Paper No.
`Filed: November 6, 2014
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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
`__________
`
`
`
`Patent Owner’s Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 7,409,437
`
`
`
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`Case No. IPR2014-00267
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`TABLE OF CONTENTS
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`I.
`
`II.
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`PRELIMINARY STATEMENT ..................................................................... 1
`
`THE PATENTED TECHNOLOGY ............................................................... 2
`
`III. THE PETITION FAILS TO ESTABLISH THAT ANY CLAIM OF
`THE ’437 PATENT IS OBVIOUS ................................................................. 4
`
`A.
`
`The Palmer Patent is Only Prior Art to the Extent its Subject
`Matter is Contained in the Palmer Provisional ..................................... 4
`
`B.
`
`The Palmer Provisional Differs from the Palmer Patent....................... 5
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`1.
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`2.
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`3.
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`The Palmer Provisional Does Not Disclose or Suggest “a
`Receiver for Receiving a Programming Signal and the
`Embedded Address” .................................................................... 6
`
`The Palmer Provisional Does Not Disclose or Suggest
`“an Address Extractor Which Extracts the Address From
`the Programming Signal” ..........................................................11
`
`Since the Palmer Provisional Does Not Disclose Or
`Suggest the Claimed “Receiver” Or “Address Extractor,”
`The Non-Prior-Art Palmer Patent Is Not Prior Art for
`These Elements .........................................................................13
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`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
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`1.
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`2.
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`3.
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`4.
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`The Internet Had Limited Capabilities in 1996 ........................15
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`Early Attempts to Combine Television and Personal
`Computers Did Not Integrate TV and PC Features ..................17
`
`It Would Not Have Made Sense to Combine the Internet
`Technology of Palmer with the TV Technology of
`Romesburg ................................................................................19
`
`It Would Not Have Made Sense to Combine the Internet
`Technology of Palmer with the TV Technology of
`Batchelor ...................................................................................21
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`Case No. IPR2014-00267
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`IV. MR. KRAMER’S TESTIMONY SHOULD NOT BE GIVEN ANY
`WEIGHT BECAUSE HE WAS NOT ONE OF ORDINARY SKILL
`IN 1996 ..........................................................................................................22
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`V.
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`CONCLUSION ..............................................................................................26
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`ii
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`Case No. IPR2014-00267
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Cases
`In re Giacomini,
`612 F.3d 1380 (Fed. Cir. 2010) ............................................................................ 4
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ...................................................................... 11, 13
`
`Sundance, Inc. v. DeMonte Fabricating Ltd.,
`550 F.3d 1356 (Fed. Cir. 2008) .................................................................... 25-26
`
`Statutes
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`35 U.S.C. § 312 ...................................................................................................... 4, 6
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`35 U.S.C. § 316 ...................................................................................................... 2, 4
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`Other Authorities
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`37 C.F.R. § 42.22 ....................................................................................................... 6
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`Fed. R. Evid. 702 ..................................................................................................... 24
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`I.
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`PRELIMINARY STATEMENT
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`Case No. IPR2014-00267
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`The grounds proposed in the petition improperly rely on a document that is
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`not prior art to the patent, so they cannot prove unpatentability of the ’437 patent
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`claims. In particular, the petition relies on the disclosure of U.S. Patent No.
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`5,905,865 to Palmer, which is dated almost 8 months after the filing date of the
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`’437 patent. Petitioner attempts to transform the teachings of the Palmer patent
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`into prior art by relying on the filing date of an earlier provisional application of
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`Palmer, but the needed subject matter is not present in the Palmer provisional.
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`Despite the Board’s initial finding that the Palmer provisional inherently discloses
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`the needed subject matter, a proper consideration of the references reveals that it
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`does not. This might explain why Netflix’s petition provided no arguments
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`regarding inherency. When only the proper prior art is considered, the grounds
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`proposed in the petition fail.
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`Furthermore, the petition’s assertions regarding the obviousness of
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`combining the internet technology of the prior art Palmer provisional with the
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`television technology of either Romesburg or Batchelor fail to address the
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`complexities such combinations would entail. The petition fails to provide any
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`persuasive reason why one of ordinary skill in the art in the mid-1990’s would
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`have been motivated to combine the features of a television broadcast and an
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`internet-based website into a single display based on these references.
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`Netflix has not carried its “burden of proving . . . unpatentability by a
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`preponderance of the evidence,” 35 U.S.C. § 316(e), so the Board should enter
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`judgment against Netflix and terminate this proceeding.
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`II. THE PATENTED TECHNOLOGY
`The ’437 patent relates to a system for integrating video programming with
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`the information resources of the Internet. Ex. 1001 at Abstract. Unlike today, at
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`the time of the invention in 1996, video programming and the vast information
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`resources of the Internet did not go together. Ex. 1001 at 2:4-12. Nearly 20 years
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`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, one could use a TV tuner card to display a
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`small video window on a computer monitor, but nothing linked the video content
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`to the Internet content. Ex. 2004 at ¶ 8.
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`The patented technology improved upon the prior art by marrying video with
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`the two-way data transfer capabilities of the Internet, facilitating the simultaneous
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`enjoyment of both by relating the two on a single display. Ex. 1001 at 3:4-18,
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`8:23-28. For example, independent claim 1 recites:
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`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:
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`a receiver for receiving a programming signal and the
`embedded address, the address identifying the source of
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`the online information segment which relates to the
`programming signal;
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`an address extractor which extracts the address from the
`programming signal;
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`a web browser;
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`a processor which automatically directs the web browser
`to establish a communications link with the online
`information source1 identified by the address, whereby
`the processor retrieves the online information segment
`from the online information source via the
`communications link; and
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`a display monitor for presenting the programming signal,
`comprising a video signal or an audio signal,
`concurrently with the online information segment;
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`1 Each of the independent claims recites “a processor which automatically directs
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`the web browser to establish a communications link with the online information
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`source.” Netflix proposed construing this language to mean “a processor which
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`directs the web browser to establish a communications link with the online
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`information source, where the act of directing occurs without human intervention,”
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`Petition (Paper 1 at 8-9), while the Board proposed construing it to mean that “the
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`processor directs the web browser ‘without intervention by a human operator’ from
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`receipt of the URL to display of the Internet page,” Decision (Paper 13 at 7).
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`OpenTV does not necessarily agree with these constructions, but neither is relevant
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`to OpenTV’s arguments. Accordingly, OpenTV does not address the constructions
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`in this Response.
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`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.
`III. THE PETITION FAILS TO ESTABLISH THAT ANY CLAIM OF
`THE ’437 PATENT IS OBVIOUS
`
`Netflix has the “burden of proving a proposition of unpatentability by a
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`preponderance of the evidence.” 35 U.S.C. § 316(e). The statute further requires
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`that “the petition identif[y], in writing and with particularity, each claim
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`challenged, the grounds on which the challenge to each claim is based, and the
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`evidence that supports the grounds for the challenge to each claim.” 35 U.S.C.
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`§ 312. Netflix’s petition fails to carry this burden or provide the required analysis,
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`so the proposed obviousness grounds cannot be maintained, and the patentability
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`of the claims should be confirmed.
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`A. The Palmer Patent is Only Prior Art to the Extent its Subject
`Matter is Contained in the Palmer Provisional
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`Everyone agrees that the Palmer patent is only prior art to the extent its
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`subject matter is contained in the Palmer provisional. Paper 1 at 33; Paper 11 at 14
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`(citing In re Giacomini, 612 F.3d 1380, 1385 (Fed. Cir. 2010); Paper 13 at 13.
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`Accordingly, as recognized by the Board, only the disclosure of the Palmer
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`provisional, not the Palmer patent, is relevant to this proceeding. Paper 13 at 13.
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`The Palmer Provisional Differs from the Palmer Patent
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`B.
`Both the Palmer provisional and Palmer patent describe a paging network
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`for transmitting URLs to a computer. Ex. 1008 at 3, 5-7, 10, 12; Ex. 1007 at
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`Abstract, 2:25-33, 3:27-34, 4:1–6:6, 7:27-45; Ex. 2004 at ¶ 14. However, only the
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`Palmer patent describes an additional embodiment that transmits URLs to a
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`computer without a paging network. Ex. 1007 at 8:5-23; Ex. 2004 at ¶ 14. The
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`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
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`long, with large double-spaced font and a single figure that is not mentioned in the
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`text. Ex. 1008; Ex. 2004 at ¶ 14. On the other hand, the Palmer patent
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`specification is 12 columns of small single-spaced text with a different figure,
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`which is discussed throughout the text. Ex. 1007; Ex. 2004 at ¶ 14. Therefore, the
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`disclosure of the Palmer patent differs significantly from the disclosure of the
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`Palmer provisional.
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`Instead of explaining how the cited subject matter of the Palmer patent
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`relates to the earlier filed Palmer provisional, the petition simply states that “[f]or
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`each element of the Palmer patent identified below, there is a corresponding
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`teaching in the provisional application,” and then lists a string of citations to
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`multiple pages of the Palmer provisional. See, e.g., Paper 1 at 33-34, 39.2
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`However, the petition relies upon subject matter in the Palmer patent that is not
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`disclosed in any part of the Palmer provisional, let alone the string cited portions.
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`1.
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`The Palmer Provisional Does Not Disclose or Suggest “a
`Receiver for Receiving a Programming Signal and the
`Embedded Address”
`Each of independent claims 1-4 recites “a receiver for receiving a
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`programming signal and the embedded address,” and the claims’ preambles clarify
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`that “the embedded address” is part of the “programming signal.” Ex. 1001 at
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`13:30-31, 34-35, 54-55, 58-59; 14:15-16, 19-20, 39-40, 43-44. Netflix asserts that
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`column 3, lines 51-55 and column 8, lines 5-19, of the non-prior-art Palmer patent
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`discloses this feature of the claims, and then cites generally to pages 1, 3, 6 and 9-
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`11, and Figure 1 of the Palmer provisional as allegedly disclosing the same thing.
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`Paper 1 at 38. The cited portions of the Palmer patent are not included in the
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`Palmer provisional and, indeed, come from the section of the Palmer patent that
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`2 Consistent with 35 U.S.C. § 312, which requires that “the petition identif[y], in
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`writing and with particularity, each claim challenged, the grounds on which the
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`challenge to each claim is based, and the evidence that supports the grounds for the
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`challenge to each claim,” Rule 42.22(a)(2) requires that the petition set forth “a
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`detailed explanation of the significance of the evidence.” These string citations are
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`insufficient to establish grounds with the particularity required by 35 U.S.C. § 312.
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`was added later describing a new embodiment that transmits URLs to a computer
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`without a paging network. Compare Ex. 1007 at 8:5-19 with Ex. 1008 at 1, 3, 6, 9,
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`10, Fig. 1; Ex. 2004 at ¶ 15.
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`The Palmer provisional does not disclose a receiver for receiving both a
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`programming signal and an embedded address as claimed. Rather, the Palmer
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`provisional only discloses a receiver receiving a transmitted address, not receiving
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`an address embedded in a programming signal or receiving a programming signal.
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`Ex. 2004 at ¶ 16. For example, the text of the Palmer provisional states that the
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`computer receives transmitted addresses using a paging system. Ex. 1008 at 1, 3,
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`5. Moreover, the Palmer provisional describes the receiver of the computer
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`receiving an AutoURL transmission, but does not describe the AutoURL being
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`embedded in a programming signal at the time of reception. Ex. 1008 at 3 (“When
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`a receiver receives an AutoURL transmission, the alphanumeric data (usually a
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`Web URL address) is stored in computer memory and an Internet browser will
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`automatically contact the broadcasters desired Internet site.”). Similarly,
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`throughout the text, the Palmer provisional only references the computer receiving
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`the address, not receiving an address that is embedded in a programming signal or
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`receiving a programming signal. Ex. 1008 at 11 (“The computer receives the
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`address . . . .”) (“Desirably, the computer includes a receiver for receiving the
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`addresses which are transmitted via electromagnetic waves.”).
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`The Palmer provisional describes a system that sends addresses to a
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`computer through a paging network. Ex. 2004 at ¶ 17. For example, the Palmer
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`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. Ex. 2004 at ¶ 17. It represented an
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`advance over previous paging system formats, which were able to only send
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`“numeric” information, such as a call back number. Id. As such, the “alpha-
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`numeric” format would be able to send URLs, such as an AutoURL, over a paging
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`system as the Palmer provisional described. Ex. 1008 at 3, 5; Ex. 2004 at ¶ 17.
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`Similarly to the term “alpha-numeric,” frequency modulation (FM) is also a
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`term used throughout the Palmer provisional, which indicates transmitting the
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`URLs to the receiving computer on a paging system, and not via a television
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`system, which would have used Vestigial Sideband Modulation (a form of AM, or
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`Amplitude Modulation). Ex. 1008 at 1, 3, 6, 11; Ex. 2004 at ¶ 18. In fact, Fig. 1 of
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`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
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`at Fig. 1; Ex. 2004 at ¶ 18. Specifically, as shown annotated below, Fig. 1 of the
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`Palmer provisional uses a lightning bolt symbol 21 going to the receiving computer
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`and a dotted line 84 going to the television or radio, indicating different types of
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`transmissions. Ex. 1008 at Fig. 1; Ex. 2004 at ¶ 18.
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`The Palmer provisional describes sending URLs to the receiving computer
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`via a paging network, not a television network. Ex. 2004 at ¶ 19. Many other
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`references in the Palmer provisional confirm its limitation to a paging system,
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`including the name “WebPager” for the hardware receiver in the computer. Id.;
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`Ex. 1008 at 6.
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`The Palmer provisional further describes that the “broadcaster transmits an
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`alpha-numeric message containing [an AutoURL] code over a common broadcast
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`paging network or via FM subcarrier, RF or satellite slightly in advance of the
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`broadcast programming . . . . If the System uses VBI video encoding, the signal
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`can be synchronously broadcast with the television signals.” Ex. 1008 at 3.
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`Synchronously is defined as occurring or existing at the same time. Ex. 2005 at
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`1376. The Petitioner appears to rely on the use of VBI encoding as allegedly
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`providing disclosure for the receiver receiving both the programming signal and
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`the embedded address. Paper 1 at 37-39. However, this description, including the
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`use of VBI encoding, is consistent with the Palmer patent description of the paging
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`network. Ex. 2004 at ¶ 20. Specifically, the Palmer patent describes a central
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`office 70 that coordinates the activities between a paging system 20 and a
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`broadcaster 90. Ex. 1007 at 5:44-45; Ex. 2004 at ¶ 20. The Palmer patent further
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`describes that:
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`[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.
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`Ex. 1007 at 5:50-62 (emphasis added); Ex. 2004 at ¶ 20. Thus, the URL is
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`extracted by central office 70 prior to being sent to the receiver of the computer.
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`Ex. 2004 at ¶ 21. Therefore, consistent with the Palmer provisional, only the
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`URLs are sent to the receiver and not the programming signal. Id. Accordingly,
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`the Palmer provisional does not describe any embodiment which, expressly or
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`inherently, includes the transmitted address being embedded in any signal when it
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`is received by the receiver or any embodiment which, expressly or inherently,
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`includes the receiver receiving a programming signal. In re Robertson, 169 F.3d
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`743, 745 (Fed. Cir. 1999) (to establish inherency, the extrinsic evidence “must
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`make clear that the missing descriptive matter is necessarily present in the thing
`
`described in the reference, and that it would be so recognized by persons of
`
`ordinary skill,” citations omitted).
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`
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`For at least these reasons, the Palmer provisional does not disclose or
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`suggest “a receiver for receiving a programming signal and the embedded
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`address.”
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`2.
`
`The Palmer Provisional Does Not Disclose or Suggest “an
`Address Extractor Which Extracts the Address From the
`Programming Signal”
`Each of independent claims 1-4 recites “an address extractor which extracts
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`the address from the programming signal.” Ex. 1001 at 13:38-39, 62-63; 14:23-24,
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`47-48. Netflix asserts that column 8, lines 13-19, of the non-prior-art Palmer
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`patent discloses this feature of the claims, and then adds cites generally to pages 1
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`and 3 of the Palmer provisional as allegedly disclosing the same thing. Paper 1 at
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`39. Despite the fact that the Palmer provisional does not contain the word
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`“extract” or any equivalent word, Ex. 1008 at 1-12; Ex. 2004 at ¶ 23, the Institution
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`Decision cited page 3 of the Palmer provisional as allegedly disclosing the claimed
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`“address extractor” by inherency, Paper 13 at 16-18. In particular, the Decision
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`cited the following:
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`AN EXAMPLE OF HOW THE SYSTEM WORKS
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`In one embodiment, the broadcaster transmits an
`alpha-numeric message containing [an AutoURL] code
`over a common broadcast paging network or via FM
`subcarrier, RF or satellite slightly in advance of the
`broadcast programming. The computer program to
`transmit the Internet address is part of the System. If the
`System uses VBI video encoding, the signal can be
`synchronously broadcast with the television signals.
`Other means of broadcasting are also possible.
`
`A plurality of receivers in accordance with the
`invention are attached to computers in the broadcast area:
`local, regional, nationwide or worldwide.
`
`When a receiver receives an AutoURL
`transmission, the alpha-numeric data (usually a Web
`URL address) is stored in computer memory and an
`Internet browser will automatically contact the
`broadcasters desired Internet site. This allows a
`broadcaster to control the Internet destination of the
`receiver’s computer. The receiving computer should
`have access to the Internet, either through a modem and
`POTS telephone line or by other means. The receiving
`computer user can either use their own Internet account
`or sign-on to a service associated with the invention.
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`Paper 13 at 16-17 (emphasis in original).
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`This initial finding is incorrect because the Palmer provisional does not
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`disclose the address extractor, either explicitly or inherently. To establish
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`inherency, the extrinsic evidence “must make clear that the missing descriptive
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`matter is necessarily present in the thing described in the reference, and that it
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`would be so recognized by persons of ordinary skill.” Robertson at 745 (citations
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`omitted).
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`It is not inherent that the computer system of the Palmer provisional contains
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`an “address extractor” as claimed. There is no description in the Palmer
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`Provisional that an address extractor would be part of the computer system rather
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`than part of a central office or another device, such as a server, separate from the
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`computer system. Ex. 2004 at ¶ 25. As discussed above, the disclosure of the
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`Palmer provisional is consistent with the URL being sent to the receiver via the
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`paging network after the URL is extracted at a central office remote from the
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`receiver. Ex. 1008 at 1, 3, 5, 6, 9-11; Ex. 2004 at ¶ 25. In such a scenario, persons
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`of ordinary skill would recognize that an extractor is not necessary, because the
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`URL has already been extracted. Ex. 2004 at ¶ 25. Therefore, the computer
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`system of the Palmer provisional does not require software, or any other means, to
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`extract the URL from a programming signal. Id.
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`3.
`
`Since the Palmer Provisional Does Not Disclose Or Suggest
`the Claimed “Receiver” Or “Address Extractor,” The Non-
`Prior-Art Palmer Patent Is Not Prior Art for These
`Elements
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`The Palmer patent is only prior art to the extent the subject matter relied on
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`is disclosed in the Palmer Provisional. Supra at III.A. As discussed above, the
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`Palmer provisional does not disclose or suggest either the claimed “receiver for
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`receiving a programming signal and the embedded address” or the “address
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`extractor which extracts the address from the programming signal.” With no
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`disclosure in the Palmer provisional, the Petitioner cannot rely on new disclosures
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`added to the Palmer patent because those parts of the Palmer patent are not prior
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`art to the ’437 patent.
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`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
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`At the priority date of the ’437 patent, early in 1996, there was as yet no
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`practically usable form of Internet video streaming. Ex. 2004 at ¶ 26. The only
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`available media content at the time was by either traditional delivery means, such
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`as television broadcasting, cable and satellite, or telco video providers, or via
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`distributed media (e.g., books, video cassettes, audio CDs). Id. The immaturity of
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`Internet technology and the limited capabilities of television/PC technology at the
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`time made combining the two far from straightforward.
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`While limited interactive television systems were available to increase the
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`level of user interaction and to provide improved learning and entertainment
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`opportunities, these systems were not capable of accessing the vast information
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`available on the Internet and displaying real-time webpages. Ex. 1001 at 1:66-2:3;
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`Ex. 2004 at ¶ 27. For example, previous solutions for this problem included a one-
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`way “piggy back” system that used stripped down and static webpages sent in the
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`VBI of the video signal. Ex. 1001 at 3:19-34; Ex. 2004 at ¶ 27. This process
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`required specialized hardware, thus increasing the complexity and cost of the PC.
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`Ex. 1001 at 3:26-30; Ex. 2004 at ¶ 27. By marrying the mass appeal of TV with
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`the two-way data transfer capabilities of the Internet for the first time, the inventors
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`of the ’437 patent accomplished the creation of a powerful new medium in 1996 to
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`greatly and dynamically enrich the user experience with dynamic video content.
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`The Internet Had Limited Capabilities in 1996
`1.
` With the ubiquity of the Internet today, it may be difficult to recall how
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`limited the Internet was in early 1996, but it is crucial to do so for this proceeding.
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`Internet penetration outside of the military and universities into the common
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`consumer home was almost nonexistent in 1996, as the following graphic shows
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`(depicting Internet users per 100 inhabitants, home, business and academia
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`combined from 1996 to today):
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`Ex. 2004 at ¶ 29. Google, Facebook, and YouTube did not yet exist. Ex. 2004 at
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`¶ 30. In fact, in January 1996 there were only 100,000 websites on the Internet
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`(compared to more than 950,000,000 today), and they all generally looked like
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`this:
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`Ex. 2004 at ¶ 30-31.
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`In terms of content delivery, video content distributors (broadcasters,
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`satellite and cable companies, and telco video providers) in 1996 transmitted a
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`complete but static product to the viewers. Ex. 2004 at ¶ 32. Video content
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`distributors did not use the Internet, but rather primarily used terrestrial, satellite or
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`cable networks to deliver video content to subscribers. Indeed, most viewers did
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`not have Internet access or even access to a computer network at all. Id. Even
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`those rare viewers who did have Internet access mainly used slow dial-up
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`connections, so it would have been impractical and prohibitively expensive to
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`access Internet content from a viewer’s display device. Id.
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`Even if it had been considered desirable to add Internet addresses to a
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`television broadcast signal in 1996, which the Petition has not demonstrated, the
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`limitations on Internet technology at the time would have made the combination
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`unfeasible.
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`2.
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`Early Attempts to Combine Television and Personal
`Computers Did Not Integrate TV and PC Features
`Efforts to combine televisions and personal computers date back to the late
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`1980s, with TV tuner cards and add-on boxes that could be added to, for example,
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`Commodore Amiga PCs. Ex. 2004 at ¶ 34. This adaptation would put a small
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`video window on the computer screen to show broadcast or cable content. Id. No
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`extra data or functionality was available; the viewer merely watched regular
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`(analog) TV on a PC monitor. Id.
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`In the early 1990s Apple Computer tried unsuccessfully to combine a TV
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`with a PC. The Macintosh TV was Apple Computer's first attempt at computer-
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`television integration and it launched in late 1993. Ex. 2004 at ¶ 35. Macintosh
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`TV was essentially a PC with a built-in 14" Sony Trinitron CRT that could switch
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`from a computer display to a cable-ready television. Id. The Macintosh TV
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`provided a television monitor and a PC screen in one housing, but it was incapable
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`of showing television while displaying a desktop PC window, although it could
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`capture still frames from a TV program to single image picture files stored on the
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`PC. Id. Apple quickly withdrew from the market with only 10,000 units shipped.
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`Other attempts at creating a PC-TV device were made by Gateway
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`Computer (Destination computer, 1996) and PC manufacturers using TV tuner
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`cards such as WinTV by Hauppauge. Ex. 2004 at ¶ 36. These “convergence
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`devices” typically allowed a viewer to watch regular TV on a computer screen.
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`They did not offer enhanced user experiences or provide two-way data transfer in a
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`video stream. Id.
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`Early TV-PC devices combined features of a PC and television without
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`actually integrating them. Ex. 2004 at ¶ 37. These devices did not provide
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`information exchange between a PC and a TV simultaneously. Id. For example,
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`the WinTV device described above received independent TV signals and displayed
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`them on a portion of the PC screen, but required separate hardware to do so. Id.
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`There was no exchange of related information between the PC and TV components
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`of the WinTV, because the signals of the TV and PC were processed
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`independently. Id. Furthermore, processing capabilities and memory limitations
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`of PCs at that time would have made it impossible to capture, store, process,
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`integrate, and render both the TV and PC signals simultaneously onto a single
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`display device. Id.
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`3.
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`It Would Not Have Made Sense to Combine the Internet
`Technology of Palmer with the TV Technology of
`Romesburg
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`The Petitioner alleges, incorrectly, that modifying the system of the Palmer
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`provisional system with Romesburg would “simplify” the system of Palmer. Paper
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`1 at 37. Rather, such a modification would add an additional transmission of data
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`and complicate the processes for rendering and data storage in the television. Ex.
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`2004 at ¶ 38.
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`Romesburg discloses receiving an external video image at a video memory
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`unit (video RAM or VRAM) in the television. Ex. 1005 at 3:60-63, 5:5-9; Ex.
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`2004 at ¶ 39. The format of the data that the VRAM of the television is able to
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`store is different from the formatting of a website traditionally shown on a PC. Id.
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`PC and TV display formats and resolution were also inconsistent, making
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`rendering of programming created on either format inconsistent with the other. Id.
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`As such, it would not have been obvious to one skilled in the art at the time to
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`display a website created for viewing on a PC on a television screen. Id.
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`Romesburg discloses a TV that receives a static video image and stores it for
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`later display at a user’s discretion or for recording onto a video cassette recorder.
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`Ex. 1005 at 5:1-15; Ex. 2004 at ¶ 40. This is different from the computer system in
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`Palmer because that computer system is required to display dynamic webpages at
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`particular times indicated by a broadcaster. Ex. 2004 at ¶ 40.
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`Specifically, Romesburg teaches integrating an external video image (i.e.,
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`still frame) into an existing video signal (i.e., program). Ex. 1005 at 5:1-15, 6:31-
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`35, 6:44, 6:53-54; Ex. 2004 at ¶ 41. This is further supported by Romesburg’s use
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`of an RS-232 interface to do so, which would have been limited by its inherent
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`data rate limitation of about 20 kbits per second. Ex. 2004 at ¶ 41. Furthermore,
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`Romesburg’s system would have required substantially more video RAM with
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`faster access speeds and a more powerful processer to do anything more than
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`provide for an external video image to be integrated into an existing video signal.
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`Id. Additional hardware