DOCKET NO: 5932-5
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`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`TRIAL NO: IPR2013-00571
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`ISSUED: March 13, 2012
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`
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`PATENT: 8,135,398
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`INVENTORS: TIEHONG WANG,
`NING WANG, XIMING WANG,
`TIEJUN WANG, WILLIAM E.
`HALAL
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`FILED: MAY 6, 2011
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`TITLE: METHOD AND
`APPARATUS FOR MULTIMEDIA
`COMMUNICATIONS WITH
`DIFFERENT USER TERMINALS
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,135,398 UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`
`TABLE OF CONTENTS
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`I. MANDATORY NOTICES ............................................................................. 1
`A. Real Parties-in-Interest............................................................................. 1
`B. Related Matters ........................................................................................ 1
`C. Counsel ..................................................................................................... 1
`D. Service Information ................................................................................. 2
`E. Certification of Grounds for Standing ..................................................... 2
`II. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 2
`III. CLAIM CONSTRUCTION ............................................................................ 3
`IV. OVERVIEW OF THE ‘398 PATENT ............................................................ 4
`V.
`THE CHALLENGED CLAIMS
`ARE UNPATENTABLE ................................................................................. 6
`VI. SPECIFIC GROUNDS FOR PETITION ....................................................... 8
`A. Ground 1: Palin Anticipates Challenged
`Claims 15, 57 and 60-62 ........................................................ 9
`B. Ground 2: Karaoguz Anticipates Challenged
`Claims 15, 57, 61 and 62 ..................................................... 10
`C. Ground 3: Challenged Claims 15, 57 and 60-62
`are Obvious over Palin in view of Karaoguz ....................... 12
`D. Ground 4: Challenged Claims 58 and 63 are
`Obvious in view of Seaman ................................................. 13
`E. Motivations to Combine ........................................................................ 15
`1. Mobile/Wireless Terminal is a Cellular Phone ................................ 15
`2. Providing the Converted Signal through
`HDMI and Encoding the Video Signal
`According to HDMI Requirements .................................................. 15
`3. The Converted Video Signal Comprises
`a High Definition Digital Format ..................................................... 16
`4. Receiving a Multimedia Content Item
`Originated from a Source Located Outside
`a Designated Location and Destined for a Destination
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`Device Located within the Designated Location .............................. 17
`5. Converting the Multimedia Content Item
`for Reproduction According to a Determined
`Signal Format .................................................................................... 18
`6. Sending Comprises Establishing a Predetermined
`Channel and Transporting via the Predetermined
`Channel ............................................................................................. 19
`7. Managing a Communication Path Including
`Initiating the Communication Path and Engaging
`in an Authentication Procedure ....................................................... 20
`8. The Destination Device to Display the Multimedia
`Content Item in Conjunction with a Navigational
`Command to the Destination Device for the
`Predetermined Channel ..................................................................... 21
`9. Predetermined Processing Category ................................................. 22
`F. Claim Charts .......................................................................................... 23
`VII. CONCLUSION .............................................................................................. 58
`Certificate of Service ............................................................................................... 60
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`TABLE OF AUTHORITIES
`
`
`FEDERAL STATUTES
`Page(s)
`35 U.S.C. § 102 .......................................................................................................... 3
`35 U.S.C. § 102(e) ......................................................................................... 9, 10, 13
`35 U.S.C. § 103 .......................................................................................................... 3
`35 U.S.C. § 314(a) ..................................................................................................... 3
`
`
`RULES
`Rule 42.22(a)(1) ......................................................................................................... 2
`Rule 42.104(a) ............................................................................................................ 2
`Rule 42.104 (b)(1)-(2) ................................................................................................ 2
`
`
`REGULATIONS
`37 C.F.R. § 42.100(b) ................................................................................................ 3
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`iii
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`Exhibit
`
`EXHIBIT LIST
`
`Description
`
`1001
`
`U.S. Patent No. 8,135,398
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`1002
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`U.S. Patent 7,580,005 (“Palin”)
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`1003
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`U.S. Patent No. 8,028,093 (“Karaoguz”)
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`1004
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`1005
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`U.S. Patent Publication No. 2004/0223614 (“Seaman”)
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`Declaration of Dr. Kevin C. Almeroth Concerning
`
`U.S. Patent No. 8,135,398 (with Appendices A-F)
`
`1006
`
`Defendants’ Opening Claim Construction Brief (Virginia Innovation
`
`Sciences, Inc. v. Samsung Electronics Co., Ltd.; Samsung Electronics
`
`America, Inc.; Samsung Telecommunications America LLC (Civil
`
`Action No. 2:12-cv-00548-MSD-DEM) (E.D. Va.))
`
`1007
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`Defendants’ Reply Claim Construction Brief (Redacted) (Virginia
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`Innovation Sciences, Inc. v. Samsung Electronics Co., Ltd.; Samsung
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`Electronics America, Inc.; Samsung Telecommunications America LLC
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`(Civil Action No. 2:12-cv-00548-MSD-DEM) (E.D. Va.))
`
`1008
`
`Summary of Application of Prior Art to Claims
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`
`
`
`
`iv
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`I. MANDATORY NOTICES
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`A. Real Parties-in-Interest
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`Samsung Electronics Co., Ltd. (“Petitioner”), Samsung Electronics America,
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`Inc., and Samsung Telecommunications America LLC are the real parties-in-
`
`interest.
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`B. Related Matters
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`U.S. Patent No. 8,135,398 (“the ‘398 patent,” Ex. 1001) is owned by Virginia
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`Innovation Sciences, Inc. (“Patent Owner”) and is currently being asserted by
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`Patent Owner in the litigation Virginia Innovation Sciences, Inc. v. Samsung
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`Electronics Co., Ltd.; Samsung Electronics America, Inc.; Samsung
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`Telecommunications America LLC (Civil Action No. 2:12-cv-00548-MSD-DEM)
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`(E.D. Va.) (“the litigation”). The original Complaint in the litigation was filed on
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`October 4, 2012 and served on October 23, 2012.
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`Petitioner is also seeking inter partes review of related U.S. Patents Nos.
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`7,899,492; 8,050,711; 8,145,268; and 8,224,381; and requests that they be assigned
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`to the same Board for administrative efficiency.
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`In addition, Petitioner notes that U.S. Patent Application No. 13/370,483
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`claims the benefit of the priority of the filing date of the ‘398 patent.
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`C. Counsel
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`Lead Counsel: Joseph S. Presta (Registration No. 35,329).
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`Backup Counsel: Updeep S. Gill (Registration No. 37,334).
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`D. Service Information
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`Email: jsp@nixonvan.com; usg@nixonvan.com
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`Post and Hand Delivery: Nixon & Vanderhye, P.C., 901 North Glebe Road,
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`11th Floor, Arlington, Virginia 22203
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`Telephone: 703-816-4000; Facsimile: 703-816-4100
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`E. Certification of Grounds for Standing
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`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
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`review is sought is available for inter partes review and that Petitioner is not
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`barred or estopped from requesting an inter partes review challenging the patent
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`claims on the grounds identified in this Petition.
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`II. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
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`Pursuant to Rules 42.22(a)(1) and 42.104 (b)(1)-(2), Petitioner challenges
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`claims 15, 57, 58 and 60-63 of the ‘398 patent (“the challenged claims”) as
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`anticipated and/or obvious in view of the following patents:
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` “Palin,” U.S. Patent No. 7,580,005, entitled “Display Change Between
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`Mobile Terminal Display And External Device Display,” filed August 15, 2000
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`(Ex. 1002);
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` “Karaoguz,” U.S. Patent No. 8,028,093, entitled “Media Processing
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`System Supporting Adaptive Digital Media Parameters Based on End-User
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`Viewing Capabilities,” filed September 30, 2003 (Ex. 1003);
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` “Seaman,” U.S. Patent Application Publication No. 2004/0223614, entitled
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`“Secure Video Receiver,” filed May 8, 2003 (Ex. 1004).
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`As explained below, the above-cited patents create a reasonable likelihood
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`that Petitioner will prevail with respect to at least one of the challenged claims. 35
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`U.S.C. § 314(a). The claim charts below and the Declaration of Kevin C.
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`Almeroth, a Professor in the Department of Computer Science at the University of
`
`California, Santa Barbara, (Ex. 1005) demonstrate that all of the challenged claims
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`are unpatentable as anticipated under § 102 by and/or obvious under § 103 in view
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`of the cited patents.1
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`Petitioner requests as relief that each challenged claim of the ‘398 patent be
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`canceled as unpatentable under 35 U.S.C. §§ 102 and/or 103.
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`III. CLAIM CONSTRUCTION
`
`For purposes of this Inter Partes Review, all claim terms should be given their
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`“broadest reasonable construction in light of the specification.” 37 C.F.R.
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`§ 42.100(b).
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`However, it is noted that in the litigation involving the ‘398 patent, the
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`Petitioner and Patent Owner have proffered certain claim constructions for the ‘398
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`1 Charts for claim 55 are provided to demonstrate that the cited prior art references
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`satisfy all requirements of claims 57 and 58, which depend from claim 55.
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`patent for purposes of the litigation (but the court in the litigation has not yet
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`construed the claim terms). See Ex. 1005 ¶ 185; Exs. 1006-1007.
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`IV. OVERVIEW OF THE ‘398 PATENT
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`The ‘398 patent, entitled “Method And Apparatus For Multimedia
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`Communications With Different User Terminals,” was filed on May 6, 2011 and
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`issued on March 13, 2012.2 The ‘398 patent relates to transporting a multimedia
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`content item that is destined for a destination device via a predetermined channel.
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`Challenged claims 15, 57, 58 and 60-63 generally recite an apparatus for
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`conversion and routing of content to devices with differing communications
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`protocols with: a processor, a memory storing code to perform: receiving a
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`multimedia content item; determining a communications protocol, signal format,
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`and address for the destination device; converting the multimedia content item and
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`2 The ‘398 patent was filed as U.S. Appln. No. 13/067,079 on May 6, 2011 as a
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`continuation of U.S. Patent No. 7,957,733 (“the ‘733 Patent”). The ‘733 Patent
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`was filed on May 22, 2007 as a continuation-in-part of U.S. Patent Nos. 7,603,131;
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`7,899,492; and U.S. Patent No. 7,647,024 (filed August 10, 2006; June 24, 2005;
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`and October 2, 2006, respectively). The ‘398 patent also claims priority to
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`Provisional Appln. Nos. 60/787,510; 60/707,561; 60/588,358; 60/722,444;
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`60/832,962; and 60/899,037 (filed March 31, 2006; August 12, 2005; July 16,
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`2004; October 3, 2005; July 25, 2006; and February 2, 2007, respectively).
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`routing it to the destination device; sending the content to the destination device by
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`establishing a predetermined channel; transporting the multimedia content item to
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`the destination device via the predetermined channel; and directing the destination
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`device to display the multimedia content.
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`During prosecution, all claims of the application were rejected as obvious
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`based on combinations of various prior art references. After an interview with the
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`Examiner, the applicant amended claims 1, 7, and 10, canceled claims 11-22 and
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`added 83 claims (claims 23-105). The independent claims were amended as
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`follows.
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`wherein the sending comprises establishing a predetermined channel
`with the destination device, and transporting the multimedia content to
`the destination device via said predetermined channel in order for the
`destination device to display the multimedia content, and wherein the
`destination device is a television, and wherein the sending comprises:
`establishing a predetermined channel operatively in communication
`with the destination device,
`and transporting the multimedia content item to the destination device
`via said predetermined channel,
`for the destination device to display the multimedia content item in
`conjunction with a navigational command to the destination device for
`the predetermined channel.
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`On January 31, 2012, the PTO issued a Notice of Allowance for claims 1-10 and
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`23-105. In the Notice of Allowance, the Examiner stated that “[n]either Cohen or
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`Kim, separately or in combination disclose the particular limitation of establishing
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`a predetermined channel operatively in combination with the destination in a home
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`location, in conjunction with a navigation command to the destination for the
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`predetermined channel, inter alias.”
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`V. THE CHALLENGED CLAIMS ARE UNPATENTABLE
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`The ‘398 patent purports to solve “problems with the delivery of Internet
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`content through cellular phones. For example, even with the high bandwidth
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`connection provided by advanced cellular Systems, there remains a bottleneck
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`between the Internet and the cellular network (CN), as well as delays caused by the
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`Internet itself.” ‘398 patent, 1:56-61. According to the ‘398 patent, “[w]hat is
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`needed is a solution to the problem of diminished user enjoyment of the various
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`devices and corresponding content that a user may enjoy due to the complications
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`of trying to manage content and interface with a variety of different devices that
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`are not necessarily compatible.” Id., 3:9-13. The solution proposed by the ‘398
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`patent, however, had already been recognized in the prior art. For example, Palin
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`discloses that “currently available mobile terminals are limited because of the size,
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`… users would not enjoy watching … video on such a display.” Palin, 1:21-28.
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`The figures of the two patents reflect the overlap in the solutions they propose.
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`
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`Palin
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`‘398 Patent
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`
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`Although the ‘398 patent purports to solve the limited screen size problem by
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`converting and providing the video signal to an alternative (e.g., external) display
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`system, (‘398 patent, 15:36-64, 16:59 to 17:13), Palin had already arrived at the
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`same solution. Palin teaches transmitting a video received by a “mobile device,
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`such as a mobile phone, laptop computer, or personal digital assistant (PDA)” with
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`certain display capabilities to “another display device, like a television apparatus,”
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`with different display capabilities. Palin at 2:16-32. The ‘398 patent further
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`discloses receiving and converting the multimedia content item and routing it to
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`the destination device; sending the content to the destination device by establishing
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`a predetermined channel; transporting the multimedia content item to the
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`destination device via the predetermined channel; and directing the destination
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`device to display the multimedia content. Here, too, however, Palin had already
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`taught transporting the multimedia content item to the destination device via the
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`predetermined channel (e.g., Bluetooth); and directing the destination device to
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`display the multimedia content. E.g., Palin, Fig 5 and associated text. Further, as
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`discussed below, Palin is not alone in its overlap with the ‘398 patent.
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`In addition, Karaoguz discloses “a media exchange network comprising an
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`architecture to support adaptive digital media parameters” including, “for example,
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`resolution content, display size, and color/grey-scale content.” Karaoguz, 3:53-
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`4:10. The media exchange network may include two communication devices in
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`which the “second communications device may receive a device profile relating to
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`the first communications device, adapt media content based upon the device profile
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`of the first communications device, and send the adapted media content to the first
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`communications device.” Id., Abstract, Fig. 1. Karaoguz also discusses the use of
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`specialized channels for communicating multimedia content among devices. E.g.,
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`id., 8:8-14.
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`VI. SPECIFIC GROUNDS FOR PETITION
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`The specific grounds for this petition are set forth below.3 Petitioner also
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`submits herewith the Declaration of Dr. Kevin C. Almeroth (Ex. 1005), which
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`3 Exhibit 1008 provides a summary of how cited prior art is applied to the
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`challenged claims in this Petition.
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`confirms those specific grounds for unpatentability.4
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`A. Ground 1: Palin Anticipates Challenged Claims 15, 57 and 60-62
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`Palin was filed on August 15, 2000 and issued on August 25, 2009. It
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`therefore qualifies as prior art to the ‘398 patent under § 102(e). Palin was neither
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`cited nor considered by the Examiner during prosecution of the ‘398 patent.
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`Entitled “Display Change Between Mobile Terminal Display and External
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`Device Display,” Palin discloses a system “for
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`transmitting an image from a first display device
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`having certain display capabilities to a second
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`display device having different display
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`capabilities.” Palin, Abstract. As shown in figure 1, embodiments of Palin
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`describe transmitting an image from a “mobile device, such as a mobile phone,
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`4 A person of ordinary skill in the art of the ‘398 patent would have (1) the
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`equivalent of a four-year degree from an accredited institution (usually denoted as
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`a B.S. degree) in computer science, computer engineering or the equivalent; (2) a
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`working knowledge of wireless networking and video transcoding technologies;
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`and (3) at least two years of experience in related hardware/software analysis,
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`design, and development. Additional graduate education could substitute for
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`professional experience, while significant experience in the field might substitute
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`for formal education. Ex. 1005 ¶ 118-20.
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`laptop computer, or personal digital assistant (PDA)” with certain display
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`capabilities to a “another display device, like a television apparatus” having
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`different capabilities. Id., 2:16-32. Palin “concentrates on providing better display
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`quality to a user of a mobile device.” See id.
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`As demonstrated by the claim charts below, Palin anticipates each of claims
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`15, 57 and 60-62 of the ‘398 patent. See also Ex. 1005 ¶¶ 186-88, 194-95. For
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`example, Palin discloses: data to be displayed on the second display device is
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`reformatted at the first display device; a mobile device, such as a mobile phone,
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`laptop computer, or personal digital assistant (PDA), which receives video signals
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`from a cellular network; image data that is destined for the second display device
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`and that is received by the mobile terminal comprises data to be ultimately
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`reassembled into an image that can be displayed on a display on the mobile device;
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`a “splitting application” that enables the handling and splitting of the different data
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`frames and a Bluetooth protocol stack for processing signals into Bluetooth
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`compliant packets (both of these operations change the video signal); and
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`establishing a predetermined channel and transporting the multimedia content item
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`to the destination device (e.g., Bluetooth).
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`B. Ground 2: Karaoguz Anticipates Challenged
`Claims 15, 57, 61 and 62
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`Karaoguz was filed on September 30, 2003 and issued on September 27,
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`2011. It thus is prior art to the ‘398 patent under § 102(e). Karaoguz was neither
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`cited nor considered by the Examiner during prosecution of the ‘398 patent.
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`Entitled “Media Processing System Supporting Adaptive Digital Media
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`Parameters Based On End-User Viewing Capabilities,” Karaoguz discloses “a
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`media exchange network comprising an architecture to support adaptive digital
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`media parameters” including, “for example, resolution content, display size, and
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`color/grey-scale content.” Id., 3:53-4:10. As shown below in Figure 1,
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`Karaoguz’s media exchange network may include two communication devices in
`
`which the “second communications device may receive a device profile relating to
`
`the first communications device, adapt media content based upon the device profile
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`of the first communications device, and send the adapted media content to the first
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`communications device.” Id., Abstract.
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`Furthermore, Karaoguz discloses: end-user devices (e.g., a PDA, an MPS
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`with a TV display, a PC with a monitor, etc.) may have different capabilities based
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`on certain digital media parameters; media content may be transferred from one
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`user to another in a channelized manner; various communications devices coupled
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`to a network that adapt media content based upon the received device profile, and
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`send the adapted media content to the network; a source device (e.g., a PC or an
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`MPS) on a media exchange network may have knowledge of the device
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`capabilities of an end-user or a destination device (e.g., a PC or an MPS) and may
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`ensure that the digital parameters of media content sent from the source device to
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`the end user are consistent with the device capabilities of the end-user; and a media
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`source device receives a device capability profile from an end-user device, adapts
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`digital parameters of media content in a channel associated with the end-user
`
`device based on the information in the device capability profile to generate adapted
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`media content in the channel, and pushes the channel to the end-user device via the
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`media exchange network.
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`As demonstrated by the claim charts below, Karaoguz anticipates each of
`
`claims 15, 57, 61 and 62 of the ‘398 patent. See also Ex. 1005 ¶¶ 189-91, 194-95.
`
`C. Ground 3: Challenged Claims 15, 57 and 60-62
`are Obvious over Palin in view of Karaoguz
`
`It also would have been obvious to modify Palin to by combining it with
`
`another reference such as Karaoguz. Doing so would likewise result in an
`
`apparatus having all limitations recited in claims 15, 57, 60, 61 and 62 of the ‘398
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`patent.
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`A combination of Palin and Karaoguz would have been desirable. The
`
`modification of Palin in view of Karaoguz would constitute the application of a
`
`known technique to a known device, ready for improvement, to yield predictable
`
`results, and therefore it would have been obvious to a person of ordinary skill in
`
`the art. Indeed, Karaoguz is directed to the same technology (i.e., distribution of
`
`video content amongst networked computing devices), and the products disclosed
`
`therein (e.g., PDA devices) address the same needs particularized for those devices
`
`and with complementary solutions. Accordingly, it would have been predictable
`
`for a person of ordinary skill in the art to produce a device that includes a
`
`combination of features from Palin and Karaoguz. Ex. 1005 ¶¶ 186-91, 194-214;
`
`see also id. ¶¶ 45-117.
`
`D. Ground 4: Challenged Claims 58 and 63 are
`Obvious over Palin in view of Seaman
`
`It would have been obvious to modify Palin by combining it with another
`
`reference such as Seaman. Ex. 1004. Doing so would likewise result in an
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`apparatus having all limitations recited in claims 58 and 63 of the ‘398 patent.
`
`Seaman was filed on May 8, 2003 and published on November 11, 2004. It
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`thus qualifies as prior art to the ‘398 patent at least under § 102(e). Seaman was
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`neither cited nor considered by the Examiner during prosecution of the ‘398 patent.
`
`Entitled “Secure Video Receiver,” Seaman discloses “a small dedicated
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`device” that is “capable of delivering a video on demand feed to the input of a
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`TV,” able to process compression formats “such as MPEG-2, MPEG-3, MPEG-4
`
`etc,” and output display formats including “NTSC, PAL, SECAM, HDTV, SDTV,
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`RGB, YcbCr, YpbPr, S-Video, CVBS, SDI, HDMI, and DVI.” Seaman ¶¶ 11, 12
`
`and 47. One embodiment is shown in the block diagram of Figure 1, reproduced
`
`below:
`
`
`
`A combination of Palin and Seaman would have been desirable. The
`
`modification of Palin in view of Seaman would constitute the application of a
`
`known technique to a known device, ready for improvement, to yield predictable
`
`results, and therefore it would have been obvious to a person of ordinary skill in
`
`the art. Indeed, Seaman is directed to the same technology (i.e., distribution of
`
`video content amongst networked computing devices), and the products disclosed
`
`therein (i.e., mobile devices, cellular phones) address the same needs particularized
`
`for those devices and with complementary solutions. Accordingly, it would have
`
`been predictable for one skilled in the art to produce a device that includes a
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`combination of features from Palin and Seaman. Ex. 1005 ¶¶ 186-88, 194-214; see
`
`also id. ¶¶ 45-117.
`
`E. Motivations to Combine
`
`1. Mobile/Wireless Terminal is a Cellular Phone
`
`A person of ordinary skill in the art would have been motivated to combine
`
`prior art references that disclose a mobile device that is a cellular phone. Mobile
`
`devices that were or were not cellular phones were well known as of at least the
`
`early 2000s. Using a mobile device with cellular capability, i.e., a cellular phone,
`
`as the device in the challenged claims would have been obvious. Receiving
`
`content via a specific delivery class of technology (i.e., a cellular protocol) would
`
`have been obvious given that it was one of the myriad ways in which mobile
`
`devices could receive content. Further, integrating the capability to receive content
`
`via cellular protocol in a mobile device would not have required a person of
`
`ordinary skill in the art undue experimentation given that the technology was well
`
`understood and numerous devices existed that already included the functionality.
`
`One skilled in the art would have a high degree of success in combining the prior
`
`art references to develop the claimed technology. Ex. 1005 ¶¶ 197-98; see also id.
`
`¶¶ 45-117.
`
`2. Providing the Converted Signal through HDMI and Encoding
`the Video Signal According to HDMI Requirements
`
`
`
`
`A person of ordinary skill in the art would have been motivated to combine
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`prior art references that disclose HDMI for output to an alternative display
`
`terminal. Converting a video signal into an HDMI formatted signal and/or then
`
`delivering that signal over an HDMI cable would have been obvious to a person of
`
`skill in the art. For prior art references that disclose the use of a signal format
`
`other than HDMI, it would have been obvious to use HDMI in addition to or in
`
`place of that signal format. Given the capabilities of HDMI and increasing interest
`
`and use of that technology in the timeframe leading up to the filing of the ‘398
`
`patent, a person of ordinary skill in the art would have been motivated to use it as
`
`an alternative display format. Given that the features and limitations of using
`
`HDMI would have been well understood to a person of ordinary skill in the art and
`
`the industry was already moving towards mandatory usage of HDMI in televisions,
`
`such a person would have been motivated to use it as an alternative to other
`
`technologies. Implementing the use of HDMI would not have required undue
`
`experimentation for one skilled in the art; HDMI and how to use it for delivery of
`
`video signals was knowledge that one skilled in the art would have possessed. One
`
`skilled in the art would have a high degree of success in combining the prior art
`
`references to develop the claimed technology. Ex. 1005 ¶¶ 199-200; see also id.
`
`¶¶ 45-117.
`
`3. The Converted Video Signal Comprises
`a High Definition Format
`
`
`
`
`Converting a video signal into a high definition format would have been
`
`- 16 -
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`obvious to a person of skill in the art. For prior art references that disclose the use
`
`of a signal format other than a high definition format, it would have been obvious
`
`to instead use a high definition format. Given the capabilities and features of high
`
`definition formats, and the increasing interest in high definition content leading up
`
`to the filing of the ‘398 patent, one skilled in the art would have been motivated to
`
`use one as an alternative display format because the industry was already moving
`
`toward widespread adoption of high definition capable televisions. Given that the
`
`features and limitations of using high definition formats would have been well
`
`understood to one skilled in the art, such a person would have been motivated to
`
`use it as an alternative to other technologies. Implementing the use of high
`
`definition formats would not have required one skilled in the art undue
`
`experimentation given that high definition formats and how to use them for video
`
`signals was knowledge that would have been possessed by one skilled in the art.
`
`One skilled in the art would have a high degree of success in combining the prior
`
`art references to develop the claimed technology. Ex. 1005 ¶¶ 201-02; see also id.
`
`¶¶ 45-117.
`
`4. Receiving a Multimedia Content Item Originated from a
`Source Located Outside a Designated Location and Destined for
`a Destination Device Located within the Designated Location
`
`
`Receiving a multimedia content item that originated from a source located
`
`outside a designated location would have been obvious. A person of ordinary skill
`
`- 17 -
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`Petition for Inter Partes Review of U.S. Patent No. 8,135,398
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`in the art would be motivated to combine prior art references that disclosed
`
`converting multimedia content with receiving content from outside a designated
`
`location, e.g., a cellular or wireless network or the Internet. One skilled in the art
`
`would have understood that receiving content from outside a designated location
`
`would have been preferred in at least some situations when the goal was to gain
`
`access to many sources of multimedia content including online sources with the
`
`flexibility of any-time, anywhere access. Given there are only two locations (i.e.,
`
`with a designated location and outside a designated location), it would have been
`
`obvious and desirable to receive content from either location. Receiving content
`
`from outside a designated location would not have required one skilled in the art
`
`undue experimentation given that content distribution via the Internet and online
`
`sources was well known and within the knowledge of one skilled in the art.
`
`Assuming the reference to “designated location” translates to a difference in
`
`geographic location, there are few if any technical challenges for one skilled in the