IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Petition for Inter Parres Review
`
`Attorney Docket No.: 50796.1
`
`Customer No.:
`
`27683
`
`Real Party in Interest: Netflix, Inc.
`
`§ §
`
`§
`
`§
`
`§
`
`§
`
`§
`§
`‘
`
`In re patent of SARDERA
`
`U.S. Patent No. 8,107,786
`
`Issued: Jan. 31, 2012
`
`Title: SYSTEMS AND
`METHODS TO MODIFY
`PLAYOUT OR PLAYBACK
`
`Declaration of Richard Kramer
`
`Under 37 C.F.R.
`
`1.68
`
`1, Richard Kramer, declare:
`
`1.
`
`I am making this declaration at the request of Netflix, Inc. in the
`
`matter of the Inter Partes Review of U.S. Patent No. 8,107,786 (“the ’786 Patent”)
`
`to Sardera.
`
`2.
`
`I am being compensated for my work in this matter. My compensation
`
`in no way depends upon the outcome of this proceeding.
`
`3.
`
`In the preparation of this declaration, 1 have studied:
`
`a.
`
`b.
`
`The ’786 Patent, NTFX—l001;
`
`The prosecution history of the ’786 Patent, NTFX— 1 002;
`
`—l—
`
`NTFX-1005
`
`
`
`Petition for Inter Parres Review
`
`Attorney Docket No.: 50796.1
`
`Customer No.:
`
`27683
`
`Real Party in Interest: Netflix, Inc.
`
`§ §
`
`§
`
`§
`
`§
`
`§
`
`§
`§
`‘
`
`In re patent of SARDERA
`
`U.S. Patent No. 8,107,786
`
`Issued: Jan. 31, 2012
`
`Title: SYSTEMS AND
`METHODS TO MODIFY
`PLAYOUT OR PLAYBACK
`
`Declaration of Richard Kramer
`
`Under 37 C.F.R.
`
`1.68
`
`1, Richard Kramer, declare:
`
`1.
`
`I am making this declaration at the request of Netflix, Inc. in the
`
`matter of the Inter Partes Review of U.S. Patent No. 8,107,786 (“the ’786 Patent”)
`
`to Sardera.
`
`2.
`
`I am being compensated for my work in this matter. My compensation
`
`in no way depends upon the outcome of this proceeding.
`
`3.
`
`In the preparation of this declaration, 1 have studied:
`
`a.
`
`b.
`
`The ’786 Patent, NTFX—l001;
`
`The prosecution history of the ’786 Patent, NTFX— 1 002;
`
`—l—
`
`NTFX-1005
`
`
`
`c.
`
`U.S. Patent Publication No. 2005/0097599
`
`(“Plotnick”), NTFX— l 003;
`
`d.
`
`U.S. Patent No. 6,820,277 (“Eldering”), NTFX—l004;
`
`4.
`
`In forming the opinions expressed below, I have considered:
`
`a.
`
`b.
`
`The documents listed above,
`
`The relevant legal standards, including the standard for
`
`obviousness provided in KSR International C0. V. Teleflex, Inc., 550 U.S.
`
`398 (2007), and
`
`c.
`
`My knowledge and experience based upon my work in this
`
`area, as described below.
`
`Qualifications and Professional Experience
`
`5.
`
`My qualifications are set forth in my cuniculum vitae, a copy of
`
`which is attached as an exhibit to this declaration. As set forth in my curriculum
`
`vitae:
`
`6.
`
`I received a Bachelor’s of Science degree in Electrical Engineering
`
`from the University of Toledo in 1984.
`
`I have over 29 years of experience
`
`successfully developing and launching commercially—implemented software and
`
`hardware products and systems, including 18 years in the video industry
`
`developing commercially successful products related to subscriber television
`
`—2—
`
`N'l‘l~'X- l 005
`
`
`
`systems, IP networking, cable and satellite TV systems and equipment, cable TV
`
`set—top boxes, remote controls, video networking, software, and other technologies
`
`relevant to the subject matter of the ’786 Patent. The cable TV video, video
`
`surveillance and IP network video products and systems that I have developed
`
`have been successfully launched under respected brands such as General Electric
`
`and Scientific—Atlanta (now Cisco). My experience also included the development
`
`of new technologies within pioneering high—tech start—up companies like Ivex
`
`Corporation (acquired in 2001 by Axcess, Inc.), where we developed one of the
`
`first IP network Video Streaming Appliances (called the “VSA”) for the video
`
`surveillance industry.
`
`I hold two patents.
`
`7.
`
`In the 1990s, I was the engineering/technology leader for cable TV
`
`set—top boxes in North America for Scientific—Atlanta, Inc. (prior to being acquired
`
`by Cisco Systems, Inc.).
`
`I was responsible for all set—top devices for the Advance
`
`Video Systems group. My group and the people that reported to me developed and
`
`successfully launched Scientific—Atlanta’s first intemally designed set—top (also
`
`called HCTs which means Home Communication Tenninals). The sales volumes
`
`of the products we developed exceeded 1 million units per year. The position
`
`required me to be astute to each facet of the cable system technology and the
`
`overall system.
`
`I was later promoted and served as the top technology leader on
`
`the Strategic Planning Team for the “Advanced Video Systems” Division. There I
`
`-3-
`
`NTFX-I005
`
`
`
`worked on the next generation advanced video products.
`
`In this role, each of the
`
`functional technology areas including firmware, hardware, system software and
`
`headend equipment reported to me in a dotted line matrix/cross—functional
`
`organizational structure for the development of our next generation of products.
`
`8.
`
`In 2001, I joined and served as Vice President of Product
`
`Development at Miraxis Corporation (a division of EMS Technologies, Inc., now
`
`Honeywell, Inc.) developing IP network and digital video solutions in the satellite
`
`industry. At Miraxis, we were focused on the design of an entirely new DBS/DTH
`
`(Direct Broadcast Satellite/Direct to Home) television and multimedia solution.
`
`Overall, Miraxis was responsible for the design of the satellite payload, the
`
`associated ground based systems, and the CPE (Customer Premise Equipment). As
`
`the Vice President of Product Development, I was responsible for all aspects of the
`
`system solution; I was immersed in the leading—edge state of the industry.
`
`In fact,
`
`we were one of only a handful of companies that received a newly allowed Ka-
`
`Band satellite license. The new Ka—Band frequency spectrum opened significant
`
`new opportunities for providing entertainment content to homes across America.
`
`9.
`
`From 2003 to 2007, I served as the Vice President—Engineering and
`
`General Manager—Technology over the Video Systems Group (“VSG”) at General
`
`Electric (“GE”). This role included the direct leadership of the development of
`
`DVRS (Digital Video Recorders), advanced video systems, intelligent video
`
`—4—
`
`N'l'FX- l 005
`
`
`
`software, cameras, and client—server based video management systems.
`
`10.
`
`In summary, l have a deep familiarity with subscriber television
`
`systems and related technologies, including first—hand experience at the relevant
`
`time of the ’786 Patent invention and before.
`
`11.
`
`I am familiar with the knowledge and capabilities of one of ordinary
`
`skill in the software/hardware engineering and, specifically, the interactive
`
`television field in the 2000s. Specifically, my extensive experience (1) in the
`
`industry and (2) with engineers practicing in the industry allowed me to become
`
`personally familiar with the level of skill of individuals and the general state of the
`
`art. Unless otherwise stated, my testimony below refers to the knowledge of one of
`
`ordinary skill in the interactive television field in the year 2006, the year in which
`
`the ’786 Patent was filed.
`
`12.
`
`In my opinion, the level of ordinary skill in the art needed to have the
`
`capability of understanding the scientific and engineering principles applicable to
`
`the ’786 Patent is (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. Relevant industry experience would include
`
`experience with interactive television system development and deployment,
`
`including development of head—end, transport, and customer premise equipment in
`
`order to appreciate what was obvious and/or anticipated in the industry and what a
`
`-5-
`
`NTFX-I005
`
`
`
`person having ordinary skill in the art would have thought at the time.
`
`Relevant Legal Standards
`
`13.
`
`I have been asked to provide my opinions regarding whether the
`
`claims 1-7 of the ’786 Patent are anticipated or would have been obvious to a
`
`person having ordinary skill in the art at the time of the alleged invention, in light
`
`of the prior art. It is my understanding that, to anticipate a claim under 35 U.S.C. §
`
`102, a reference must teach every element of the claim. Further, it is my
`
`understanding that a claimed invention is unpatentable under 35 U.S.C. § 103 if the
`
`differences between the invention and the prior art are such that the subject matter
`
`as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which the subject matter pertains.
`
`I also
`
`understand that the obviousness analysis takes into account factual inquiries
`
`including the level of ordinary skill in the art, the scope and content of the prior art,
`
`and the differences between the prior art and the claimed subject matter.
`
`14.
`
`It is my understanding that the Supreme Court has recognized several
`
`rationales for combining references or modifying a reference to show obviousness
`
`of claimed subject matter. Some of these rationales include the following:
`
`combining prior art elements according to known methods to yield predictable
`
`results; simple substitution of one known element for another to obtain predictable
`
`results; use of a known technique to improve a similar device (method, or product)
`
`-6-
`
`N'l‘l~'X- l 005
`
`
`
`in the same way; applying a known technique to a known device (method, or
`
`product) ready for improvement to yield predictable results; choosing from a finite
`
`number of identified, predictable solutions, with a reasonable expectation of
`
`success; and some teaching, suggestion, or motivation in the prior art that would
`
`have led one of ordinary skill to modify the prior art reference or to combine prior
`
`art reference teachings to arrive at the claimed invention.
`
`15.
`
`It is my understanding that some claims can be interpreted as “means
`
`plus function” claims under 35 U.S.C. § 1 12, paragraph 6.
`
`I understand that
`
`determining the broadest reasonable interpretation of “means plus function”
`
`claims requires first, defining the particular function of the limitation and second,
`
`identifying the corresponding structure for that function in the specification.
`
`I also
`
`understand that structure disclosed in the specification is corresponding structure
`
`only if the specification or prosecution history clearly links or associates that
`
`structure to the function recited in the claim.
`
`Background Of ’786 Patent
`
`16.
`
`The ’786 Patent describes systems and methods for modifying playout
`
`or playback of primary content in response to a trick mode request (e.g., fast
`
`forward or rewind), by playing secondary content. (NTFX—l00 l , Abstract.) In one
`
`example, a user viewing a movie (e.g., primary content) may attempt to skip an
`
`advertisement in the movie by selecting a fast forward button as a trick mode
`
`-7-
`
`N'l‘l~‘X-I005
`
`
`
`request that causes fast forwarding of the movie. However, instead of viewing the
`
`advertisement in the movie at an accelerated speed, the system displays the
`
`secondary advertisement (e.g., secondary content) to the user. (See NTFX—l00l,
`
`2:51-61; 14:26-15:11.)
`
`17.
`
`Claim 1 provides a basic overview of the teachings of the ’786 Patent:
`
`1. A system including:
`
`a request module to receive a request for primary content; and
`
`a communication module to communicate primary content to a
`
`receiving device, the receiving device to render the primary content to an
`
`output device at a normal speed of the primary content, associate the primary
`
`content to secondary information, 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 the primary content,
`
`the secondary non—derivative content not being derived from the
`
`primary content,
`
`the receiving device to render the secondary non—derivative content
`
`responsive to receipt of a request to render the primary content at the
`
`receiving device at an accelerated speed of the primary content.
`
`18.
`
`The ’786 patent discloses a video on demand (“VOD”) system that
`
`includes a streaming server 28 having a request module 36 and a communication
`
`module 38. (NTFX—l00l, 6:42-43; Fig. 1.)
`
`-8-
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`FIGURE 1
`
`Communication module
`
`The ’786 Patent, Fig. 1 (annotated)
`
`19.
`
`The request module receives a request for delivery of primary content
`
`from a receiving device 12 that may be a set top box or DVR. (The ’786 Patent,
`
`6:43-48; 10:14-25.) The communication module 38 then communicates the
`
`primary content to the receiving device (NTFX-1001, 6:54-60; 10:27-30) so that
`
`the receiving device renders the primary content to an output device at a normal
`
`speed (NTFX-1001, 10:31-34; Fig. 6.)
`
`20.
`
`The communication module also associates the primary content to
`
`secondary information and communicates the secondary information to the
`
`receiving device. (NTFX-1001, 10:54-67.) The receiving device utilizes the
`
`secondary information to render secondary non-derivative content to the output
`
`-9-
`
`N'1‘1~‘X-1005
`
`
`
`device 18 instead of the primary content. (NTFX—1001, 13:49-52; 1526-1 1.)
`
`21.
`
`The receiving device renders the secondary non—derivative content to
`
`the output device 18 mentioned above in response to a receipt of a request to
`
`render the primary content at the receiving device at an accelerated speed.
`
`(NTFX—
`
`1001, 14:55—15:1 1.) The request may be a fast forward request or a rewind
`
`request. (NTFX—1001, 14:44-51 .)
`
`22.
`
`The ’786 Patent issued on January 31, 2012, from U.S. Patent
`
`Application No. 1 1/469,195 (“the ’ 195 application”) filed on August 31, 2006, by
`
`Esteban Sardera.
`
`Claim Construction
`
`23.
`
`It is my understanding that in order to properly evaluate the ’786
`
`Patent, the tenns of the claims must first be interpreted. It is my understanding that
`
`the claims are to be given their broadest reasonable interpretation in light of the
`
`specification.
`
`It is my further understanding that claim tenns are given their
`
`ordinary and accustomed meaning as would be understood by one of ordinary skill
`
`in the art, unless the inventor has set forth a special meaning for a term.
`
`24.
`
`In order to construe the following claim terms, I have reviewed the
`
`entirety of the ’786 Patent, as well as its prosecution history. The ’786 Patent
`
`includes a “DEFINITIONS” section explicitly defining a number of claim tenns.
`
`-10-
`
`N'l'l~'X-1005
`
`
`
`Except as provided below, the definitions set forth in the ’786 Patent at 3224-425
`
`should control the defined claim terms. Any claim tenn not construed in the patent
`
`or discussed below should be given its ordinary and customary meaning.
`
`“secondag non-derivative content”
`
`25.
`
`The claim term “secondary non—derivative content” is found in claims
`
`1, 4, and 7 of the ’786 Patent.
`
`26.
`
`The specification explicitly defines the tenn “non—derivative
`
`secondary content” in the DEFINITIONS section. The claimed tenn “secondary
`
`non—derivative content” should be properly construed to have the same meaning as
`
`the defined term “non—derivative secondary content.” For example, the claimed
`
`tenn and the defined tenn appear to have been used interchangeably in the
`
`specification and appear to have the same meaning. For example, the “secondary
`
`non—derivative content” appears separately received and then rendered to the
`
`output device instead of primary content. (See e.g., NTFX—l00l, 4:23-26.) This is
`
`consistent with the defined tenn “non—derivative secondary content,” which is
`
`defined as “secondary content that is not generated from the associated primary
`
`content. For example, derivative secondary content does not include samples (e.g.,
`
`audio and/or visual) from the associated primary content.” (NTFX—l00l, 3:47-51.)
`
`27.
`
`I note that the definition of “non—derivative secondary content”
`
`—I l—
`
`N'l'FX- l 005
`
`
`
`appears to include a typographical error that substituted “derivative content” for
`
`“non-derivative content.” Particularly, the definition states that the “derivative
`
`secondary content does not include samples (e.g., audio and/or visual) from the
`
`associated primary content.” (NTFX-1001, 3:49-51.) This statement directly
`
`contradicts the definition of “derivative content.” (See NTFX-1001, 3:44-46.)
`
`Since the conflicting definitions both refer to derivative content, it appears the
`
`definition of non-derivative content should have referred to “Q-derivative
`
`content” instead of “derivative content.” The remainder of the specification also
`
`supports this conclusion. (See e.g., NTFX-1001, 8:41-43, 9:27-29.)
`
`28.
`
`It is therefore my opinion that a person of ordinary skill in the art
`
`would understand the broadest reasonable interpretation of “secondary non-
`
`derivative content” in view of the specification and file history to be the same as
`
`the corrected definition in the specification of “non-derivative secondary content.”
`
`Accordingly, the definition of “secondary non-derivative content” is “Secondary
`
`content that is not generatedfiom the associatedprimary content. For example,
`
`non-derivative secondary content does not include samples (e. g., audio and/or
`
`visual) fiom the associatedprimary content.”
`
`—I 2-
`
`N'l'FX- l 005
`
`
`
`Challenge #1: Claims 1-6 are anticipated by Plotnick
`
`29.
`
`It is my opinion that Plotnick teaches each and every element of at
`
`least claims 1-6 of the ’786 Patent.
`
`30.
`
`Plotnick teaches systems and methods for presenting viewers with a
`
`brief, secondary advertisement when they choose to fast—forward through or skip
`
`the original advertisement. NTFX—l003, Abstract. The secondaiy advertisement
`
`may be targeted to a specific group and may be entirely unrelated to the original
`
`advertisement. NTFX— 1 003, Abstract.
`
`31.
`
`In greater detail, Plotnick discloses programming, such as video on
`
`demand (“VoD”) transmitted to a subscriber via a programming delivery network.
`
`NTFX— l 003, para. [009l]. The programming stream includes advertisements of
`
`any lengths, such as 30—second advertisements. NTFX—l003, para. [0090]. To
`
`address the problem of viewers using a personal video recorder (“PVR”) to fast
`
`forward the advertisements, the program stream in the Plotnick system includes
`
`both advertisements and alternative advertisements. NTFX—l003, para. [0l67].
`
`The Plotnick system “replaces or supplements the fast forwarding advertisements
`
`with alternative advertisements designed to get the advertisers message across in
`
`the same amount of time it takes the subscriber to fast forward through the
`
`recorded advertisement. NTFX—l003, para. [0093]. The alternative
`
`—I 3-
`
`NTFX— I 005
`
`
`
`advertisements may have some content connection to the original recorded
`
`advertisement or may “have no connections to the ad... (i.e., Coke displaying an
`
`altemative ad during a fast forwarding Pepsi advertisement)?’ NTFX— l 003, para.
`
`[0093].
`
`32.
`
`The following claim chart describes how Plotnick teaches each and
`
`every element of at least claims 1-6.
`
`-14.
`
`NTFX— l 005
`
`
`
`Claim 1
`
`[1.0] A system
`including:
`
`[1.0] “A system”
`
`First, Plotnick teaches a system:
`
`“FIG. 4 illustrates an exemplary VoD system that includes
`remote video servers 400 that store video; an archive 402 that
`
`stores items such as infrequently viewed movies; a backbone
`network 410 that is used for the distribution of digital video from
`the remote video servers 400 to a switching office 420; a
`subscriber network 430 which connects the switching office 420
`(more precisely head—end 428 within the switching office 420) to
`set—tops 440.” NTFX—1003, paragraph [01 1 1].
`
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`NTFX—1003, Fig. 4.
`
`Thus, the system taught by Plotnick, discloses “a system” as
`recited in the claim.
`
`[1.1] a request
`module to
`
`[1 . 1] “a request module to receive a requestfor primary
`content”
`
`receive a
`
`request for
`primary
`
`Plotnick discloses “a request module to receive a request for
`primary content” because it teaches a video dial tone gateway
`
`-15-
`
`NTFX-l 005
`
`
`
`content; and
`
`426 and a return channel transport that receive requests for video
`content.
`
`Referring to Fig. 4 — “The switch 424 is used to direct tlaffic to
`the video dial tone gateway 426 that provides a subscriber
`interface. . .. In operation, the video dial tone gateway 426 can
`present the subscriber with a menu for services which can guide
`the subscriber through the sources for video. . .. The video dial
`tone atewa 426 thus insures that the subscriber can select the
`
`appropriate video content. . ..” NTFX— l 003, paragraph [01 12]
`(emphasis added).
`
`
`
`
`Receives requests
`
`and commands
`from set-to s 440
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`NTFX—l003, Fig. 4 (annotated).
`
`The head end 428 is between the video dial tone gateway 426
`and the set—top boxes 440.
`
`“The head—end system 428 represents the set of equipment that is
`needed to deliver the advertisement over the specific delivery
`platform in the subscriber network 430. The subscriber network
`430 may be a cable system based on Hybrid Fiber Coaxial (HFC)
`technology....For a HFC network, there will typically also be a
`return channel that may consist of a DOCSIS based modem in
`the set—top and corresponding Cable Modem Termination System
`(CMTS) in the head—end 428. The return channel transports
`
`—l6—
`
`N'l'l~'X-I005
`
`
`
`requests and commands from the set—tops 440 to the head—end
`system 428. Altemative downstream modulation fonnats and
`return paths can be utilized.” NTFX— l 003, paragraph [01 13]
`(emphasis added).
`
`Thus, the video dial tone gateway 426 allowing the subscriber to
`select the appropriate video content, and the return channel
`transporting requests from the set—tops to the head—end system, as
`taught by Plotnick, discloses “a request module to receive a
`request for primary content” as recited in the claim.
`
`[l.2(a)] “u communication module to”
`
`Plotnick discloses “a communication module” because it teaches
`a “server” or a head end such as “a program source (video
`source) 1200” that transmits a program stream or video stream
`1210 to a personal video recorder (“PVR”).
`
`“FIG. 12A illustrates an embodiment where a program source
`gvideo source) 1200 transmits a program stream (video stream)
`1210 including programming 1220 and both an advertisement
`1230 and an altemative advertisement 1240 (in a preferred
`embodiment a related altemative ad) to a PVR 1250. The video
`source 1200 may be a satellite, a head—end, a networked video
`server, prerecorded video on a number of mediums, or other
`sources that would be well known to those of ordinary skill in the
`art.” NTFX— l 003, paragraph [0167] (emphasis added).
`
`Thus, the video source 1200 transmitting programming, an
`advertisement, and an altemative advertisement, as taught by
`Plotnick, discloses “a communication module” as recited in the
`
`claim.
`
`[l.2(b)] “communicate primary content to a receiving device,
`the receiving device to render the primary content to on output
`device at it normal speed ofthe primary content”
`
`First, Plotnick teaches the communication module
`“communicat[ing] primary content to a receiving device”
`because it discloses that the program or video source transmits
`
`—l 7-
`
`N'l'FX- l 005
`
`[1-2(3)]
`
`_
`_
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`commumcatlon
`module to
`
`[1 .2(b)]
`communicate
`primary
`content to a
`
`receiving
`device, the
`receiving
`
`
`
`device to
`
`render the
`
`primary
`content to an
`
`output device
`at a normal
`
`speed of the
`primary
`
`content,
`
`the program or video, along with advertisements, to the PVR.
`
`“Primary Content” is defined by the ’786 Patent to mean
`“content that may be played on a receiving device or interacted
`with on a receiving device. Primary content may include but is
`not limited to entertainment content and advertisement content.
`
`Further, primary content may include video content 30 and/or
`audio content and/or associated metadata.” The ’786 Patent at
`
`3 226-3 1 .
`
`“FIG. 12A illustrates an embodiment where a program source
`gvideo source) 1200 transmits a program stream (video stream)
`1210 including programming 1220 and both an advertisement
`1230 and an alternative advertisement 1240 (in a preferred
`embodiment a related alternative ad) to a PVR 1250.” NTFX—
`1003, paragraph [0167] (emphasis added).
`
`“The video source 1200 may be a satellite, a head—end, a
`networked video server, prerecorded video on a number of
`mediums, or other sources that would be well known to those of
`
`ordinary skill in the art. The PVR 1250 may be a HE PVR, a
`STB PVR, some combination of a HE/STB PVR, or some type
`of video source server (i.e., DVD). The video stream 1210 may
`be transmitted from the video source 1200 to the PVR 1250
`
`using a video delivery system, such as those previously
`discussed.” NTFX— l 003, paragraph [0 l 67].
`
`—l 8-
`
`NTFX— l 005
`
`
`
`Video stream 1210 includes an
`
`advertisement (primary content) at
`
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`
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`
`top box PVR)
`
`NTFX—l003, Fig. 12A (annotated).
`
`Accordingly, the system of Plotnick communicates primary
`content, an advertisement, to a receiving device.
`
`Second, Plotnick teaches “the receiving device rendering the
`primary content to an output device at a normal speed of the
`primary content” because it teaches sending the signals to inputs
`on a television for watching at normal speed.
`
`“The video D/A 324 and audio D/A 326 convert video and audio
`
`signals respectively to analog signals that can be sent directly to
`S—video or RGB inputs on a television or to an RF modulator 322
`which can modulate the signals onto an appropriate TV channel.”
`NTFX— 1003, paragraph [0107] (emphasis added).
`
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`
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`
`NTFX— '1 003, Fig. 3 (annotated to show output to television).
`
`“The PVR "1250 will display the advertisement 1230 to a
`subscriber 1260 if the video stream "1210 was either not recorded
`
`or if the advertisement 1230 within the video stream "1210 is
`
`played back at normal speed 1270.” NTFX—l003, paragraph
`[0169] (emphasis added).
`
`Thus, the video source delivering the advertisement in the video
`stream to the PVR and the PVR displaying the programming and
`advertisement back at normal speed on a television, as taught by
`Plotnick, discloses a communication module to “communicate
`primary content to a receiving device, the receiving device to
`render the primary content to an output device at a normal speed
`of the primary content” as recited in the claim.
`
`['1 .2(c)] “associate the primary content to secondary
`information ”
`
`“Secondary lnf0rmati0n” is defined by the ’786 Patent to mean
`“secondary content, information to generate secondary content or
`information to access secondary content.” The ’786 Patent at
`3:39-41.
`
`Plotnick discloses a communication module to “associate the
`
`primary content to secondary information” because it teaches
`associating multiple types of information to the primary
`
`-20-
`
`NTFX-1005
`
`[1 -2(0)]
`associate the
`
`primary
`content to
`
`secondary
`information,
`
`
`
`advertising content. For example, Plotnick discloses associating
`each of the following to the primary content: an alternative
`advertisement, metadata used to access secondary content, and
`information signals communicated to the PVR used to generate
`secondary content. Each of these meet the definition of for
`“secondary information” defined to “include secondary content,
`information to generate secondary content or information to
`access secondary content.” The ’786 Patent at 3:39-41.
`
`With respect to an alternative advertisement, Plotnick teaches
`“associat[ing] the primary content to secondary information”
`when it teaches associating the alternative advertisement with the
`default advertisement in a common video stream.
`
`“FIG. 12A illustrates an embodiment where a program source
`(video source) 1200 transmits a program stream (video stream)
`1210 includin
`ro ammin 1220 and both an advertisement
`
`1230 and an alternative advertisement 1240 (in a preferred
`embodiment a related alternative ad) to a PVR 1250.” NTFX—
`1003, paragraph [0167] (emphasis added).
`
`Default ad as primary
`content
`
`
`
`
`
`1210
`
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`information
`
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`
`NTFX—l003, Fig. 12A (annotated).
`
`Thus, Plotnick’s disclosure of combining the advertisement 1230
`and an alternative advertisement 1240 into a common video
`
`stream is a teaching of “associate[ing] the primary content to
`secondary information.”
`
`With respect to metadata, Plotnick teaches “associat[ing] the
`primary content to secondary information” when it teaches
`associating the default advertisement with ad metadata used to
`
`-2 l—
`
`N'l'FX- l 005
`
`
`
`access the alternative advertisement.
`
`“FIG. 1 1 illustrates an exemplary data flow in an ad
`management system designed to deliver targeted
`advertisements to a PVR—enabled set—top box. This system
`includes different head—end servers that are used to segment
`the subscribers, deliver content and metadata to the set—top
`boxes, collect ad insertion results, and collect privacy
`protected summary data about the subscriber viewing habits.”
`NTFX— l 003, paragraph [0159] (emphasis added).
`
`“An IPG Server 1 l 14 delivers interactive program guide
`information in the form of program metadata l l 16. A
`broadcast conduit 1 l 18 receives program metadata from
`broadcasters and content providers and deliver the program
`metadata l 120. The program metadata (from both sources)
`1 l 16,
`l 120 is collected and processed l 122. The processing
`1 122 includes combining the program metadata from the
`different sources 1 l 16,
`l 120 and formatting it for delivery to
`the set—top boxes. The program metadata l l 16,
`l 120 includes
`program content, language information, ratings, encoding
`attributes, networks and air times, delivery requirements, and
`pricing. The formatted program metadata l 124 is sent to the
`STB data server 1 l 12, which transmits it to the appropriate
`set—top boxes.” NTFX—l003, paragraph [0160] (emphasis
`added).
`
`The ad metadata includes times for displaying the advertisements
`and therefore includes information about when to generate the
`alternative advertisement. The metadata is sent in the video
`
`stream and therefore transmitted or associated with the default
`
`advertisement:
`
`“The traffic and billing system 712 manages the advertising
`campaign and controls advertising campaigns for broadcast
`systems, personal video recorders, and video on demand. The
`sales force enters requirements for viewership ratings,
`frequency of viewership by the target audience, and flight
`information, which indicates the networks and times for
`
`-22-
`
`N'l'FX- l 005
`
`
`
`displaying the advertisement [ad campaign data 1152).
`Based on the defined ad campaign data 1 152 and the market
`segment data 1 143 from the market segment database 1 136
`an ad queue and schedule is created 1 154. Based on the ad
`schedule 1 154, ad download instructions 1 156 are
`
`transmitted to the ad server 716. The ad server 716
`
`determines the availability of the ads (ad availability
`information 1 158) identified in the download instructions
`1 156. The ad server 716 transmits available ads and ad
`
`metadata to set—top boxes based on the ad schedule 1154.”
`NTFX— 1003, paragraph [0164] (emphasis added).
`
`“FIG. 12A illustrates an embodiment where a program source
`(video source) 1200 transmits a program stream (video
`stream) 1210 including programming 1220 and both an
`advertisement 1230 and an alternative advertisement 1240 (in
`a preferred embodiment a related alternative ad) to a PVR
`1250.” NTFX— l 003, paragraph [0167] (emphasis added).
`
`Thus, Plotnick’s discl
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