Filed on behalf of: OpenTV Inc.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`NETFLIX, INC.
`Petitioner
`
`v.
`
`OPENTV, INC.
`Patent Owner
`__________
`
`Case IPR2014-00267
`Patent 7,409,437
`__________
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`DECLARATION OF DAVID WACHOB
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`NETFLIX, INC.
`Petitioner
`
`v.
`
`OPENTV, INC.
`Patent Owner
`__________
`
`Case IPR2014-00267
`Patent 7,409,437
`__________
`
`
`
`
`
`
`
`DECLARATION OF DAVID WACHOB
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`
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`TABLE OF CONTENTS
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`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`QUALIFICATIONS ........................................................................................ 2
`
`III. MATERIALS REVIEWED ............................................................................ 3
`
`IV. THE PATENTED TECHNOLOGY ............................................................... 3
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 5
`
`VI. PALMER, ROMESBURG, AND BATCHELOR DO NOT RENDER
`THE CLAIMS OF THE ’437 PATENT OBVIOUS ....................................... 5
`
`A.
`
`The Palmer Patent is Only Prior Art to the Extent its Subject
`Matter is Contained in the Palmer Provisional ..................................... 6
`
`B.
`
`The Palmer Provisional Differs from the Palmer Patent ....................... 6
`
`1.
`
`2.
`
`The Palmer Provisional Does Not Disclose or Suggest “a
`Receiver for Receiving a Programming Signal and the
`Embedded Address” .................................................................... 7
`
`The Palmer Provisional Does Not Disclose or Suggest
`“an Address Extractor Which Extracts the Address From
`the Programming Signal” .......................................................... 12
`
`C.
`
`A Person of Ordinary Skill in the Art Would Not Have Been
`Motivated to Combine the Internet Technology of Palmer With
`Either the Technology of Romesburg Or Batchelor ........................... 14
`
`1.
`
`2.
`
`It Would Not Have Made Sense to Combine the Internet
`Technology of Palmer with the TV Technology of
`Romesburg ................................................................................ 20
`
`It Would Not Have Made Sense to Combine the Internet
`Technology of Palmer with the TV Technology of
`Batchelor ................................................................................... 22
`
`IX. CONCLUSION .............................................................................................. 24
`
`
`
`i
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`I, David Wachob, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by OpenTV, Inc. (“OpenTV” or “Petitioner”) 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
`
`$150.00 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. 7,409,437
`
`(“the ’437 patent”) (attached as Ex. 1001 to the petition). I understand that
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`the ’437 patent is assigned to OpenTV and that it is part of a family of patents that
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`stems from U.S. Patent Application No. 08/613,144 (“the ’144 application”), filed
`
`on March 8, 1996. I understand that the ’437 patent has a continuation relationship
`
`through several applications to U.S. Patent Application No. 09/109,945 (now U.S.
`
`Patent No. 6,018,768, “the ’768 patent”), filed on July 6, 1998. And I understand
`
`the ’768 patent is a continuation-in-part of U.S. Patent Application No. 08/615,143
`
`(now U.S. Patent No. 5,778,181, “the ’181 patent”), filed on March 14, 1996, and
`
`that the ’181 patent is a continuation-in-part of U.S. Patent Application No.
`
`08/613,144, filed on March 8, 1996.
`
`
`
`1
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`
`
`3.
`
`I have been asked to consider whether certain references disclose or
`
`suggest the features recited in the claims of the ’437 patent. My opinions are set
`
`forth below.
`
`II. QUALIFICATIONS
`
`4.
`
`I received a B.S. from Drexel University, and an M.E. from Florida
`
`Atlantic University, both in Electrical Engineering. My curriculum vitae, which
`
`includes a more detailed summary of my background, experience, patents and
`
`publications, is attached as Appendix A.
`
`5.
`
`As detailed below, based on my experience at WorldGate
`
`Communications, which I cofounded and where I was involved in interactive
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`television design and development; General Instrument, where I was involved in
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`CATV system design and development; and Motorola, where I was involved in
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`paging system design and development (all of which included managing people
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`meeting the hypothetical “person of ordinary skill in the art,” prior to priority claim
`
`of the ’437 patent), I meet the requirements for the hypothetical person of ordinary
`
`skill in the art.
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`6.
`
`I am not an attorney and offer no legal opinions, but in the course of
`
`my work, I have had experience studying and analyzing patents and patent claims
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`from the perspective of a person skilled in the art. I have previously served as a
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`
`
`2
`
`
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`patent analyst and research consultant and hold 24 patents, with many others
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`pending.
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`III. MATERIALS REVIEWED
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`7.
`
`In forming my opinions, I have reviewed the ’437 patent, the
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`prosecution history of the ’437 patent, and the following documents:
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`• U.S. Patent No. 5,905,865 to Palmer (“Palmer Patent”);
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`• U.S. Provisional Patent Application No. 60/008,111 to Palmer
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`(“Palmer provisional”);
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`• U. S. Patent No. 5,113,259 to Romesburg (“Romesburg”); and
`
`• U.S. Patent No. 5, 724,103 to Batchelor (“Batchelor”).
`
`IV. THE PATENTED TECHNOLOGY
`
`8.
`
`The ’437 patent relates to a system for integrating video programming
`
`with the information resources of the Internet. Ex. 1001 at Abstract. Unlike today,
`
`at the time of the invention in 1996, video programming and the vast information
`
`resources of the Internet did not go together. Ex. 1001 at 2:4-12. Nearly 20 years
`
`ago, people watched television or they accessed the Internet, but the two had
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`nothing to do with each other. At best, in my opinion, one could use a TV tuner
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`card to display a small video window on a computer monitor, but nothing linked
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`the video content to the Internet content.
`
`
`
`3
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`
`
`9.
`
`The patented technology improved upon the prior art by marrying
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`video with the two-way data transfer capabilities of the Internet, facilitating the
`
`simultaneous enjoyment of both by relating the two on a single display. Ex. 1001
`
`at 3:4-18, 8:23-28
`
`10. For example, independent claim 1 recites:
`
`1. A system for receiving a programming signal
`containing an embedded address, the address identifying
`a source of at least one online information segment
`related to the programming signal, the system
`comprising:
`
`a receiver for receiving a programming signal and the
`embedded address, the address identifying the source of
`the online information segment which relates to the
`programming signal;
`
`an address extractor which extracts the address from the
`programming signal;
`
`a web browser;
`
`a processor which automatically directs the web browser
`to establish a communications link with the online
`information source identified by the address, whereby the
`processor retrieves the online information segment from
`the online information source via the communications
`link; and
`
`
`
`4
`
`
`
`a display monitor for presenting the programming signal,
`comprising a video signal or an audio signal,
`concurrently with the online information segment;
`
`wherein the programming signal comprises the video
`signal and the video signal and the online information
`segment are presented on the display monitor in a
`picture-in-picture format.
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`11.
`
`I agree with Mr. Kramer, Netflix’s declarant, that one of ordinary skill
`
`in the art for the ’736 patent would have “(i) a B.S. degree in Electrical
`
`Engineering or equivalent training, and (ii) approximately three years of direct
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`experience in developing subscriber television solutions and technologies.” Ex.
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`1003 at ¶ 11. I meet this definition because I was cofounder of WorldGate
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`Communications, an interactive TV company, actively involved in both the design
`
`and development of interactive TV systems in the 1990s, as well as managing
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`people meeting the hypothetical person of ordinary skill in the art qualification.
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`Prior to WorldGate, I worked for General Instrument, where I designed and
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`developed CATV systems and managed people who did so. Accordingly, I have
`
`used this definition in my analysis below.
`
`VI. PALMER, ROMESBURG, AND BATCHELOR DO NOT RENDER
`THE CLAIMS OF THE ’437 PATENT OBVIOUS
`
`
`
`5
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`
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`12. As discussed above, I have been informed that the ’437 patent is part
`
`of a family of patents that stem from U.S. Patent Application No. 08/613,144
`
`(“the ’144 application”), filed on March 8, 1996. I understand that the ’437 patent
`
`has a continuation relationship through several applications to U.S. Patent
`
`Application No. 09/109,945 (now U.S. Patent No. 6,018,768, “the ’768 patent”),
`
`filed on July 6, 1998. And I understand the ’768 patent is a continuation-in-part of
`
`U.S. Patent Application No. 08/615,143 (now U.S. Patent No. 5,778,181, “the ’181
`
`patent”), filed on March 14, 1996, and that the ’181 patent is a continuation-in-part
`
`of U.S. Patent Application No. 08/613,144, filed on March 8, 1996.
`
`A. The Palmer Patent is Only Prior Art to the Extent its Subject
`Matter is Contained in the Palmer Provisional
`
`13. The Palmer patent was filed on October 30, 1996, after the filing of
`
`the ’437 patent. Ex. 1007 at Cover Sheet. The Palmer provisional was filed on
`
`October 30, 1995. Ex. 1008 at Cover Sheet. Therefore, I have been informed that
`
`the Palmer patent is only prior art to the extent its subject matter is contained in the
`
`Palmer provisional.
`
`B.
`14.
`
`The Palmer Provisional Differs from the Palmer Patent
`
`It is my opinion that both the Palmer provisional and Palmer patent
`
`describe a paging network for transmitting URLs to a computer. Ex. 1008 at 3, 5-7,
`
`10, 12; Ex. 1007 at Abstract, 2:25-33, 3:27-34, 4:1–6:6, 7:27-45. However, it is
`
`my opinion that only the Palmer patent describes an additional embodiment that
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`
`
`6
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`
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`transmits URLs to a computer without a paging network. Ex. 1007 at 8:5-23. The
`
`Palmer patent also includes other substantial revisions and additions to the Palmer
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`provisional. For example, the Palmer provisional specification is only 12 pages
`
`long, with large double-spaced font and a single figure that is not mentioned in the
`
`text. Ex. 1008. On the other hand, the Palmer patent specification is 12 columns
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`of small single-spaced text with a different figure, which is discussed throughout
`
`the text. Ex. 1007. Therefore, the disclosure of the Palmer patent differs
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`significantly from the disclosure of the Palmer provisional.
`
`1.
`
`The Palmer Provisional Does Not Disclose or Suggest “a
`Receiver for Receiving a Programming Signal and the
`Embedded Address”
`
`15. Each of independent claims 1-4 recites “a receiver for receiving a
`
`programming signal and the embedded address,” and it is my opinion that the
`
`claims’ preambles clarify that “the embedded address” is part of the “programming
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`signal.” Ex. 1001 at 13:30-31, 34-35, 54-55, 58-59; 14:15-16, 19-20, 39-40, 43-44.
`
`Netflix asserts that column 3, lines 51-55 and column 8, lines 5-19, of the non-
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`prior-art Palmer patent discloses this feature of the claims, and then cites generally
`
`to pages 1, 3, 6 and 9-11, and Figure 1 of the Palmer provisional as allegedly
`
`disclosing the same thing. Paper 1 at 38. It is my opinion that the cited portions of
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`the Palmer patent are not included in the Palmer provisional and, indeed, come
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`from the section of the Palmer patent that was added later to describe a new
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`
`
`7
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`
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`embodiment that transmits URLs to a computer without a paging network.
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`Compare Ex. 1007 at 8:5-19 with Ex. 1008 at 1, 3, 6, 9, 10, Fig. 1.
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`16.
`
`It is my opinion that the Palmer provisional does not disclose a
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`receiver for receiving both a programming signal and an embedded address as
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`claimed. Rather, it is my opinion that the Palmer provisional only discloses a
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`receiver receiving a transmitted address, not receiving an address embedded in a
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`programming signal or receiving a programming signal. For example, the text of
`
`the Palmer provisional states that the computer receives transmitted addresses
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`using a paging system. Ex. 1008 at 1, 3, 5. Moreover, the Palmer provisional
`
`describes the receiver of the computer receiving an AutoURL transmission, but
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`does not describe the AutoURL being embedded in a programming signal at the
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`time of reception. Ex. 1008 at 3 (“When a receiver receives an AutoURL
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`transmission, the alphanumeric data (usually a Web URL address) is stored in
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`computer memory and an Internet browser will automatically contact the
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`broadcasters desired Internet site.”). Similarly, throughout the text, the Palmer
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`provisional only references the computer receiving the address, not receiving an
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`address that is embedded in a programming signal or receiving a programming
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`signal. Ex. 1008 at 11 (“The computer receives the address . . . .”) (“Desirably, the
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`computer includes a receiver for receiving the addresses which are transmitted via
`
`electromagnetic waves.”).
`
`
`
`8
`
`
`
`17.
`
`It is my opinion that the Palmer provisional describes a system that
`
`sends addresses to a computer through a paging network. For example, the Palmer
`
`provisional discloses the receiver receiving the URL as alpha-numeric data. Ex.
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`1008 at 1, 3, 5, 6. The term “alpha-numeric” was a term commonly used in the
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`paging industry at the time of the Palmer provisional to describe the format of the
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`information transmitted over a paging system. It represented an advance over
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`previous paging system formats, which were able to only send “numeric”
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`information, such as a call back number. As such, the “alpha-numeric” format
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`would be able to send URLs, such as an AutoURL, over a paging system as the
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`Palmer provisional described. Ex. 1008 at 3, 5.
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`18. Similarly to the term “alpha-numeric,” frequency modulation (FM) is
`
`also a term used throughout the Palmer provisional, which, in my opinion,
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`indicates transmitting the URLs to the receiving computer on a paging system, and
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`not via a television system, which would have used Vestigial Sideband Modulation
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`(a form of AM, or Amplitude Modulation). Ex. 1008 at 1, 3, 6, 11. In fact, Fig. 1
`
`of the Palmer provisional shows a different symbol for the signal being sent to the
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`receiving computer than the signal being sent to the television or radio. Ex. 1008
`
`at Fig. 1. Specifically, as shown annotated below, Fig. 1 of the Palmer provisional
`
`uses a lightning bolt symbol 21 going to the receiving computer and a dotted line
`
`
`
`9
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`
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`84 going to the television or radio, indicating different types of transmissions. Ex.
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`1008 at Fig. 1.
`
`
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`19.
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`It is my opinion that the Palmer provisional describes sending URLs
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`to the receiving computer via a paging network, not a television network. It is also
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`my opinion that many other references in the Palmer provisional confirm its
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`limitation to a paging system, including the name “WebPager” for the hardware
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`receiver in the computer. Ex. 1008 at 6.
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`20.
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`It is my opinion that the Palmer provisional further describes that the
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`“broadcaster transmits an alpha-numeric message containing [an AutoURL] code
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`over a common broadcast paging network or via FM subcarrier, RF or satellite
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`slightly in advance of the broadcast programming . . . . If the System uses VBI
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`
`
`10
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`
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`video encoding, the signal can be synchronously broadcast with the television
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`signals.” Ex. 1008 at 3. Synchronously is defined as occurring or existing at the
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`same time. Ex. 2005 at 1376. The petitioner appears to rely on the use of VBI
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`encoding as allegedly providing disclosure for the receiver receiving both the
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`programming signal and the embedded address. Paper 1 at 37-39. However, it is
`
`my opinion that this description, including the use of VBI encoding, is consistent
`
`with the Palmer patent description of the paging network. Specifically, the Palmer
`
`patent describes a central office 70 that coordinates the activities between a paging
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`system 20 and a broadcaster 90. Ex. 1007 at 5:44-45. The Palmer patent further
`
`describes that:
`
`[f]or any radio and television programming where it is
`difficult to predict when the [URL’s] should be simulcast
`with the broadcast programming, such as live broadcasts,
`the station 90 may send its URL page requests either to
`central office 70 or directly to paging system 20 (as
`referenced by line 84 of FIG. 1) in relative synchronicity
`and real-time with the programming. Yet further, the
`station may inform the central office of what URL’s
`should be paged by embedding the information right in
`its broadcast. For example, the URL may be embedded in
`the vertical blanking interval, sideband or alternative
`band or channel of the broadcast and extracted by the
`central office 70.
`
`
`
`11
`
`
`
`Ex. 1007 at 5:50-62 (emphasis added).
`
`21. Thus, it is my opinion that one of ordinary skill in the art would
`
`understand that the URL is extracted by central office 70 prior to being sent to the
`
`receiver of the computer. Therefore, it is my opinion that consistent with the
`
`Palmer provisional, only the URLs are sent to the receiver and not the
`
`programming signal. Accordingly, in my opinion, the Palmer provisional does not
`
`describe any embodiment which, expressly or inherently, includes the transmitted
`
`address being embedded in any signal when it is received by the receiver or any
`
`embodiment which, expressly or inherently, includes the receiver receiving a
`
`programming signal.
`
`22. For at least these reasons, it is my opinion that the Palmer provisional
`
`does not disclose or suggest “a receiver for receiving a programming signal and the
`
`embedded address.”
`
`2.
`
`The Palmer Provisional Does Not Disclose or Suggest “an
`Address Extractor Which Extracts the Address From the
`Programming Signal”
`
`23. Each of independent claims 1-4 recites “an address extractor which
`
`extracts the address from the programming signal.” Ex. 1001 at 13:38-39, 62-63;
`
`14:23-24, 47-48. Netflix asserts that column 8, lines 13-19, of the non-prior-art
`
`Palmer patent discloses this feature of the claims, and then adds cites generally to
`
`pages 1 and 3 of the Palmer provisional as allegedly disclosing the same thing.
`
`
`
`12
`
`
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`Paper 1 at 39. The Palmer provisional does not contain the word “extract” or any
`
`equivalent word. Ex. 1008 at 1-12.
`
`24.
`
`It is my opinion that the Palmer provisional does not disclose the
`
`address extractor, either explicitly or inherently. I have been informed that to
`
`establish inherency, the extrinsic evidence must make clear that the missing
`
`descriptive matter is necessarily present in the thing described in the reference, and
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`that it would be so recognized by persons of ordinary skill.
`
`25.
`
`It is my opinion that it is not inherent that the computer system of the
`
`Palmer provisional contains an “address extractor” as claimed. It is my opinion
`
`that there is no description in the Palmer Provisional that an address extractor
`
`would be part of the computer system rather than part of a central office or another
`
`device, such as a server, separate from the computer system. As discussed above,
`
`it is my opinion that the disclosure of the Palmer provisional is consistent with the
`
`URL being sent to the receiver via the paging network after the URL is extracted at
`
`a central office remote from the receiver. Ex. 1008 at 1, 3, 5, 6, 9-11. In such a
`
`scenario, it is my opinion that persons of ordinary skill would recognize that an
`
`extractor is not necessary because the URL has already been extracted. Therefore,
`
`it is also my opinion that the computer system of the Palmer provisional does not
`
`require software, or any other means, to extract the URL from a programming
`
`signal.
`
`
`
`13
`
`
`
`C. A Person of Ordinary Skill in the Art Would Not Have Been
`Motivated to Combine the Internet Technology of Palmer With
`Either the Technology of Romesburg Or Batchelor
`
`26.
`
`It is my opinion that at the priority date of the ’437 patent, early in
`
`1996, there was as yet no practically usable form of Internet video streaming. It is
`
`my opinion that the only available media content at the time was by either
`
`traditional delivery means, such as television broadcasting, cable and satellite, or
`
`telco video providers, or via distributed media (e.g., books, video cassettes, audio
`
`CDs). The immaturity of Internet technology and the limited capabilities of
`
`television/PC technology at the time made combining the two far from
`
`straightforward.
`
`27. While limited interactive television systems were available to increase
`
`the level of user interaction and to provide improved learning and entertainment
`
`opportunities, these systems were not capable of accessing the vast information
`
`available on the Internet. Ex. 1001 at 1:66-2:3. For example, previous solutions
`
`for this problem included a one-way “piggy back” system that used stripped down
`
`and static webpages sent in the VBI of the video signal. Ex. 1001 at 3:19-34. This
`
`process required specialized hardware, thus increasing the complexity and cost of
`
`the PC. Ex. 1001 at 3:26-30. It is my opinion that by marrying the appeal of TV
`
`with the two-way data transfer capabilities of the Internet for the first time, the
`
`inventors of the ’437 patent accomplished the creation of a powerful new medium
`
`
`
`14
`
`
`
`in 1996 to greatly and dynamically enrich the user experience with dynamic video
`
`content.
`
`28. Basic flow diagrams of my understanding of the disclosures of the
`
`Palmer provisional, Romesburg, and Batchelor are shown below:
`
`Palmer Provisional
`Broadcast Signal with VBI
`(including URL)
`
`
`
`
`Broadcast
`
`
`
`
`Romesburg
`
`Broadcast Signal
`
`Television
`
`Central
`Office
`
`URL
`
`No communication
`between television and
`computer
`
`Computer
`
`
`
`
`Broadcast
`
`
`
`
`
`Broadcast Signal
`
`Video Image
`
`Television
`
`Computer
`
`Modified Video Image
`
`Batchelor
`Broadcast Signal with VBI
`(including text)
`
`Broadcast
`
`29. With the ubiquity of the Internet today, it may be difficult to recall
`
`Computer
`
`
`
`
`
`
`
`how limited the Internet was in early 1996, but it is crucial to do so for this
`
`proceeding. Internet penetration outside of the military and universities into the
`
`common consumer home was almost nonexistent in 1996, as the following graphic
`
`
`
`15
`
`
`
`shows (depicting Internet users per 100 inhabitants, home, business and academia
`
`combined from 1996 to today):
`
`30. Google, Facebook, and YouTube did not yet exist. In fact, in January
`
`1996 there were only 100,000 websites on the Internet (compared to more than
`
`950,000,000 today), and they all generally looked like this:
`
`
`
`
`
`
`
`16
`
`
`
`31.
`
`It is my opinion that the websites that existed then were largely text-
`
`based with some static graphical images interspersed. Furthermore, it is my
`
`opinion that Internet video streaming was nonexistent until at least 1997 when
`
`RealVideo began making first steps. In fact, the maximum dial-up speed generally
`
`available to access the Internet in 1996 was through a narrowband phone
`
`connection at 33.6 kbit/sec, a far cry from the broadband, high-speed Internet
`
`access prevalent today, and quite insufficient for TV-quality video streaming.
`
`32.
`
`It is my opinion that in terms of content delivery, video content
`
`distributors (broadcasters, satellite and cable companies, and telco video providers)
`
`in 1996 transmitted a complete but static product to the viewers. Video content
`
`distributors did not use the Internet, but rather primarily used terrestrial, satellite or
`
`cable networks to deliver video content to subscribers. Indeed, most viewers did
`
`not have Internet access or even access to a computer network at all. It is my
`
`opinion that even those rare viewers who did have Internet access mainly used
`
`slow dial-up connections, so it would have been impractical and prohibitively
`
`expensive to access Internet content from a viewer’s display device.
`
`33.
`
`It is my opinion that, even if it had been considered desirable to add
`
`Internet addresses to a television broadcast signal in 1996, the limitations on
`
`Internet technology at the time would have made the combination unfeasible.
`
`
`
`17
`
`
`
`34. Efforts to combine televisions and personal computers date back to
`
`the late 1980s, with TV tuner cards and add-on boxes that could be added to, for
`
`example, Commodore Amiga PCs. This adaptation would put a small video
`
`window on the computer screen to show broadcast or cable content. It is my
`
`opinion that no extra data or functionality was available; the viewer merely
`
`watched regular (analog) TV on a PC monitor.
`
`35.
`
`It is my opinion that, in the early 1990s, Apple Computer tried
`
`unsuccessfully to combine a TV with a PC. The Macintosh TV was Apple
`
`Computer's first attempt at computer-television integration and it launched in late
`
`1993. Macintosh TV was essentially a PC with a built-in 14" Sony Trinitron CRT
`
`that could switch from a computer display to a cable-ready television. The
`
`Macintosh TV provided a television monitor and a PC screen in one housing, but it
`
`was incapable of showing television while displaying a desktop PC window,
`
`although it could capture still frames from a TV program to single image picture
`
`files stored on the PC. Apple quickly withdrew from the market with only 10,000
`
`units shipped.
`
`
`
`18
`
`
`
`
`
`36.
`
`It is my opinion that other attempts at creating a PC-TV device were
`
`made by Gateway Computer (Destination computer, 1996) and PC manufacturers
`
`using TV tuner cards such as WinTV by Hauppauge. It is my opinion that these
`
`“convergence devices” typically allowed a viewer to watch regular TV on a
`
`computer screen. It is my opinion that one of ordinary skill in the art would
`
`understand that they did not offer enhanced user experiences or provide two-way
`
`data transfer in a video stream.
`
`37.
`
`It is my opinion that early TV-PC devices combined features of a PC
`
`and television without actually integrating them. It is also my opinion that these
`
`devices did not provide information exchange between a PC and a TV
`
`simultaneously. For example, the WinTV device described above received
`
`independent TV signals and displayed them on a portion of the PC screen, but
`
`
`
`19
`
`
`
`required separate hardware to do so. There was no exchange of related
`
`information between the PC and TV components of the WinTV, because the
`
`signals of the TV and PC were processed independently. Furthermore, it is my
`
`opinion that processing capabilities and memory limitations of PCs at that time
`
`would have made it impossible to capture, store, process, integrate, and render both
`
`the TV and PC signals simultaneously onto a single display device.
`
`1.
`
`It Would Not Have Made Sense to Combine the Internet
`Technology of Palmer with the TV Technology of
`Romesburg
`
`38.
`
`It is my opinion that the Petitioner alleges, incorrectly, that modifying
`
`the system of the Palmer provisional system with Romesburg would “simplify” the
`
`system of Palmer. Paper 1 at 37. It is my opinion that this allegation is incorrect.
`
`Rather, it is my opinion that one of ordinary skill in the art would understand that
`
`such a modification would add an additional transmission of data and complicate
`
`the processes for rendering and data storage in the television.
`
`39. Romesburg discloses receiving an external video image at a video
`
`memory unit (video RAM or VRAM) in the television. Ex. 1005 at 3:60-63, 5:5-9.
`
`It is my opinion that the format of the data that the VRAM of the television is able
`
`to store is different from the formatting of a website traditionally shown on the
`
`video. It is my opinion that PC and TV display formats and resolution were also
`
`inconsistent, making rendering of programming created on either format
`
`
`
`20
`
`
`
`inconsistent with the other. As such, it is my opinion that it would not have been
`
`obvious to one skilled in the art at the time to display a website created for viewing
`
`on a PC on a television screen.
`
`40. Romesburg discloses a TV that receives a static video image and
`
`stores it for later display at a user’s discretion or for recording onto a video cassette
`
`recorder. Ex. 1005 at 5:1-15. In my opinion, this is different from the computer
`
`system in Palmer because that computer system is required to display dynamic
`
`webpages at particular times indicated by a broadcaster.
`
`41. Romesburg teaches integrating an external video image (i.e., still
`
`frame) into an existing video signal (i.e., program). Ex. 1005 at 5:1-15, 6:31-35,
`
`6:44, 6:53-54. It is my opinion that one of ordinary skill in the art would
`
`understand that this is further supported by Romesburg’s use of an RS-232
`
`interface to do so, which would have been limited by its inherent data rate
`
`limitation of about 20 kbits per second. Furthermore, it is my opinion that
`
`Romesburg’s system would have required substantially more video RAM with
`
`faster access speeds and a more powerful processer to do anything more than
`
`provide for an external video image to be integrated into an existing video signal.
`
`It is my opinion that additional hardware and software would have been required to
`
`process the format and resolution differences described above between the TV and
`
`PC display formats requiring expertise not available to one of ordinary skill in the
`
`
`
`21
`
`
`
`art, particularly considering the processor and memory technical limitations
`
`present in PCs at that time. As such, it is my opinion that it would not have been
`
`obvious to one skilled in the art at the time to combine the device disclosed in the
`
`Palmer provisional and the device disclosed in Romesburg, such that interactive
`
`video and data “streamed” content, as received from the Internet, could be
`
`integrated into a single display.
`
`2.
`
`It Would Not Have Made Sense to Combine the Internet
`Technology of Palmer with the TV Technology of Batchelor
`
`42. The Petitioner alleges that Batchelor discloses a specific motivation to
`
`combine its teachings with the Palmer provisional because “it was desirable to
`
`show information related to a television program alongside the television program
`
`itself.” Paper 1 at 46. However, it is my opinion that it would not have been
`
`obvious to combine these teachings because it is much more complex to display
`
`dynamic webpages rather than static text.
`
`43.
`
`In particular, a skilled artisan would not have combined the “real-time”
`
`websites of Palmer with a device using static information from a disk or CD, like
`
`the one in Batchelor. It is my opinion that information available on a disk or CD
`
`contained within a PC is a very controlled environment, with the data readily
`
`presentable to a PC display, including both the format and resolution detailed
`
`previously, as well as access to and timing of that data coming from the disk or CD
`
`to the monitor (via the computer’s processor and memory). It is my opinion that
`
`
`
`22
`
`
`
`information received from the Internet is not nearly as precise and controllable, and
`
`is greatly affected by a number of factors, including inherent limitations on the
`
`available bandwidth on the communication’s networks to and from the Internet to
`
`the PC, the various routers and servers’ response times that the information might
`
`be required to traverse, as well as the specific loading of the network at the time
`
`the URL is accessed. It is my opinion that all of these factors were especially
`
`variable at the time of the invention, making the task of combining the computer
`
`system disclosed in the Palmer provisional and the device disclosed in Batchelor
`
`not obvious to one of ordinary skill in the art.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`23
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`
`
`IX. CONCLUSION
`
`44.
`
`I declare that all statements made herein of my knowledge are true,
`
`and that all statements made on information and belief are believed to be true, and
`
`that these statements were made with the knowledge that willful false statements
`
`and the like so made are punishable by fine or imprisonment, or both, unde
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