`
`Filed on behalf of: OpenTV Inc..
`
`
`
`
`
`By: Erika H. Arner
`Joshua L. Goldberg
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`E-mail: erika.arner@finnegan.com
`
`joshua.goldberg@finnegan.com
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`NETFLIX, INC.
`Petitioner
`
`v.
`
`OPENTV, INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2014-00252
`
`Patent 8,107,786
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`DECLARATION OF DR. CHARLES A. ELDERING
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`QUALIFICATIONS ........................................................................................ 2
`
`III. MATERIALS REVIEWED ............................................................................ 3
`
`IV. OVERVIEW OF THE TECHNOLOGY ......................................................... 3
`
`A.
`
`
`
`B.
`
`
`
`Technology Background ....................................................................... 3
`
`Overview of the ’786 Patent .................................................................. 4
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 6
`
`VI. OPINIONS RELATED TO INSTITUTED GROUNDS OF REVIEW ......... 7
`
`A.
`
`
`
`B.
`
`
`
`C.
`
`
`
`Claim Construction ............................................................................... 7
`
`Applying This Claim Construction, Plotnick Does Not Disclose
`Every Feature of Claims 1-6 ............................................................... 17
`
`Plotnick In View of Eldering Does Not Render Claim 7
`Obvious ............................................................................................... 27
`
`VII. OPINIONS RELATED TO CONTINGENT MOTION TO AMEND ......... 28
`
`A.
`
`
`
`B.
`
`
`
`C.
`
`
`
`D.
`
`
`
`Claim Construction ............................................................................. 29
`
`Support in the Patent Application for the Substitute Claims .............. 31
`
`The Prior Art Does Not Disclose “the receiving device to utilize
`the secondary information to generate or access secondary non-
`derivative content in order to render secondary non-derivative
`content to the output device instead of the primary content” ............. 33
`
`It would Not Have Been Obvious to receive and use secondary
`information to generate or access secondary non-derivative
`content ................................................................................................. 37
`
`VIII. CONCLUSION .............................................................................................. 40
`
`
`
`i
`
`

`

`I, Dr. Charles A. Eldering, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by OpenTV, Inc. (“OpenTV” or “Patent Owner”)
`
`as an independent expert consultant in this proceeding before the United States
`
`Patent and Trademark Office. Although I am being compensated at my usual rate
`
`of $425.00 per hour for the time I spend on this matter, no part of my
`
`compensation depends on the outcome of this proceeding, and I have no other
`
`interest in this proceeding.
`
`2.
`
`I understand that this proceeding involves U.S. Patent No. 8,107,786
`
`(“the ’786 patent”) (Ex. 1001). I understand that the application for the ’786 patent
`
`was filed on August 31, 2006, as U.S. Patent Application No. 11/469,195
`
`(“the ’195 application”), and the patent issued on January 31, 2012. Ex. 1001. I
`
`also understand that the ’786 patent is assigned to OpenTV.
`
`3.
`
`I have been asked to consider whether certain references disclose or
`
`suggest the features recited in the claims of the ’786 patent.
`
`4.
`
`I have also been asked to consider the state of the art and the prior art
`
`available as of August 31, 2006. In particular, I have been asked to consider the
`
`systems and methods in the ’786 patent for modifying the playout or playback of
`
`primary content and compare these systems and methods to the prior art available
`
`as of August 31, 2006. I have also compared the systems and methods of proposed
`
`
`
`1
`
`

`

`substitute claims 8-14 in Patent Owner’s Contingent Motion to Amend to the prior
`
`art as of that same date. My opinions are provided below.
`
`II. QUALIFICATIONS
`
`5.
`
`I received a B.S. from Carnegie Mellon University in Physics, a M.S.
`
`from Syracuse University in Solid State Science and Technology, and a Ph.D in
`
`Electrical Engineering. My curriculum vitae, which includes a more detailed
`
`summary of my background, experience, patents and publications, is attached as
`
`Appendix A.
`
`6.
`
`I have been involved in fiber optic and cable based
`
`telecommunications systems for over 20 years. As detailed below, based on my
`
`experience at Telecom Partners Limited, a company that I founded where I
`
`developed a comprehensive system design for a television targeted advertising
`
`system; my experience at Expanse Networks, Inc., another company that I founded
`
`where I worked extensively on developing initial system prototypes and products
`
`for targeted television advertising which included head-end equipment for inserting
`
`ads, subscriber profiling equipment in the set-top box, and features for providing
`
`alternative advertisements when users attempted to fast-forward through an
`
`advertisement from 2000-2003; and my experiences at General Instrument, where I
`
`was involved in CATV system design and development, all of which were prior to
`
`
`
`2
`
`

`

`the August 31, 2006 priority date of the ’786 patent, I meet the requirements for a
`
`hypothetical person of ordinary skill in the art.
`
`7.
`
`I am not an attorney and offer no legal opinions, but in the course of
`
`my work, including my work as a patent agent, I have had experience studying and
`
`analyzing patents and patent claims from the perspective of a person skilled in the
`
`art, and have developed patent portfolios. I have previously served as a patent
`
`analyst and research consultant and am a named inventor on at least 20 patents in
`
`the general area of areas of targeted advertising and presenting alternative
`
`advertisements upon fast forwarding, with others pending.
`
`III. MATERIALS REVIEWED
`
`8.
`
`In forming my opinions, I have reviewed the ’786 patent, the
`
`prosecution history of the ’786 patent, and the documents listed in Appendix B.
`
`IV. OVERVIEW OF THE TECHNOLOGY
`
`A.
`
` Technology Background
`
`9.
`
`Before the ’786 patent, the prior art recognized digital video recording
`
`technology as a disruptive technology that gave program content viewers the
`
`ability to fast forward or skip advertisements in a recorded program. Ex. 1003
`
`(Plotnick), Ex. 2010 (Unger), Ex. 2007 (Barton). The prior art combatted this
`
`disruptive technology by providing systems in which digital video recorders
`
`(“DVRs”) stored advertisements that could be displayed to a user instead of an
`
`
`
`3
`
`

`

`intended advertisement if a user fast forwarded through the intended advertisement.
`
`See, e.g., Ex. 1003, Ex. 2009 (Krapf), Ex. 2010 (Unger).The prior art alternatively
`
`disclosed targeted advertising systems in which rules to select advertisements
`
`based on user preferences, advertisements, or both, were stored on digital video
`
`recorders. See generally, e.g., Ex. 1003; Ex. 2008 (Rosenberg); Ex. 1004
`
`(Eldering). In these targeted advertising systems, the hope was that by selecting an
`
`advertisement based on user preferences, the user would not fast forward through
`
`the advertisement. These prior art solutions were designed to deal with viewers fast
`
`forwarding through advertisements on digital video recorders and leveraged the
`
`vast storage capacity of DVRs, which often included 10 to 30 GB hard disk drives.
`
`Ex. 2009 (Krapf); Ex. 2007 (Barton).
`
`B.
`
` Overview of the ’786 Patent
`
`10. The ’786 patent relates to systems and methods for modifying playout
`
`or playback of primary content. Ex. 1001 at col. 1, ll. 7-6. In particular, the ’786
`
`patent relates to systems and methods for responding to a trick mode request, such
`
`as a request to fast forward through the primary content. When a trick mode
`
`request is made, the receiving device responds by rendering secondary content on
`
`an output device. Id. at Abstract. A real world example of this might be a viewer
`
`fast forwarding through a commercial, and a set-top box responding by displaying
`
`a different commercial on the viewer’s television. In some embodiments of the
`
`
`
`4
`
`

`

`’786 patent, the receiving device uses secondary information to render the
`
`secondary content, while in other embodiments the receiving device renders
`
`secondary content to an output device directly, without using any other
`
`information. Compare id. at col. 4, ll. 13-36 with id. at col. 4, ll. 43-46.
`
`11.
`
`In embodiments where the receiving device uses the secondary
`
`information to render the secondary content, the secondary information, rather than
`
`the secondary content, is communicated to the receiving device. See, e.g., Ex.
`
`1001 at col. 14, ll. 44-46 (“the communication module 38 may communicate the
`
`entertainment application 68 [i.e., the secondary information] to the receiving
`
`device.”). In these embodiments, the secondary content is to generate or access
`
`secondary content. See, e.g., Ex. 1001 at Fig. 8, col. 14, l. 13-col. 15, l. 26; col. 25,
`
`l. 55-col. 30, l. 26. Communicating secondary information instead of the
`
`communicating the secondary content itself results in much less information being
`
`sent and stored on the receiving device because the secondary content can be
`
`located anywhere, even at locations remote from the receiving device. See, e.g., Ex.
`
`1001 at col. 27, ll. 50-56. This allows the secondary information to access content
`
`on a variety of remote devices, including a streaming server, which would in turn,
`
`allow the receiving device to be a device with limited storage capacity and/or
`
`limited processing power. Id.
`
`
`
`5
`
`

`

`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`12.
`
`I agree with Mr. Kramer, Netflix’s declarant, that one of ordinary skill
`
`in the art for the ’786 patent would have “(i) a B.S. degree in Electrical
`
`Engineering or equivalent training, and (ii) approximately three years of direct
`
`experience in developing subscriber television solutions and technologies.” Ex.
`
`1003 at ¶ 11. I meet this definition through my experiences from 1998-2003, both
`
`at Telecom Partners Limited and Expanse Networks, where I developed a
`
`comprehensive system design for a television targeted advertising system and later
`
`prototyped the system and worked extensively on initial products for targeted
`
`television advertising which included head-end equipment for inserting ads,
`
`subscriber profiling equipment in the set-top box, and features for providing
`
`alternative advertisements when users attempted to fast-forward through an
`
`advertisement. My prior experiences at General Instruments from 1993-1995,
`
`where I investigated how to create a robust return channel on the cable system and
`
`on the integration of phone and data services in the cable set-top box also illustrate
`
`that I meet this definition. Accordingly, I have used this definition in my analysis
`
`below.
`
`
`
`6
`
`

`

`VI. OPINIONS RELATED TO INSTITUTED GROUNDS OF REVIEW
`
`A.
`
` Claim Construction
`
`13.
`
`I have been advised that the first step of assessing the validity of a
`
`patent claim is to interpret or construe the meaning of the claims.
`
`14.
`
`I have been advised that in inter partes review proceedings before the
`
`U.S. Patent and Trademark Office, an unexpired patent claim receives the broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears. I have also been advised that, in applying the broadest reasonable
`
`construction, (i) all the limitations of a claim must be given meaning and (ii) the
`
`prosecution history may be used in interpreting claims under the broadest
`
`reasonable construction standard. I have been informed that the construction of a
`
`patent claim applied during this proceeding may differ from that in a district court
`
`proceeding.
`
`15.
`
`I have followed these claim-construction principles in my analysis of
`
`the meaning of the term “secondary information.”
`
`16.
`
`It is my opinion that the broadest reasonable construction for the term
`
`“secondary information,” which appears in independent claims 1, 4, and 7, is
`
`“information to generate secondary content or information to access secondary
`
`content.” This construction is consistent with the plain language of the claims, the
`
`specification and the prosecution history of the ’786 patent.
`
`
`
`7
`
`

`

`1. The Plain Language of the Claims
`
`
`
`17.
`
`It is my opinion that a person of ordinary skill in the art would have
`
`considered the construction of “secondary information” as “information to generate
`
`secondary content or information to access secondary content” to be consistent
`
`with the plain language of the claims. For example, claims 1, 4, and 7 each recite a
`
`“receiving device to utilize the secondary information to render secondary non-
`
`derivative content to the output device,” and thus requires the receiving device to
`
`use the “secondary information” to render the “secondary non-derivative content.”
`
`Since the receiving device uses the “secondary information” to render the
`
`“secondary non-derivative content,” a person of ordinary skill in the art would
`
`have understood that the “secondary information” and the “secondary non-
`
`derivative content” are distinct entities that are not the same thing.
`
`18. Considering an example where “secondary information” is the same
`
`thing as “secondary non-derivative content” illustrates why these two terms are
`
`distinct entities and are not the same thing. If “secondary information” was the
`
`same thing as “secondary non-derivative content” the claims could be rewritten to
`
`recite a “receiving device to utilize secondary non-derivative content to render
`
`secondary non-derivative content.” A person of ordinary skill in the art would not
`
`have written the claim this way, as it does not make technical sense to say that a
`
`receiving device uses the secondary non-derivative content to render secondary
`
`
`
`8
`
`

`

`non-derivative content. A person of ordinary skill in the art would have instead
`
`said that the receiving device renders secondary non-derivative content. This
`
`would result in the claims being rewritten to recite “a receiving device to render
`
`secondary non-derivative content,” without changing the claims’ meaning. Since
`
`the claim is not written this way, a person of ordinary skill in the art would
`
`understand that that “secondary information” is something different than
`
`“secondary non-derivative content.
`
`2. The Specification
`
`19.
`
`It is also my opinion that a person of ordinary skill in the art would
`
`have considered interpreting “secondary information” as being different than
`
`“secondary non-derivative content” to be consistent with the specification of
`
`the ’786 patent. For example, the ’786 patent provides for specific embodiments in
`
`which the “secondary information” is the “secondary non-derivative content” as
`
`well as embodiments in which the “secondary information” is not the “secondary
`
`non-derivative content.” Figure 6 illustrates an embodiment in which the
`
`“secondary information” is the “secondary content.”1 This is contrasted with the
`
`
`1 Although Fig. 6 discusses “derivative secondary content,” the specification makes
`
`clear that this embodiment also applies to embodiments directed to “non-derivative
`
`content” by stating “[i]n response to the trick mode request, the communication
`
`(continued on next page)
`
`
`
`9
`
`

`

`embodiment illustrated in Figure 8, in which the “secondary information” is not the
`
`“secondary content.”2 But only the embodiments in which “secondary information”
`
`is not “secondary content” are consistent with and track the language of claims 1, 4,
`
`and 7.3
`
`20.
`
` A person of ordinary skill in the art would have understood that the
`
`embodiment of Figure 8 is consistent with and tracks the claims. This can be seen
`
`by comparing the Figure 8 embodiment with independent claim 1. In the Figure 8
`
`(continued from previous page)
`module 38 in the above described example embodiment, communicated derivative
`
`secondary content (e.g., advertising recording 54) for rendering to an output device
`
`18 at a normal speed for the derivative secondary content. In another example, the
`
`communication module 38 may have communicated non-derivative secondary
`
`content (e.g., advertisement recording 54).” Ex. 1001 at col. 13, ll. 45-52.
`
`2 There are other embodiments other than the Figure 8 embodiment that track the
`
`language of the claims, such as the embodiment shown in Figure 24. See, e.g., Ex.
`
`1001 at col. 25, l. 55-col. 30, l. 26
`
`3 I discuss “secondary content” interchangeably with “secondary non-derivative
`
`content” since the specification makes clear that “secondary non-derivative content”
`
`is a type of “secondary content.” See, e.g., Ex. 1001 at col. 3, ll. 47-51.
`
`
`
`10
`
`

`

`embodiment, a communication module communicates an entertainment asset
`
`(primary content) from streaming server 28 to receiving device 12 via operations
`
`183 and 184 (Ex. 1001 at Figure 8, col. 14, ll. 26-36) where it is rendered at normal
`
`speed (also operation 184). This corresponds identically to the “communicate
`
`primary content . . . ” element of claim 1 (third claim element of claim 1). The
`
`following claim element of “associate the primary content to secondary
`
`information” is clearly indicated in operation 185 of Figure 8 and described in Ex.
`
`1001 at col. 14, ll. 37-43 where association to secondary information (e.g.
`
`entertainment application) is taught. The following claim element of
`
`“communicate the secondary information to the receiving device, the receiving
`
`device to utilize the secondary information to render secondary non-derivative
`
`content to the output device instead of primary content” is indicated in operations
`
`188, 192 and 193 of Figure 8 and described in col. 14, l. 55 - col. 15, l. 11. In
`
`particular, the specification states:
`
`The receiving device 12 executes the appropriate version of the
`
`entertainment application 68 (e.g., 2xFF VERSION) to generate
`
`non-derivative secondary content in the form of an
`
`entertainment slide show 62. At operation 193, the receiving
`
`device 12 renders the entertainment slide show 62 to the output
`
`device 18.
`
`
`
`11
`
`

`

`Ex. 1001 col. 15, ll. 6-11. This two-step process of the receiving device (1) using
`
`the entertainment application (the secondary information) to generate the
`
`entertainment slideshow (the secondary content) so that the receiving device (2)
`
`renders the entertainment slide show (the secondary content) tracks the recitation
`
`in the claims that the receiving device uses the secondary information to render the
`
`secondary non-derivative content.
`
`21.
`
`In contrast, a person of ordinary skill in the art would not have
`
`understood the embodiment of Figure 6, where the “secondary information” is the
`
`“secondary content,” to be consistent with the claims. This can be seen by
`
`comparing claim 1 with the Figure 6 embodiment. For example, the embodiment
`
`of Figure 6, as discussed in the specification in col. 10, l. 10 - col. 11, l. 15, shows
`
`an embodiment in which although the association of the primary content (e.g.
`
`advertisement asset) to secondary content (advertisement recording) occurs in
`
`operation 118, what is transmitted to the receiving device is an advertisement
`
`recording (the secondary content) rather than different secondary information.
`
`Thus, the “secondary information” is “secondary content” in this embodiment. But
`
`the specification’s description of this embodiment diverges from the claim
`
`language by failing to describe the embodiment as containing a “receiving device
`
`to utilize the secondary information to render secondary non-derivative content to
`
`the output device.” Instead of describing that the embodiment utilizes the
`
`
`
`12
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`

`

`advertisement recording (the “secondary information”) to render the advertisement
`
`recording (the “secondary content”) as recited in the claims, the specification
`
`simply describes that the receiving device directly renders the advertisement
`
`recording by stating that “the receiving 12 device may receive and render the
`
`advertisement recording 54.” Ex. 1001 at col. 11, ll. 1-2. This description makes
`
`technical sense but nevertheless it is nonsensical to say that the receiving device
`
`uses secondary content to render secondary content, and such description it does
`
`not track the claim language and illustrates that the claims do not cover the
`
`embodiment shown in Figure 6.
`
`22. Since only the embodiments in which “secondary information” is not
`
`“secondary content” are consistent with and track the language of claims 1, 4, and
`
`7, it is my opinion that a person of ordinary skill in the art would have understood
`
`that the claims cover only these embodiments, and the term “secondary
`
`information” would thus have been understood by a person of ordinary skill in the
`
`art to exclude “secondary content.”
`
`23.
`
`It is my opinion that the specification’s “definition” of “secondary
`
`information” does not change the fact that a person of ordinary skill in the art
`
`would have understood the term “secondary information” to exclude “secondary
`
`content.” The specification’s definition” of “secondary information” states that
`
`“secondary information in this document may include secondary content,
`
`
`
`13
`
`

`

`information to generate secondary content, or information to receive secondary
`
`content.” Ex. 1001 at col. 3, ll. 39-41. By using the term “may include” in the
`
`“definition,” the specification indicates to a person of ordinary skill that secondary
`
`information “might” be secondary content, information to generate secondary
`
`content, and information to receive secondary content instead of requiring every
`
`instance of “secondary information” in the specification and claims to include
`
`these three things. This understanding is highlighted by the fact that every other
`
`“definition” in the ’786 patent states that the defined term “in this document is
`
`intended to include” something. See, e.g., Ex. 1001 at col. 3, ll. 26-28 (“Primary
`
`content in this document is intended to include content that may be played on a
`
`receiving device or interacted with on a receiving device.”).
`
`24.
`
`It is my opinion that the “definition” of “secondary information”
`
`would not have controlled a person of ordinary skill in the art’s interpretation of
`
`“secondary information” for another reason—such an interpretation is inconsistent
`
`with the plain language of the claims. For example, claims 1, 4, and 7 call for the
`
`secondary information to be communicated to the receiving device, which “utilizes
`
`the secondary information to render secondary non-derivative content to the output
`
`device.” As stated above, this makes clear that the “secondary information” is
`
`different than the “secondary content” because the “secondary information” is used
`
`
`
`14
`
`

`

`to render the “secondary non-derivative content.” Using the specification’s
`
`“definition” of “secondary information is inconsistent with this.
`
`25. Thus, it is my opinion that a person of ordinary skill in the art would
`
`have understood that the claims’ use of “secondary information” is narrower than
`
`the specification’s “definition” of this term because the claims’ use of the term
`
`prevents it from being “secondary content.”
`
`3. The Prosecution History
`
`26.
`
`It is my opinion that a person of ordinary skill in the art would have
`
`considered interpreting “secondary information” to mean “information to generate
`
`secondary content or information to access secondary content” to be consistent
`
`with the prosecution history of the ’786 patent.
`
`27. As originally filed, the application that led to the ’786 patent
`
`contained (among other things) claims in which the “secondary information”
`
`included “secondary content” and claims in which the “secondary information” did
`
`not include secondary content. For example, originally-filed claims 7-9, 46-48, and
`
`81 each recited “the receiving device to render the secondary non-derivative
`
`content to the output device.” Ex. 1002 at 54, 62-63, 70. By reciting that the
`
`receiving device directly rendered the secondary non-derivative content, a person
`
`of ordinary skill in the art would have understood that these claims read on the
`
`Figure 6 embodiment in which “secondary information” is the “secondary content.”
`
`
`
`15
`
`

`

`In contrast, originally filed claims 1-3, 40-42, and 79, which correspond to issued
`
`claims 1-3, 4-6, and 7, respectively, each recited “the receiving device to utilize the
`
`secondary information to render secondary non-derivative content.” Ex. 1002 at 61,
`
`52, 69. By reciting that the receiving device uses the secondary information to
`
`render secondary non-derivative content, a person of ordinary skill in the art would
`
`have understood that these claims read on the Figure 8 embodiment in which
`
`“secondary information” does not include secondary content.
`
`28. During prosecution, the Patent Office required election between
`
`(among other groups) the group consisting of claims 7-9, 46-48, and 81—the
`
`claims in which “secondary information” included “secondary content”—and the
`
`group consisting of claims 1-3, 40-42, and 79—the claims in which “secondary
`
`information” did not include “secondary content.” Ex. 1002 at 221-222. The Patent
`
`Office required election because these claim groups were directed to distinct
`
`inventions. Ex. 1002 at 223-224. In response, Applicant acknowledged that these
`
`claim groups were directed to distinct inventions by electing to prosecute the group
`
`consisting of claims 1-3, 40-42, and 79 and cancelling claims 7-9, 46-48, and 81
`
`(among other claims). Ex. 1002 at 227-233.
`
`29. Because the Patent Office and the Applicant agreed that the claims in
`
`which “secondary information” did not include “secondary content” were directed
`
`to different inventions than the claims in which “secondary information” included
`
`
`
`16
`
`

`

`“secondary content” and the Applicant chose not to prosecute the claims in which
`
`“secondary information” included “secondary content,” it is my opinion that a
`
`person of ordinary skill in the art would have understood that the claims are only
`
`directed to the invention in which “secondary information” did not include
`
`“secondary content.”
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`30.
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`It is therefore my opinion that a person of ordinary skill in the art
`
`would understand the broadest reasonable interpretation of “secondary information”
`
`to be “information to generate secondary content or information to access
`
`secondary content,” consistent with the plain language of the claims, the
`
`specification, and the prosecution history of the ’786 patent.
`
`B.
`
` Applying This Claim Construction, Plotnick Does Not Disclose
`Every Feature of Claims 1-6
`
`31.
`
`Independent claims 1 and 4 recite, among other things, “associate[ing]
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`primary content with secondary information” and “communicat[ing] the secondary
`
`information to the receiving device, the receiving device to utilize the secondary
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`information to render secondary non-derivative content to the output device.” Ex.
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`1001 at col. 33, ll. 14-18, col. 33, l. 39-col 34. l. 4. As discussed above, it is my
`
`opinion that a person of ordinary skill in the art would have understood the
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`broadest reasonable construction consistent with the specification of “secondary
`
`information” to be “information to generate secondary content or information to
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`access secondary content.” I understand that Netflix and its expert, Mr. Kramer,
`
`
`
`17
`
`

`

`map the claimed “secondary information” to three things: (1) Plotnick’s “alternate
`
`advertisement”; (2) Plotnick’s “ad metadata”; and (3) Plotnick’s “information
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`signals.” See, e.g., Pet. at 12-13, 25; Ex. 1005 at pp. 20-21, 44-45. However, it is
`
`my opinion that a person of ordinary skill in the are would not have understood any
`
`of Plotnick’s “alternate advertisement,” “ad metadata,” and “information signals”
`
`to “information to generate secondary content or information to access secondary
`
`content.”
`
`32.
`
`It is also my opinion that a person of ordinary skill in the art would
`
`have understood that Plotnick fails to teach or suggest at least the above-recited
`
`elements of independent claims 1 and 4 and their dependent claims 2, 3, 5, and 6. I
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`discuss these opinions in more detail below.
`
`1.
`
`Plotnick’s “alternative advertisement” is not secondary
`information
`
`
`It is my opinion that a person of ordinary skill in the art would not
`
`33.
`
`have understood Plotnick’s alternative advertisement to be the claimed “secondary
`
`information” because Plotnick’s alternate advertisement is not “information to
`
`generate secondary content or information to access secondary content.”
`
`34. For example, unlike claims 1 and 4, which require a receiving device
`
`to use secondary information that is different from the secondary content to render
`
`the secondary content, a person of ordinary skill in the art would have understood
`
`that Plotnick’s disclosure of an “alternative advertisement” does not disclose
`
`
`
`18
`
`

`

`anything other than receiving and rendering the alternate advertisement. Thus, at
`
`most, a person of ordinary skill in the art would have understood that Plotnick’s
`
`“alternative advertisement” is secondary content itself, i.e., content that is rendered
`
`to an output device. But a person of ordinary skill in the art would also have
`
`understood that there is no disclosure in Plotnick of receiving any other
`
`information, be it information to generate an alternate advertisement or information
`
`to access the alternate advertisement, which is used by the PVR to render the
`
`alternate advertisement. Ex. 1003 at ¶¶ [0167]-[0169]. A person of ordinary skill in
`
`the art would have understood that Plotnick simply discloses that an alternate
`
`advertisement is transmitted to a PVR, see, e.g., Ex. 1003 at ¶ [0167], and if a user
`
`fast forwards through a default advertisement, “the alternative advertisement will
`
`be displayed to a user.” Ex. 1003 at ¶ [0169].
`
`35. Accordingly, a person of ordinary skill in the art would not have
`
`understood that Plotnick’s “alternative advertisement” is the claimed “secondary
`
`information” under the proper construction of this term.
`
`2.
`
`Plotnick’s “ad metadata” is not “secondary information”
`
`36.
`
`It is my opinion that a person of ordinary skill in the art would not
`
`have understood Plotnick’s “ad metadata” to be the claimed “secondary
`
`information” because such a person would not have understood Plotnick to
`
`disclose that a receiving device uses the “ad metadata” to render the alternative
`
`
`
`19
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`

`

`advertisement, as is required by the recitation of claims 1 and 4 that a “receiving
`
`device to utilize the secondary information to render secondary non-derivative
`
`content.” In this mapping, Netflix contends that Plotnick’s “ad metadata” is the
`
`claimed “secondary information” and Plotnick’s “alternate advertisement” is the
`
`claimed “secondary non-derivative content.” See, e.g. Pet. at 13, 17; Ex. 1005 at
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`21-23, 28-31.
`
`37. A person of ordinary skill in the art would have understood that
`
`Plotnick discloses an Ad Management System (“AMS”) comprising a set-top box
`
`ad targeting system and a server side ad management system that work together to
`
`deliver targeted advertising to subscribers. See, e.g., Ex. 1003 at ¶ [0146], ¶ [0159];
`
`The server side ad management system contains an ad server that “transmits
`
`available ads and ad metadata to set-top boxes.” Ex. 1003 at ¶ [0164], Fig. 7; Ex.
`
`The set-top box containing the ad targeting system receives the ads “from [a]
`
`downstream ad feed” and ad metadata “from a downstream control feed.” Ex. 1003
`
`at ¶ [0149], Fig. 10. The ad metadata includes “descriptions of the ad content,
`
`target audience, encoding attributes, delivery instructions and contract limitations.”
`
`Ex. 1003 at ¶ [0149], Fig. 10.
`
`38. A person of ordinary skill in the art would have further understood
`
`that Plotnick discloses that its set-top box uses the ad metadata it receives, but not
`
`that the set-top box uses t