Case 5:15-cv-02008-EJD Document 85-5 Filed 04/13/16 Page 1 of 39
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`EXHIBIT 3
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`DECLARATION OF MELODY DRUMMOND HANSEN
`IN SUPPORT OF DEFENDANT APPLE INC.’S MOTION
`TO PRECLUDE RELIANCE ON CERTAIN
`INVENTION DATES AND TO STRIKE CERTAIN ALLEGATIONS
`Case No. 5:15-CV-02008-EJD
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`Case 5:15-cv-02008-EJD Document 85-5 Filed 04/13/16 Page 2 of 39
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`GEORGE A. RILEY (S.B. #118304) griley@omm.com
`LUANN L. SIMMONS (S.B. #203526) lsimmons@omm.com
`MELODY DRUMMOND HANSEN (S.B. #278786) mdrummondhansen@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center, 28th Floor
`San Francisco, California 94111-3823
`Telephone:
`(415) 984-8700
`Facsimile:
`(415) 984-8701
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`RYAN K. YAGURA (S.B. #197619) ryagura@omm.com
`XIN-YI ZHOU (S.B. #251969) vzhou@omm.com
`BRIAN M. COOK (S.B. #266181) bcook@omm.com
`KEVIN MURRAY (S.B. #275186) kmurray2@omm.com
`O’MELVENY & MYERS LLP
`400 South Hope Street
`Los Angeles, California 90071-2899
`Telephone:
`(213) 430-6000
`Facsimile:
`(213) 430-6407
`
`Attorneys for Defendant
`APPLE INC.
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`
`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE
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`Case No. 5:15-cv-02008-EJD
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`DEFENDANT APPLE INC.’S PATENT
`L.R. 3-3 PRELIMINARY INVALIDITY
`CONTENTIONS
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`APPLE’S PRELIMINARY INVALIDITY
`CONTENTIONS 5:15-CV-02008-EJD
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`OpenTV, Inc., Nagravision, SA, and Nagra
`France S.A.S.,
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`Plaintiffs,
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`Defendant.
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`v.
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`Apple Inc.,
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`Case 5:15-cv-02008-EJD Document 85-5 Filed 04/13/16 Page 3 of 39
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`I.
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`Introduction
`Pursuant to the Court’s Scheduling Order (Dkt. No. 58) and Patent L.R. 3-3, Defendant
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`Apple Inc. (“Apple”) provides these preliminary invalidity contentions (“Invalidity Contentions”)
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`to Plaintiffs OpenTV, Inc., Nagravision S.A., and Nagra France S.A.S. (collectively “Plaintiffs”
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`or “OpenTV”).
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`Based on Plaintiffs’ Disclosure of Asserted Claims and Infringement Contentions
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`(“Infringement Contentions”) served on October 15, 2015, Plaintiffs are asserting the following
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`patents and claims against Apple:
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`1.
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`2.
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`3.
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`4.
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`5.
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`U.S. Patent No. 6,148,081 (“the ’081 Patent”), Claims 1-3 and 23-24;
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`U.S. Patent No. 6,233,736 (“the ’736 Patent”), Claims 1-3 and 8-12;
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`U.S. Patent No. 7,055,169 (“the ’169 Patent”), Claims 1, 2, 12, 22, and 23;
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`U.S. Patent No. 7,644,429 (“the ’429 Patent”), Claims 1, 2, and 4-6; and
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`U.S. Patent No. 7,725,740 (“the ’740 Patent”), Claims 1, 2, and 4-9.
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`Collectively, these five patents will be referred to as the “Asserted Patents.” These
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`invalidity contentions use the term “PHOSITA” to refer to a person having ordinary skill in the
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`art to which each Asserted Patent pertains.
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`II.
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`The ’081 Patent
`The ’081 Patent reports on its face a filing date of November 20, 1998, as a continuation-
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`in-part of an earlier application filed on May 29, 1998. Plaintiffs allege a priority date of May 29,
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`1998, in their Infringement Contentions. Pursuant to Patent L.R 3-3(a), Apple identifies the
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`following prior art now known to Apple to anticipate and/or render obvious at least one of the
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`asserted claims of the ’081 Patent under at least 35 U.S.C. §§ 102(a), (b), (e), and/or (g), either
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`expressly or inherently as understood by a PHOSITA. The following patents, publications, and
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`systems are prior art under at least 35 U.S.C. §§ 102(a), (b), (e), and/or (g). Pursuant to Patent
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`L.R. 3-3(c), invalidity claim charts for these references with respect to the ’081 Patent are
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`attached as Exhibits A-1 to A-13.
`A.
`Prior Art Patents And Publications
`1. U.S. Patent No. 5,311,591, filed on June 3, 1993, issued May 10, 1994. See Ex.
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`APPLE’S PRELIMINARY INVALIDITY
`CONTENTIONS 5:15-CV-02008-EJD
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`Case 5:15-cv-02008-EJD Document 85-5 Filed 04/13/16 Page 4 of 39
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`III. The ’736 Patent
`The ’736 Patent reports on its face a filing date of April 3, 1998. Plaintiffs allege in their
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`Infringement Contentions that the asserted claims of the ’736 Patent are entitled to a priority date
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`of at least February 8, 1996. Pursuant to Patent L.R 3-3(a), Apple identifies the following prior
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`art now known to Apple to anticipate and/or render obvious at least one of the asserted claims of
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`the ’736 Patent under at least 35 U.S.C. §§ 102(a), (b), (e), and/or (g), either expressly or
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`inherently as understood by a PHOSITA. The following patents, publications, and systems are
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`prior art under at least 35 U.S.C. §§ 102(a), (b), (e), and/or (g). Pursuant to Patent L.R. 3-3(c),
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`invalidity claim charts for these references with respect to the ’736 Patent are attached as Exhibits
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`B-1 through B-11.
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`A.
`1.
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`Prior Art Patents And Publications
`U.S. Patent No. 5,818,441 to Throckmorton et al., filed June 15, 1995, issued
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`October 6, 1998. See Ex. B-1. (“Throckmorton”).
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`2.
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`U.S. Patent No. 5,841,978 to Rhoads, filed July 27, 1995, issued November 24,
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`1998, which claims priority to U.S. Application No. 08/154,866, filed November
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`18, 1993. See Ex. B-2. (“Rhoads”).
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`3.
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`U.S. Patent No. 5,440,678 to Eisen et al., filed September 13, 1994, issued August
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`8, 1995, which claims priority to U.S. Application No. 07/918,866, filed July 22,
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`1992. See Ex. B-3. (“Eisen”).
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`4.
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`U.S. Patent No. 5,905,865 to Palmer et al., filed October 30, 1996, issued May 18,
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`1999, which claims priority to U.S. Application No. 60/008,111, filed October 30,
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`1995. See Ex. B-4. (“Palmer”).
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`5.
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`6.
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`U.S. Patent No. 5,708,845 to Wistendahl et al., filed September 29, 1995, issued
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`January 13, 1998. See Ex. B-5. (“Wistendahl”).
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`Michael Mascha, “Interactive Education: Transitioning CD-ROMs to the Web,”
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`published May 1994. See Ex. B-6. (“Mascha”).
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`APPLE’S PRELIMINARY INVALIDITY
`CONTENTIONS 5:15-CV-02008-EJD
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`Case 5:15-cv-02008-EJD Document 85-5 Filed 04/13/16 Page 5 of 39
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`Apple reserves the right to identify and rely upon additional patent or publication
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`references that describe or are otherwise related to the prior art systems identified below based on
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`discovery.
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`B.
`1.
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`Prior Art Systems
`Products, components, systems, and methods invented, designed, developed,
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`and/or in public use or on sale related to Apple Internet Connection Kit
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`developed in the United States by the Apple Computer by at least 1995, as
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`exemplified by the following references and documents and subject to further
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`discovery: (1) “Apple Makes Direct Internet Access Quick and Easy with the
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`Apple Internet Connection Kit,” PR Newswire, August 7, 1995; (2) Apple Internet
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`Connection Kit: Getting Started, Apple Computer Inc. (1996); (3) Apple Internet
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`Connection Kit: Installing from the CD, Apple Computer Inc. (1995). See Ex. B-7.
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`2.
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`Products, components, systems, and methods invented, designed, developed,
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`and/or in public use or on sale related to Mosaic web browser developed in the
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`United States by the National Center for Supercomputing Applications by at least
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`1993, as exemplified by the following references and documents and subject to
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`further discovery: (1) Marc Andreessen, “NCSA Mosaic Technical Summary,”
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`(1993); (2) Ronald J. Vetter, “Mosaic and the World-Wide Web,” (1994); (3)
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`Andrew S. Tanenbaum, “Computer Networks” (1996); (4) Peter Kent “The
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`Complete Idiot’s Guide to the World Wide Web” (1995); (5) Tony McDonald et
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`al., “Software Tools for the World-Wide Web” (1996); (6) Peter Lewis, “A Clash
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`of Titanic Web Browsers,” The New York Times, January 30, 1996; (7) Greg R.
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`Notes, “Comparing Commercial WWW Browsers,” Online, Vol. 19 Issue 3, p. 43,
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`May/June 95. See Ex. B-8.
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`3.
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`Products, components, systems, and methods invented, designed, developed,
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`and/or in public use or on sale related to Netscape Navigator developed in the
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`United States by Netscape Communications by at least 1995, as exemplified by the
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`following references and documents and subject to further discovery: (1) Peter
`APPLE’S PRELIMINARY INVALIDITY
`CONTENTIONS 5:15-CV-02008-EJD
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`Case 5:15-cv-02008-EJD Document 85-5 Filed 04/13/16 Page 6 of 39
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`Lewis, “Netscape Knows Fame And Aspires to Fortune,” The New York Times,
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`March 1, 1995; (2) Peter Kent “The Complete Idiot’s Guide to the World Wide
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`Web” (1995); (3) Andrew S. Tanenbaum, Computer Networks (1996); (4) Tony
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`McDonald et al., “Software Tools for the World-Wide Web,” University of
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`Newcastle (October 1995 - May 1996); (5) “Apple Makes Direct Internet Access
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`Quick and Easy with the Apple Internet Connection Kit,” PR Newswire, August 7,
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`1995; (6) “Netscape Unveils Netscape Navigator 1.1,” Information Today Vol. 12
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`No. 4, p. 61, April 1, 1995; (7) “Netscape Shockwave Plug-In Makes Video
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`Easier,” Newsbytes News Network, December 4, 1995; (8) Jason Snell, “The
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`Internet Becomes Multimedia-Savvy: Macromedia, Sun Nab Netscape Navigator,”
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`MacUser Vol. 11 No. 9, p. 31, September 1995; (9) Nick Wingfield, “Netscape
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`Inks Pact With Sun Macromedia,” Infoworld Vol. 17 No. 22, p. 16, May 29, 1995;
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`(10) Peter Lewis, “A Clash of Titanic Web Browsers,” The New York Times,
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`January 30, 1996; (11) Nick Wingfield, “Developers weigh Navigator against
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`Explorer,” InfoWorld, p. 43, January 29, 1996; (12) Greg R. Notes, “Comparing
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`Commercial WWW Browsers,” Online, Vol. 19 Issue 3, p. 43, May/June 95; (13)
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`“Netscape: Fifteen companies deliver first plug-ins for Netscape Navigator API,”
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`M2 Presswire, January 18, 1996. See Ex. B-9.
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`4.
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`Products, components, systems, and methods invented, designed, developed,
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`and/or in public use or on sale related to Internet Explorer developed in the
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`United States by Microsoft by at least 1995, as exemplified by the following
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`references and documents and subject to further discovery: (1) Tony McDonald et
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`al., “Software Tools for the World-Wide Web” (1996); (2) Peter Lewis, “A Clash
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`of Titanic Web Browsers,” The New York Times, January 30, 1996; (3) Richard
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`Karpinski, “OLE-Capable Browsers Coming to the Web,” CommunicationsWeek
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`586, p. 30, November 27, 1995; (4) “RealAudio Player Accompanies Internet
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`Explorer,” Multimedia Networking Newsletter 3.7, September 15, 1995; (5)
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`Richard Karpinski, “Microsoft adds to the browser – Can Internet Explorer tempt
`APPLE’S PRELIMINARY INVALIDITY
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`the Web with new extensions?” CommunicationsWeek, October 23, 1995; (6) T.C.
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`Chiang, “Internet and World Wide Web Technologies and Opportunities,”
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`Proceedings of The IEEE International Conference on Industrial Technology, 1996;
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`(7) Nick Wingfield, “Developers weigh Navigator against Explorer,” InfoWorld, p.
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`43, January 29, 1996. See Ex. B-10.
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`5.
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`Products, components, systems, and methods invented, designed, developed,
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`and/or in public use or on sale related to Encarta developed in the United States
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`by Microsoft by at least 1995, as exemplified by the following references and
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`documents and subject to further discovery: (1)“Coming Attractions:
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`Encyclopedias,” PC Mag, Dec. 22, 1992; (2) Stephen Manes, “CD-ROM Review;
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`Disks for PC: From Ameslan to 3 Simpsons,” The New York Times, Dec. 13, 1994
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`(3) David Stone, “Encarta ’96: revised content, new features at half the price,”
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`Computer Shopper, Vol. V16 No. N2, p. 216, February 1, 1996; (4) “Introducing
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`Microsoft Encarta,” Business Wire, October 12, 1992; (5) Edward Baig, “A
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`Hyperlink Feast: New CD Rom Encyclopedias,” Bloomberg Businessweek,
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`October 31, 1994; (6) Jack Schofield, “Watching Life Through The Big Windows,”
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`The Guardian, p. 19, April 15, 1993; (7) Peter Jacso, “State-of-the-Art Multimedia
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`in 1996: The ‘Big Four’ General Encyclopedias on CD-ROM,” Computers in
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`Libraries Vol. 16 No. 4, p. 26, April 1996. See Ex. B-11.
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`Apple reserves the right to identify and rely upon systems that represent different versions
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`or are otherwise related variations of the systems identified above. Apple also reserves the right
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`to rely upon any system, product, or public knowledge or use that embodies or otherwise
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`incorporates any of the prior art patents and publications listed above. Apple also reserves the
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`right to rely upon combinations of the above systems and/or references either as a single system
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`reference or for obviousness purposes, as appropriate.
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`C.
`Anticipation
`Pursuant to Patent L.R 3-3(b), Apple identifies the following prior art now known to
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`Apple to anticipate the asserted claims of the ’736 Patent under at least 35 U.S.C. §§ 102(a), (b),
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`APPLE’S PRELIMINARY INVALIDITY
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`Case 5:15-cv-02008-EJD Document 85-5 Filed 04/13/16 Page 8 of 39
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`(e), and/or (g), either expressly or inherently as understood by a PHOSITA. In some instances,
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`Apple has treated certain prior art as anticipatory where certain elements are inherently present,
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`and in particular where elements are inherently present based on Plaintiffs’ apparent claim
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`constructions in their Infringement Contentions.
`• Throckmorton anticipates claims 1-3 and 8-12.
`• Rhoads anticipates claims 1-3 and 8-12.
`• Eisen anticipates claims 1-3 and 8-12.
`• Palmer anticipates claims 1-2, 8-10, and 12.
`• Wistendahl anticipates claims 1-3 and 8-12.
`• Apple Internet Connection Kit anticipates claims 1-3 and 8-12.
`• Mosaic anticipates claims 1-3 and 8-12.
`• Netscape Navigator anticipates claims 1-3 and 8-12.
`•
`Internet Explorer anticipates claims 1-3 and 8-12.
`• Encarta anticipates claims 1-3 and 8-12.
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`D.
`Obviousness
`Pursuant to Patent L.R. 3-3(b), Apple identifies the following exemplary combinations of
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`prior art it presently intends to rely on to show that the asserted claims of the ’736 Patent are
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`obvious. In each instance, Apple contends that the identified claim is rendered obvious by the
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`identified reference or references, either alone, or in combination with the knowledge of a
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`PHOSITA. Apple’s inclusion of exemplary combinations does not preclude Apple from
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`identifying other invalidating combinations as appropriate. The exemplary combinations
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`identified below are alternatives to Apple’s anticipation and single-reference obviousness
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`contentions, and, thus, they should not be interpreted as indicating that any of the individual
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`references included in the exemplary combinations are not by themselves invalidating prior art
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`under §§ 102 and/or 103.
`1.
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`Claim 1-3 and 8-12 are rendered obvious by:
`• Throckmorton;
`• Rhoads;
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`• Eisen;
`• Palmer;
`• Wistendahl;
`• Apple Internet Connection Kit;
`• Mosaic;
`• Netscape Navigator;
`•
`Internet Explorer;
`• Encarta;
`• Throckmorton in combination with one or more of Rhoads, Eisen, Palmer,
`Wistendahl, Apple Internet Connection Kit, Mosaic, Netscape Navigator,
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`Internet Explorer, and/or Encarta;
`• Rhoads in combination with one or more of Throckmorton, Eisen, Palmer,
`Wistendahl, Apple Internet Connection Kit, Mosaic, Netscape Navigator,
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`Internet Explorer, and/or Encarta;
`• Eisen in combination with one or more of Throckmorton, Rhoads, Palmer,
`Wistendahl, Apple Internet Connection Kit, Mosaic, Netscape Navigator,
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`Internet Explorer, and/or Encarta;
`• Palmer in combination with one or more of Throckmorton, Rhoads, Eisen,
`Wistendahl, Apple Internet Connection Kit, Mosaic, Netscape Navigator,
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`Internet Explorer, and/or Encarta;
`• Wistendahl in combination with one or more of Throckmorton, Rhoads, Eisen,
`Palmer, Apple Internet Connection Kit, Mosaic, Netscape Navigator, Internet
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`Explorer, and/or Encarta;
`• Apple Internet Connection Kit in combination with one or more of
`Throckmorton, Rhoads, Eisen, Palmer, Wistendahl, Mosaic, Netscape
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`Navigator, Internet Explorer, and/or Encarta;
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`• Mosaic in combination with one or more of Throckmorton, Rhoads, Eisen,
`Palmer, Wistendahl, Apple Internet Connection Kit, Netscape Navigator,
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`Internet Explorer, and/or Encarta;
`• Netscape Navigator in combination with one or more of Throckmorton,
`Rhoads, Eisen, Palmer, Wistendahl, Apple Internet Connection Kit, Mosaic,
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`Internet Explorer, and/or Encarta;
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`•
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`Internet Explorer in combination with one or more of Throckmorton, Rhoads,
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`Eisen, Palmer, Wistendahl, Apple Internet Connection Kit, Mosaic, Netscape
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`Navigator, and/or Encarta;
`• Encarta in combination with one or more of Throckmorton, Rhoads, Eisen,
`Palmer, Wistendahl, Apple Internet Connection Kit, Mosaic, Netscape
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`Navigator, and/or Internet Explorer.
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`Apple incorporates by reference the three-paragraph legal background section in Section
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`II.D. The motivation to combine the teachings of the prior art references disclosed herein is also
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`found in the references themselves and in: (1) the nature of the problem being solved; (2) the
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`express, implied and inherent teachings of the prior art; (3) the knowledge of PHOSITAs; (4) the
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`predictable results obtained in combining the different elements of the prior art; (5) the
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`predictable results obtained in simple substitution of one known element for another; (6) the use
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`of a known technique to improve similar devices, methods, or products in the same way; (7) the
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`predictable results obtained in applying a known technique to a known device, method, or product
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`ready for improvement; (8) the finite number of identified predictable solutions that had a
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`reasonable expectation of success; and (9) known work in various technological fields that could
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`be applied to the same or different technological fields based on design incentives or other market
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`forces. See the three-paragraph legal background regarding obviousness combinations and MPEP
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`2143.
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`By the early 1990s, as the ’736 Patent specification acknowledges, providing additional
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`information related to the subject matter of a video or audio program was well known, and there
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`was an increasing demand for access to more information related to the topics in video programs
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`(’736 Patent at 1:39-43); for example, users could seek more information related to an advertised
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`product or may wish to order that product (id. at 1:56-60, 1:65-2:12). The ’736 specification
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`acknowledges that existing systems were “linked to interactive information providers” and were
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`“capable of providing interactive user access through a broadcast or cable television signal.” Id. at
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`1:1-23, 2:59-61. For example, the ’736 specification cites U.S. Patent No. 5,128,752—which
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`discloses a system for displaying product information on a television, U.S. Patent No.
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`5,285,278—which discloses a system for receiving coupon-related digital information for
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`purchasing products, and U.S. Patent No. 4,905,094—which discloses an interactive cable
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`television system for displaying products or services which may be viewed and purchased. Id. at
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`2:31-54. Throckmorton, Palmer, Wistendahl, Eisen, and Rhoads all disclose interactive systems
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`and methods for allowing viewers of a video program to access additional information related to
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`the video. See, e.g., Throckmorton at 1:27-32 (“The additional information may be in the form of
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`details on the content of the current program such as the recipe of a meal being demonstrated on a
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`cooking show or biographies of actors in a drama or historical background information on events
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`depicted in a program.”); Palmer at 12:3-7 (“A method of directing a computer to automatically
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`access information related to audio or video programming”); Wistendahl at 8:60-67 (“To
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`illustrate, upon the user clicking on the Maltese falcon, the hyperlink established in the ‘Movie
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`Trivia Info’ program can initiate a linked display of text or graphics explaining the Maltese
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`origins of the falcon in a pop-up window on the television screen, or may execute another
`program function such as initiating an Internet connection to a World Wide WebTM service which
`offers a replica of the falcon for purchase.”); Eisen at 1:42-45 (“[T]here is a need for a method
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`and apparatus which allows the insertion of footnotes in video and the ability to call-up and view
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`the footnoted source material.”); Rhoads at 58:1-4, 42-44 (“The user at the first site is then
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`presented with, for example, an order form for purchasing the product represented by the
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`object.”). Apple Internet Connection Kit, Mosaic, Netscape Navigator, Internet Explorer, and
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`Encarta, similarly disclose and embody such systems. See generally Exs. B-7 through B-11.
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`Because these references were all from the same time period, within the same technological field
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`(i.e., interactive media systems), driven by the same design incentives (e.g., how to provide
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`additional information related to a video), and motivated by the same market forces (e.g., the
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`emergence of interactive media and the Internet), it would have been obvious to one of ordinary
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`skill in the art to combine any of these references with each other.
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`Indicating to a viewer that additional information had been provided with a video program
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`was also well known. See, e.g., Throckmorton at 9:13-15 (“And by clicking on a reference, the
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`system actually connects to and retrieves the referenced information from the appropriate
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`source.”); Palmer at 6:16-28 (“In order to access any of the websites, the user need do no more
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`than select one of the URL’s which have been stored in memory.”); Wistendahl at Abstract
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`(“Selection of an object appearing in the media content with a pointer results in initiation of the
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`interactive function.”); Eisen at Abstract (“If a user/author of the video wishes to review the
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`footnoted reference, the video may be stopped and by indicating the footnote such as with a
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`mouse, the reference will be displayed in a separate window.”); Rhoads at 58:55-58 (“The icon or
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`other subtle indicia would apprise the user that the object is a hot object, carrying the embedded
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`URL address or other information that is accessible via the browser.”). See also Apple Internet
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`Connection Kit, Mosaic, Netscape Navigator, Internet Explorer, and Encarta, similarly disclose
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`and embody such systems (Exs. B-7 through B-11) and the references cited above for each
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`system. To the extent that any reference above does not explicitly disclose indicating to a viewer
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`that additional information had been provided with a video program, it would have been obvious
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`to a PHOSITA to combine any such references with references disclosing that limitation and/or
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`the knowledge of a PHOSITA, which would have included the well-established practice of
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`indicating that additional information is available. See, e.g., U.S. Patent No. 5,570,295 at 3:30-
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`33; U.S. Patent No. 5,659,366 at Abstract; U.S. Patent No. 5,701,161 at 5:31-35; U.S. Patent No.
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`4,520,392 at Abstract. Such combinations involve only applying known methods to known
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`problems to yield predictable results, or using a simple substitution of one known, equivalent
`
`element for another to obtain predictable results, and therefore would have been obvious to a
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`PHOSITA.
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`
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`As the ’736 Patent specification also acknowledges, extracting information from a video
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`signal, such as a television broadcast, was well known. Existing systems were capable of
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`“digitally encod[ing] information” within “a modified video signal of a conventional television
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`transmission” (’736 Patent at 2:23-25) and that equipment for extracting information “are well
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`known in the art and need not be described in further detail” (id. at 6:5-7). For example, the ’736
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`specification cites U.S. Patent No. 4,894,789; U.S. Patent No. 5,128,752; and U.S. Patent No.
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`5,285,278, each of which discloses receiving and decoding information transmitted with a
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`television signal. (Id. at 2:23-25.) Throckmorton, Palmer, Wistendahl, Eisen, and Rhoads each
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`disclose systems that extract information from an electronic signal. See, e.g., Throckmorton at
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`6:56-60 (“Associated data protocol manager 60 performs the function of extracting the different
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`forms of associated data from the incoming digital data stream.”); Palmer at 8:16-19 (“Just as
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`closed-captioning is extracted from the signal as an alpha-numeric message, so may the URL be
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`extracted by receiver 30 and provided to the computer.”); Rhoads at 59:41-44 (“In this regard, the
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`otherwise conventional browser 1010 is enhanced to include, for example, the capability to
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`analyze encoded bit-mapped files and extract the identification code (URL address, for
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`example).”). Moreover, the prior art specifically discloses encoding and extracting information in
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`the vertical blanking interval (VBI) of a standard television broadcast signal. See, e.g.,
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`Throckmorton at Abstract (“The system includes equipment for inserting the associated data into
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`the vertical blanking interval of the television signal.”); Palmer at 5:59-61 (“[T]he URL may be
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`embedded in the vertical blanking interval.”). See also Apple Internet Connection Kit, Mosaic,
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`Netscape Navigator, Internet Explorer, and Encarta, similarly disclose and embody such systems
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`(Exs. B-7 through B-11) and the references cited above for each system. To the extent that any
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`reference above does not explicitly disclose extracting an address or extracting an address from a
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`signal as claimed, it would have been obvious to a PHOSITA to combine any of the above
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`references with other references disclosing that limitation and/or the knowledge of a PHOSITA,
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`which, as acknowledged by the ’736 specification, included the well-established practice of
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`extracting information including addresses from a signal. Such combinations involve only
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`applying known methods to known problems to yield predictable results, or using a simple
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`substitution of one known, equivalent element for another to obtain predictable results, and
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`therefore would have been obvious to a PHOSITA.
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`Connecting users to online information using an address or link also was well known in
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`the art. The ’736 specification acknowledges that, at the time of the alleged invention, there was
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`an “explosion in the usage of online information services” using digital networks such as “the
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`Internet, Prodigy (R), America Online (R), and Compuserve (R).” ’736 Patent. at 1:34-38.
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`Indeed, Throckmorton, Palmer, Wistendahl, Eisen, and Rhoads all disclose interactive systems
`
`for connecting users to online information using an address or link. See, e.g., Throckmorton at
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`9:1-5 (“The addition of a two-way communication channel allows a consumer to also access
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`online services. In this case, associated data may consist of references such as uniform resource
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`locations (‘URL’) which are WWW page references.”); Palmer at 2:11-13 (“Preferably, the
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`address is a Universal Resource Locator and the on-line service is an Internet Service Provider
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`which provides access to a website.”); Wistendahl at 5:9-15 (“[T]he hyperlink established in the
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`‘Movie Trivia Info’ program can … execute another program function such as initiating an
`Internet connection to a World Wide WebTM service.”); Rhoads at 58:1-5 (“This embodiment of
`the invention contemplates steganographically embedding URL or other address-type information
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`directly into images, videos, audio, and other forms of data objects that are presented to a web site
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`visitor.”). See also Apple Internet Connection Kit, Mosaic, Netscape Navigator, Internet
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`Explorer, and Encarta, similarly disclose and embody such systems (Exs. B-7 through B-11) and
`
`the references cited above for each system. In addition, it would have been obvious to a
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`PHOSITA to combine any of the above references with other references disclosing that limitation
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`and/or the knowledge of a PHOSITA. It was well-known to a PHOSITA how to connect users to
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`online information through a network such as the Internet using an address and/or a link,
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`including the use of URLs. See,e.g., Tim Berners-Lee, et al., “Uniform Resource Locators
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`(URL),” IETF Networking Working Group, Request for Comments 1738, December 1994; Bryan
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`Pfaffenberger, “World Wide Web Bible” (1995) at 29-30; Lincoln D. Stein, “How to Set Up and
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`Maintain a World Wide Web Site: The Guide for Information Providers” (1995) at 176; Peter
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`Kent “The Complete Idiot’s Guide to the World Wide Web” (1995) at 193-94; Cricket Liu et al.,
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`“Managing Internet Information Services” (1994) at 285-86; Andrew S. Tanenbaum, Computer
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`Networks (1996) at 692-95; William Stallings, “Data and Computer Communications” (1994) at
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`692-95; Ed Krol, “The Whole Internet” (1994) at 315-17. Combining the references with each
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`other and/or the knowledge of a PHOSITA involves only applying known methods to known
`
`problems to yield predictable results, or using a simple substitution of one known, equivalent
`
`element for another to obtain predictable results, and therefore would have been obvious.
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`Moreover, by the 1990s, it was common practice for web browsers to use addresses and
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`links to connect users to online information. See, e.g., Greg R. Notes, “Comparing Commercial
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`WWW Browsers,” Online, Vol. 19 Issue 3, p. 43, May/June 95 at 5 (“All four browsers use the
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`same principle for moving between Web documents--clicking on the hypertext link.”). And
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`browsers also played video that could be combined with such links. See, e.g., “Netscape: Fifteen
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`companies deliver first plug-ins for Netscape Navigator API,” M2 Presswire, January 18, 1996 at
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`1-2 (“The Netscape Navigator Plug-In API allows developers to extend the functionality of
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`Netscape Navigator 2.0, available in beta on the Internet, with native support for new data types
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`and additional features. Plug-Ins appear as additional capabilities of Netscape Navigator and can
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`add mul