CONFIDENTIAL BUSINESS INFORMATION - SUBJECT TO PROTECTIVE ORDER
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C. 20436
`
`Before the Honorable David P. Shaw
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN DIGITAL MEDIA DEVICES,
`INCLUDING TELEVISIONS, BLU-RAY DISC
`PLAYERS, HOME THEATER SYSTEMS,
`TABLETS AND MOBILE PHONES,
`COMPONENTS THEREOF AND
`ASSOCIATED SOFTWARE
`
`Investigation No. 337-TA-882
`
`REBUTTAL EXPERT REPORT OF MR. IVAN ZATKOVICH REGARDING
`VALIDITY OF U.S. PATENT NOS. 8,050,652, 8,045,952, and 6,618,593
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`IX.
`
`C.
`D.
`E.
`
`RESPONSE TO JEFFAY INVALIDITY REPORT REGARDING THE
`QURESHEY PATENTS....................................................................................................55
`A.
`State of the Art.......................................................................................................55
`B.
`Relevant Field and Level of Ordinary Skill in the Art...........................................55
`a. Dr. Jeffay’s Obviousness Combinations Require Higher Than
`Ordinary Skill..............................................................................56
`b. The Obviousness Combinations are Not Supported........................59
`Priority Dates of the Qureshey Patents ..................................................................60
`Claim Construction................................................................................................61
`The Qureshey ‘652 Patent Specification Adequately Describes and
`Enables Claims 13 and 55......................................................................................63
`The Asserted Claims of the Qureshey Patents are Not Anticipated By Nor
`Obvious From The Cited References.....................................................................64
`1. Busam - U.S. Patent No. 8,281,001 ...........................................................64
`a. The Busam Patent is Not Prior Art to the Qureshey Patents...........64
`b. The Busam Patent is Not Entitled to the Priority Date of the
`Busam Provisional Application ..................................................66
`c. The Busam Patent Does Not Disclose or Suggest the Inventions
`Claimed in the Qureshey Patents ................................................69
`d. Reference Combinations Based on the Busam Patent are Not
`Prior Art ......................................................................................75
`2. White - U.S. Patent No. 7,187,947 ............................................................78
`
`F.
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`a. White was Considered by the USPTO in the Prosecution of the
`Qureshey Patents.........................................................................78
`b. White Does Not Disclose or Suggest the Inventions Claimed in
`the Qureshey Patents...................................................................79
`c. White in Combination with Lipscomb ............................................82
`3. Logan - U.S. Patent No. 6,199,076............................................................83
`a. Logan was Considered by the USPTO in the Prosecution of the
`Qureshey Patents.........................................................................83
`b. Logan Does Not Disclose or Suggest the Inventions Claimed in
`the Qureshey Patents...................................................................84
`c. Logan in Combination with White, Lipscomb, and/or Abecassis...89
`4. Lipscomb - U.S. Patent No. 7,020,704 ......................................................90
`5. Sass - U.S. Patent No. 6,823,225 ...............................................................97
`a. Sass in Combination with Hempleman .........................................101
`6. Langdon - U.S. Patent No. 7,734,688......................................................101
`a. Langdon in Combination with Hempleman, Logan,
`McLaughlin, Sass and/or Lipscomb .........................................106
`7. McLaughlin - U.S. Patent No. 5,581,479 ................................................108
`a. McLaughlin in Combination with Langdon..................................111
`8. Abecassis - U.S. Patent No. 6,192,340 ....................................................111
`a. Abecassis was Considered by the USPTO in the Prosecution of
`the Qureshey Patents.................................................................112
`b. Abecassis Does Not Disclose or Suggest the Inventions Claimed
`in the Qureshey Patents.............................................................112
`9. Hempleman - U.S. Patent No. 6,243,725.................................................116
`a. Hempleman in Combination with Sass and/or Logan...................119
`10. RealPlayer and the Black Report .............................................................120
`a. RealPlayer is Not Prior Art to the Qureshey Patents.....................120
`b. RealPlayer Does Not Disclose or Suggest the Inventions
`Claimed in the Qureshey Patents ..............................................125
`c. RealPlayer in Combination with Lipscomb and/or Logan............132
`11. Ninja Jukebox ..........................................................................................133
`a. Ninja Jukebox in Combination with Lipscomb, Hempleman,
`and/or Logan .............................................................................139
`12. Music In The Home .................................................................................140
`a. Music in the Home in Combination with Ninja Jukebox..............146
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`IX.
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`RESPONSE TO JEFFAY INVALIDITY REPORT REGARDING THE
`QURESHEY PATENTS
`
`168. On November 12, 2013, Respondents and Intervenor jointly served the Expert
`
`Report of Kevin Jeffay, Ph.D. Regarding U.S. Patent Nos. 8,045,952 and 8,050,652 (“Jeffay
`
`Report”). In the Jeffay Report, Dr. Jeffay sets forth his opinions regarding the state of the art,
`
`level of ordinary skill in the art, priority dates, claim construction, and invalidity of the asserted
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`claims of the Qureshey Patents.
`
`169.
`
`I have reviewed the Jeffay Report, the references cited therein, and the other
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`materials considered by Dr. Jeffay in preparing his report. The following is my response to the
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`analysis and opinions set forth in the Jeffay Report.
`
`A.
`
`State of the Art
`
`170.
`
`The Jeffay Report states that as of the year 2000 a user was able to use a personal
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`computer to manually create media playlists for local storage by the computer. (Jeffay Report ¶¶
`
`[083]-[094].) The Jeffay Report also provides Dr. Jeffay’s opinions regarding the alleged state
`
`of the art with respect to Internet radio and streaming media. (Jeffay Report ¶¶ [095]-[0103].)
`
`171. Dr. Jeffay did not allege that this “state of the art” anticipates or renders obvious
`
`the asserted claims of the Qureshey Patents alone or in combination with any other alleged prior
`
`art, and accordingly, I understand that no response is required. In any event, in my opinion, the
`
`technologies referenced by Dr. Jeffay are at most cumulative of the prior art previously
`
`considered by the United States Patent & Trademark Office (“PTO”) during the prosecution of
`
`the Qureshey Patents. This includes, for example, one or more of the White, Logan, and/or
`
`Abecassis patents addressed below, over which the PTO previously determined that the claims of
`
`the Qureshey Patents are novel and nonobvious.
`
`B.
`
`Relevant Field and Level of Ordinary Skill in the Art
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`172. Dr. Jeffay states that “a person of ordinary skill in the art as of the effective filing
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`dates of the ‘952 and ‘652 Patents in November of 2000 would have a Bachelor of Science
`
`degree in in [sic] electrical engineering, computer engineering, computer science, or equivalent
`
`thereof, and one to two years of experience with computer and multimedia networking. More
`
`education could substitute for experience, and that experience, especially when combined with
`
`training, could substitute for formal college education.” (Jeffay Report, ¶ [0106].)
`
`173.
`
`In my opinion, there is no material difference in our respective opinions regarding
`
`the relevant field (“media file sharing” versus “computer and multimedia networking”) and the
`
`appropriate level of skill of a person having ordinary skill in the art (e.g., Bachelor of Science in
`
`electrical engineering, computer science, or equivalent with 1-2 years of experience in the
`
`relevant field).
`
`174. However, in my opinion, Dr. Jeffay did not actually apply the above-stated level
`
`of skill in reaching his conclusions regarding invalidity.
`
`a.
`
`Dr. Jeffay’s Obviousness Combinations Require Higher Than
`Ordinary Skill
`
`175.
`
`In addition to other deficiencies in Dr. Jeffay’s invalidity analyses identified
`
`below, in my opinion Dr. Jeffay effectively applied a much higher level of skill in reaching his
`
`conclusions that the asserted claims of the Qureshey Patents are obvious. For example, as an
`
`alleged motivation to combine prior art references, Dr. Jeffay states:
`
`I am aware of no technological reason that would have prevented a person of skill in the
`art from combining the different technologies discussed in the prior art references,
`including but not limited to home networks, peer-to-peer networks, host-client networks
`(those with a central host), personal audio players, karaoke systems, jukeboxes, and
`wireless players.” (Jeffay Report ¶ [0230]; underlining added.)
`
`176.
`
`In my opinion, Dr. Jeffay’s obviousness analysis applies a level of skill much
`
`closer to his own Ph.D. in computer science and experience “designing, building, analyzing, and
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`teaching distributed multimedia computer systems for over 10 years” in reaching his conclusions
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`regarding invalidity. (Jeffay Report, ¶ [0106].) Not a bachelor’s degree with 1-2 years of
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`experience. In fact, the above quotation from Dr. Jeffay’s report refers to “a person of skill in
`
`the art,” not a person of ordinary skill in the art. Thus, in my opinion, Dr. Jeffay’s report at most
`
`highlights what might possibly have been achieved by a person of much higher skill as of the
`
`priority date of November 8, 2000 or through extraordinary experimentation (e.g., allegedly
`
`because there was “no technological reason” for it not to work), not what would have been
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`obvious to a person having ordinary skill in the art as of the effective date of the Qureshey
`
`Patents.
`
`177.
`
`First, the very concepts that Dr. Jeffay relies on as alleged motivation to combine
`
`references illustrate the vast extent of inter-disciplinary knowledge that would be required to
`
`combine or modify the various techniques of shared media management described in the prior art
`
`references upon which Dr. Jeffay relies. These concepts include streaming, decompression, user
`
`interface management, and playback of media across different types of networks (e.g., home
`
`networks, peer-to-peer networks, host-client networks (with central host)) and different types of
`
`devices with different requirements and limitations (e.g., personal audio players, karaoke
`
`systems, jukeboxes, and wireless players). In my opinion, even if a person having ordinary skill
`
`in the art (Bachelor’s with 1-2 years of experience) would have been generally familiar with
`
`these principles, a person of ordinary skill in the art would not have been able to modify,
`
`combine, or redesign these technologies as arbitrarily suggested by Dr. Jeffay.
`
`178.
`
`Second, research and development into multimedia networking was still in its
`
`relatively early stages in 2000. The World Wide Web did not even exist until 1993, and the first
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`commercial streaming application of very limited capability (CU-SeeMe) was not available until
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`1995. I am not aware of any University undergraduate curriculum offered in the areas of
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`streaming, decompression, playback, etc. that taught how to meaningfully combine and apply
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`those concepts as of 2000, and even someone with or working towards a Masters or Doctorate in
`
`Computer Science or Engineering at that time would have needed to attend a University that was
`
`conducting research into this new and emerging field. In my opinion, a person having ordinary
`
`skill in the art would not have understood how to modify or combine systems of the prior art in
`
`the manner suggested by Dr. Jeffay, nor would there have been a likelihood of success in doing
`
`so.
`
`179. A good example of the complexity that Dr. Jeffay’s purported obviousness
`
`combinations would entail, and thus the higher than ordinary skill in the art that would be
`
`required to make them, are Dr. Jeffay’s opinions in view of the Lipscomb patent. As described
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`in greater detail in later sections of my report, in several instances the Jeffay Report alleges that
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`it would have been obvious to combine Lipscomb with another system (separately, with each of
`
`the RealPlayer, Ninja Jukebox, Langdon, Logan, and White systems) in order to impart to that
`
`system a real-time functionality that would allow a user’s device to request supplemental
`
`information related to a song in real time while the song is playing, as defined in claim 11 of the
`
`‘652 Patent.
`
`180.
`
`In each instance, there is no discussion in the Jeffay Report regarding how the
`
`different types of networks in these systems (e.g., home networks, peer-to-peer networks, host-
`
`client networks (with central host)), or different types of devices with different requirements and
`
`limitations (e.g., personal audio players, karaoke systems, jukeboxes, and wireless players),
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`would allegedly have been obvious to combine by a person having ordinary skill in the art or
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`how they would be combined. The Jeffay Report simply assumes that a person having ordinary
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`skill in the art could do so, and would have done so because “a person of skill in the art would
`
`have understood that to the average consumer, additional features are generally considered
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`better.” (Jeffay Report, p. 91.) However, consumers’ desire for omni-capable products does not
`
`mean that a person having ordinary skill in the art would have deemed it obvious to, or would
`
`have had the capability to, adapt functionality that was allegedly available on one media platform
`
`to another platform or have a reasonable likelihood of success in doing so.
`
`181.
`
`In addition, in my opinion, adding real time functionality to a system to allow a
`
`user’s computing device to request supplemental information related to a song in real time while
`
`the song is playing is not trivial. For example, Lipscomb upon which Dr. Jeffay relies does not
`
`disclose or suggest this feature. Lipscomb relates to a media library system that uses
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`synchronous processing to batch download songs and other information to a local device before a
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`user plays music or views corresponding information. The Lipscomb user device thus pre-
`
`downloads all available information (e.g., lyrics, notes, etc.) from a server before the user device
`
`plays any songs. The invention defined in claim 11 of the ‘652 Patent, on the other hand, is
`
`directed to a multi-tasking media management system that allows real-time asynchronous
`
`operations such as requesting supplemental information regarding a song while the song
`
`playing. An asynchronous system (also known as a multithreaded system) requires a
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`sophisticated request and response protocol, not to mention event driven actions, and thus is
`
`much more complex than a synchronous system. In my opinion, the real-time functionality
`
`defined by claim 11 of the ‘652 Patent would not have been obvious to a person having ordinary
`
`skill in the art.
`
`b.
`
`The Obviousness Combinations are Not Supported
`
`182.
`
`The Jeffay Report also repeatedly states in footnotes and without supporting
`
`reasoning, citations, or explanation that “To the extent that it is found that an element of these
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`claims is not expressly disclosed by [reference], it is my opinion that these claims are
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`nonetheless obvious to a person of ordinary skill in the art.” (Jeffay Report, pp. 72-91, footnotes
`
`3-21.) I understand that because these opinions are just conclusions without support, no response
`
`is required. In any event, as a general matter I disagree that a person having ordinary skill in the
`
`art would have found it obvious to modify the references discussed below in the manner claimed
`
`in the Qureshey Patents. The Qureshey Patents claim significant improvements over the systems
`
`described in these references, which in my opinion, would not have been obvious to person
`
`having ordinary skill in the art. For example, many of these references describe the use of a
`
`personal computer to manually create media playlists for local storage by the computer. The
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`PTO already considered these types of systems, and determined that the inventions claimed in
`
`the Qureshey Patents are novel and nonobvious. For example, in my opinion, none of the cited
`
`references teaches or suggests an electronic device that receives a playlist assigned to the device
`
`from a central or remote system, where the playlist identifies a plurality of songs, as disclosed
`
`and claimed in the Qureshey Patents.
`
`C.
`
`Priority Dates of the Qureshey Patents
`
`183. Dr. Jeffay assumed that the ‘952 and ‘652 Patents are entitled to the November 8,
`
`2000 priority date for the purposes of his analysis. (Jeffay Report, ¶ [076], “The ‘952 and ‘652
`
`Patents share the same specification, and as explained below, I treat both patents as if they were
`
`filed on November 8, 2000.”; Jeffay Report, ¶ [0104], “I have been asked to assume November
`
`8, 2000, as the earliest effective filing date of the ‘952 and ‘652 Patents.”) There is no dispute
`
`between Dr. Jeffay and me on this point.
`
`184. As set forth on the face of the ‘952 Patent, the application for the ‘952 Patent was
`
`filed on November 27, 2006 and is a continuation of application number 09/805,470 filed on
`
`March 12, 2001, which is a continuation-in-part of application number 09/096,703 filed on June
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`12, 1998. On its face, the ‘952 Patent also claims priority to two provisional applications filed
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`on November 8, 2000 and January 22, 1998.
`
`185. As set forth on the face of the ‘652 Patent, the application for the ‘652 Patent was
`
`also filed on November 27, 2006 and is a continuation of application number 09/805,470 filed on
`
`March 12, 2001, which is a continuation-in-part of application number 09/096,703 filed on June
`
`12, 1998. On its face, the ‘652 Patent also claims priority to the same two provisional
`
`applications filed on November 8, 2000 and January 22, 1998.
`
`186. Based on my review, in my opinion the subject matter claimed in the asserted
`
`claims of the ‘952 and ‘652 Patents was conceived and reduced to practice at least as early as the
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`November 8, 2000 filing date of U.S. Provisional Application No. 60/246,842 (“Provisional”).
`
`For example, the Qureshey Patents and the Provisional filed November 8, 2000 have nearly
`
`identical figures and description, including Figures 1-19C and the corresponding description in
`
`the specification, which support the subject matter of the asserted claims. In the summary of the
`
`Qureshey Patents above, parallel citations to the Qureshey Patents and to the Provisional are
`
`provided.
`
`D.
`
`Claim Construction
`
`187. Dr. Jeffay, for the most part, adopts the claim constructions proposed by
`
`Respondents. For the reasons set forth above, it is my opinion that the Respondents’
`
`constructions are incorrect. In any event, it is my opinion that the prior art upon which Dr.
`
`Jeffay relies does not anticipate or render obvious the asserted claims of the Qureshey Patents
`
`under any of the parties’ or Staff’s proposed constructions.
`
`188.
`
`For the claim terms “Internet radio broadcast” and “Internet radio mode of
`
`operation,” Dr. Jeffay purports to adopt the constructions offered by Respondents. (Jeffay
`
`Report, pp. 53-57 and 59-61.) However, in my opinion, Dr. Jeffay’s treatment of these claim
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`terms in his analysis of the prior art indicates that he has effectively provided a new
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`interpretation or construction for these claim terms. Dr. Jeffay now appears to allege that since
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`Internet radio broadcasts are “streamed to listeners as a unicast” and “all publically accessible
`
`content on the Internet in 2000, as well as today, is transmitted via unicast” (Jeffay Report
`
`[0135]-[0136]), any Internet-enabled device that can access public content over the Internet
`
`inherently has an Internet radio mode of operation for receiving Internet radio broadcasts. (E.g.,
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`Jeffay Ex. 26, p. 16, “A person having ordinary skill in the art at the time of the alleged invention
`
`would understand that ‘commercial service’ [over the Internet] as disclosed in Busam constitutes
`
`an Internet radio broadcast, and that Busam teaches that API applications for communicating
`
`with the commercial service would constitute an Internet radio mode of operation.”) I disagree.
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`All unicast content streamed over the internet is not an “Internet radio broadcast” (e.g., the
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`content of broadcast programming simultaneously available via traditional FM or AM radio
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`stations). In addition, just because a device has the ability to access some content over the
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`Internet does not mean that the device has the capability to access and play Internet radio
`
`broadcasts. For example, as explained in the Qureshey Patents, a web browser with a particular
`
`plug-in may be required in order to access and play Internet radio broadcasts. (‘952 Patent, 3:42-
`
`45.)
`
`189.
`
`Lastly, the Jeffay Report acknowledged the existence of Respondents’ positions
`
`that certain claims in the Qureshey Patents are limited to a specific “order of steps” and that
`
`“Where indicated by language and syntax of claim language, order is required.” (Jeffay Report,
`
`p. 42, referencing ‘952 claim 9 and ‘652 claims 1 and 42.) However, Dr. Jeffay did not provide
`
`any opinion on this issue, or provide any opinions whether the prior art references upon which he
`
`relies would meet the “order of steps” requirement if adopted by the ALJ. Accordingly, if
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`Respondents’ proposed construction regarding the “order of steps” is adopted, in my opinion Dr.
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`Jeffay and Respondents have not shown (nor even alleged) that the alleged prior art relied upon
`
`by Dr. Jeffay meets this requirement and thus cannot prove invalidity by clear and convincing
`
`evidence.
`
`E.
`
`The Qureshey ‘652 Patent Specification Adequately Describes and Enables
`Claims 13 and 55
`
`190.
`
`The Jeffay Report alleges that dependent claims 13 and 55 of the ‘652 Patent are
`
`invalid for lack of adequate written description in the specification of the ‘652 Patent and for
`
`lack of enablement. (Jeffay Report at ¶¶ [0170]-[0173].) Dr. Jeffay alleges that “a person of
`
`ordinary skill in the art would not understand how a device both ‘receive[s]’ and ‘display[s]’ a
`
`‘recommended song’” (Jeffay Report at ¶ [0172]). I disagree.
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`191.
`
`First, I understand that this alleged basis of invalidity was not previously raised by
`
`Respondents in this Investigation and thus is untimely.
`
`192.
`
`Second, in my opinion, at least the ‘652 Patent, Figure 20C and 31:12-38, provide
`
`adequate written description for and enable the inventions claimed in claims 13 and 55 of the
`
`‘652 Patent. For example, the ‘652 Patent specification describes that “When the user presses
`
`the menu button 1822, the ‘similar’ menu item is chosen and a listing of albums that are from a
`
`genre of music similar to that of the audio source or from artists that are in some way similar to
`
`the artist of the audio source is presented. If the ‘similar’ menu item is performed on Moby and
`
`‘Porcelain,’ a list of techno songs from Moby and/or techno songs from other artists can be
`
`presented.” (‘652 Patent, 31:24-31.) In other words, via a graphical user interface, the user is
`
`provided with songs, or a list of songs, that relate to a previously active artist or album. In my
`
`opinion, a person having ordinary skill in the art would understand that these similar songs, or
`
`listing of similar songs, would constitute the receipt of “recommended songs” and that providing
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`the information or content corresponding to these songs via the graphical user interface would
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`constitute the display of the recommended songs as claimed.
`
`F.
`
`The Asserted Claims of the Qureshey Patents are Not Anticipated By Nor
`Obvious From The Cited References
`
`1.
`
`Busam - U.S. Patent No. 8,281,001
`
`193.
`
`The Jeffay Report alleges that the Busam patent anticipates all of the asserted
`
`claims of the ‘952 Patent, i.e., claims 1, 2, 3, 4, 9, 10, 11, 12, and 14, and all of the asserted
`
`claims of the ‘652 Patent, i.e., claims 1, 3, 4, 6, 7, 10, 11, 13, 42, 44, 45, 47-49, 50, 52, and 55.
`
`(Jeffay Report ¶¶ [0176]-[0177].) In the alternative, the Jeffay Report alleges in footnotes and
`
`without explanation that the asserted claims are obvious from the Busam patent. (Jeffay Report,
`
`p. 72, footnotes 3-4.) I disagree for the reasons set forth below.
`
`a.
`
`The Busam Patent is Not Prior Art to the Qureshey Patents
`
`194.
`
`The Busam patent was filed on September 19, 2001 and claims priority to U.S.
`
`provisional patent application no. 60/233,741, filed on September 19, 2000. The Busam patent is
`
`Exhibit 23 to the Jeffay Report. (882PRIOR00011750-11770.) The Busam provisional
`
`application is Exhibit 24 to the Jeffay Report. (LG-ITC882-00175959-175976.)
`
`195. As Dr. Jeffay acknowledges, the nonprovisional application for the Busam patent
`
`was filed after the November 8, 2000 priority date of the Qureshey Patents. (Jeffay Report ¶
`
`[0174].)1 Thus, on its face, the Busam patent is not prior art to the Qureshey Patents.
`
`196.
`
`To prove that the Busam patent is prior art, the Jeffay Report was required to
`
`demonstrate with clear and convincing evidence that the allegedly relevant portions of the
`
`Busam patent are supported by adequate written description in the Busam provisional
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`application. The Jeffay Report fails to make such a showing. Accordingly, in my opinion, the
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`Jeffay Report fails to demonstrate that the Busam patent is prior art to the Qureshey Patents.
`
`197.
`
`The Jeffay Report concludes, without explanation, that the Busam patent is prior
`
`art to the Qureshey Patents because “it is my understanding that Busam can reach back to the
`
`filing date of the provisional application (September 19, 2000) it claims priority to because …
`
`the provisional supports the relied on disclosure in the patent issued to Busam.” (Jeffay Report ¶
`
`[0174], emphasis added.) However, the body of Dr. Jeffay’s report cites only to the text of the
`
`Busam patent, not to the provisional, and does not even try to explain how the provisional
`
`supports the Busam patent. (Jeffay Report ¶ [0174]-[0177].) Similarly, the claim charts attached
`
`as Exhibits 25 and 26 to the Jeffay Report broadly cite to almost the entire Busam provisional
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`application but do not explain how it allegedly provides an adequate written description of the
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`cited portions of the Busam patent on which Dr. Jeffay relies. (E.g., Jeffay Exhibit 25, p. 1 and
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`Jeffay Exhibit 26, p. 1, concluding without explanation that “Busam qualifies as prior art … See,
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`e.g., U.S. Provisional Patent Application No. 60/233,741 at 1-5, 7-8, Figs. 1-2.”) No analysis or
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`explanation is provided.
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`198.
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`In addition, the repeated but conclusory statements in Exhibits 25 and 26 of the
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`Jeffay Report that “At least the above-cited disclosures from Busam were contained in substance
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`in U.S Provisional Patent Application No. 60/233,741” do not demonstrate that the Busam
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`provisional application provides adequate written description for the Busam patent. (E.g., Jeffay
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`Exhibit 25, pp. 6, 7, 8, 10, 12, 13, 15, etc.; Jeffay Exhibit 26, pp. 5, 12, 13, 19, 21, etc.;
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`underlining added.) The Jeffay Report does not cite to or explain any particular “substance” of
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`1 The Jeffay Report states incorrectly that Busam “was filed on July 4, 2002.” (Jeffay Report, ¶ [0174].) The
`application for the Busam patent was filed on September 19, 2001. Both dates are after the November 8, 2000
`priority date of the Qureshey Patents.
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`the Busam provisional application, much less explain how it provides adequate written
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`description for the cited portions of the Busam patent. Moreover, even a cursory review of the
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`Busam provisional application (3 Figures and corresponding description) reveals that it describes
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`far less than the Busam patent (12 Figures and corresponding description). (Compare Jeffay Ex.
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`24 with Jeffay Ex. 23.)
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`199.
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`Lastly, the repeated statements in the Jeffay Report that the “Provisional
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`Application No. 60/233,741 provides written description for the claimed invention of Busam”
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`are irrelevant. (E.g., Jeffay Exhibit 25, pp. 6, 7, 8, 10, 12, 13, 15, etc.; Jeffay Exhibit 26, pp. 5,
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`12, 13, 19, 21, etc.) The claims of the Qureshey Patents are the focus of the validity analysis, not
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`the claims of the Busam patent. If the Busam provisional application does not contain an
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`adequate written description of the cited portions of the Busam patent that are alleged to
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`anticipate the asserted claims of the Qureshey Patents, the Busam patent is not prior art and
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`cannot invalidate those claims. The Jeffay Report failed to prove that the Busam patent is prior
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`art.
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`b.
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`The Busam Patent is Not Entitled to the Priority Date of the
`Busam Provisional Application
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`200. Based on my review of the Busam provisional application, it is my opinion that
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`the Busam provisional does not adequately describe the portions of the Busam patent cited in the
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`Jeffay Report. Accordingly, in my opinion, the Busam patent is not prior art to the asserted
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`claims of the Qureshey Patents and cannot invalidate those claims.
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`201.
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`For example, the Jeffay Report alleges that “Busam discloses methods and
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`systems for sharing playlists and audio files in a device-to-device network containing media
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`player devices.” (Jeffay Report ¶ [0175].) In alleged support, Dr. Jeffay’s claim charts cite to
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`portions of the Busam patent, including, for example, 1:51-54 (“an entity can transfer files,
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`stream files, create and use playlists …”) and FIG. 9 (“FIG. 9 is a flowchart describing the
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`process that a device uses to display a playlist”). (Jeffay Report, Ex. 25, pp. 2 and 32; Ex. 26,
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`pp. 6 and 60.) However, the Busam provisional application does not contain an adequate written
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`description of these cited portions. For example, nowhere does the Busam provisional
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`application even contain the words “playlist” or “song,” much less describe (in words or
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`substance) a “playlist identifying a plurality of songs” as is required by all of the independent
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`claims of the Qureshey Patents (‘952 Patent, claims 1 and 9; ‘652 Patent claims 1 and 42). The
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`Busam provisional application also does not contain an adequate written description of the
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`above-cited portions of the Busam patent (FIG. 9 and 1:51-54) upon which Dr. Jeffay relies. The
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`limited description in the Busam provisional application that “Content can be, but is not limited
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`to, video, audio, pictures, and literature” (Jeffay Ex. 24, 4:21) does not disclose or suggest a
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`“playlist identifying a plurality of songs,” nor the receipt of a playlist that is assigned to the
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`electronic device as claimed (‘952 Patent claims 1 and 9, ‘652 Patent claims 1 and 42).
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`202.
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`In my opinion, the Busam provisional application also does not contain an
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`adequate written description of an electronic device that receives information enabling the
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`electronic device to obtain the ones of the plurality of songs from at least one remote source, as
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`claimed in the asserted claims of the Qureshey Patents (‘952 Patent claims 1 and 9, ‘652 Patent
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`claims 1 and 42