expectation of success.
We have considered all Patent Owner’s arguments and evidence. We
determine that Patent Owner’s arguments and evidence do not undermine
Petitioner’s showing.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that claims 8, 15, and 21 would have been obvious over (1) Sie
alone, (2) Sie and Berberet, and (3) Sie and McElhatten.
6. Discussion of Dependent Claims 5–7, 12–14, 19, 20, 25, and 26
Claims 5, 12, and 25 depend directly from claims 1, 8, and 21,
respectively, and each further recites copying “the archived copy to a
personal storage area associated with the user.” Ex. 1001, 38:28–30, 39:2–3,
40:41–43. Claim 19 depends directly from claim 15 and further recites
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“means for copying the archived copy to a personal storage area associated
with the user.” Id. at 39:41–43. Claims 6 and 13 depend directly from
claims 5 and 12, respectively, and each further recites “wherein copying the
archived copy to the personal storage area is automatically initiated when the
user response is received.” Id. at 38:31–33, 39:4–6.
For claims 5, 6, 12, 13, and 25, relying on the testimony of Dr.
Tjaden, Petitioner points to Sie’s teaching of copying a club program onto
another device such as a PVR, VCR, or removable media, as well as
Berberet’s teaching of archiving “for that user.” Pet. 44–48, 58–59, 72, 75
(citing, e.g., Ex. 1003 ¶ 189; Ex. 1005, 26:7–16, 28:6–9, 29:6–15; Ex.
1002 ¶¶ 149–152). Petitioner points to the user’s purchase of a copy as the
“user response” recited in claims 6 and 13. Id. at 45–48, 72, 75 (citing, e.g.,
Ex. 1003 ¶ 189; Ex. 1005, 29:6–16; Ex. 1002 ¶¶ 151–152). Petitioner points
to each of Sie and Berberet for describing a local device copying an archived
copy to a storage area. Id. at 58–59, 72, 75 (citing, e.g., Ex. 1003 ¶ 189; Ex.
1005, 18:16–28; Ex. 1002 ¶ 178).
For claim 19, Petitioner points to the same teachings discussed with
respect to claim 5. For the “means for copying the archived copy to a
personal storage area,” Petitioner points to Sie’s disclosure that “Sie’s
system may ‘copy a club version of the club program onto another device,
such as a PVR, VCR, or removable media, or may copy it by transmitting
electronically such as by email, or otherwise.’” Pet. 54 (citing Ex.
1003 ¶ 189; Ex. 1002 ¶ 165). Petitioner also points to Berberet’s disclosure
that, “[i]f the SUBSCRIBER 1.3 optionally subscribes to a longer-term
storage . . . the table of pointers and indices can be used to create an
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individual edited copy in the Video Scrapbook 2.4.” Id. (citing, e.g.,
Ex. 1003 ¶ 189; Ex. 1005, 29:1–15; Ex. 1002 ¶¶ 165–166).
Dr. Tjaden testifies that Sie describes that “a user may ‘purchase a
copy of a club program permanently’ and may, after purchasing such a
program, ‘copy a club version of the club program onto another device, such
as a PVR, VCR, or removable media, or may copy it by transmitting
electronically such as by email, or otherwise.’” Ex. 1002 ¶ 149 (citing Ex.
1003 ¶ 189); see also id. ¶ 151 (testifying regarding the same disclosure with
respect to claim 6).
Dr. Tjaden further testifies as follows:
I further note that Berberet teaches that a program may be
stored in a server-side program archive and maintained for a user
that has selected the program. (Ex. 1005, 26:7–16, 28:6–9).
Also, Berberet describes “longer-term storage” of programs if a
subscriber “optionally subscribes” to such storage. (Ex. 1005,
29:6–15). In the latter case, an “individual edited copy” may be
moved to a “Video Scrapbook 2.4,” where the program “will
continue to be available for editing or playback.” (Id.).
Ex. 1002 ¶ 150; see also id. ¶ 152 (testifying regarding the same disclosure
with respect to claim 6).
Relying on the testimony of Dr. Almeroth, Patent Owner argues that
claim 19 is patentable for the same reasons discussed with respect to claim
15. PO Resp. 58–59 (citing Ex. 2007 ¶¶ 168–169). Patent Owner also
asserts that Petitioner’s “identified structure is not the claimed ‘means for
copying,’” but, instead, “is at best the claimed ‘personal storage area.’” Id.
Regarding claims 6 and 13, Patent Owner further argues that paragraph 189
relied upon by Petitioner is a separate embodiment from that relied upon for
the independent claims. Id. at 54–56 (citing, e.g., Ex. 2007 ¶¶ 161–163).
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We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden over the testimony of Dr.
Almeroth because Petitioner’s contentions and Dr. Tjaden’s testimony are
consistent with the evidence of record. For instance, contrary to Patent
Owner’s contentions, Petitioner points to disclosures in Sie and Berberet that
teach copying, along with the structures that perform that copying. Pet. 54,
72, 75 (citing, e.g., Ex. 1003 ¶¶ 95, 189; Ex. 1005, 29:1–15; Ex.
1002 ¶¶ 165–166); see also id. at 48–51 (citing, e.g., Ex. 1003 ¶¶ 45, 46–49,
53, Fig. 1) (identifying Sie’s program delivery system shown in Figure 1
including program server 132, transmission system 108, subscriber
management system 124, and subscriber server 128 for transmitting to user
equipment and retrieving the archived copy from storage for claim 15, from
which claim 19 depends).
Also consistent with Petitioner’s contentions and Dr. Tjaden’s
testimony, Sie teaches the following:
In still other embodiments, the user may be given an
option to purchase a copy of a club program permanently. When
such a purchase arrangement is permitted by the copyright
holder, upon agreement to pay a purchase fee, the subscriber
management system 124 authorizes the user to retain a permanent
copy and disables the copy protection. Accordingly, the user
may copy a club version of the club program onto another device,
such as a PVR, VCR, or removable media, or may copy it by
transmitting electronically such as by email, or otherwise.
Ex. 1003 ¶ 189 (emphases added); see also id. ¶ 95 (describing with respect
to the processes performed by Sie’s program delivery system that “the club
programs may be stored remotely, such as in a headend, a neighborhood
node, or may be stored locally, such as in the set-top box 600”).
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Patent Owner’s argument and Dr. Almeroth’s testimony that the
option to purchase is a “separate” embodiment, such that Petitioner cannot
rely on the disclosure of Sie’s program delivery system mischaracterize Sie.
Sie describes different embodiments as operating with the same or similar
hardware and processes. See, e.g., Ex. 1003 ¶ 95 (describing that “[t]he
various embodiments illustrated in FIG. 7–7D make no particular distinction
where the club programs are stored” and “the club programs may be stored
remotely, such as in a headend, a neighborhood node, or may be stored
locally, such as in the set-top box 600”). With respect to the option to
permanently store copy, Sie describes simply “an option to purchase a copy
of a club program permanently” as an additional feature and refers to
subscriber management system 124 in Sie’s program delivery system shown
in Figure 1. Patent Owner’s arguments and Dr. Almeroth’s testimony are
based on an overly narrow reading of the prior art without sufficient
consideration of the knowledge of a person having ordinary skill in the art.
Cf. Paulsen, 30 F.3d at 1480 (rejecting an argument that “fails to recognize
that a prior art reference must be ‘considered together with the knowledge of
one of ordinary skill in the pertinent art.’”) (citing Samour, 571 F.2d at 562).
We also agree with Petitioner’s arguments and we credit and give
significant weight to Dr. Tjaden testimony that even if Sie’s purchase
functionality is a separate embodiment, Petitioner has shown that it would
have been obvious to a person having ordinary skill in the art to modify
Sie’s program delivery system illustrated in Figure 1 and Sie’s disclosure
provided, for example, with respect to Figures 7, 7A, and 7B, to include an
option to retain a copy of a purchased program permanently that involved
transfer of the copy to the user’s set top box. Pet. Reply 20–21; Ex.
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1036 ¶¶ 78–79. We are not persuaded by Patent Owner’s arguments that
Petitioner’s arguments or Dr. Tjaden’s Reply Declaration introduce new
evidence. PO Sur-Reply 22. We find Dr. Tjaden’s testimony in his Reply
Declaration (Ex. 1036), for example, regarding the understanding of one
having ordinary skill in the art would have had with respect to Sie’s
disclosures, particularly in light of Sie’s description of how its disclosures
can be combined, altered, and implemented in different devices, simply
provides further details to support that his testimony in his initial Declaration
(Ex. 1002) is correct regarding the knowledge of the skilled artisan and Sie’s
disclosures. The Petition and Dr. Tjaden’s testimony in his first Declaration
(Ex. 1002) set forth Petitioner’s arguments in full including a detailed
element-by-element analysis identifying the portions of Sie that teach the
elements of the challenged claims. Dr. Tjaden’s Reply Declaration
testimony does no more than fairly and directly respond to Patent Owner’s
Response and Dr. Almeroth’s testimony. See 37 C.F.R. § 42.23(b); see also
Belden, 805 F.3d at 1078−80 (holding that the Board may rely on new
evidence submitted with a reply because the evidence was legitimately
responsive to patent owner’s arguments and not needed for a prima facie
case of obviousness).
Also consistent with Petitioner’s arguments and Dr. Tjaden’s
testimony, Berberet describes “a virtual VCR” that “provides subscribers to
the service with all of the features of a VCR without their having to purchase
or maintain a physical VCR apparatus.” Ex. 1005, 4:12–15. Berberet, more
specifically, describes the following:
One copy of all programming is stored in the Video Buffer 2.2
or in the Program Archive 2.15. What is maintained for each
SUBSCRIBER 1.3 is a table of indices and pointers that lets the
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system pull video from the Video Buffer 2.2 or Program Archive
2.15 as if it is coming from an individual copy created by the
SUBSCRIBER 1.3, as long as the video is available in the Video
Buffer 2.2 or the Program Archive 2.15. If the SUBSCRIBER
1.3 optionally subscribes to a longer-term storage, when the
program has to be deleted from the Video Buffer 2.2 or Program
Archive 2.15, the table of pointers and indices can be used to
create an individual edited copy in the Video Scrapbook 2.4,
where it will continue to be available for editing or playback.
Id. at 29:6–15.
For the reasons given, we are persuaded by Petitioner’s showing that
all recitations in claims 5, 6, 12, 13, 19, and 25 are taught by the asserted art
and we are persuaded that Petitioner has articulated reasoning with a rational
underpinning as to why one of ordinary skill in the art would have modified
and combined the teachings of the asserted art in the manner recited in those
claims. We have considered all Patent Owner’s arguments and evidence.
We determine that Patent Owner’s arguments and evidence do not
undermine Petitioner’s showing.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that each of claims 5, 6, 12, 13, 19, and 25 would have been
obvious over (1) Sie alone, (2) Sie and Berberet, and (3) Sie and
McElhatten.
Claims 7, 14, 20, and 26 depend directly from claims 1, 8, 15, and 21,
respectively. Claim 7 further recites “wherein the archived copy on the
storage device is associated with a retention period, and wherein the control
circuitry is further configured to remove the archived copy from the storage
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device at an end of the retention period.” Ex. 1001, 38:34–38. Claims 14,
20, and 26 recite similar recitations. Id. at 39:7–11, 39:44–47, 40:43–48.13
Petitioner, for example, points to Sie’s description of automatically
erasing a club program from the storage device “when a window defined for
its use has expired.” Pet. 46–48, 55, 58–59, 72–73, 75 (citing, e.g., Ex.
1003 ¶¶ 121, 158–159; Ex. 1002 ¶ 153). Petitioner also points to Berberet’s
description of “storing a program ‘for a 24-hour period’ in a video buffer.”
Id. at 47–48, 55 (citing, e.g., Ex. 1005, 18:31–19:2; Ex. 1002 ¶ 153).
Patent Owner argues that Petitioner “provides no indication as to
which of Sie’s structural elements are responsible for performing the
removing step.” PO Resp. 57; Ex. 2007 ¶ 165. Patent Owner, more
specifically, argues “Dr. Tjaden does not mention Sie’s program server” and
“Dr. Tjaden confirmed that he was relying on a different embodiment in Sie
where the archived copy may be stored locally.” Id. (citing Ex. 2007 ¶ 164;
Ex. 2009, 180:12–181:16). Patent Owner’s arguments and Dr. Almeroth’s
testimony regarding reliance on different embodiments are not persuasive
for the same reasons discussed above in this sub-section with respect to
claims 5, 6, 12, 13, 19, and 25.
We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden over the testimony of Dr.

13 For instance, claim 20 recites “wherein the archived copy on the storage
device is associated with a retention period, and further comprising means
for removing the archived copy from the storage device at an end of the
retention period.” Id. at 39:44–47. Claim 26 recites “wherein the archived
copy on the storage device is associated with a retention period, and wherein
the user equipment is further configured to remove the archived copy from
the storage device at an end of the retention period.” Id. at 40:43–48.
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Almeroth because Petitioner’s contentions and Dr. Tjaden’s testimony are
consistent with the evidence of record. For instance, consistent with
Petitioner’s contentions and the testimony of Dr. Tjaden, Sie describes “the
set top box 120 would automatically erase the club program when a window
defined for its use has expired (or some other condition has triggered) unless
the copyright holder allows indefinite storage.” Ex. 1003 ¶ 121. Although
Sie describes set top box 120 performing the automatic erasing, we agree
with Petitioner’s contentions and we credit and give significant weight to the
testimony of Dr. Tjaden (Pet. Reply 21–22; Ex. 1036 ¶ 83) that a person
having ordinary skill in the art would have found obvious automatically
erasing content in light of Sie’s disclosure. Ex. 1003 ¶ 121.
For the reasons given, we are persuaded by Petitioner’s showing that
all recitations in claims 7, 14, 20, and 26 are taught by the asserted art and
we are persuaded that Petitioner has articulated reasoning with a rational
underpinning as to why one of ordinary skill in the art would have modified
and combined the teachings of the asserted art in the manner recited in those
claims. We have considered all Patent Owner’s arguments and evidence.
We determine that Patent Owner’s arguments and evidence do not
undermine Petitioner’s showing.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that each of claims 7, 14, 20, and 26 would have been obvious over
(1) Sie alone, (2) Sie and Berberet, and (3) Sie and McElhatten.
7. Discussion of Dependent claims 3, 10, 17, and 23
Claims 3, 10, and 23 depend directly from claims 1, 8, and 21,
respectively, and each further recites maintaining “a list associated with the
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user that includes pointers to archived copies corresponding to selected
videos on the storage device.” Ex. 1001, 38:20–23, 38:60–63, 40:33–36.
Claim 17 depends directly from claim 15 and further recites “means for
maintaining a list associated with the user that includes pointers to archived
copies corresponding to selected videos on the storage device.” Id. at
39:33–36.
Regarding the combination of Sie and Berberet, Petitioner contends as
follows:
Berberet describes a “table of indices and pointers” that lets the
system retrieve video from the Program Archive “as if it is
coming from an individual copy.” (Ex. 1005, 29:6–11, 12:28–
13:7, 18:22–28; 5:18–20; 9:9–18; 28:23–31; Ex. 1002, ¶¶139–
141). Berberet also teaches a “Subscriber Video Scrapbook” that
“store[s] subscriber recordings in the form of pointers to frames
of video in a single copy of a program instead of storing actual
copies.” (Ex. 1005, 12:28–13:7; Ex. 1002, ¶139).
Pet. 43, 48, 58–59. Petitioner also contends one having ordinary skill in the
art would have had a reason to combine Sie with Berberet, in addition to the
reasons given for claim 1, to yield the predictable result of “improved
‘storage at a lower cost than the cost of actually storing data’ for individual
users by storing pointers to the same archived video rather than duplicate
copies of videos.” Id. at 43–44, 48, 58–59 (citing Ex. 1005, 29:3–6; Ex.
1002 ¶ 140).
Regarding the combination of Sie and McElhatten, Petitioner
contends as follows:
McElhatten teaches “mark[ing]” a stored program at the head-
end, such that the “set-top terminal . . . does not actually record
the program.” (Ex. 1006, 13:46–63; Ex. 1002, ¶208; see also Ex.
1006 14:2–15). Such marks may be stored as a “collection of
IDs of the assets reserved by the user.” (Ex. 1006, 14:2–15; Ex.
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1002, ¶208). This “collection of IDs” is a set of virtual copies—
the recited list of pointers to a real copy of the program. (Section
V.B.2.i; Ex. 1002, ¶208).
Pet. 71–75. Petitioner also contends one having ordinary skill in the art
would have had a reason to combine Sie with McElhatten to yield the
predictable result of “improved storage efficiency by storing pointers, rather
than duplicate real copies.” Id. at 72–75 (citing, e.g., Ex. 1002 ¶ 209).
Patent Owner argues Petitioner does not explain how either Sie’s
transmission system or the set-top box performs the claimed function. PO
Resp. 49 (citing, e.g., Ex. 2007 ¶¶ 147–149). Patent Owner mischaracterizes
Petitioner’s contentions regarding identification of subscriber management
system 124 for the same reasons discussed above, for example, with respect
to claim 1. See supra § III.D.4.
Patent Owner also argues that the Petition is deficient with respect to
“maintain[ing] a list associated with the user.” PO Resp. 49–50 (citing, e.g.,
Ex. 2007 ¶¶ 147–149, 153–154). Dr. Almeroth testifies that Petitioner
“explicitly relies on Sie’s transmission system and set-top boxes as the
claimed ‘control circuitry.’” Ex. 2007 ¶ 149. Patent Owner’s contentions
and Dr. Almeroth’s testimony regarding “maintain[ing] a list associated with
the user” pertain to Sie unmodified and mischaracterize the Petition. See,
e.g., PO Resp. 49–50; Ex. 2007 ¶¶ 147–149, 153–154.
Contrary to Patent Owner’s contentions and Dr. Almeroth’s
testimony, however, with respect to “maintain[ing] a list associated with the
user,” Petitioner asserts that it would have been obvious to combine the
teachings of Sie and Berberet as follows:
[T]he combination would entail use of a known technique
(Berberet’s storage of pointers in lieu of duplicates of video
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content for different users) to improve a similar system (Sie’s
club programs system) in the same way (implementing a head-
end video storage system) to yield predictable results (improved
“storage at a lower cost than the cost of actually storing data” for
individual users by storing pointers to the same archived video
rather than duplicate copies of videos).
See, e.g., Pet. 43–44 (citing Ex. 1005, 29:3–6; Ex. 1002 ¶ 140) (emphasis
added). Petitioner also asserts in the Petition that “Berberet describes a
‘table of indices and pointers’ that lets the system retrieve video from the
Program Archive ‘as if it is coming from an individual copy.’” See, e.g., id.
at 43 (citing Ex. 1005, 29:6–11, 12:28–13:7, 18:22–28; 5:18–20; 9:9–18,
28:23–31; Ex. 1002 ¶¶ 139–141).
Also contrary to Patent Owner’s contentions and Dr. Almeroth’s
testimony, with respect to “maintain[ing] a list associated with the user,”
Petitioner asserts that it would have been obvious to combine the teachings
of Sie and McElhatten as follows:
McElhatten teaches “mark[ing]” a stored program at the head-
end, such that the “set-top terminal . . . does not actually record
the program.” (Ex. 1006, 13:46–63; Ex. 1002, ¶208; see also Ex.
1006 14:2–15). Such marks may be stored as a “collection of
IDs of the assets reserved by the user.” (Ex. 1006, 14:2–15; Ex.
1002, ¶208). This “collection of IDs” is a set of virtual copies –
the recited list of pointers to a real copy of the program. (Section
V.B.2.i; Ex. 1002, ¶208).
The Sie/McElhatten combination would have been
obvious because it would entail use of a known technique
(McElhatten’s storage of markers/IDs in lieu of duplicative real
copies) to improve a similar system (Sie’s club programs system)
in the same way (implementing head-end video storage) to yield
predictable results (improved storage efficiency by storing
pointers, rather than duplicate real copies). (Ex. 1002, ¶209).
See, e.g., Pet. 71.
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Patent Owner also argues that Sie does not have the problem of
unnecessary duplication and storing programs locally “is tied to a crucial
aspect of Sie’s system—VCR-type controls of programs.” PO Resp. 50–51
(citing Ex. 2007 ¶¶ 152–158). Petitioner’s contentions and Dr. Tjaden’s
testimony are consistent with Sie’s disclosure of storing multiple copies of a
program in certain embodiments. Ex. 1003 ¶ 45 (describing that “a portion
of the program(s) is prestored locally”), ¶ 70 (describing that “an
embodiment of the set top box 600 is shown which stores some programs
locally”). We also agree with Petitioner and Dr. Tjaden that Berberet and
McElhatten supply details regarding pointers that one having ordinary skill
in the art would have implemented with Sie’s system in embodiments in
which programs are not duplicated, as pointers are conventionally used for
storing memory addresses. Ex. 1002 ¶¶ 139–140; Ex. 1036 ¶ 68. Also,
contrary to Patent Owner’s contentions regarding local storage being crucial
in Sie, as discussed above with respect to claims 5–7, 12–14, 19, and 20, Sie
discloses both remote and local storage. See supra § III.D.6; see also Ex.
1003 ¶ 95 (describing that “the club programs may be stored remotely, such
as in a headend, a neighborhood node, or may be stored locally, such as in
the set-top box 600”).
We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden (see, e.g., Pet. 43–44;
Ex. 1002 ¶¶ 139–141; Pet. Reply 17–18; Ex. 1036 ¶¶ 62–71) over the
testimony of Dr. Almeroth (see, e.g., Ex. 2007 ¶¶ 147–158) because
Petitioner’s contentions and Dr. Tjaden’s testimony are consistent with the
evidence of record. For instance, consistent with Petitioner’s contentions
and the testimony of Dr. Tjaden, Berberet describes “[w]hat is maintained
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for each SUBSCRIBER 1.3 is a table of indices and pointers that lets the
system pull video from the Video Buffer 2.2 or Program Archive 2.15 as if it
is coming from an individual copy created by the SUBSCRIBER 1.3.”
Ex. 1005, 29:6–11 (emphases added). Berberet also describes its system that
provides “a personal Subscriber Video Scrapbook” (shown as 2.4 in Figure
2), which allows a subscriber “to record and save programs” stored “in the
form of pointers.” Ex. 1005, 12:28–13:7 (emphases added); see also id. at
18:22–28 (describing the system depicted in Figures 1 and 2 including a
video server, memory, and local control unit and how that system provides
the aforementioned features).
Consistent with Petitioner’s contentions and the testimony of Dr.
Tjaden, McElhatten describes, “in response to the user depression of record
key 910, terminal 158-1 marks the program or event that has been recorded
and/or stored at headend 105.” Ex. 1006, 13:60–63; see also id. at 13:52–54
(describing that “all broadcast programs in this instance are recorded at
headend 105 and all on-demand and other content is stored at headend 105
as well”). McElhatten further describes
[b]ased on the received IP address, processor 119 retrieves a
user record associated with terminal 158-1, and registers in the
record the ID of the asset containing the reserved program which
is identifiable by the received marking information and program
channel information, and which is made available to the user for
subsequent playback.
Id. at 14:2–8 (emphases added).
For the reasons given, we are persuaded by Petitioner’s showing that
all recitations in claims 3, 10, 17, and 23 are taught by the asserted art and
we are persuaded that Petitioner has articulated reasoning with a rational
underpinning as to why one of ordinary skill in the art would have modified
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and combined the teachings of the asserted art in the manner recited in those
claims. We have considered all Patent Owner’s arguments and evidence.
We determine that Patent Owner’s arguments and evidence do not
undermine Petitioner’s showing.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that each of claims 3, 10, 17, and 23 would have been obvious over
(1) Sie and Berberet; and (2) Sie and McElhatten.
E. Obviousness—Claims 2, 9, 16, and 22
Petitioner contends each of claims 2, 9, 16, and 22 of the ’741 Patent
is unpatentable, under 35 U.S.C. § 103, as obvious over (1) Sie and White;
(2) Sie, Berberet, and White; and (3) Sie, McElhatten, and White. Pet. 16,
59–63, 75–76. In our discussion below, we first provide a brief overview of
White, and then we address the Petitioner’s contentions.
1. Overview of White
White is directed to an entertainment head-end that provides broadcast
programming, video-on demand services, and interactive programming
through a distribution network to client terminals in subscribers’ homes.
Ex. 1007, (57). White describes the following:
A further feature of the illustrated client terminal is to
automatically record favorite broadcast television programs.
The client monitors the user’s viewing habits to determine
favorite shows (e.g. StarTrek Voyager, Wednesdays, 6:00 p.m.,
viewer channel FOX). Thereafter, if the terminal is not activated
by the user to watch one of these favorites, the terminal notices
the event and automatically copies the program onto disk, to the
extent storage space permits.
Id. at 9:12–19.
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2. Discussion of Dependent Claims 2, 9, 16, and 22
Claims 2, 9, and 22 depend directly from claims 1, 8, and 21,
respectively, and each further recites receiving “a request to record the video
to create the archived copy for later viewing, wherein the request to record is
received if the user is not watching the video at the start time.” Ex. 1001,
38:14–19, 38:55–59, 40:27–32. Claim 16 depends directly from claim 15
and further recites “means for receiving a request to record the video to
create the archived copy for later viewing, wherein the request to record is
received if the user is not watching the video at the start time.” Id. at 39:28–
32.
Petitioner points to White’s description of automatically recording
favorite broadcast television programs. Pet. 59–63, 75–76 (citing Ex. 1007,
7:31–43, 9:12–31; Ex. 1002 ¶¶ 79–81, 135–136, 161, 205–207, 220, 227,
239). Relying on the testimony of Dr. Tjaden, Petitioner, for example,
contends one having ordinary skill in the art would have had a reason to
combine White’s teachings with the other asserted art to yield the
predictable result of “enabling users to access and archive broadcast content
they missed by automatically recording such content.” Id. at 59–63 (citing
Ex. 1002 ¶¶ 137–138, 161).
Patent Owner argues Petitioner does not explain how either Sie’s
transmission system or the set-top box performs the claimed function. PO
Resp. 48 (citing, e.g., Ex. 2007 ¶¶ 180–186). Patent Owner’s omission of
Petitioner’s identification of subscriber management system 124, for
example, is not consistent with Petitioner’s contentions for the same reasons
discussed above, for example, with respect to claim 1. See supra § III.D.4.
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Patent Owner also argues that Petitioner does not point to structure in
Sie or White that receives a request to record the video. PO Resp. 48 (citing,
e.g., Ex. 2007 ¶¶ 181–182). Petitioner, however, asserts that a person
having ordinary skill in the art would have improved Sie’s head-end by
using White’s feature to automatically record missed programs. Pet. 60; Ex.
1002 ¶¶ 134–138; see also Pet. Reply 16; Ex. 1036 ¶ 57.
Petitioner also argues that a person having ordinary skill in the art
would have recognized that White’s automatic recording of shows would
have entailed the generation of a “request to record” that is received by the
recording device, which possesses control circuitry configured to receive
that request and that such request could have been a software instruction.
Pet. Reply 16 (citing Ex. 1036 ¶ 58). Patent Owner asserts that Petitioner
relies on new evidence. PO Sur-Reply 20. The portion of White identified
by Petitioner, however, describes a “client terminal” that “monitors the
user’s viewing habits to determine favorite shows” and “if the terminal is not
activated by the user to watch one of these favorites, the terminal notices the
event and automatically copies the program onto disk, to the extent storage
space permits.” Ex. 1007, 9:12–19. White describes that each client
terminal 14 is an enhanced WebTV terminal that includes a central
processing unit (CPU) and memory, among other features. Id. at 2:58–60.
White further states “[t]he artisan is presumed familiar with WebTV
terminals from their many descriptions in the patent and technical literature,
and their widespread availability/use.” Id. at 2:64–67. Patent Owner’s
arguments and Dr. Almeroth’s testimony are based on an overly narrow
reading of the prior art without sufficient consideration of the knowledge of
a person having ordinary skill in the art. Cf. Paulsen, 30 F.3d at 1480
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(rejecting an argument that “fails to recognize that a prior art reference must
be ‘considered together with the knowledge of one of ordinary skill in the
pertinent art.’”) (citing Samour, 571 F.2d at 562).
We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden over the testimony of Dr.
Almeroth because Petitioner’s contentions and Dr. Tjaden’s testimony are
consistent with the evidence of record. For instance, consistent with
Petitioner’s contentions and the testimony of Dr. Tjaden, White describes
the following:
A further feature of the illustrated client terminal is to
automatically record favorite broadcast television programs.
The client monitors the user’s viewing habits to determine
favorite shows (e.g. StarTrek Voyager, Wednesdays, 6:00 p.m.,
viewer channel FOX). Thereafter, if the terminal is not activated
by the user to watch one of these favorites, the terminal notices
the event and automatically copies the program onto disk, to the
extent storage space permits.
Ex. 1007, 9:12–19 (emphasis added).
For the reasons given, we are persuaded by Petitioner’s showing that
all recitations in claims 2, 9, 16, and 22 are taught by the asserted art and we
are persuaded that Petitioner has articulated reasoning with a rational
underpinning as to why one of ordinary skill in the art would have modified
and combined the teachings of the asserted art in the manner recited in those
claims. We have considered all Patent Owner’s arguments and evidence.
We determine that Patent Owner’s arguments and evidence do not
undermine Petitioner’s showing.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that dependent claims 2, 9, 16, and 22 would have been obvious
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over (1) Sie and White; (2) Sie, Berberet, and White; and (3) Sie,
McElhatten, and White.
F. Obviousness—Dependent Claims 4, 11, 18, and 24
Petitioner contends each of claims 4, 11, 18, and 24 of the ’741 Patent
is unpatentable, under 35 U.S.C. § 103, as obvious over (1) Sie and Bonomi;
(2) Sie, Berberet, and Bonomi; and (3) Sie, McElhatten, and Bonomi. Pet.
16, 63–65, 76. In our discussion below, we first provide a brief overview of
Bonomi, and then we address the Petitioner’s contentions.
1. Overview of Bonomi
Bonomi is directed to a media system that centrally manages and
stores media content and also controls the delivery of media content to
subscribers. Ex. 1008, (57). Figure 7B of Bonomi is reproduced below.
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Figure 7B of Bonomi, above, illustrates a flowchart for bookmark process
730 to manage a bookmark list for a subscriber account in a media deliver
center. Id. at 21:65–22:1. In step 732, a bookmark list is maintained that it
is associated with an account, such as by using a linked list structure. Id. at
22:1–5. In step 734, a server that hosts the bookmark determines if a request
to update the bookmark list has been received. Id. at 22:12–14. Upon
determining that such request has been received, at step 736, a determination
is made where the program is located in a storage device and the title and
length of the program. Id. at 22:19–22. At step 738, the entry is then
inserted into the bookmark list. Id. at 22:22–23.
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2. Discussion of Dependent Claims 4, 11, 18, and 24
Claims 4, 11, 18, and 24 depend directly from claims 3, 10, 17, and
23, respectively. Each of claims 4, 11, 18, and 24 further recites “wherein
the list associated with the user is stored in a personal storage area associated
with the user, and wherein access to the personal storage area requires entry
of a valid symbol associated with the user.” Ex. 1001, 38:24–27, 38:64–67,
39:37–40, 40:36–39.
Petitioner points to Bonomi’s authorization requirement, using a
username and password. Pet. 63–64, 76 (citing Ex. 1008, 21:52–22:11,
22:35–45; Ex. 1002 ¶¶ 82–84, 142–148, 154, 164, 177–180, 211–215, 220,
229, 241). Relying on the testimony of Dr. Tjaden, Petitioner contends one
having ordinary skill in the art would have had a reason to combine
Bonomi’s teachings with the other asserted art to yield the predictable result
of allowing only authenticated subscribers access to their respective media
content thereby improving security of the personal storage area from
unauthorized access. Id.
Patent Owner argues Petitioner has not shown “wherein the list
associated with the user is stored in a personal storage area associated with
the user.” PO Resp. 52 (citing, e.g., Ex. 2007 ¶¶ 191–192). With respect to
“maintain[ing] a list associated with the user” recited in claims 3, 10, 17, and
23, Petitioner shows the Berberet’s and McElhatten’s lists are maintained
and stored in personal storage areas. For instance, for “wherein the list
associated with the user is stored in a personal storage area associated with
the user” recited in claims 4, 11, 18, and 24 is taught by Berberet’s
description of its system providing “a personal Subscriber Video
Scrapbook” (shown as 2.4 in Figure 2) which allows a subscriber “to record
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and save programs” stored “in the form of pointers” (Ex. 1005, 12:28–13:7
(emphases added)) that let “the system pull video from the Video Buffer 2.2
or Program Archive 2.15 as if it is coming from an individual copy created
by the SUBSCRIBER 1.3.” Id. at 29:6–11 (emphases added); see also id. at
18:22–28 (describing the system depicted in Figures 1 and 2 including a
video server, memory, and local control unit and how that system provides
the aforementioned features).
Also, McElhatten describes, “in response to the user depression of
record key 910, terminal 158-1 marks the program or event that has been
recorded and/or stored at headend 105.” Ex. 1006, 13:60–63. McElhatten
further describes
[b]ased on the received IP address, processor 119 retrieves a
user record associated with terminal 158-1, and registers in the
record the ID of the asset containing the reserved program which
is identifiable by the received marking information and program
channel information, and which is made available to the user for
subsequent playback.
Id. at 14:2–8 (emphases added).
Patent Owner asserts that Petitioner presents a new theory in its Reply
relating to “wherein the list associated with the user is stored in a personal
storage area associated with the user” by relying on contentions presented
with respect to claims 3, 10, 17, and 23. PO Sur-Reply 20–22. We disagree
with Patent Owner (PO Resp. 52; Ex. 2007 ¶¶ 191–192; PO Sur-Reply 20–
22) that Petitioner relies on a new argument and that Petitioner cannot rely
on the same teachings for claims 4, 11, 18, and 24, which depend directly
from claims 3, 10, 17, and 23, respectively. Indeed, Patent Owner
contentions for “maintain[ing] a list associated with the user” recited in
claims 3, 10, 17, and 23 are similar to those for claims 4, 11, 18, and 24.
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Relying on the testimony of Dr. Almeroth, Patent Owner also argues
that Petitioner has not shown that Sie teaches “entry of a valid symbol
associated with the user.” PO Resp. 52–54 (citing, e.g., Ex. 2007 ¶¶ 194–
195). Petitioner, however, points to Bonomi’s authorization requirement,
using a username and password. Pet. 63–64, 76.
Relying on the testimony of Dr. Almeroth, Patent Owner further
argues that Petitioner has not shown that one having ordinary skill in the art
would have modified Sie in view of Bonomi because Sie’s disclosure is
transparent to the user, so adding authentication would have been
“unnecessary, duplicative, and overly burdensome.” PO Resp. 54 (citing
Ex. 2007 ¶ 196). Patent Owner’s contentions are conclusory and not
consistent with the teachings of Sie.
We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden over the testimony of Dr.
Almeroth because Petitioner’s contentions and Dr. Tjaden’s testimony are
consistent with the evidence of record. For instance, consistent with
Petitioner’s contentions and the testimony of Dr. Tjaden, Bonomi describes
the following:
In one embodiment, each account has a bookmark list that is
directly resident in the account. In another embodiment, all
bookmarks are located in a storage space and each of the
bookmarks is coupled to a corresponding account. In either case,
only the authorized subscriber is permitted to update the
bookmark list in the account.
Ex. 1008, 22:5–11. Bonomi also describes that a library process that begins
with a decision that “determines whether a subscriber associated with a
client device is authenticated.” Id. at 22:36–38. Bonomi’s authentication “is
checked based on [a] username and password.” Id. at 22:44–45.
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For the reasons given, we are persuaded by Petitioner’s showing that
all recitations in claims 4, 11, 18, and 24 are taught by (1) Sie, Berberet, and
Bonomi; and (2) Sie, McElhatten, and Bonomi and we are persuaded that
Petitioner has articulated reasoning with a rational underpinning as to why
one of ordinary skill in the art would have modified and combined the
teachings of the asserted art in the manner recited in those claims. We have
considered all Patent Owner’s arguments and evidence. We determine that
Patent Owner’s arguments and evidence do not undermine Petitioner’s
showing.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that dependent claims 4, 11, 18, and 24 would have been obvious
over (1) Sie, Berberet, and Bonomi and (2) Sie, McElhatten, and Bonomi.
Petitioner asserts that claims 4, 11, 18, and 24 are obvious over Sie
and Bonomi. Pet. 16. Claims 4, 11, 18, and 24 depend directly from claims
3, 10, 17, and 23, respectively. Petitioner asserts that claims 3, 10, 17, and
23 are obvious over (1) Sie and Berberet and (2) Sie and McElhatten, but not
Sie alone. Id. Petitioner does not provide contentions for Bonomi that
address recitations in claims 3, 10, 17, and 23. Accordingly, based on the
complete record now before us, we determine that Petitioner has not
demonstrated by a preponderance of the evidence that dependent claims 4,
11, 18, and 24 would have been obvious over Sie and Bonomi.
G. ITC Investigation and Other Issues
Patent Owner argues that Petitioner “relies on Sie alone to teach
limitations [1D] (determining availability to a user) and [1E] (displaying an
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indication based on the determination).” PO Resp. 18. Patent Owner asserts
that Petitioner “reapplies the same arguments from the related ITC
investigation in this proceeding, and the ALJ’s reasoning is fully applicable
and should be given substantial weight here.” Id. at 20. Patent Owner
characterizes Petitioner’s arguments in the ITC investigation as
“unpersuasive.” Id. at 1.
For the reasons given and based on the record before us, we determine
that Petitioner has demonstrated by a preponderance of the evidence that
claims 1–26 would have been obvious over the asserted art. We have fully
considered the determinations in the ITC investigation to the extent those
determinations have been submitted in this proceeding by the parties.
Patent Owner also asserts that Petitioner’s arguments in the Petition
are redundant to the arguments advanced before the ITC and such
redundancy was a proper basis to deny the Petition under 35
U.S.C. § 314(a). We addressed the foregoing § 314(a) arguments in our
Decision to Institute, and we decline to revise the issue of institution. Inst.
Dec. 7–12.
Additionally, both parties present credibility challenges to the other
party’s declarant. We have considered the arguments and evidence
presented by both parties, as well as the qualifications of the declarants. We
are more than satisfied with the declarants’ qualifications to testify under
Fed. R. Evid. 702, and with the relevance of the opinions presented. The
parties’ arguments go to the weight that should be given to each declarant’s
testimony, which we have weighed as indicated above.
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IV. CONCLUSION
The outcome for the challenged claims is set forth in Table 2 of this
Decision below.14 In summary:
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatent-
able
Claims Not
shown
Unpatent-
able
1, 5–8, 12–15,
19–21, 25, 26

103(a) Sie
1, 5–8, 12–
15, 19–21,
25, 26

1, 3, 5–8, 10,
12–15, 17, 19–
21, 23, 25, 26

103(a) Sie, Berberet
1, 3, 5–8, 10,
12–15, 17,
19–21, 23,
25, 26

2, 9, 16, 22 103(a) Sie, White 2, 9, 16, 22
2, 9, 16, 22 103(a) Sie, Berberet, White
2, 9, 16, 22
4, 11, 18, 24 103(a) Sie, Bonomi 4, 11, 18, 24
4, 11, 18, 24 103(a) Sie, Berberet, Bonomi
4, 11, 18, 24

14 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatent-
able
Claims Not
shown
Unpatent-
able
1, 3, 5–8, 10,
12–15, 17, 19–
21, 23, 25, 26
103(a)
Sie,
McElhatten
1, 3, 5–8, 10,
12–15, 17,
19–21, 23,
25, 26

2, 9, 16, 22
103(a) Sie,
McElhatten,
White
2, 9, 16, 22
4, 11, 18, 24
103(a) Sie,
McElhatten,
Bonomi
4, 11, 18, 24
Overall
Outcome
1–26
Table 2 of this Decision summarizes the outcome for each
challenged claim and ground in the instant proceeding.
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V. ORDER
In consideration of the foregoing, it is hereby
ORDERED that claims 1–26 of the ’741 Patent have been proven to
be unpatentable; and
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.

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PETITIONER:
Frederic M. Meeker
Bradley C. Wright
Charles L. Miller
Brian J. Emfinger
Blair A. Silver
Scott M. Kelly
Kirk A. Sigmon
H. Wayne Porter
BANNER AND WITCOFF, LTD.
fmeeker@bannerwitcoff.com
bwright@bannerwitcoff.com
cmiller@bannerwitcoff.com
bemfinger@bannerwitcoff.com
bsilver@bannerwitcoff.com
skelly@bannerwitcoff.com
ksigmon@bannerwitcoff.com
wporter@bannerwitcoff.com
ckronenthal@bannerwitcoff.com

PATENT OWNER:
Jason D. Eisenberg
Jon E. Wright
Dohm Chankong
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
jasone-PTAB@sternekessler.com
jwright-PTAB@sternekessler.com
dchankong-ptab@sternekessler.com