IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Petition for Inter Partes Review
`
`Attorney Docket No.: 50796.5
`
`Customer No.:
`
`27683
`
`Real Party in Interest: Netflix, Inc.
`
`§ §
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`§
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`§
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`§
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`§
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`§
`§
`§
`
`In re patent of Wolzien
`
`US. Patent No. 6,233,736
`
`Issued: May 15, 2001
`
`Title: MEDIA ONLINE
`SERVICE ACCESS SYSTEM
`AND METHOD
`
`Declaration of Richard Kramer
`
`Under 37 C.F.R.
`
`1.68
`
`1, Richard Kramer, declare:
`
`l.
`
`I am making this declaration at the request of Netflix, Inc. in the
`
`matter of the Inter Partes Review of US. Patent No 6,233,736 (“the ”736 Patent”)
`
`to Wolzien.
`
`2.
`
`I am being compensated for my work in this matter. My compensation
`
`in no way depends upon the outcome of this proceeding.
`
`3.
`
`In the preparation of this declaration, l have studied:
`
`(1)
`
`The 1736 Patent, NTFX—IOOI;
`
`(2)
`
`The prosecution history of the ’736 Patent, NTFX—1002;
`
`—l—
`
`
`
`Petition for Inter Partes Review
`
`Attorney Docket No.: 50796.5
`
`Customer No.:
`
`27683
`
`Real Party in Interest: Netflix, Inc.
`
`§ §
`
`§
`
`§
`
`§
`
`§
`
`§
`§
`§
`
`In re patent of Wolzien
`
`US. Patent No. 6,233,736
`
`Issued: May 15, 2001
`
`Title: MEDIA ONLINE
`SERVICE ACCESS SYSTEM
`AND METHOD
`
`Declaration of Richard Kramer
`
`Under 37 C.F.R.
`
`1.68
`
`1, Richard Kramer, declare:
`
`l.
`
`I am making this declaration at the request of Netflix, Inc. in the
`
`matter of the Inter Partes Review of US. Patent No 6,233,736 (“the ”736 Patent”)
`
`to Wolzien.
`
`2.
`
`I am being compensated for my work in this matter. My compensation
`
`in no way depends upon the outcome of this proceeding.
`
`3.
`
`In the preparation of this declaration, l have studied:
`
`(1)
`
`The 1736 Patent, NTFX—IOOI;
`
`(2)
`
`The prosecution history of the ’736 Patent, NTFX—1002;
`
`—l—
`
`
`
`(3) US. Patent No. 5,818,441 (“Throckmorton”), NTFX—1004;
`
`(4) US. PatentNo. 5,701,161 (“Williams”), NTFX—1005; and
`
`(5) US. Patent No. 5,659,366 (“Kennan”), NTFX—1006.
`
`4.
`
`1n forming the opinions expressed below, I have considered:
`
`(1)
`
`The documents listed above,
`
`(2)
`
`The relevant legal standards, including the standard for obviousness
`
`provided in KSR International Co. v. Teleflex, Inc, 550 US. 398 (2007), and
`
`(3) My knowledge and experience based upon my work in this area, as
`
`described below.
`
`Qualifications and Professional Experience
`
`5.
`
`My qualifications are set forth in my curriculum vitae, a copy of
`
`which is attached as an exhibit to this declaration. As set forth in my curriculum
`
`vitae:
`
`6.
`
`1 received a Bachelor’s of Science degree in Electrical Engineering
`
`from the University of Toledo in 1984.
`
`1 have over 29 years of experience
`
`successfully developing and launching commercially—implemented software and
`
`hardware products and systems, including 18 years in the video industry
`
`developing commercially successful products related to subscriber television
`
`systems, 1P networking, cable and satellite TV systems and equipment, cable TV
`
`—2—
`
`
`
`set—top boxes, remote controls, video networking, software, and other technologies
`
`relevant to the subject matter of the ”736 Patent. The cable TV video, video
`
`surveillance and IP network video products and systems that l have developed
`
`have been successfully launched under respected brands such as General Electric
`
`and Scientific—Atlanta (now Cisco). My experience also included the development
`
`of new technologies within pioneering high—tech start—up companies like lvex
`
`Corporation (acquired in 2001 by Axcess, Inc.), where we developed one of the
`
`first IP network Video Streaming Appliances (called the “VSA”) for the video
`
`surveillance industry.
`
`I hold two patents.
`
`7.
`
`In the 1990s, I was the engineering/technology leader for cable TV
`
`set—top boxes in North America for Scientific—Atlanta, lnc. (prior to being acquired
`
`by Cisco Systems, lnc.).
`
`l was responsible for all set—top devices for the Advance
`
`Video Systems group. My group and the people that reported to me developed and
`
`successfully launched Scientific—Atlanta’s first internally designed set—top (also
`
`called HCTs which means Home Communication Terminals). The sales volumes
`
`of the products we developed exceeded 1 million units per year. The position
`
`required me to be astute to each facet of the cable system technology and the
`
`overall system.
`
`I was later promoted and served as the top technology leader on
`
`the Strategic Planning Team for the “Advanced Video Systems” Division. There I
`
`worked on the next generation, advanced video products.
`
`In this role, each of the
`
`—3—
`
`
`
`functional technology areas including firmware, hardware, system software and
`
`headend equipment reported to me in a dotted line matrix/cross—functional
`
`organizational structure for the development of our next generation of products.
`
`8.
`
`In 2001, I joined and served as Vice President of Product
`
`Development at Miraxis Corporation (a division of EMS Technologies, Inc., now
`
`Honeywell, Inc.) developing IP network and digital video solutions in the satellite
`
`industry. At Miraxis, we were focused on the design of an entirely new DBS/DTH
`
`(Direct Broadcast Satellite/Direct to Home) television and multimedia solution.
`
`Overall, Miraxis was responsible for the design of the satellite payload, the
`
`associated ground based systems, and the CPE (Customer Premise Equipment). As
`
`the Vice President of Product Development, I was responsible for all aspects of the
`
`system solution; I was immersed in the leading—edge state of the industry.
`
`In fact,
`
`we were one of only a handful of companies that received a newly allowed Ka—
`
`Band satellite license. The new Ka—Band frequency spectrum opened significant
`
`new opportunities for providing entertainment content to homes across America.
`
`9.
`
`In summary, I have a deep familiarity with subscriber television
`
`systems, including first—hand experience at the relevant time of the ”736 Patent
`
`invention and before.
`
`10.
`
`I am familiar with the knowledge and capabilities of one of ordinary
`
`skill in the software/hardware engineering and, specifically, the interactive
`
`4—
`
`
`
`television field in the 19905. Specifically, my extensive experience (1) in the
`
`industry and (2) with engineers practicing in the industry allowed me to become
`
`personally familiar with the level of skill of individuals and the general state of the
`
`art. Unless otherwise stated, my testimony below refers to the knowledge of one of
`
`ordinary skill in the interactive television field in 1996, the year in which the
`
`parent patent application of the ”736 was filed.
`
`II.
`
`In my opinion, the level of ordinary skill in the art needed to have the
`
`capability of understanding the scientific and engineering principles applicable to
`
`the ’736 Patent is (i) a 3.8. degree in Electrical Engineering or equivalent training,
`
`and (ii) approximately three years of direct experience in developing subscriber
`
`television solutions and technologies. Relevant industry experience would include
`
`experience with interactive television system development and deployment,
`
`including development of head—end, transport, and customer premise equipment in
`
`order to appreciate what was obvious and/or anticipated in the industry and what a
`
`person having ordinary skill in the art would have thought at the time.
`
`Relevant Legal Standards
`
`12.
`
`l have been asked to provide my opinions regarding whether the
`
`claims l—12 of the ”736 Patent are anticipated or would have been obvious to a
`
`person having ordinary skill in the art at the time of the alleged invention, in light
`
`of the prior art. It is my understanding that, to anticipate a claim under 35 U.S.C. §
`
`—5—
`
`
`
`102, a reference must teach every element of the claim. Further, it is my
`
`understanding that a claimed invention is unpatentable under 35 U.S.C. § 103 if the
`
`differences between the invention and the prior art are such that the subject matter
`
`as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which the subject matter pertains. I also
`
`understand that the obviousness analysis takes into account factual inquiries
`
`including the level of ordinary skill in the art, the scope and content of the prior art,
`
`and the differences between the prior art and the claimed subject matter.
`
`13.
`
`It is my understanding, based on my review of KSR, that the Supreme
`
`Court has recognized several rationales for combining references or modifying a
`
`reference to show obviousness of claimed subject matter. Some of these rationales
`
`include the following: combining prior art elements according to known methods
`
`to yield predictable results; simple substitution of one known element for another
`
`to obtain predictable results; use of a known technique to improve a similar device
`
`(method, or product) in the same way; applying a known technique to a known
`
`device (method, or product) ready for improvement to yield predictable results;
`
`choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and some teaching, suggestion, or motivation in
`
`the prior art that would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at the claimed
`
`%—
`
`
`
`invention.
`
`Background Of ”736 Patent
`
`14.
`
`The ”736 Patent describes a method of providing access to online
`
`information to a user through an address provided with a video program. (NTFX—
`
`1001, Abstract).
`
`15.
`
`Claim 1 provides a basic overview of the teachings of the ”736 Patent:
`
`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.
`
`16.
`
`The ”736 Patent has five independent claims (claims 1, 6, 7, 8 and 9)
`
`and a total of 12 claims.
`
`In general, the ”736 Patent describes an access controller
`
`that “incorporates all components necessary to provide online access and to access
`
`online information signals.” (NTFX—lOOl, 4:65—5: l ). The access control receives
`
`“a broadcast, cable or prerecorded medium program in conventional form from a
`
`—7—
`
`
`
`Video signal source.” (NTFX—lOOl, 5:1—4). The access control is also “provided
`
`with an address extractor 42 which receives the electronic signal 12.” (NTFX—
`
`1001, 5:44—45). The address extractor “is constructed to electronically store, e.g.,
`
`Via a register or memory device... the detected address for use in accessing the
`
`online services at the selection of the user.” (NTFX—1001, 5:57—60).
`
`17.
`
`Upon successfully extracting the electronic address, a message is
`
`displayed on a video screen to indicate that more information is available to the
`
`user. (NTFX—1001, 3:58—61). For example, an “indicator signal generator” causes
`
`a Video image (such as a picture within picture, logo or icon) to be displayed “with
`
`the video program signal” to “signal the user that an address of an online provider
`
`has been stored and that additional information is available.” (NTFX—1001, 6: 14—
`
`18).
`
`18.
`
`The access controller “is provided with a user input interface 56 for
`
`receiving a user command which automatically initiates establishment of a direct
`
`digital communication link to an online information provider.” (NTFX—1001, 6:27—
`
`30). “Once access to the online information service provider has been established,
`
`access control 10 can automatically receive digital information signals
`
`from the
`
`online information provider.” (NTFX—1001, 7:54—57).
`
`19.
`
`The ”736 Patent issued on May 15, 2001, from US. Patent
`
`Application No. 09/054,740 (“the ‘740 application”) filed on April 3, 1998, by
`
`—8—
`
`
`
`Thomas R. Wolzien. The ”736 Patent is purportedly a continuation of US. Patent
`
`No. 5,761,606 filed on February 8, 1996.
`
`Claim Construction
`
`20.
`
`It is my understanding that in order to properly evaluate the ”736
`
`Patent, the terms of the claims must first be interpreted. It is my understanding that
`
`the claims are to be given their broadest reasonable interpretation in light of the
`
`specification. It is my further understanding that claim terms are given their
`
`ordinary and accustomed meaning as would be understood by one of ordinary skill
`
`in the art, unless the inventor has set forth a special meaning for a term.
`
`21.
`
`In order to construe the following claim terms, I have reviewed the
`
`entirety of the ’736 Patent, as well as its prosecution history. Any claim term not
`
`construed below should be given its ordinary and customary meaning.
`
`“automatically establishing, in response to a user initiated command, a
`
`direct communication link with the online information source”
`
`22.
`
`The claim term “automatically establishing, in response to a user
`
`initiated command, a direct communication link with the online information
`
`source” is found in claim 1. The portion of the claim term reciting “automatically
`
`establishing, in response to a user initiated command, a direct” was added in an
`
`amendment during the prosecution of the ’736 Patent. (NTFX—1002 at 120.) The
`
`—9—
`
`
`
`Patent Owner did not indicate where in the specification support for amendment
`
`could be found.
`
`23.
`
`The specification does not provide any specific definition for
`
`“automatically establishing, in response to a user initiated command, a direct
`
`communication link with the online information source.”
`
`24.
`
`In the prosecution history, the Patent Owner argued that:
`
`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, 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 and thus,
`
`the differences between Wolzien‘s claims and the Throckmorton
`
`reference are such that the subject matter as a whole would not have
`
`been obvious to one of ordinary skill in the art. (NTFX—1002 at 123.)
`
`25.
`
`I note that Patent Owner’s arguments are based upon some form of
`
`relationship between accessing online information and viewing a video program,
`
`but claim I does not recite viewing, displaying, or presenting any “video or audio
`
`program.”
`
`—I 0—
`
`TFX—1003
`
`
`
`26.
`
`It is therefore my opinion that a person of ordinary skill in the art
`
`would understand the broadest reasonable interpretation of “automatically
`
`establishing, in response to a user initiated command, a direct communication link
`
`with the online information source” in view of the specification and file history to
`
`include at least: in response to a user initiated command, establishing a
`
`communication link to an online information source without the user performing
`
`additional steps.
`
`“so that the user has direct access to the online information”
`
`27.
`
`The claim term “so that the user has direct access to the online
`
`information” is found in claims I and 6—9. This claim term was added in an
`
`amendment during the prosecution of the ”736 Patent. (NTFX—1002 at 120—121.)
`
`The Patent Owner did not indicate where in the specification support for
`
`amendment could be found.
`
`28.
`
`The specification does not provide any specific definition for “so that
`
`the user has direct access to the online information.”
`
`29.
`
`In the prosecution history, the Patent Owner argued that:
`
`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, the user need not
`
`have to select amongst several different links. Therefore, in
`
`—l l—
`
`TFX—1003
`
`
`
`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 and thus,
`
`the differences between Wolzien’s claims and the Throckmorton
`
`reference are such that the subject matter as a whole would not have
`
`been obvious to one of ordinary skill in the art. (NTFX—1002 at 123.)
`
`30.
`
`I note that Patent Owner’s arguments are based upon some form of
`
`relationship between accessing online information and viewing a video program,
`
`but claims 1 and 6—8 do not recite viewing, displaying or presenting any “video or
`
`audio program.” Claim 9 does mention “while viewing listening to a Video or
`
`audio program” in its preamble.
`
`31.
`
`It is therefore my opinion that a person of ordinary skill in the art
`
`would understand the broadest reasonable interpretation of “so that the user has
`
`direct access to the online information” in view of the specification and file history
`
`to include at least: displaying online information without the user leaving the
`
`screen to access the online information.
`
`“means for indicating t0 the user that an address is available [or
`
`extraction from said electronic sign I”
`
`32.
`
`The claim term “means for indicating to the user that an address is
`
`—l 2—
`
`TFX—1003
`
`
`
`available for extraction from said electronic signal” is found in claim 9.
`
`33.
`
`It is my opinion that the particular function of this limitation is
`
`“indicating to the user that an address is available for extraction from said
`
`electronic signal.”
`
`34. With respect to corresponding structure in the specification associated
`
`with this function, the specification states that “[t]he indicator signal may take the
`
`form of a message displayed on a video screen, or other indicators such as alight, a
`
`sound or a wireless tactile indicator, e.g., vibrating wristband or clip—on unit.”
`
`(NTFX— l 00 l , 3 :60—63.)
`
`35.
`
`It is therefore my opinion that a person of ordinary skill in the art
`
`would understand the broadest reasonable interpretation of “means for indicating
`
`to the user that an address is available for extraction from said electronic signal” in
`
`View of the specification and file history to be as follows:
`
`a. Function:
`
`indicating to the user that an address is available for
`
`extraction fi'om said electronic signal.
`
`b. Structure: a message or other indicator, or equivalents.
`
`“means [or extracting an address associated with an online information
`
`source from an information signal embedded in said electronic signal, and
`
`[or automatically establishing, in resgonse to a user initiated command, a
`
`—l 3—
`
`TFX—1003
`
`
`
`direct link with the online in ormtion source”
`
`36.
`
`The claim term “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” is found in claim 9.
`
`37.
`
`It is my opinion that the particular functions of this limitation are (i)
`
`“extracting an address associated with an online information source from an
`
`information signal embedded in said electronic signal” and (ii) “automatically
`
`establishing, in response to a user initiated command, a direct link with the online
`
`information source.”
`
`38. With respect to corresponding structure in the specification associated
`
`with this function, the specification describes an “access controller 10.” (NTFX—
`
`1001, Fig. l.) The access controller, as shown in Fig. 2, includes (i) an address
`
`extractor 42 and (ii) a modem 54. (NTFX—lOO l , Fig. 2.) The specification states
`
`that the address extractor 42 is hardware and/or software components that extract
`
`addresses, and that the modem 54 is hardware and/or software to establish direct
`
`links to online information sources. (NTFX— l 001, 5:42—53 and 8:60—65).
`
`39.
`
`Specifically, the specification states:
`
`Access controller 10 is provided with an address extractor 42 which
`
`—1 4—
`
`TFX—1003
`
`
`
`receives the electronic signal 12. Address extractor 42 includes
`
`hardware and/or software to detect, decode and store an address which
`
`has been embedded in a video or audio program signal. Among the
`
`ways which exist to detect an address signal transmitted in
`
`conjunction with an analog video signal, address extractor 42 may be
`
`constructed to detect a digital address which is transmitted during a
`
`vertical blanking interval or other portion of a conventional video
`
`signal in such manner that displayed image quality is not affected.
`
`(NTFX—lOOl, 5:43—53)
`
`40.
`
`Further, the specification states:
`
`Modern 54 is provided with hardware and/or software to
`
`automatically establish, upon receiving a user command to initiate
`
`online access, a direct digital communication link with the online
`
`information provider associated with the next received online
`
`information provider address. (NTFX—lOOl, 8:60—65).
`
`41.
`
`It is therefore my opinion that a person of ordinary skill in the art
`
`would understand the broadest reasonable interpretation of “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” in
`
`View of the specification and file history to be as follows:
`
`a. Function: (i) extracting an address associated with an online
`
`information sourcefrom an information signal em bedded in said
`
`—1 5—
`
`TFX—1003
`
`
`
`electronic signal and (ii) automatically establishing in response to a
`
`user initiated command, a direct link with the online information
`
`SOIH'CB.
`
`b. Structure: hardware and/or software
`
`“means [or receiving an information signal from said online information
`
`source”
`
`42.
`
`The claim term “means for receiving an information signal from said
`
`online information source” is found in claim 10.
`
`43.
`
`It is my opinion that the particular function of this limitation is
`
`“receiving an information Signal from said online information source.”
`
`44. With respect to corresponding structure in the specification associated
`
`with this function, the specification states that “Access controller 10 is provided
`
`with a modem 54 for transmitting and receiving digital information signals
`
`between access controller 10 and public switching network through an information
`
`signal carrier line 32.” (NTFX—IOOI, 6:59—62).
`
`45.
`
`It is therefore my opinion that a person of ordinary skill in the art
`
`would understand the broadest reasonable interpretation of “means for receiving an
`
`information signal from said online information source” in view of the
`
`specification and file history to be as follows:
`
`—1 6—
`
`TFX—1003
`
`
`
`a. Function: receiving an information signalfi'om said online
`
`information source.
`
`b. Structure: a modem, or equivalents.
`
`“means [or disglazing an image signal detected [ram said received
`
`information signal”
`
`46.
`
`The claim term “means for displaying an image signal detected from
`
`said received information signal” is found in claim 10.
`
`47.
`
`It is my opinion that the particular function of this limitation is
`
`“displaying an image signal detected from said received information signal.”
`
`48. With respect to corresponding structure in the specification associated
`
`with this function, the specification describes a “conventional TV reproducing
`
`system 22 or high resolution reproducing system 40, e.g., a computer monitor or
`
`other display device.” (NTFX—IOO l , 7:57—61 (emphasis added)).
`
`49.
`
`It is therefore my opinion that a person of ordinary skill in the art
`
`would understand the broadest reasonable interpretation of “means for displaying
`
`an image signal detected from said received information signal” in view of the
`
`specification and file history to be as follows:
`
`a. Function: displaying an image signal detectedfi'om said received
`
`information signal.
`
`—1 7—
`
`TFX—1003
`
`
`
`b. Structure: computer monitor or other display device, or equivalents.
`
`Challenge #1: Claims 1—3 and 6—12 are obvious over Throckmorton
`
`50.
`
`Throckmorton renders obvious each and every element of at least
`
`claims 1—3 and 6—12 of the ”736 Patent.
`
`51.
`
`Throckmorton teaches two systems: a one—way communication
`
`system and a two—way communication system.
`
`52.
`
`In Throckmorton, “broadcasting and entertainment industries” create a
`
`“stream of da ” containing “live or pre—recorded information.” (NTFX—1004,
`
`3:36—45). The live or pre—recorded information may be delivered to consumers over
`
`broadcast television. (NTFX—1004, 3 :36—45).
`
`53.
`
`The stream of data contains two data streams: the “primary data
`
`stream” and the “associated data stream.” The primary data stream is
`
`“programming content,” such as television news or pre—recorded programming.
`
`(NTFX—1004, 3:45—50).
`
`In the one—way communication system of Throckmorton,
`
`the associated data stream contains “World Wide Web pages, closed captioning,
`
`stock quotes, sports scores, [and] control commands.” (NTFX—1004, 6:60—63).
`
`In
`
`the two—way communication system of Throckmorton, the associated data stream
`
`could include “references such as uniform resource locations (‘URL’) which are
`
`WWW page references.” (NTFX—1004, 9:2—5).
`
`—1 8—
`
`TFX—1003
`
`
`
`54. At a consumer’s location, Throckmorton’s system includes
`
`“equipment to receive the primary and associated data streams.” (NTFX—1004, 6:4—
`
`8).
`
`In one embodiment, the equipment includes a personal computer with a
`
`“receiver for receiving the primary data stream and a receiver for receiving the
`
`associated data,” where the receivers “may be the same unit.” (NTFX—1004, 2:64—
`
`67). The receiver “could be a personal computer add—in adapter board, a television
`
`or radio broadcast receiver, a cable television converter box or it could be a
`
`satellite receiver for digital broadcast.” (NTFX—1004, 6:8—1 1). Additionally, the
`
`receiver “could be part of a standard television.” (N TFX—1004, 6: 19—20).
`
`55.
`
`The two streams of data are transmitted to the consumer equipment.
`
`Throckmorton describes that “the primary data stream could be delivered by
`
`broadcast television and the associated data could be delivered over a high speed
`
`digital network.” (NTFX—1004, 4: 1—20).
`
`56. When the delivered data reaches the receiver, the receiver “decodes
`
`the signal, separates the primary data from the associated data and passes the
`
`associated data on to the processor.” (NTFX—1004, 4:21—25).
`
`57.
`
`The viewer may interact with the received associated data (which
`
`could be a WWW page or a URL to a WWW page) with a keyboard and mouse.
`
`(NTFX—1004, 4:27—30). For instance, when a user clicks on a URL, the system
`
`“connects to and retrieves the referenced information from the appropriate source,”
`
`—1 9—
`
`TFX—1003
`
`
`
`which may be viewed in a “Web Browser.” (NTFX—1004, 9:1—14; 7:42—45).
`
`58. Additionally, Throckmorton teaches that the delivered data “could be
`
`interactively displayed and manipulated by consumers.” (NTFX—1004, 1:59—67
`
`(emphasis added)). Further, the “consumer receives and has access to the relevant
`
`data during the process of program reception. Therefore the data becomes an
`
`integral part of the experience desired by the program producers.” (NTFX—1004,
`
`1:59—67 (emphasis added)).
`
`59.
`
`In my review of the file history for the ’736 Patent, I note that the
`
`Patent Owner attempted to distinguish the claims of the ’736 Patent over
`
`Throckmorton by amending the claims and arguing:
`
`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, 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. (NTFX—1002 at 123.)
`
`60.
`
`However, contrary to Patent Owner’s arguments, Throckmorton
`
`teaches to a person of ordinary skill in the art that a user has direct access to
`
`—20—
`
`TFX—1003
`
`
`
`Internet content from a video program. Specifically, Throckmorton discloses that
`
`Internet content can be “interactively displayed and manipulated by consumers on
`
`a real time basis” and that “the consumer receives and has access to the relevant
`
`data during the grocess of grogzam reception.” (NTFX—1004, 1:59—67, emphasis
`
`added). Most tellingly, “the data becomes an integzal grant of the experience
`
`desired by the program producers.” (NTFX—1004, 1:59—67 (emphasis added)).
`
`61.
`
`Since Throckmorton discloses that a user can interact with the Internet
`
`content during program reception and that the data is an integral part of the
`
`television watching experience, Throckmorton discloses the exact ‘direct’ access
`
`argued by the Patent Owner during prosecution of the ”736 Patent.
`
`62.
`
`Even though Throckmorton discloses two communication systems, a
`
`one—way communication system and a two—way communication system, it is my
`
`opinion that a person of ordinary skill in the art, when reading Throckmorton
`
`would be motivated to combine the features of the two systems for a number of
`
`reasons. For example, the combination amounts to simply combining elements
`
`contained in the same reference in precisely the manner described in the reference.
`
`Combining the retrieving—intemet—infonnation—using—a—URL as described in the
`
`two—way embodiment, with the known method of displaying a web page
`
`simultaneously with a video program as described in the one—way embodiment,
`
`yields the predictable result of displaying a web page retrieved with a URL
`
`—2 l—
`
`TFX—1003
`
`
`
`simultaneously with a video program. This result is predictable because
`
`Throckmorton specifically teaches such a result.
`
`63.
`
`This implementation of the teachings of Throckmorton would be
`
`desirable because it would allow the user to have direct access to relevant online
`
`information during the program reception without the need for changing screens.
`
`Throckmorton specifically provides a motivation to make this combination,
`
`because it was desirable to make an experience for viewers that integrated data
`
`with television program reception.
`
`64.
`
`The following claim chart describes how Throckmorton renders
`
`obvious each and every element of at least claims 1—3 and 6—12.
`
`Claim 1
`
`
`method of
`providing to a
`user of online
`information
`
`services
`automatic and
`direct access
`
`to online
`
` [1.0] A
`
`“Up until now, there has been no way for producers of mass
`information
`market broadcast programming to deliver data associated by its
`through an
`relevancy to its subject matter that could be interactively
`address
`displayed and manipulated by consumers on a real time basis.
`associated
`with an online What is meant by real time is that the consumer receives and has
`information
`access to the relevant data during the process of program
`source
`reception. Therefore the data becomes an integral part of the
`provided with
`experience desired by the program producers. NTFX—1004, 1:59—
`
`[1.0] “A method ofproviding 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”
`
`First, Throckmorton teaches a method of providing a user
`automatic and direct access to online information through an
`address associated with an online information source:
`
`
`
`
`
`—22—
`
`TFX— l 003
`
`
`
`“FIG. 4 is a block diagram of a second preferred embodiment of
`the invention that includes interactive communications. .
`.
`.
`
`Referring now to FIG. 4, a two—way communication channel 46 is
`connected to microprocessor 38 and provides interactive access to
`remote computers over such media as the analog telephone
`network, the lSDN digital network, a wide area packet switched
`network such as X25, frame relay or asynchronous transfer
`mode.” NTFX—1004, 8:16—24 (emphasis added).
`
`“Additional interactivity may be achieved by adding an actual two
`
`way communication channel to the personal computer so that
`online services or the Internet may be accessed. This two way
`communication channel is made particularly effective if the
`associated data contains pointers to locations in the online
`services or the Internet which are particularly relevant to the
`television program.” NTFX—1004, Abstract (emphasis added).
`
`
`“The addition of a two—way communication channel allows a
`consumer to also access online services. In this case, associated
`
`data may consist of references such as uniform resource locations
`(‘URL’ ) which are WWW page references. .
`.
`. Or, associated
`data may include pointers to information on an online service
`such as America Online, Prodigy or Compuserve.” NTFX—1004,
`9: 1—12 (emphasis added).
`
`Second, Throckmorton teaches that the associated data (e.g.,
`URLs/pointers) may be provided with a video program:
`
`“The associated data is generally (but not always) sent by the
`same delivery medium as the primary data. In the case of
`television, the associated data is encoded in the VB] of the
`
`television sigpal.” NTFX—1004, 7:61—65 (emphasis added).
`
`
`
`
`
`
`
`a video
`
`67 (emphasis added).
`
`program
`comprising:
`
`Fig. 4
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