Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 1 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`DISPUTED CONSTRUCTIONS FOR U.S. PATENT NO. 6,233,736
`
`
`I.
`
`Apple Proposed Construction and
`Supporting Evidence
`
`Proposed Construction:
`Indefinite
`
`
`
`Supporting Evidence:
`Specification:
`See, e.g., ’736 Patent at Abstract; 1:6-12;
`1:29-33; 1:46-51; 1:66-2:4; 2:61-67; 3:28-32;
`3:45-49; 7:54-57; 9:16-19; Fig. l.
`
`Other Intrinsic Evidence:
`See, e.g., ’736 File History at Apr. 3, 1998
`Application; Sep. 9, 1999 Office Action;
`Mar. 9, 2000 Amendment; June 7, 2000
`Office Action; Dec. 5, 2000 Amendment.
`See, e.g., IPR2014-00269, Paper 13, at 7-10;
`see also Papers 1, 11, 27.
`
`See, e.g., U.S. Pat. Appl. No. 10/377,482 File
`History, Final Rejection dated June 22, 2005.
`
`Extrinsic Evidence:
`Expert testimony of Mr. Scott Bradner.
`
`Proposed Construction:
`Indefinite
`
`
`1, 8, 9
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`Proposed Constructions:
`“access without the user performing
`additional steps which is direct from the
`user’s perspective”
`
`Supporting Evidence:
`Specification:
`See, e.g., Abstract; 1:6-12; 1:16-33; 1:43-51;
`2:59-67; 3:5-14; 3:58-63; 4:5-29; 6:27-33;
`6:40-44; 7:54-64; 8:60-65; 9:16-39.
`
`Other Intrinsic Evidence:
`Netflix, Inc. v. OpenTV, Inc., Case No.
`IPR2014-00269, Paper No. 27, at 3-8, 11-16.
`
`Extrinsic Evidence:
`Expert Testimony of Dr. Kevin Almeroth.
`
`
`Claim Term for ’736
`Patent
`
`“automatic and direct
`access”
`
`
`
`“automatically and directly
`electronically accessing”
`
`
`8
`
`Proposed Constructions:
`“electronically accessing without the user
`performing additional steps which is direct
`
`1
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 2 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’736
`Patent
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`from the user’s perspective”
`
`Supporting Evidence:
`Specification:
`See, e.g., Claims 1, 9; Abstract, 1:6-12; 1:16-
`33; 1:43-51; 2:59-67; 3:5-14; 3:58-63; 4:5-
`29; 6:27-33; 6:40-44; 7:54-64; 8:60-65; 9:16-
`39.
`
`Other Intrinsic Evidence:
`Netflix, Inc. v. OpenTV, Inc., Case No.
`IPR2014-00269, Paper No. 27, at 3-8, 11-16.
`
`Extrinsic Evidence:
`Expert Testimony of Dr. Kevin Almeroth.
`
`
`Apple Proposed Construction and
`Supporting Evidence
`
`
`
`
`
`Supporting Evidence:
`Specification:
`See, e.g., ’736 Patent at Abstract; 1:6-12;
`1:29-33; 1:46-51; 1:66-2:4; 2:61-67; 3:28-32;
`3:45-49; 7:54-57; 9:16-19; Fig. l.
`
`Other Intrinsic Evidence:
`See, e.g., ’736 File History at Apr. 3, 1998
`Application; Sep. 9, 1999 Office Action;
`Mar. 9, 2000 Amendment; June 7, 2000
`Office Action; Dec. 5, 2000 Amendment.
` See, e.g., IPR2014-00269, Paper 13 at 7-10;
`see also Papers 1, 11, 27.
`
`See, e.g., U.S. Pat. Appl. No. 10/377,482 File
`History, Final Rejection dated June 22, 2005.
`
`Extrinsic Evidence:
`Expert testimony of Mr. Scott Bradner.
`
`Proposed Construction:
`Plain and ordinary meaning.
`
`In the alternative, “providing a visual,
`auditory, or tactile indication.”
`
`Supporting Evidence:
`
`“indicating”
`
`1, 7-9
`
`Proposed Construction:
`“providing an automatic visual, auditory, or
`tactile indication”
`
`
`
`Supporting Evidence:
`
`2
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 3 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’736
`Patent
`
`9
`
`“means for indicating to
`the user that an address is
`available for extraction
`from said electronic
`signal”
`
`Proposed Construction:
`Governed by 112(6)
`
`Function (agreed):
`“indicating to the user that an address is
`available for extraction from said electronic
`
`3
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`Specification:
`See, e.g., Abstract; 3:58-4:4; 6:13-15; 9:15-
`29.
`
`Other Intrinsic Evidence:
`Netflix, Inc. v. OpenTV, Inc., Case No.
`IPR2014-00269, Paper No. 27, at 8-10.
`
`Extrinsic Evidence:
`Expert testimony of Dr. Kevin Almeroth.
`
`
`Apple Proposed Construction and
`Supporting Evidence
`
`Specification:
`See, e.g., ’736 Patent at 3:5-8; 3:58-4:4; 6:8-
`26; 7:3-9; 7:32-42; 8:22-36; 9:16-29; Figs. 2,
`3.
`
`Other Intrinsic Evidence:
`See, e.g., ’736 File History at Apr. 3, 1998
`Application; Sep. 9, 1999 Office Action;
`Mar. 9, 2000 Amendment; June 7, 2000
`Office Action; Dec. 5, 2000 Amendment.
`See, e.g., IPR2014-00269, Paper 13 at 10-11;
`see also Papers 1, 11, 27.
`
`Extrinsic Evidence:
`The New Lexicon Webster's Encyclopedic
`Dictionary Of The English Language, Deluxe
`Edition (1990) at 492 (definition of
`“indicate” as “to direct attention to, to point
`out, show” and definition of “indicator” as
`“something which points out or gives
`information”).
`
`Expert testimony of Mr. Scott Bradner.
`
`Proposed Construction:
`Governed by 112(6)
`
`Function (agreed):
`“indicating to the user that an address is
`available for extraction from said electronic
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 4 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’736
`Patent
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`signal”
`
`Structure (disputed):
`“an automatic message, picture within
`picture, logo, or icon displayed on a video
`screen, a light, a sound or wireless tactile
`indicator, and equivalents thereof”
`
`Supporting Evidence:
`Specification:
`See, e.g., 3:60-67; 6:13-26; 7:35-42; 9:16-29.
`
`Extrinsic Evidence:
`Expert testimony of Dr. Kevin Almeroth.
`
`
`Apple Proposed Construction and
`Supporting Evidence
`
`signal”
`
`Structure (disputed):
`“a message, picture within picture, logo,
`icon, light, sound, or wireless tactile
`indicator, and equivalents.”
`
`
`
`Supporting Evidence:
`Specification:
`See, e.g., ’736 Patent at 3:5-8; 3:58-4:4; 6:8-
`26; 7:3-9; 7:32-42; 8:22-36; 9:16-29; Figs. 2,
`3.
`
`Other Intrinsic Evidence:
`See, e.g., ’736 File History at Apr. 3, 1998
`Application; Sep. 9, 1999 Office Action;
`Mar. 9, 2000 Amendment; June 7, 2000
`Office Action; Dec. 5, 2000 Amendment.
`See, e.g., IPR2014-00269, Paper 13, at 10-11;
`see also Papers 1, 11, 27.
`
`Extrinsic Evidence:
`Expert testimony of Mr. Scott Bradner.
`
`Proposed Construction:
`Governed by 112( 6)
`
`Function (agreed):
`“extracting an address associated with an
`
`9
`
`“means for extracting an
`address associated with an
`online information source
`from an information signal
`embedded in said
`
`Proposed Construction:
`Governed by 112( 6)
`
`Function (agreed):
`“extracting an address associated with an
`
`4
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 5 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’736
`Patent
`
`electronic signal, and for
`automatically establishing,
`in response to a user
`initiated command, a
`direct link with the online
`information source”
`
`Apple Proposed Construction and
`Supporting Evidence
`
`online information source from an
`information signal embedded in an electronic
`signal, and automatically establishing, in
`response to a user initiated command, a direct
`link with the online information source”
`
`Structure (disputed):
`Insufficient disclosure of structure;
`indefinite
`
`
`
`Supporting Evidence:
`Specification:
`See, e.g., ’736 Patent at 3:1-14; 3:45-57; 4:5-
`29; 5:43-6:7; 7:22-35; 8:22-65; 9:3-15; 9:29-
`35; Figs. 1, 2, 3.
`
`Other Intrinsic Evidence:
`See, e.g., ’736 File History at Apr. 3, 1998
`Application; Sep. 9, 1999 Office Action;
`Mar. 9, 2000 Amendment; June 7, 2000
`Office Action; Dec. 5, 2000 Amendment.
`See, e.g., IPR2014-00269, Paper 13, at 11-13;
`see also Papers 1, 11, 27
`
`Extrinsic Evidence:
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`online information source from an
`information signal embedded in an electronic
`signal, and automatically establishing, in
`response to a user initiated command, a direct
`link with the online information source”
`
`Structure (disputed):
`“access controller, provided with an address
`extractor including hardware and/or software,
`that detects, decodes, and/or stores an address
`signal sent with a video signal and provided
`with a modem with hardware and/or software
`to automatically establish a direct digital
`communication link, and equivalents thereof”
`
`Supporting Evidence:
`Specification:
`See, e.g., Fig. 2; 4:5-13; 5:43-53; 6:1-7; 7:30-
`35; 7:50-53; 8:37-48; 8:60-65.
`
`Extrinsic Evidence:
`Expert testimony of Dr. Kevin Almeroth.
`
`
`5
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 6 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’736
`Patent
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`
`Apple Proposed Construction and
`Supporting Evidence
`
`See, e.g., U.S. Pat. Appl. No. 10/377,482 File
`History, Final Rejection dated June 22, 2005.
`
`Expert testimony of Mr. Scott Bradner.
`
`Proposed Construction:
`Governed by 112(6)
`
`Function (agreed):
`“receiving an information signal from said
`online information source”
`
`Structure (disputed):
`“a modem, hardware, software, or some
`combination thereof programmed or
`configured to receive information signals and
`its equivalents.”
`
`Supporting Evidence:
`Specification:
`See, e.g., ’736 Patent at 4:30-33; 5:35-41;
`6:52-65; 7:54-57; 8:49-65; Fig. 2.
`
`Other Intrinsic Evidence:
`See, e.g., ’736 File History at Apr. 3, 1998
`Application; Sep. 9, 1999 Office Action;
`Mar. 9, 2000 Amendment; June 7, 2000
`Office Action; Dec. 5, 2000 Amendment.
`See, e.g., IPR2014-00269, Paper 13, at 13-14;
`see also Papers 1, 11, 27.
`
`Proposed Construction
`Governed by 112(6)
`
`Function (agreed):
`“receiving an information signal from said
`online information source”
`
`Structure (disputed):
`“a modem and equivalents thereof”
`
`
`
`Supporting Evidence:
`Specification:
`See, e.g., 6:59-62; 7:54-57.
`
`Extrinsic Evidence:
`Expert testimony of Dr. Kevin Almeroth.
`
`
`6
`
`“means for receiving an
`information signal from
`said online information
`source”
`
`10
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 7 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’736
`Patent
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`
`Apple Proposed Construction and
`Supporting Evidence
`
`
`
`Extrinsic Evidence:
`Expert testimony of Mr. Scott Bradner.
`
`
`Apple Proposed Construction and
`Supporting Evidence
`
`Proposed Construction:
`“declaration or instruction”
`
`
`
`Supporting Evidence:
`Specification:
`See, e.g., ’169 Patent at claims 1, 2, 3, 4, 5, 6,
`7, 12, 13, 14, 15, 16, 18, 20, 21, 22, 23; Fig.
`5; Abstract, 1:14-2:30, 2:33-57, 3:1-2, 4:28-
`39, 5:48-50, 7:3-5, 9:23-33, 21:7-22:11,
`26:38-27:6, 27:9-14, 29:56-63, 35:19-30,
`46:54-47: 10, 47:10-49:41, 51:57-66.
`
`Other Intrinsic Evidence:
`See, e.g., U.S. Provisional application No.
`60/373,883, April 19, 2002; ’169 Patent File
`
`
`II.
`
`DISPUTED CONSTRUCTIONS FOR U.S. PATENT NO. 7,055,169
`
`Claim Term for ’169
`Patent
`
`“directive”
`
`1, 2, 22,
`23
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`Proposed Construction:
`“a declaration or other statement that is
`formed using a computer language (e.g.,
`HTML, Javascript, CSS, etc.) used in the
`creation and/or manipulation of resources and
`content”
`
`Supporting Evidence:
`Specification:
`See, e.g., Claims 3, 13, 14, 18, 20; Fig. 5;
`Abstract; 2:33-39; 2:40-48; 4:31-37; 21:9-17.
`
`Other Intrinsic Evidence:
`January 21, 2005 Office Action Response,
`OPENTV2008-00002200- OPENTV2008-
`00002210.
`
`Extrinsic Evidence:
`OpenTV, Inc. v. Netflix, Inc., No. 3:14-CV-
`
`7
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 8 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’169
`Patent
`
`1
`
`“directives, wherein said
`directives are indicative of
`an audio, video and/or
`graphic presentation
`which requires a set of
`resources”
`
`Proposed construction
`“a declaration or other statement that is
`formed using a computer language (e.g.,
`HTML, Javascript, CSS, etc.) used in the
`creation and/or manipulation of resources and
`content, wherein said directives are indicative
`of an audio, video and/or graphic presentation
`which requires a set of resources”
`
`
`8
`
`Apple Proposed Construction and
`Supporting Evidence
`
`History, April 21, 2003, Original Claims;
`October 5, 2004, Office Action; January 18,
`2005, Amended Claims and Response to
`Office Action; June 9, 2005, Notice of
`Allowance and Supplemental Notice of
`Allowance.
`
`Extrinsic Evidence:
`See, e.g., OpenTV, Inc. v. Netflix, Inc., No.
`3:14-CV-01525-RS (N.D. Cal.), ECF No. 55,
`Plaintiffs OpenTV, Inc. and Nagra France
`SAS’s Memorandum in Opposition to
`Defendant Netflix’s Motion for Summary
`Judgment of Lack of Patentable Subject
`Matter as to U.S. Patent Nos. 7,055,169,
`7,305,691, and 8,332,268, Oct. 16, 2014,
`including at 6, 8-10; and Polish Decl.
`including at ¶¶ 19, 20, 31, 34
`
`Expert testimony of Dr. Stephen Melvin.
`
`Proposed Construction:
`“declarations or instructions that indicate an
`audio, video and/or graphic presentation
`which requires a set of resources”
`
`
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`01525-RS (N.D. Cal.), ECF No. 55, Plaintiffs
`OpenTV, Inc. and Nagra France SAS’s
`Memorandum in Opposition to Defendant
`Netflix’s Motion for Summary Judgment of
`Lack of Patentable Subject Matter as to U.S.
`Patent Nos. 7,055,169, 7,305,691, and
`8,332,268, Oct. 16, 2014, at 6, 8-10; Polish
`Decl. at ¶¶ 19, 20, 31, 34.
`
`Expert testimony of Dr. Kevin Almeroth.
`
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 9 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’169
`Patent
`
`“directives which are
`indicative of an audio,
`video and/or graphic
`presentation requiring a
`set of resources”
`
`“directives which are
`indicative of an audio,
`video and/or graphic
`presentation which
`requires a set of
`resources”
`
`Apple Proposed Construction and
`Supporting Evidence
`
`Supporting Evidence:
`See “directive.”
`
`Proposed Construction:
`“declarations or instructions that indicate an
`audio, video and/or graphic presentation
`requiring a set of resources”
`
`
`
`Supporting Evidence:
`See “directive.”
`
`Proposed Construction:
`“declarations or instructions that indicate an
`audio, video and/or graphic presentation
`which requires a set of resources”
`
`
`
`Supporting Evidence:
`See “directive.”
`
`Proposed Construction:
`Invalid under 35 U.S.C. § 112(2)
`
`22
`
`23
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`Supporting Evidence:
`See “directive.”
`
`Proposed construction
`“a declaration or other statement that is
`formed using a computer language (e.g.,
`HTML, Javascript, CSS, etc.) which are
`indicative of an audio, video and/or graphic
`presentation requiring a set of resources”
`
`Supporting Evidence:
`See “directive.”
`
`Proposed construction
`“a declaration or other statement that is
`formed using a computer language (e.g.,
`HTML, Javascript, CSS, etc.) used in the
`creation and/or manipulation of resources and
`content which are indicative of an audio,
`video and/or graphic presentation which
`requires a set of resources”
`
`Supporting Evidence:
`See “directive.”
`
`Proposed Construction:
`“directive for specifying that a particular
`
`9
`
`“prerequisite directive”1
`
`1, 2, 22,
`23
`
`1 Apple proposes that the appropriate term to construe is the broader term, “prerequisite directive which indicates that
`[acciuisition/acquisition] of a subset of said set of resources is a prerequisite for [initiating] the presentation”
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 10 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’169
`Patent
`
`Apple Proposed Construction and
`Supporting Evidence
`
`
`
`Supporting Evidence:
`Specification:
`See, e.g., ’169 Patent at claims 1, 2, 3, 4, 5, 6,
`7, 8, 9, 10, 11, 13, 14, 15, 16, 17, 18, 19, 20,
`21, 22, 23; Fig. 5; Abstract, 1: 14-2:30, 2:33-
`57, 3: 1-2, 4:28-39, 5:48-50, 7:3-5, 21:7-
`22:11, 26:38-27:6, 35:19-30, 45:29-55,
`46:54-47:10, 47:10-49:41, 51:57-66.
`
`Other Intrinsic Evidence:
`See, e.g., U.S. Provisional application No.
`60/373,883, April 19, 2002; ’169 Patent File
`History, April 21, 2003, Original Claims;
`October 5, 2004, Office Action; January 18,
`2005, Amended Claims and Response to
`Office Action; June 9, 2005, Notice of
`Allowance and Supplemental Notice of
`Allowance.
`
`Extrinsic Evidence:
`See, e.g., OpenTV, Inc. v. Netflix, Inc., No.
`3:14-CV-01525-RS (N.D. Cal.), ECF No. 55,
`Plaintiffs OpenTV, Inc. and Nagra France
`SAS’s Memorandum in Opposition to
`Defendant Netflix’s Motion for Summary
`Judgment of Lack of Patentable Subject
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`subset of resources required for a presentation
`needs to be obtained prior to the presentation
`being initiated”
`
`Supporting Evidence:
`Specification:
`See, e.g., Fig. 5; Claims 13, 14, 18, 20;
`Abstract; 2:40-48; 21:9-20.
`
`Other Intrinsic Evidence:
`January 21, 2005 Office Action Response,
`OPENTV2008-00002200- OPENTV2008-
`00002210.
`
`Extrinsic Evidence:
`OpenTV, Inc. v. Netflix, Inc., No. 3:14-CV-
`01525-RS (N.D. Cal.), ECF No. 55, Plaintiffs
`OpenTV, Inc. and Nagra France SAS’s
`Memorandum in Opposition to Defendant
`Netflix’s Motion for Summary Judgment of
`Lack of Patentable Subject Matter as to U.S.
`Patent Nos. 7,055,169, 7,305,691, and
`8,332,268, Oct. 16, 2014, at 6-11; Polish
`Decl. at ¶¶ 21-25, 27, 30, 31, 32, 37, 38.
`
`Expert testimony of Dr. Kevin Almeroth.
`
`
`10
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 11 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’169
`Patent
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`
`Apple Proposed Construction and
`Supporting Evidence
`
`Matter as to U.S. Patent Nos. 7,055,169,
`7,305,691, and 8,332,268, Oct. 16, 2014,
`including at 6-11; Polish Decl. including at ¶¶
`21-25, 27, 30, 31, 32, 37, 38
`
`Expert testimony of Dr. Stephen Melvin.
`
`Proposed Construction:
`Invalid under 35 U.S.C. § 112(2)
`
`
`
`Supporting Evidence:
`See “prerequisite directive.”
`Proposed Construction:
`Invalid under 35 U.S.C. § 112(2)
`
`
`
`Supporting Evidence:
`See “prerequisite directive.”
`Proposed Construction:
`“a set that is some or all of said set of
`
`“prerequisite directive
`which indicates that
`[acciuisition/acquisition]
`of a subset of said set of
`resources is a prerequisite
`for initiating the
`presentation”
`
`
`“prerequisite directive
`which indicates that
`acquisition of a subset of
`said set of resources is a
`prerequisite for the
`presentation”
`
`
`“subset of said set of
`resources”
`
`23
`
`1, 22
`
`Proposed construction
`“directive for specifying that a particular
`subset of resources required for a presentation
`needs to be obtained prior to the presentation
`being initiated which indicates that
`acquisition of a subset of said set of resources
`is a prerequisite for initiating the
`presentation”
`
`Supporting Evidence:
`See “prerequisite directive.”
`Proposed construction
`“directive for specifying that a particular
`subset of resources required for a presentation
`needs to be obtained prior to the presentation
`being initiated which indicates that
`acquisition of a subset of said set of resources
`is a prerequisite for the presentation”
`
`Supporting Evidence:
`See “prerequisite directive.”
`1, 22, 23 Proposed construction
`“a set that is some, but not all, of the larger
`
`11
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 12 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’169
`Patent
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`set of resources”
`
`Supporting Evidence:
`Specification
`See, e.g., 1:14-30; 2:39-48; 21:8-67; 45:29-
`55; 46:20-30; 47:23-37
`
`Extrinsic Evidence:
`Definition of “subset,” Random House
`Webster’s College Dictionary 1305 (2000),
`OPENTV2008-00009969 - OPENTV2008-
`00009972.
`
`Definition of “subset,” The Random House
`Dictionary of the English Language 1897 (2d
`ed. Unabridged 1987), OPENTV2008-
`00009966 - OPENTV2008-00009968.
`
`Definition of “subset,” American Heritage
`College Dictionary 1354 (1997),
`OPENTV2008-00009960 – OPENTV2008-
`00009962.
`
`Definition of “subset,” The Compact Oxford
`English Dictionary (2d ed. 1987),
`OPENTV2008-00009963 - OPENTV2008-
`00009965.
`
`Definition of “subset,” The American
`Heritage College Dictionary (3d ed. 2000),
`
`Apple Proposed Construction and
`Supporting Evidence
`
`resources”
`
`Supporting Evidence:
`Specification:
`See, e.g., ’169 Patent at claims 1, 2, 4, 5, 6, 7,
`8, 9, 10, 11, 13, 14, 15, 16, 17, 18, 19, 20, 21,
`22, 23; Fig. 5; Abstract, 2:33-57, 3:1-2, 21:7-
`22: 11, 26:38-56, 45:29-55, 47: 10-49:41.
`
`Other Intrinsic Evidence:
`See, e.g., U.S. Provisional application No.
`60/373,883, April 19, 2002; ’169 Patent File
`History, April 21, 2003, Original Claims;
`October 5, 2004, Office Action; January 18,
`2005, Amended Claims and Response to
`Office Action; June 9, 2005, Notice of
`Allowance and Supplemental Notice of
`Allowance.
`
`Extrinsic Evidence:
`Definition of “subset,” Merriam-Webster’s
`Collegiate Dictionary 1170 (10th ed. 2001),
`OPENTV2008-00009437 - OPENTV2008-
`00009439.
`
`Definition of “subset,” Random House
`Webster’s College Dictionary 1305 (2000),
`OPENTV2008-00009969 - OPENTV2008-
`00009972.
`
`
`12
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 13 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’169
`Patent
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`OPENTV2008-00009973 – OPENTV2008-
`0009975.
`
`Definition of “subset,” Merriam-Webster’s
`Collegiate Dictionary 1170 (10th ed. 2001),
`OPENTV2008-00009437 - OPENTV2008-
`00009439.
`
`Expert testimony of Dr. Kevin Almeroth.
`
`
`Apple Proposed Construction and
`Supporting Evidence
`
`Definition of “subset,” The Random House
`Dictionary of the English Language 1897 (2d
`ed. Unabridged 1987), OPENTV2008-
`00009966 - OPENTV2008-00009968.
`
`Definition of “subset,” American Heritage
`College Dictionary 1354 (1997),
`OPENTV2008-00009960 – OPENTV2008-
`00009962.
`
`Definition of “subset,” The American
`Heritage College Dictionary (3d ed. 2000),
`OPENTV2008-00009973 – OPENTV2008-
`0009975.
`
`Expert testimony of Dr. Stephen Melvin.
`Proposed Construction:
`Invalid under 35 U.S.C. § 112(2)
`
`
`
`Supporting Evidence:
`Specification:
`See, e.g., ’169 Patent at claims 1, 12, 13, 21,
`22, 23; Fig. 5; Abstract, 2:33-57,3:1-2, 21:7-
`22: 11,26:38-56, 31:50-32:40, 32:50-34:20,
`47:10-49:41.
`
`Other Intrinsic Evidence:
`See, e.g., U.S. Provisional application No.
`
`12
`
`“wherein said prohibiting
`is in further response to
`detecting a corresponding
`time for expiration has not
`yet expired, and wherein
`said method further
`comprises allowing the
`presenting of said
`presentation in response to
`detecting said time for
`expiration has expired.”
`
`
`Proposed construction
`No construction is necessary because the
`plain and ordinary meaning of this phrase can
`be easily understood by the jury.
`
`Supporting Evidence:
`Specification:
`See, e.g., Abstract; Fig. 4; 21:53-67; 25:6-15;
`25:21-46.
`
`Extrinsic Evidence:
`Expert testimony of Dr. Kevin Almeroth.
`
`
`13
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 14 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’169
`Patent
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`
`Apple Proposed Construction and
`Supporting Evidence
`
`60/373,883, April 19, 2002; ’169 Patent File
`History, April 21, 2003, Original Claims;
`October 5, 2004, Office Action; January 18,
`2005, Amended Claims and Response to
`Office Action; June 9, 2005, Notice of
`Allowance and Supplemental Notice of
`Allowance.
`
`Extrinsic Evidence:
`Expert testimony of Dr. Stephen Melvin.
`Proposed Construction:
`Governed by 35 U.S.C. § 112(6)
`
`Function: determine whether said one or
`more directives includes a prerequisite
`directive which indicates that acquisition of a
`subset of said set of resources is a
`prerequisite for initiating the presentation;
`initiate said presentation, in response to
`determining that one or more directives do
`not include said prerequisite directive, and
`prohibit initiation of said presentation until
`said subset of resources are acquired, in
`response to determining the one or more
`directives include said prerequisite directive.
`
`Structure:
`insufficient disclosure of structure;
`indefinite
`
`
`22
`
`“a processing unit coupled
`to said receiver, wherein
`said processing unit is
`configured to:
`determine whether said
`one or more directives
`includes a prerequisite
`directive which indicates
`that acquisition of a subset
`of said set of resources is
`a prerequisite for initiating
`the presentation;
`initiate said presentation,
`in response to determining
`the one or more directives
`do not include said
`prerequisite directive; and
`prohibit initiation of said
`presentation until said
`subset of resources are
`
`Proposed Construction
`Not governed by 35 U.S.C. § 112(6)
`
`No construction is necessary because the
`plain and ordinary meaning of this phrase can
`be easily understood by the jury
`
`Supporting Evidence:
`Specification:
`See, e.g., Abstract; Fig. 3; 4:35-39; 5:15-35.
`
`Extrinsic Evidence:
`Expert testimony of Dr. Kevin Almeroth.
`
`14
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 15 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’169
`Patent
`
`acquired, in response to
`determining the one or
`more directives include
`said prerequisite
`directive.”
`
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`
`Apple Proposed Construction and
`Supporting Evidence
`
`Supporting Evidence:
`Specification:
`See, e.g., ’169 Patent at Figs. 1, 2, 3, 5;
`Abstract, 2:33-57, 2:60-3:2, 4:28-39-5:14,
`5:15-7:21, 47:10-49:41.
`
`Other Intrinsic Evidence:
`See, e.g., U.S. Provisional application No.
`60/373,883, April 19, 2002; ’169 Patent File
`History, April 21, 2003, Original Claims;
`October 5, 2004, Office Action; January 18,
`2005, Amended Claims and Response to
`Office Action; June 9, 2005, Notice of
`Allowance and Supplemental Notice of
`Allowance.
`
`Extrinsic Evidence:
`Expert testimony of Dr. Stephen Melvin.
`
`The preamble is limiting.
`
`Supporting Evidence:
`Specification:
`See, e.g., ’169 Patent claims 3, 13, 22; Figs.
`1, 3; Title, Abstract, 1:10-13, 1:14-2:30, 2:33-
`57,2:60-65, 3:5-51, 4:28-5:14, 5:16-7:21,
`8:19-67, 13:45-50, 27:8-16, 49:42-50:9.
`
`Other Intrinsic Evidence:
`See, e.g., U.S. Provisional application No.
`
`22
`
`“A client device in an
`interactive television
`system, said device
`comprising:”
`
`
`The preamble is not limiting.
`
`Extrinsic Evidence:
`Expert testimony of Dr. Kevin Almeroth.
`
`
`15
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 16 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’169
`Patent
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`
`Apple Proposed Construction and
`Supporting Evidence
`
`60/373,883, April 19, 2002; ’169 Patent File
`History, April 21, 2003, Original Claims;
`October 5, 2004, Office Action; January 18,
`2005, Amended Claims and Response to
`Office Action; June 9, 2005, Notice of
`Allowance and Supplemental Notice of
`Allowance.
`
`Extrinsic Evidence:
`Expert testimony of Dr. Stephen Melvin.
`
`
`
`
`III. DISPUTED CONSTRUCTIONS FOR U.S. PATENT NO. 7,725,740
`
`Claim Term for ’740
`Patent
`
`“imprint of data”
`
`1
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`Proposed construction
`“a value derived from data”
`
`Supporting Evidence:
`Specification:
`See, e.g., 1:33-36; 2:1-5; 4:22-36.
`
`Other Intrinsic Evidence:
`See, e.g., Sept. 18, 2009 Response to Office
`Action OPENTV2008-00003008 -
`OPENTV2008-00003015.
`
`
`Apple Proposed Construction and
`Supporting Evidence
`
`Proposed Construction:
`“cyclic redundancy check, hash, or other
`unidirectional operation performed on data”
`
`Supporting Evidence:
`Specification:
`See, e.g., ’740 Patent at 1:33-36; 4:13-19;
`4:22-27; 4:63-66; 5:6-9; Figs. 1, 3; Claims 4,
`5.
`
`Other Intrinsic Evidence:
`See, e.g., ’740 File History, Amendment
`
`16
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 17 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’740
`Patent
`
`Apple Proposed Construction and
`Supporting Evidence
`
`dated November 27, 2007; Amendment
`dated July 11, 2008; Amendment dated
`February 23, 2009; Amendment dated
`September 18, 2009; Examiner Interviews
`dated September 22, 2009 and December 14,
`2009; Examiner’s Amendment dated January
`8, 2010.
`
`Extrinsic Evidence:
`Expert testimony of Dr. Stephen Melvin.
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`Extrinsic Evidence:
`Expert testimony of Dr. Avi Rubin.
`
`Dong, L., Cryptographic Protocol, Security
`Analysis Based on Trusted Freshness, 2012,
`OPENTV2008-00009539 - OPENTV2008-
`00009542.
`
`Menzes, A., Handbook of Applied
`Cryptography, CRC Press, 1996,
`OPENTV2008-00009588 - OPENTV2008-
`00009651.
`
`Girault, M., “A Generalized Birthday
`Attack,” EUROCRYPT ’88, LNCS 330, at
`129-56, OPENTV2008-00009584 -
`OPENTV2008-00009587.
`
`“Internet X.509 Public Key Infrastructure
`Time-Stamp Protocol (TSP),” Network
`Working Group, IETF Request for
`Comments 3161, August 2001,
`OPENTV2008-00009677 - OPENTV2008-
`00009700.
`
`Samarati, P., Computer Security - ESORICS
`2004, 9th European Symposium on Research
`in Computer Security, 2004, OPENTV2008-
`00009673 - OPENTV2008-00009676.
`
`
`17
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 18 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`
`Claim Term for ’740
`Patent
`
`Apple Proposed Construction and
`Supporting Evidence
`
`Claim(s) OpenTV Proposed Construction and
`Supporting Evidence
`
`State of the art in applied cryptography :
`course on computer security and industrial
`cryptography, Leuven, Belgium, June 3-6,
`1997; Preneel, B., “Cryptographic Primitives
`for Information Authentication — State of
`the Art,” ch. 4, at 61-67, OPENTV2008-
`00009483 - OPENTV2008-00009538.
`
`Definition of “imprint,” Merriam-Webster’s
`Collegiate Dictionary 626 (11th ed. 2005),
`OPENTV2008-00009722 - OPENTV2008-
`00009724.
`
`Definition of “imprint,” Collins English
`Dictionary, Complete and Unabridged 820
`(2003), OPENTV2008-00009474 -
`OPENTV2008-00009476.
`
`Definition of “cyclic redundancy check
`(CRC),” IEEE 100: The Authoritative
`Dictionary of IEEE Standards Terms 264
`(7th ed. 2000). OPENTV2008-00009701 -
`OPENTV2008-00009705.
`
`Definition of “hash,” IEEE 100: The
`Authoritative Dictionary of IEEE Standards
`Terms 505-06 (7th ed. 2000), OPENTV2008-
`00009701 - OPENTV2008-00009705.
`
`Definition of “hash function,” Computer
`
`18
`
`

`
`Case 5:15-cv-02008-EJD Document 74-1 Filed 02/12/16 Page 19 of 22
`EXHIBIT A
`TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT PURSUANT TO PATENT L.R. 4-2
`
`Apple Proposed Construction and
`Supporting Evidence
`
`Proposed Construction:
`“key installed in the first conditional access
`memory zone at the time of manufacture”
`
`
`
`Supporting Evidence:
`Specification:
`See, e.g., ’740 Patent at 3:5-7; 3:40-48.
`
`Other Intrinsic Evidence:
`See, e.g., ’740 File History, Amendment
`dated November 27, 2007; Amendment
`dated July 11, 2008; Amendment dated
`February 23, 2009; Amendment dated
`September 18, 2009; Examiner Interviews
`dated September 22, 2009 and December 14,
`2009; Examiner’s Amendment dated January