Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 64
`Entered: February 5, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`DRAGON INTELLECTUAL PROPERTY, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01252
`Patent 5,930,444
`____________
`
`
`
`Before GREGG I. ANDERSON, STACEY G. WHITE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`
`
`Paper 64
`Entered: February 5, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`DRAGON INTELLECTUAL PROPERTY, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01252
`Patent 5,930,444
`____________
`
`
`
`Before GREGG I. ANDERSON, STACEY G. WHITE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
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`IPR2014-01252
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`I. INTRODUCTION
`Unified Patents Inc. (“Petitioner”) filed a Petition requesting inter
`partes review of claims 1, 2, 7, 8, 10, 13, and 14 of U.S. Patent No.
`5,930,444 (Ex. 1001, “the ’444 patent”). Paper 1 (“Pet.”). Dragon
`Intellectual Property, LLC (“Patent Owner”) filed a Preliminary Response.
`Paper 14. As we authorized in Paper 15, Petitioner filed a Reply Brief.
`Papers 18, 20. Based on our review of these submissions, we instituted inter
`partes review of claims 1, 2, 7, 8, 10, 13, and 14 of the ’444 patent on the
`proposed ground of unpatentability under 35 U.S.C. § 103 over Goldwasser1
`and Ulmer2.
`After institution, Patent Owner filed a Patent Owner’s Response
`(Paper 47, “PO Resp.”), and Petitioner filed a Reply (Paper 51, “Reply”).
`An oral hearing was conducted October 13, 2015. A transcript of the oral
`hearing is included in the record. Paper 57 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`as to the patentability of claims 1, 2, 7, 8, 10, 13, and 14. For the reasons
`discussed below, Petitioner has demonstrated by a preponderance of the
`evidence that claims 1, 2, 7, 8, 10, 13, and 14 are unpatentable.
`
`A. Related Proceedings
`
`Petitioner indicates that Patent Owner has asserted the ’444 patent in
`ten district court cases in the District of Delaware. Pet. 4. In addition, the
`’444 patent is at issue in IPR2015-00499, which is pending. PO Resp. 1.
`
`
`1 U.S. Patent No. 5,241,428, filed Mar. 12, 1991, issued Aug. 31, 1993
`(“Goldwasser”) (Ex. 1005).
`
` PCT Pub. WO 89/12896, published Dec. 28, 1989 (“Ulmer”) (Ex. 1018).
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`B. The ’444 Patent (Ex. 1001)
`The ’444 patent discusses disadvantages in regards to known video
`cassette recorders’ (“VCRs”) inability to record and playback
`simultaneously. Ex. 1001, 1:47–2:35. The ’444 patent notes that a person
`may encounter interruptions such as telephone calls while viewing a
`program. Id. at 1:47–49. The ’444 patent explains that known VCRs allow
`a user to record the portion of the program starting at the time of the
`interruption for later viewing. Id. at 1:50–58. Such VCRs, however, did not
`allow the user to watch immediately the remainder of the program from the
`point of the interruption to the end of the program. Id. at 1:50–2:14.
`The ’444 patent addresses these issues with an audiovisual recording
`and playback device that provides substantially simultaneous recording and
`playback, allowing user-controlled programming delay. Id. at Abstract. An
`embodiment of such a recording and playback device is depicted in Figure 3
`of the ’444 patent, reproduced below.
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`Figure 3 depicts recorder 10 and its components, including memory unit 12;
`control circuit 14; inputs 22a, 22v, and 22m; outputs 24a, 24v, and 24m;
`tuner 26; modulator 32; and receiver 42. Id. at 3:54–64, 4:35–53, 4:59–5:4,
`6:7–18. An embodiment of a remote control unit for use with recorder 10 is
`depicted in Figure 5, reproduced below.
`
`
`Figure 5 shows remote control unit 46 and its components, including
`keyboard 16 and transmitter 44. Id. at 6:7–12, 6:25–28. Transmitter 44 of
`remote control unit 46 and receiver 42 of recorder 10 provide
`communication between remote control unit 46 and recorder 10. Id. at 6:8–
`19, 6:25–28. Keyboard 16 has a number of keys, including record key 18
`and playback key 20. Id. at 3:65–67.
`A user may actuate record key 18, for example, when a telephone call
`interrupts a program. Id. at 5:20–24. In response, control circuit 14 begins
`storing within memory unit 12 information received via input 22. Id. at
`5:24–25. When the interruption ends, the user may actuate playback key 20.
`Id. at 5:25–27. In response, the system retrieves and displays the recorded
`information, starting from the point of the interruption, while simultaneously
`continuing to store information from input 22. Id. at 5:25–36.
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`C. Illustrative Claim
`Petitioner challenges claims 1, 2, 7, 8, 10, 13, and 14 of the ’444
`patent. Claims 1 and 14 are independent. Claims 2, 7, 8, 10, and 13 depend,
`directly or indirectly, from claim 1. Claim 1 is illustrative and is reproduced
`below:
`1.
`
`A recording and playback apparatus for the
`substantially immediate and seamless resumption
`of interrupted perception of broadcast3 program
`information based upon audio or video signals, or
`both, without missing the program information
`presented during the interruption, comprising:
`
`means for powering the apparatus;
`
`a keyboard having a record key and a playback
`key;
`
`a control circuit coupled responsively to said
`keyboard;
`
`a memory unit coupled responsively to said control
`circuit, said memory unit having a medium for
`storage of information, said storage medium
`having structure which enables substantially
`random access to information stored in said
`medium for retrieval of the stored information
`from said storage medium;
`
`at least one input, said input being connected to a
`user’s audio/video program signal source and
`also being coupled to said memory unit so as to
`enable program information presented by the
`signal source to be transferred to and stored in
`said memory unit; and
`
`3 A Certificate of Correction was issued March 5, 2013, replacing
`“perception of program information” with “perception of broadcast program
`information.” Ex. 1001, 14.
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`at least one output, said output being connected to
`a user’s audio or video display device or both,
`said output further being connected to said
`memory unit so as to enable the transfer of
`program information from said memory unit to
`the user’s display device, said control circuit
`being
`configured
`so
`that
`substantially
`simultaneous
`recording and playback of
`program information is achieved when said
`record key is first actuated to begin a recording
`by initiating storage of the broadcast program
`information in said memory unit, and said
`playback key
`is subsequently and solely
`actuated to begin time delay playback of the
`recording from
`the beginning
`thereof by
`initiating retrieval of
`the stored program
`information in said memory unit, with the
`interval of the time delay being the same as the
`time elapsed between the actuation of said
`record key and the subsequent actuation of said
`playback key.
`
`Ex. 1001, 8:29–64.
`
`II. ANALYSIS
`
`A. Claim Interpretation
`Petitioner proffers constructions for a number of claim terms.
`Pet. 18–24. No claim terms require express construction for purposes of this
`Decision.
`
`B. Obviousness of Claims 1, 2, 7, 8, 10, 13, and 14 over Ulmer and
`Goldwasser
`
`Petitioner alleges that claims 1, 2, 7, 8, 10, 13, and 14 of the ’444
`patent are unpatentable under 35 U.S.C. § 103 over Goldwasser and Ulmer.
`Pet. 24–35, 57–59. Petitioner relies on claim charts showing how these
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`references teach the claimed subject matter. Id. at 35–57. Petitioner further
`relies on a Declaration from Dr. Sheila S. Hemami. Ex. 1013.
`For the reasons discussed below, we conclude that Petitioner has
`established by a preponderance of the evidence that claims 1, 2, 7, 8, 10, 13,
`and 14 would have been obvious over Goldwasser and Ulmer.
`1. Overview of Ulmer (Ex. 1018)
`Ulmer discloses a “[d]evice for simultaneous recording and playback
`of television images” and a method of operating such a device. Ex. 1018, 1.
`Ulmer’s device “comprises a playback mechanism and a recording
`mechanism, the playback mechanism and recording mechanism being
`separate and independent, with the possibility of operating simultaneously.”
`Id. at Abstract. Ulmer discloses that by providing a device and method for
`recording television images and playing them back after a short delay, its
`invention serves to eliminate advertising segments and other sequences from
`a television program. Id.
`Ulmer teaches that its device “uses a recording medium of the direct-
`access memory type.” Id. at 3. Ulmer teaches that “[t]he direct-access
`memory of the recording medium comprises a double-gate linear memory of
`semiconductor or other type, permitting simultaneous write and read
`access.” Id. at 4.
`Ulmer further teaches that its devices use a playback mechanism that
`is separate and independent of its recorder mechanism. Id. at 3. The
`playback and recorder mechanisms can operate simultaneously, and can be
`positioned and moved independently on the recording medium. Id.
`In one instance, Ulmer describes a method that includes the following
`five steps:
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`- recording a television broadcast on the recording
`medium;
`- waiting for a time T that corresponds almost to the
`duration of all of the advertising breaks that it is wished
`to eliminate from the broadcast that it is desired to watch;
`- starting playback of the recording medium in order to
`reproduce the recorded images on a television screen;
`- at the beginning of each advertising break, reproducing
`the images by playback at accelerated speed so that the
`end of the advertising break can be identified;
`- at the end of the advertising break, reproducing the
`recorded images at normal speed.
`
`Id. at 2.
`Ulmer also discloses that:
`[In addition, i]t is pointed out that it is the television
`viewer himself or herself who identifies the start and end
`of the advertising break that he or she wishes to
`eliminate, and that it is he or she who controls the device
`of the invention, for example with a remote.
`
`Id. at 1.
`2. Overview of Goldwasser (Ex. 1003)
`Goldwasser is a United States Patent titled “Variable-Delay Video
`Recorder” that issued August 31, 1993 from an application filed March 12,
`1991. Ex. 1005, at [22], [45], [54]. Goldwasser describes “[a] video
`recorder and playback device allowing simultaneous recording and playback
`of program material.” Id. at Abstract. One of the problems that Goldwasser
`purports to solve is the inconvenience that arises from the inability of
`conventional VCRs to allow a user to view material as it is being recorded.
`Id. at 1:29–42. For example, “often one will be watching a particular
`program when one must temporarily cease watching it, for example to take a
`telephone call or the like. It would obviously be convenient to be able to
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`record the program from that point forward, complete the telephone call, and
`simply watch the remainder delayed by the length of time of the
`interruption.” Id. at 1:43–49.
`One embodiment disclosed by Goldwasser is a “‘random access’
`embodiment” whereby the video signal is converted to a digital signal and
`recorded in random access memory, which could include magnetic or optical
`media or solid state memory. Id. at 2:16–21. This random access
`embodiment is depicted in Figure 3 of Goldwasser, reproduced below.
`
`
`Goldwasser’s Figure 3 is a schematic diagram of its random access
`embodiment. Id. at 3:49–50. The recording device depicted in Figure 3
`includes signal sampling circuit 51 and analog-to-digital converter 52, which
`are used together to create digital samples of the video signal being record.
`Id. at 6:25–28. These samples are stored in random access memory 53. Id.
`at 6:28–29. The storage of these digitized video samples is controlled by
`address controller 58, which is responsive to commands from user control
`panel 50. Id. at 6:44–48. Playback can take place from any portion of the
`memory at any speed without impacting the recording. Id. at 6:38–40.
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`3. Claims 1 and 2
`Petitioner contends that claims 1 and 2 would have been obvious over
`Ulmer and Goldwasser. Pet. 35–51. We have reviewed Petitioner’s detailed
`explanation identifying where each limitation allegedly would have been
`taught by Ulmer and Goldwasser, along with the testimony of Petitioner’s
`declarant, Dr. Hemani. See id.; Ex. 1013; Reply 12–24. We also have
`reviewed Patent Owner’s assertions and evidence as to why Petitioner’s
`explanations and evidence are deficient. PO Resp. 17–49; Ex. 2022
`(Declaration of Adam Goldberg). On this record, we are persuaded that
`Petitioner has shown by a preponderance of the evidence that Ulmer and
`Goldwasser teach each limitation of claims 1 and 2.
`Petitioner asserts that Ulmer discloses a recording and playback
`apparatus for audio or video signals, as recited in the preamble of
`independent claim 1. Pet. 35–36. In addition, Petitioner notes that
`Goldwasser also discloses a recording and playback apparatus for audio or
`video signals. Id. at 36. Further addressing the preamble of claim 1,
`Petitioner asserts that “Goldwasser provides for the substantially immediate
`and seamless resumption of interrupted perception of program information
`without missing the program information presented during the interruption.”
`Id. at 36–37.
`Patent Owner argues that Ulmer does not disclose an “interruption” as
`recited in the preamble. PO Resp. 14. According to Patent Owner, Ulmer
`does not deal with unplanned interruptions; instead it only allows users to
`time shift for a planned amount of time in order to avoid commercials. Id.
`Petitioner responds by arguing that the preamble is not limiting. Reply 6.
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`We need not decide whether the preamble is limiting because we find that
`the prior art relied upon teaches the recited interruption. Goldwasser recites:
`Similarly, often one will be watching a particular program
`when one must temporarily cease watching it, for example, to
`take a telephone call or the like. It would obviously be
`convenient to be able to record the program from that point
`forward, complete the telephone call, and simply watch the
`remainder delayed by length of time of the interruption.
`
`Pet. 36–37 (citing Ex. 1003, 1:43–49). We find that this passage teaches the
`recited interruption.
`
`As to the body of claim 1, Petitioner asserts that the combination of
`Ulmer and Goldwasser teaches a keyboard having a record and a playback
`key. Pet. 28 (citing Ex. 1013 ¶ 59). Petitioner argues that Ulmer necessarily
`teaches the recited keyboard because it has a remote control that controls the
`operation of Ulmer’s device. Id. (citing Ex. 1001, 6:37–41; Ex. 1018, 1, 3;
`Ex. 1013 ¶ 60). According to Petitioner, “[t]he purpose of remotes at this
`time was to allow for the control of the device, be it a television or a VCR,
`using buttons and/or keys to input functions.” Reply 15 (citing Ex. 1013
`¶¶ 59–60). Petitioner provides evidence that it contends shows that a person
`of ordinary skill in the art would have been aware of VCR remote controls
`with such keys. Id. (citing Ex. 1013 ¶¶ 25, 27–28; Ex. 1004); Tr. 10–11
`(citing Ex. 1013 ¶ 28; Ex. 1004, 2; Ex. 1008, 2:29–34). For example,
`Exhibit 1004 is a March 1992 article that describes reviewing VCRs based
`on the logical arrangement of the keys on the remote control. Id. at 11; see
`Pet. 8. In addition, Exhibit 1008 is patent issued in 1989 that discloses a
`remote control with buttons for record and playback. Tr. 11; see Pet. 13.
`Petitioner also argues that the specification of the ’444 patent acknowledges
`that VCRs operated by remote control were well-known in the art. Pet. 28
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`(citing Ex. 1001, 6:37–41). Ulmer’s remote control is capable of “recording
`a television broadcast” and “starting playback of a recording medium”; thus,
`Petitioner argues it necessarily has keys on its remote control corresponding
`to these functions. Reply 15 (citing Ex. 1018, 2). In addition to the
`teachings of Ulmer, Petitioner also cites Goldwasser’s discussion of a user
`control panel by which a user can control the apparatus. Pet. 28. (citing Ex.
`1013 ¶ 58). In the alternative, Petitioner argues that it would have been an
`obvious design choice to use a remote control with play and record buttons
`to control Ulmer’s device. Reply 20; Tr. 10:7–14. Petitioner contends that
`“[a] person of ordinary skill was well aware of these features, and in
`designing a digital VCR, they would select these features readily and with
`ease to suit their design goals.” Pet. 14 (citing Ex. 1013 ¶ 38).
`Petitioner also asserts that Ulmer discloses a “memory unit,” “at least
`one input,” “at least one output,” and “substantially simultaneous recording
`and playback of program information,” as recited in claim 1. Pet. 29–31,
`41–42, 45–47. Petitioner further asserts that a person of ordinary skill in the
`art would understand that Ulmer’s system includes the claim 1 limitation
`that
`
`substantially simultaneous recording and playback of
`program information is achieved when said record key is
`first actuated to begin a recording by initiating storage of
`the broadcast program information in said memory unit,
`and said playback key is subsequently and solely
`actuated to begin time delay playback of the recording
`from the beginning thereof by initiating retrieval of the
`stored program information in said memory unit.
`Id. at 48–49.
`Because this claim language recites “said playback key is
`subsequently and solely actuated to begin time delay playback,” Petitioner
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`describes claim 1 as requiring “‘one button playback.’” See, e.g., id. at 1–2,
`15–16, 31–32. Petitioner asserts that a person of ordinary skill would
`understand that Ulmer’s system includes this limitation. Id. at 31–32, 48–
`49.
`
`Petitioner asserts that a person of ordinary skill in the art would
`understand that the step of starting playback in Ulmer involves pressing the
`playback key only. Pet. 32. Petitioner explains that a person of ordinary
`skill in the art would understand as much because Ulmer’s system allows
`simultaneous recording and playback, such that starting playback would not
`require stopping, pausing, or otherwise disturbing the pausing operation. Id.
`(citing Ex. 1013 ¶¶ 68–69).
`Relying on the testimony of Dr. Hemami, Petitioner also asserts that a
`person of ordinary skill in the art would understand that Ulmer’s system
`includes a “control circuit coupled responsively to said keyboard,” as recited
`in claim 1. Id. at 29, 38–41. Dr. Hemami explains that a person of ordinary
`skill in the art would understand that any remote-controlled/keyboard-
`controlled device needs a control circuit to execute commands entered at the
`keyboard. Ex. 1013 ¶ 61; Pet. 29. Additionally, given that Ulmer discloses
`control of the apparatus with the remote control, a person of ordinary skill in
`the art would understand that the control circuit is coupled responsively to
`the keyboard, Dr. Hemami explains. Ex. 1013 ¶ 62; Pet. 29.
`Petitioner further asserts that the functional diagram illustrated in
`Figure 3 of Goldwasser could be used to implement the details of Ulmer’s
`apparatus and control circuit (id. at 25). Petitioner explains that a person of
`ordinary skill in the art would be motivated to combine Goldwasser’s
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`disclosure with Ulmer’s because of the strong similarities in the purpose and
`configuration of the systems. Id. at 25–27 (citing Ex. 1013 ¶¶ 51–52).
`Patent Owner argues that the combination of Ulmer and Goldwasser
`does not teach the ’444 patent’s “a keyboard having a record key and a
`playback key” or the recited “control circuit.” PO Resp. 19. Patent Owner
`also argues that there is no motivation to combine the teachings of Ulmer
`and Goldwasser. Id. at 42. We address each of Patent Owner’s arguments
`in turn.
`According to Patent Owner, Petitioner’s inherency argument fails
`because Ulmer does not necessarily disclose the recited keyboard. Patent
`Owner notes that the focus of Ulmer’s device is commercial skipping and
`not the manner in which recording or playback is achieved. Id. at 22. As
`such, it provides no specifics as to what keys may exist on its remote
`control. Id. (citing Ex. 2022 ¶¶ 34–36). Patent Owner contends that
`(1) Ulmer may be controlled via something other than a keypad, and (2)
`even if Ulmer has a keypad, that keypad may only need a key to eliminate
`commercials. Id. at 23.
`As to the first argument, Patent Owner cites VCR Plus as a system
`known at the time of the invention that could be used to control a VCR
`without the use of a keyboard. Ex. 2022 ¶ 39. Using VCR Plus, a VCR
`could record a program by entering a code found in a television newspaper
`listing. Id. Another possibility that Patent Owner cites are VCRs that are
`programmed to record shows by using a bar code scanning wand. Id. ¶ 40.
`As to the second argument, Patent Owner asserts that commercials could be
`skipped via a “fast forward” key. Id. at 24 (citing Ex. 2022 ¶ 36).
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`In an obviousness analysis, it is proper to use inherency to account for
`a claim limitation that is not expressly disclosed by the prior art. PAR
`Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194–1195 (Fed. Cir.
`2014); see also In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (affirming a
`35 U.S.C. § 103 rejection based in part on inherent disclosure in one of the
`references). Our reviewing court, however, has limited the application of
`inherency in obviousness analysis to situations where the limitation at issue
`is the “natural result” of the combination of prior art elements. Id. at 1195.
`We are not persuaded by Patent Owner’s arguments against inherency
`because they are premised upon a very limited view of Ulmer’s device.
`Specifically, Patent Owner takes the view that Ulmer’s device is only for
`commercial skipping and, as such, its remote control would only need to
`handle that one function. This is not consistent with Ulmer’s specification.
`As described in Ulmer the “[user] controls the device of the invention, for
`example with a remote.” Ex. 1018, 2 (emphasis added). This statement
`indicates that the remote control is used to control “the device of the
`invention” and not just a single function performed by the device. Ulmer’s
`device is described expressly as having both record and playback
`functionality. Id. at Abstract, 2 (noting the separate record and playback
`mechanisms). Thus, Ulmer’s remote control must be able to control both
`recording and playback. Therefore, we find that the use of buttons to control
`Ulmer’s device is not based on mere probabilities or possibilities, but on the
`requirement that it must have such buttons to control the device. See PAR
`Pharm., 773 F.3d at 1195 (citing In re Oelrich, 666 F.2d 578, 581 (CCPA
`1981)). As Petitioner correctly notes, Patent Owner’s proposed alternative
`methods for controlling Ulmer’s device only provide for recording
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`functionality and do not address playback. Reply 19–20. As to Patent
`Owner’s argument that Ulmer’s functionality could be achieved via a fast
`forward key, Ulmer describes the use of a fast forward key as a prior art
`mechanism, and Ulmer states that its device provides a mechanism superior
`to the prior art’s use of fast forward to eliminate commercials. Ex. 1018, 1–
`2. Thus, we agree with Petitioner’s arguments and find that Ulmer’s device
`cannot be implemented by using only a fast forward key.
`In addition, we also find persuasive Petitioner’s argument that it
`would have been an obvious design choice to use play and record buttons on
`a remote control to control Ulmer’s device. See Pet. 14 (citing Ex. 1013 ¶
`38). Petitioner has provided evidence that such remote controls were well
`known at the time of the application for the ’444 patent. See Reply 15
`(citing Ex. 1013 ¶¶ 25, 27–28; Ex. 1004); Tr. 10–11 (citing Ex. 1013 ¶ 28;
`Ex. 1004, 2; Ex. 1008, 2:29–34). Based on this evidence, we are persuaded
`it would have been within the knowledge and abilities of one of ordinary
`skill in the art to control Ulmer’s device with a remote control that includes
`play and record buttons.
`Patent Owner also argues that the asserted combination does not teach
`the recited control circuit. As recited in claim 1, the control circuit is
`coupled responsively to the keyboard and the memory and it is “configured
`so that substantially simultaneous recording and playback of program
`information is achieved when said record key is first actuated to begin a
`recording by initiating storage of the broadcast program information in said
`memory unit.” Ex. 1001, 8:29–64. According to Patent Owner’s declarant,
`“Ulmer requires only that the device of Ulmer perform simultaneous
`recording and playback, and that it enable a user to ‘eliminate’ commercials
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`during playback by controlling the rate of playback.” Ex. 2022 ¶ 56. Mr.
`Goldberg maintains that the claims of the ’444 patent require more.
`Specifically, he states that the claims require “that the device contain a
`control circuit that achieves simultaneous recording and playback when the
`user first actuates the ‘record key,’ and then subsequently and solely actuates
`the ‘playback key.’” Id. Petitioner maintains that Ulmer describes separate
`record and playback mechanisms that allow for simultaneous recording and
`playback and that, as such, Ulmer must necessarily have the recited control
`circuit. Pet. 29–31. Patent Owner argues that Ulmer does not necessarily
`include a control circuit. PO Resp. 35–36. We, however, do not find this
`argument persuasive. Ulmer describes an electronic device and, as such, it
`has circuitry to control its functions. We find that Petitioner has provided
`sufficient evidence to show that Ulmer teaches the recited simultaneous
`recording and playback. Thus, we find that Ulmer must have a circuit to
`control this functionality. As we have discussed above, Ulmer must have
`record and playback buttons as well. Therefore, we find that Ulmer
`inherently includes the recited control circuit.
`In its Patent Owner Response, Patent Owner raised the argument that
`there was no motivation to combine Ulmer and Goldwasser. PO Resp. 42–
`47. At the Oral Hearing, however, Patent Owner withdrew this argument.
`Tr. 32:4–11. Regardless, we find that Petitioner has provided sufficient
`evidence of a motivation to combine. Petitioner explains that a person of
`ordinary skill in the art would be motivated to combine Goldwasser’s
`disclosure with Ulmer’s because both references “address the same problem:
`providing simultaneous recording and playback as a mechanism to allow a
`viewer to skip commercials.” Pet. 25. Petitioner elaborates that due to
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`extensive overlap between the systems of Ulmer and Goldwasser, a person
`of ordinary skill in the art would have been led to use various design details
`from Goldwasser’s teachings in a combination of Ulmer’s and Goldwasser’s
`systems. Id. at 25–26
`We find that Petitioner’s assertions and evidence provide rational
`underpinning for a conclusion that it would have been obvious to combine
`the teachings of Ulmer and Goldwasser. And we are persuaded Petitioner’s
`assertions and evidence show sufficiently that the resulting system would
`include each of the limitations of independent claim 1 and dependent claim
`2. Claim 2 depends from claim 1 and recites that the claimed apparatus
`“further compris[es] a remote control unit, and wherein said keyboard is
`housed in said remote control unit.” Petitioner notes that Ulmer explicitly
`discloses that its system includes a remote control unit. Id. at 28, 37, 51.
`We agree with Petitioner’s analysis of the recited art’s disclosures as applied
`to claim 2. Accordingly, we are persuaded that Petitioner has demonstrated
`by a preponderance of the evidence the unpatentability of independent claim
`1 and dependent claim 2 over Ulmer and Goldwasser.
`4. Claims 7, 8, and 10
`Petitioner asserts that Ulmer’s system includes the limitations of
`dependent claims 7, 8, and 10. Pet. 34–35, 51–56. With respect to the
`additional limitations of each of these claims, Petitioner asserts either that
`Ulmer explicitly discloses the limitation, or that a person of ordinary skill
`would understand that Ulmer’s system includes the limitation. Id. Patent
`Owner makes no additional argument as to the patentability of these
`dependent claims. PO Resp. 49. We have reviewed Petitioner’s argument
`and evidence, and we find them to be sufficient to establish the
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`unpatentability of these dependent claims. Thus, we adopt Petitioner’s
`analysis of these claims and find that Petitioner has demonstrated by a
`preponderance of the evidence the unpatentability of dependent claims 7, 8,
`and 10 over Ulmer and Goldwasser.
`5. Claim 13
`Regarding the recitation in dependent claim 13 of “a timer circuit
`adapted to enable the preprogrammed unattended initiation of recording,”
`Petitioner asserts that Goldwasser discloses such a timer circuit. Pet. 27, 56–
`57. Relying on the testimony of Dr. Hemami, Petitioner argues that a person
`of ordinary skill in the art would have had reason to modify Ulmer’s system
`to include Goldwasser’s timer circuit “to provide the benefit of delayed
`recording,” asserting that “[t]his was a common and important feature of
`VCRs in 1992, and users would simply demand such functionality if it were
`not already provided.” Id. at 27 (citing Ex. 1013 ¶ 53). Patent Owner makes
`no additional argument as to the patentability of this dependent claim. PO
`Resp. 49. We have reviewed Petitioner’s argument and evidence, and we
`find them to be sufficient to establish the unpatentability of claim 13. Thus,
`we adopt Petitioner’s analysis of this claim and find that Petitioner’s
`assertions and evidence establish by a preponderance of the evidence the
`unpatentability of dependent claim 13 over Ulmer and Goldwasser.
`6. Claim 14
`Patent Owner contends that its arguments regarding claim 1 also apply
`to claim 14. PO Resp. 47. For reasons discussed above, we do not find
`those arguments to be persuasive. Patent Owner also argues that Petitioner
`did not put forth sufficient evidence to show that one would use Ulmer’s
`device to perform the steps of claim 14. Id. We disagree and find that
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`Petitioner’s analysis of claim 14 is sufficient to establish the unpatentability
`of this claim.
`Petitioner’s arguments and evidence as to claim 14 may be
`summarized as follows. Petitioner asserts that the limitations of claim 14 are
`nearly identical to those of independent claim 1. Pet. 57; see also PO Resp.
`47 (noting that “[t]he method of Claim 14 includes providing a device
`substantially according to the invention of Claim 1”). Petitioner notes that
`claim 14 differs from claim 1 because claim 14 includes the language “begin
`playback of the stored program information by initiating retrieval of the
`program information stored in said memory unit from the beginning
`thereof.” Pet. 57. Petitioner states that “[t]his limitation basically requires
`starting playback from the beginning of the recording.” Id. Petitioner cites
`Ulmer’s disclosure that “[f]or reading, the RAR is initialized: - to zero if
`image reproduction is to start at the beginning of the memory” (Ex. 1018, 4)
`as teaching playback from the beginning of the recording. Id.
`Petitioner also notes that claim 14 recites “actuating said record key
`upon the beginning of the interruption to initiate storage of the broadcast
`program information in said memory unit” and “actuating said playback key
`upon the conclusion of the interruption to initiate retrieval and display of the
`program inform
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