Filed on behalf of: OpenTV, Inc.
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`NETFLIX, INC.
`
`Petitioner
`
`v.
`
`OPENTV, INC.
`
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2014-00269
`
`Patent 6,233,736
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`DECLARATION OF DAVID E. WACHOB
`
`
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`Introduction .................................................................................................................... 1
`
`II. Qualifications ................................................................................................................. 1
`
`III. Materials Reviewed ........................................................................................................ 2
`
`IV. Overview of the ’736 Patent ........................................................................................ 2
`
`A.
`
`B.
`
`Patented Technology ......................................................................................... 2
`
`Prosecution of the ’736 Patent ......................................................................... 3
`
`V.
`
`Person of Ordinary Skill in the Art ............................................................................. 8
`
`VI. Claim Construction ....................................................................................................... 9
`
`A.
`
`B.
`
`“Indicating” Means “Providing an Automatic Visual, Auditory, or
`Tactile Indication” ........................................................................................... 10
`
`“So That the User has Direct Access to the Information” Means
`“Access to the Online Information is Direct from the User’s
`Perspective” ...................................................................................................... 12
`
`1.
`
`2.
`
`3.
`
`The construction proposed by Netflix is wrong ............................. 12
`
`The preliminary construction adopted by the Board is
`wrong ..................................................................................................... 13
`
`“So that the user has direct access to the information”
`means “access to the online information is direct from the
`user’s perspective” ............................................................................... 16
`
`VII. Applying these Claim Constructions, Throckmorton Lacks Several
`Elements of the Claims ............................................................................................... 19
`
`1.
`
`Throckmorton fails to disclose or suggest the claimed
`“indicating” ........................................................................................... 19
`
`
`
`i
`
`

`

`2.
`
`Throckmorton fails to disclose or suggest the combination
`of the “automatically establishing” limitation and the
`“direct access” limitation .................................................................... 22
`
`VIII. Conclusion .................................................................................................................... 28
`
`
`
`ii
`
`

`

`
`
`I.
`
`I, David E. Wachob, declare as follows:
`
`Introduction
`
`1.
`
`I have been retained by OpenTV, Inc. (“OpenTV”) as an independent
`
`expert consultant in Inter Partes Review No. IPR2014-00269 before the United States
`
`Patent and Trademark Office. I understand that this proceeding involves U.S. Patent
`
`No. 6,233,736 (“the ’736 patent”) (Ex. 1001). Although I am being compensated 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 have been asked to consider whether certain references disclose or
`
`suggest the features recited in the claims of the ’736 patent. My opinions are set forth
`
`below.
`
`II. Qualifications
`
`3.
`
`I received a B.S. from Drexel University, and an M.E. from the 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.
`
`4.
`
`As detailed below, based on my experience at WorldGate
`
`Communications, which I co-founded and where I was involved in interactive
`
`television design and development, General Instrument, where I was involved in
`
`CATV system design and development, and Motorola, prior to priority claim of the
`
`‘736 patent, I meet the requirements for the hypothetical person of ordinary skill in
`
`
`
`1
`
`

`

`the art. In each of these positions I also managed people meeting the hypothetical
`
`person of ordinary skill in the art.
`
`5.
`
`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 from
`
`the perspective of a person skilled in the art. I have previously served as a patent
`
`analysis and research consultant and hold 24 patents, with many others pending.
`
`III. Materials Reviewed
`
`6.
`
`In forming my opinions, I have reviewed: the ’736 Patent, the
`
`prosecution history of the ’736 patent, and Exhibits 1001-1006 and 2004-2006.
`
`IV. Overview of the ’736 Patent
`
`A.
`7.
`
`Patented Technology
`The ’736 patent relates to an electronic information access system and,
`
`more specifically, to a media online services access system, which provides direct,
`
`automated access to an online information provider through an address provided with
`
`a video program. Ex. 1001 at 1:11, 9:48-12:10. At the time of invention, media
`
`receiving and display systems were linked to interactive information providers in only
`
`limited ways. Id. at 1:16-18. Specifically, two types of systems were known. In the first
`
`type of system, the user did not have direct access to the information. For example,
`
`“some television and radio broadcasters have begun announcing an Internet address
`
`for viewer inquiries during the course of program transmission. Access to this
`
`Internet address requires the user to utilize his or her computer.” Id. at 1:26-29. In the
`
`
`
`2
`
`

`

`second type of system, the user was limited to “information sources directly available
`
`through the unitary cable or broadcast provider.” Id. at 2:59-63.
`
`8.
`
`The patented technology improved upon the prior art by providing
`
`direct access to online information from the user’s perspective using an address
`
`provided with a video program to automatically establish a direct communication link.
`
`For example, independent claim 1 recites:
`
`1. A method of providing to a user of online information
`services automatic and direct access to online information
`through an address associated with an online information
`source provided with a video program comprising:
`
`indicating to the user that an address has been provided
`with said video program; and
`
`electronically extracting said address and automatically
`establishing, in response to a user initiated command, a
`direct communication link with the online information
`source associated with said address so that the user has
`direct access to the online information.
`
`B.
`9.
`
`Prosecution of the ’736 Patent
`The ’736 patent began as U.S. patent application no. 09/054,740, filed
`
`on April 3, 1998, as a continuation of U.S. patent application no. 09/054,740, filed on
`
`February 8, 1996, now U.S. patent no. 5,761,606. Before examination, the applicant of
`
`the ’736 patent filed a preliminary amendment with five independent claims and seven
`
`dependent claims that matured into patent claims 1-12, after one amendment.
`
`
`
`3
`
`

`

`10. The Examiner rejected these claims “under 35 U.S.C. § 103(a) as
`
`allegedly being unpatentable over Throckmorton et al. (5,818,441),” Ex. 1002 at 110,
`
`despite noting that Throckmorton “differs from that claimed in that it is silent as to
`
`whether or not the user is provided with an explicit indication of the presence of an
`
`address,” Ex. 1002 at 111. In response to that rejection, an interview was conducted
`
`with the Examiner. Ex. 1002 at 117. The Examiner summarized the interview as
`
`follows:
`
`Applicant proposed adding language to the claims to
`indicate the ‘automatic’ electronic extraction of address
`data, and the establishment of a ‘direct link,’ initiated by the
`user, to an online information source. These features, if
`added to the claims, would likely render them allowable
`over Throckmorton et al alone. That is, the prior art
`discloses the selection of a source of information from a
`menu of sources, each associated with pointers to the
`sources, rather than a user-initiated, automatic and direct
`link to the sources. (Id.)
`
`11. After the interview, the applicant amended the independent claims as
`
`follows1:
`
`
`1 The claims have been numbered here using the numbers from the issued patent
`
`claims rather than the application claim numbers used during prosecution.
`
`
`
`4
`
`

`

`1. A method of providing to a user of online information
`services automatic and direct access to online information
`through an address associated with an online information
`source provided with a video program comprising:
`
`indicating to the user that an address has been provided
`with said video program; and
`
`electronically extracting said address [to establish] and
`automatically establishing, in response to a user-initiated
`command, a direct communication link with the online
`information source associated with said address so that the
`user has direct access to the online information. (Ex. 1002
`at 119-120).
`
`6. A method providing to a user of online information
`services [to a user of such online services] automatic and
`direct access to online information, comprising the steps
`of:
`
`receiving a television broadcast signal having an
`information signal representing the address of an online
`information source;
`
`extracting the address of said online information source
`from said received television broadcast signal;
`
`automatically using said address, in response to a user
`initiated command, to transmit a signal to connect said user
`directly with the online information source associated with
`said address so that the user has direct access to the online
`information; and
`
`
`
`5
`
`

`

`receiving online information signals from said online
`information provider. (Ex. 1002 at 120).
`
`7. A method of providing to a user of online information
`services, at the time of viewing a video program
`represented by an electronic signal, automatic and direct
`access to online information through a link provided in said
`video program, comprising:
`
`indicating to the user that an address is available for
`establishing communication with an online information
`source; and
`
`electronically extracting, in response to a user initiated
`command, an address associated with an online
`information source from an information signal embedded
`in said electronic signal, and automatically using said
`extracted address to establish a direct communication link
`with the online information source associated with the
`extracted address so that the user has direct access to the
`online information. (Ex. 1002 at 120-121).
`
`8. A method of providing to a user of online information
`services automatic and direct access to online information
`through a link provided in a video program, comprising:
`
`indicating to the user that a link to online information
`services is available for receiving the online information;
`and
`
`automatically and directly electronically accessing said
`online information associated with said link in response to
`
`
`
`6
`
`

`

`a user initiated command so that the user has direct access
`to the online information. (Ex. 1002 at 52).
`
`9. A media online services access system for providing to a
`user of online information services while viewing or
`listening to a video or audio program represented by an
`electronic signal, automatic and direct access to online
`information by establishing a direct digital communication
`link with an online information source through a link
`provided in said electronic signal, comprising:
`
`means for indicating to the user that an address is available
`for extraction from said electronic signal which permits
`communication with an online information source; and
`
`means for extracting an address associated with an online
`information source from an information signal embedded
`in said electronic signal, and for automatically establishing,
`in response to a user initiated command, a direct link with
`the online information source associated with said
`extracted address so that the user has direct access to the
`online information. (Ex. 1002 at 121).
`
`12.
`
`In conjunction with the amendments, the applicant stated that:
`
`As explained to the Examiner, it is important that the user
`not have to access links which are stored in a directory or
`access one of a series of links in a menu. In Applicant’s
`amended claims, the choice for the user is from the video
`or audio program directly to the additional content, without
`the need of intermediate steps. In Applicant’s invention,
`
`
`
`7
`
`

`

`the user need not have to select amongst several different
`links. Therefore, in Applicant’s invention, the user never
`has to leave the screen to access additional content because
`access is “direct” from the user to the content. Based on
`the above, the difference is substantial because
`Throckmorton does not teach “direct” and “automatic”
`access to the online information from the primary video or
`audio program. (Ex. 1002 at 123).
`
`In response to the amendments, the Examiner allowed the claims. Ex. 1002 at
`
`13.
`
`126.
`
`14. Accordingly, it is my opinion that a person of ordinary skill in the art
`
`would have understood the Examiner to have identified at least two reasons the
`
`claims distinguish Throckmorton: (1) Throckmorton “differs from that claimed in
`
`that it is silent as to whether or not the user is provided with an explicit indication of
`
`the presence of an address” and (2) Throckmorton “discloses the selection of a source
`
`of information from a menu of sources, each associated with pointers to the sources,
`
`rather than a user-initiated, automatic and direct link to the sources.”
`
`V.
`
`Person of Ordinary Skill in the Art
`
`15.
`
`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 experience in
`
`developing subscriber television solutions and technologies.” Ex. 1003 at ¶ 11. I meet
`
`
`
`8
`
`

`

`this definition because I was cofounder of WorldGate Communications, an
`
`interactive TV company, actively involved in both the design and development of
`
`interactive TV systems in the 1990’s, as well as managing people meeting the
`
`hypothetical person of ordinary skill in the art qualification. Prior to WorldGate, I
`
`worked for General Instrument, where I both did and managed people in the design
`
`and development of CATV systems.
`
`VI. Claim Construction
`
`16.
`
`I have been advised that the first step of assessing the validity of a patent
`
`claim is to interpret or construe the meaning of the claim.
`
`17.
`
`I have been advised that in inter partes review proceedings before the U.S.
`
`Patent and Trademark Office, an unexpired patent claim receives the broadest
`
`reasonable construction in light of the specification of the patent in which it appears. I
`
`have also been advised that, in applying the broadest reasonable construction, (i) claim
`
`terms are given their ordinary and accustomed meaning as would be understood by
`
`one of ordinary skill in the art and (ii) all the limitations of a claim must be considered
`
`meaningful. I have been informed that the construction of a patent claim applied
`
`during this proceeding may differ from that in a district court proceeding.
`
`18.
`
`I have followed these claim-construction principles in my analysis. My
`
`opinions on claim construction are set forth below.
`
`
`
`9
`
`

`

`A.
`
`“Indicating” Means “Providing an Automatic Visual, Auditory, or
`Tactile Indication”
`19. The term “indicating” is recited in claims 1 and 7-9 of the ’736 patent.
`
`Neither Netflix nor the Board construed this term. The broadest reasonable
`
`construction in light of the specification is “providing an automatic visual, auditory, or
`
`tactile indication.” As explained by Netflix, “automatic” means something that occurs
`
`“without the user performing additional steps.” Pet. 7. Its declarant agreed, Ex. 1003,
`
`pp. 9-11, and so did the Board, Paper 13, pp. 7-8.
`
`20.
`
`It is my opinion that a person of ordinary skill in the art would have
`
`considered this construction to be consistent with the specification’s usage of the
`
`term “indicating.” For example, the Specification states:
`
`Upon successfully extracting an electronic address, the access system
`provides a[n] indicator signal to the user that more information is
`available. The indicator signal may take the form of a message
`displayed on a video screen, or other indicators such as a light, a sound
`or a wireless tactile indicator, e.g., vibrating wristband or clip-on
`unit. Alternatively, the video or audio program may contain
`a logo or message to be displayed for the user at points in the program
`which coincide with the presence of an embedded online information
`provider address . . . . (Ex. 1001 at 3:58-4:4)(emphasis added).
`
`Indicator signal generator 46 causes, for example, a video image 20
`(e.g., picture within picture, logo, or icon) to be displayed with the
`video program signal on reproducing system 22 to signal the user that
`an address of an online provider has been stored and that additional
`
`
`
`10
`
`

`

`information is available. Instead, or in addition to such visual
`display, indicator signal generator 46 may signal the user by
`activating a light 24 or other visual indicator located on an
`exterior panel of access controller 10 or of reproducing
`system 22. Alternatively, indicator signal generator may
`cause a sound to be produced on a speaker 26 of
`reproducing system 22, or by a speaker 28 provided in
`access controller 10. (Id. at 6:13-15)(emphasis added).
`
`In yet another embodiment of the invention, automated
`direct user access to online information providers is
`achieved without incorporating an indicator signal
`generator 46, 146 (FIG. 3) into the access controller 10. In
`this embodiment, the video or audio program as produced incorporates
`a visual or auditory indicator, such as a logo or message, which is
`automatically displayed or sounded by conventional reproducing system
`22 and/or high resolution reproducing system 40 during portions of
`the program when an online information provider address is present in
`the underlying electronic program signal. Through the visual or
`auditory indicator, the user is made aware of the availability
`of the online information provider address. (Id. at 9:15-
`29)(emphasis added).
`
`21.
`
`It is also my opinion that a person of ordinary skill in the art would have
`
`considered this interpretation to be the plain meaning of the term. For example, the
`
`Merriam-Webster dictionary defines “indicator” as “a sign that shows the condition or
`
`
`
`11
`
`

`

`existence of something.” Ex. 2004. This definition is consistent with the usage of
`
`indicator/indicating in a number of IEEE standards. Ex. 2005 at pp. 546-547.
`
`22. Accordingly, it is my opinion that a person of ordinary skill in the art would
`
`have understood the broadest reasonable interpretation of “indicating” to be
`
`“providing an automatic visual, auditory, or tactile indication” because that
`
`interpretation is consistent with both the plain meaning of the term and the usage of
`
`the term in the specification.
`
`B.
`
`“So That the User has Direct Access to the Information” Means
`“Access to the Online Information is Direct from the User’s
`Perspective”
`23. Each independent claim (claims 1 and 7-9) recites “so that the user has
`
`direct access to the information.” Both Netflix and the Board construed this term, but,
`
`for the reasons below, it is my opinion that neither construction is consistent with the
`
`claims and specification. Instead, it is my opinion that the broadest reasonable
`
`construction in light of the specification is “access to the online information is direct
`
`from the user’s perspective,” as explained below.
`
`1.
`The construction proposed by Netflix is wrong
`24. Netflix proposes construing “so that the user has direct access to the
`
`information” to mean “displaying online information without the user leaving the
`
`screen to access the online information.” Pet. 7. As explained by the Board, this
`
`construction is wrong because Netflix did not identify “anything in the specification
`
`of the ’736 patent that indicates ‘direct access to the online information’ requires the
`
`
`
`12
`
`

`

`system to display the online information to the user without the user leaving the
`
`screen to access the information.” Paper 13, p. 9. I have reviewed the specification,
`
`and, in my opinion, a person of ordinary skill in the art would not have understood
`
`the specification to require such a narrow construction.
`
`2.
`The preliminary construction adopted by the Board is wrong
`25. The Institution Decision proposes to construe “so that the user has
`
`direct access to the information” to mean “the system establishes a communication
`
`link directly between the user and the online information source, without any
`
`intervening intermediary that is not inherent to Internet traffic routing.” Paper 13, pp.
`
`9-10 (emphasis in original). I do not believe this construction is consistent with how a
`
`person of ordinary skill in the art would interpret this limitation for two reasons: (i) a
`
`person of ordinary skill would understand this construction to render this limitation
`
`without meaning and (ii) this construction is not consistent with the specification of
`
`the ’736 patent.
`
`26.
`
`It is my opinion that a person of ordinary skill in the art would have
`
`understood the proposed construction to render this limitation meaningless based on
`
`the Board’s construction of “direct communication link,” which is part of the
`
`“automatically establishing” limitation recited in each of the independent claims. See
`
`Paper 13, pp. 7-9. The Board construed “direct communication link” as follows:
`
`[T]he communication link must be established directly
`between the user and the information source, one of
`
`
`
`13
`
`

`

`ordinary skill in the art would have understood that
`Internet routing involves various intermediaries inherent to
`Internet traffic routing. The direct connection merely
`implies that the user does not need to go “through” the
`provider of the video program or any other intermediary
`not inherent to Internet traffic routing. (Id. at pp. 8-9).
`
`In view of this construction, a person of ordinary skill in the art would have
`
`understood this construction to be the same as “the system establishes a
`
`communication link directly between the user and the online information source,
`
`without any intervening intermediary that is not inherent to Internet traffic routing,”
`
`which the Board proposes as the construction for “so that the user has direct access
`
`to the information.” Paper 13, pp. 9-10. Accordingly, it is my opinion that a person of
`
`ordinary skill in the art would have understood the Board’s construction of “so that
`
`the user has direct access to the information” renders the term meaningless.
`
`Accordingly, it is my opinion that this construction is improper because I have been
`
`advised that all the limitations of a claim must be considered meaningful.
`
`27.
`
`It is also my opinion that a person of ordinary skill in the art would not
`
`consider the Board’s proposed construction to be supported by the specification.
`
`Instead, a person or ordinary skill in the art would have understood that, in the ’736
`
`patent, being “direct” is from the user’s perspective. The ’736 patent explains that
`
`prior systems were indirect from the user’s perspective because the user had to access
`
`
`
`14
`
`

`

`information on a separate computer. An example of one such system is described in
`
`the ’736 patent:
`
`[S]ome television and radio broadcasters have begun
`announcing an Internet address for viewer inquiries during
`the course of program transmission. Access to this Internet
`address requires the user to utilize his or her computer. No
`system yet exists which provides automated and direct user
`access to online information providers through an address
`embedded in a video or audio program signal. (Ex. 1001 at
`1:26-33).
`
`28.
`
`It is my opinion that a person of ordinary skill in the art would have
`
`understood that, in this example, “the user d[id] not need to go through the program
`
`provider in order to access the online information” because they would access the
`
`information using their computer instead of the system of the program provider.
`
`The ’736 patent, however, identified this system as not providing direct access. Ex.
`
`1001 at 1:26-33. Accordingly, it is my opinion that a person of ordinary skill in the art
`
`would not have understood the ’736 patent to support the Board’s conclusion that
`
`“the ’736 patent indicates that direct access means that the user does not need to go
`
`through the program provider in order to access the online information.” See Paper 13,
`
`p. 9.
`
`
`
`15
`
`

`

`3.
`
`“So that the user has direct access to the information”
`means “access to the online information is direct from the
`user’s perspective”
`29. A person of ordinary skill in the art would have understood this to be
`
`the proper construction for at least two reasons. First, my proposed construction
`
`provides meaning to the limitation. Second, this construction is consistent with the
`
`specification.
`
`30. A person of ordinary skill in the art would have understood that, in
`
`the ’736 patent, being “direct” is from the user’s perspective. First, the ’736 patent
`
`explains that prior systems were indirect from the user’s perspective because the user
`
`had to access information on a separate computer:
`
`[S]ome television and radio broadcasters have begun
`announcing an Internet address for viewer inquiries during
`the course of program transmission. Access to this Internet
`address requires the user to utilize his or her computer. No
`system yet exists which provides automated and direct user
`access to online information providers through an address
`embedded in a video or audio program signal. (Ex. 1001 at
`1:26-33).
`
`31.
`
`In prior art systems that provided “direct” access, the user access was limited to
`
`content sources that were “directly available through the unitary cable or broadcast
`
`provider” that provided the program content, such as in the following example from
`
`the patent:
`
`
`
`16
`
`

`

`U.S. Pat. No. 4,905,094 (“the '094 Patent”) describes an
`interactive cable television system in which a subscriber
`tunes to a channel and requests connection to a remote
`location by either dialing a predetermined telephone
`number or accessing a cable television channel. . . . Thus,
`systems exist which are capable of providing interactive
`user access through a broadcast or cable television signal.
`However, such systems are limited in the access they
`provide to information sources directly available through
`the unitary cable or broadcast provider. By contrast, the
`present invention facilitates direct automated user access to
`an unlimited number of online information providers
`through provider addresses which are embedded in the
`electronic signal which carries a[] video or audio program.
`(Ex. 1001 at 2:46-67).
`
`32. The ’736 patent explains that it improves upon prior systems by providing
`
`access to Internet resources that is direct from the user’s perspective because the user
`
`can go directly from an indicator to the additional information by issuing a command
`
`that automatically establishes a communication link:
`
`As the media program is received for reproduction on a
`video display or audio sound system, the access system
`extracts the embedded electronic address for use in directly
`accessing the online information provider at the selection
`of the user.
`
`. . .
`
`
`
`17
`
`

`

`Upon successfully extracting an electronic address, the
`access system provides a[n] indicator signal to the user that
`more information is available. . . . Alternatively, the video
`or audio program may contain a logo or message to be
`displayed for the user at points in the program which
`coincide with the presence of an embedded online
`information provider address, which, in such case, would
`eliminate the need for the access system to incorporate
`specific structure to provide indication to the user, in
`response to successful extraction of an online provider
`address.
`
`After receiving the indicator signal, if the user desires more
`information, the user may request access to the online information
`provider through a command to the access system, e.g., through
`pushbutton, user control keypad, voice command, mouse, touchpad,
`touchscreen, or other such input. Upon receiving such command, the
`access system automatically establishes a digital communication link
`with the online information provider through transmission of a signal
`containing the extracted address. (Ex. 1001 at 3:45-
`4:13)(emphasis added).
`
`33. Both Netflix’s declarant, Mr. Kramer, and the original Examiner read the
`
`“direct access” limitation as being direct from the user’s perspective. For example, Mr.
`
`Kramer proposed construing the “direct access” limitation as “displaying online
`
`information without the user leaving the screen to access the online information.” Ex.
`
`1003, Kramer Decl., ¶¶ 30-31. A person of ordinary skill in the art would have
`
`
`
`18
`
`

`

`understood that this is one way of providing direct access from the user’s perspective.
`
`The Examiner similarly explained that Throckmorton’s selecting a source by browsing
`
`a menu of sources did not meet the “direct access” limitation. Ex. 1002 (file history)
`
`at 117 (interview summary), 119-23 (amendments), and 126 (allowance). A person of
`
`ordinary skill in the art would have understood this to be correct because using the
`
`menu system of Throckmorton would not have been direct from the user’s
`
`perspective. Throckmorton’s menu-system access was not direct because the user had
`
`to go to the separate menu system to access the information.
`
`VII. Applying these Claim Constructions, Throckmorton Lacks Several
`Elements of the Claims
`
`1.
`
`Throckmorton fails to disclose or suggest the claimed
`“indicating”
`34. During prosecution, the Examiner found that Throckmorton failed to
`
`disclose the claimed indicating. Supra at § IV.B. “Indicating” is recited in independent
`
`claims 1 and 7-9:
`
`35.
`
`Claim 1: “indicating to the user that an address has been provided
`
`with said video program.” Ex. 1001 at 9:52-53.
`
`36.
`
`Claim 7: “indicating to the user that an address is available for
`
`establishing communication with an online information source.” Id. at
`
`10:31-33.
`
`
`
`19
`
`

`

`37.
`
`Claim 8: “indicating to the user that a link to online information
`
`services is available for receiving the online information.” Id. at 10:46-
`
`49.
`
`38.
`
`Claim 9: “means for indicating to the user that an address is available
`
`for
`
`extraction
`
`from
`
`said
`
`electronic
`
`signal which permits
`
`communication with an online information source.” Id. at 61-64.
`
`39. As discussed above, it is my opinion that “indicating” means “providing
`
`an automatic visual, auditory, or tactile indication.” Supra at § VI.A. The petition maps
`
`the claimed “indicating” to the “clickable list of URLs” disclosed in Throckmorton.
`
`Pet. 15, 16, 25, 29, 33. It is my opinion, however, that a person of ordinary skill in the
`
`art would not have understood Throckmorton’s “clickable list of URLs” to “provid[e]
`
`an automatic visual, auditory, or tactile indication.” Instead, Throckmorton’s
`
`“clickable list of URLs” is presented as a “menu.” Ex. 1004 at 9:1-15. A person of
`
`ordinary skill in the art would have understood that the menus of Throckmorton were
`
`implemented such that, “[a]t any time, the consumer may browse the data stored in
`
`local storage.” Id. at 8:1-2. A person of ordinary skill in the art would also have
`
`understood that the “clickable list or URLs” in the two-way embodiment simply
`
`expands the menu browsing experience to include content that is stored remotely. Ex.
`
`1004 at 8:63-6.
`
`40. A person of ordinary skill in the art would have understood the concepts
`
`of “indicating” and “browsing a menu” to be mut