Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 37
`Entered: February 12, 2015
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`
`
`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 NEIL T. POWELL, GREGG I. ANDERSON, and
`J. JOHN LEE, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`Paper 37
`Entered: February 12, 2015
`
`
`
`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 NEIL T. POWELL, GREGG I. ANDERSON, and
`J. JOHN LEE, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2014-01252
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`I. INTRODUCTION
`Unified Patents Inc. (“Petitioner” or “Unified Patents”) 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 14.1 As we authorized in Paper 15, Petitioner has filed a
`Reply Brief. Papers 18, 20.2 We have jurisdiction under 35 U.S.C. § 314(a),
`which provides that an inter partes review may not be instituted “unless . . .
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.”
`We determine that the information presented in the Petition and
`supporting evidence shows that there is a reasonable likelihood that
`Petitioner would prevail with respect to its challenge to claims 1, 2, 7, 8, 10,
`13, and 14 of the ’444 patent. Accordingly, we institute an inter partes
`review of claims 1, 2, 7, 8, 10, 13, and 14 of the ’444 patent.
`
`
`
`1 Patent Owner filed a redacted, public version (Paper 14) and an
`unredacted, confidential version (Paper 10) of its Preliminary Response, as
`well as public and confidential versions of many of the exhibits associated
`with the Preliminary Response. We have considered all of the information
`in both versions of the Preliminary Response and associated exhibits. In this
`Decision, we cite to the public version (Paper 14) of the Preliminary
`Response. The confidential version (Paper 10) currently remains under seal.
`2 Petitioner filed two versions of its Reply Brief. Paper 18 is an unredacted,
`confidential version of the Reply Brief. Paper 20 is a redacted, public
`version of the Reply Brief. We have considered all of the content in both
`versions of Petitioner’s Reply Brief. In this Decision, we cite to the public
`version (Paper 20). The confidential version (Paper 18) currently remains
`under seal.
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`A.
`
`Related Proceedings
`Petitioner indicates that Patent Owner has asserted the ’444 patent in
`ten district court proceedings in the District of Delaware, and that Petitioner
`is not a party to any of those district court proceedings. Pet. 4.
`
`B. The ’444 Patent (Ex. 1001)
`The ’444 patent discusses perceived disadvantages with known video
`cassette recorders (“VCRs”) that lacked the ability to record and play back
`simultaneously. Id. at col. 1, l. 47–col. 2, l. 35. The ’444 patent notes that a
`person watching a program may encounter interruptions like telephone calls.
`Id. at col. 1, ll. 47–49. The ’444 patent explains that known VCRs would
`allow a user to record the portion of the program that occurs during such an
`interruption for later viewing. Id. at col. 1, ll. 50–58. The ’444 patent
`further explains, however, that such VCRs 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 col. 1, l. 50–col. 2, l. 14.
`The ’444 patent addresses these perceived problems with an
`audiovisual recording and playback device that can provide substantially
`simultaneous recording and playback, allowing user-controlled
`programming delay. Id. at Abst. The ’444 patent shows one embodiment of
`such a recording and playback device in Figure 3, reproduced below.
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`Figure 3 shows recorder 10 and its components, including memory 12;
`control circuit 14; inputs 22a, 22v, and 22m; outputs 24a, 24v, and 24m;
`tuner 26; modulator 32; and receiver 42. Id. at col. 3, ll. 54–64, col. 4,
`ll. 35–53, col. 4, l. 59–col. 5, l. 4, col. 6, ll. 7–18. For use with recorder 10,
`the ’444 patent shows one embodiment of a remote control unit in Figure 5,
`reproduced below.
`
`
`Figure 5 shows remote control unit 46 and its components, including
`keyboard 16 and transmitter 44. Id. at col. 6, ll. 7–12, 25–28. Transmitter
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`44 of remote control unit 46 and receiver 42 of recorder 10 provide
`communication between remote control unit 46 and recorder 10. Id. at
`col. 6, ll. 8–19, 25–28. Keyboard 16 has a number of keys, including record
`key 18 and playback key 20. Id. at col. 3, ll. 65–67.
`When a user actuates record key 18, audio and video information from
`inputs 22a and 22v or input 22m is stored in memory 12. Id. at col. 4, ll. 42–
`53. When a user actuates playback key 20, audio and video information is
`retrieved and coupled to outputs 24a and 24v or input 24m. Id. at col. 4,
`l. 59–col. 5, l. 4.
`A user may actuate record key 18, for example, when a telephone call
`interrupts a program. Id. at col. 5, ll. 20–24. In response, control circuit 14
`begins storing within memory 12 information received via input 22. Id. at
`col. 5, ll. 24–25. When the interruption ends, the user may actuate playback
`button 20. Id. at col. 5, ll. 25–27. In response, the system retrieves and
`displays the recorded information, starting from the point of the interruption,
`while continuing to store simultaneously information from input 22. Id. at
`col. 5, ll. 25–36.
`
`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.
`
`C.
`
`A recording and playback apparatus for the
`substantially immediate and seamless resumption
`of interrupted perception of program information
`based upon audio or video signals, or both, without
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`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
`
`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
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`the stored program
`initiating retrieval of
`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, col. 8, ll. 29–64.
`
`D.
`
`The Prior Art
`Petitioner relies on the following references in support of its ground
`for challenging the identified claims of the ’444 patent (Pet. 6, Exhibit
`Appendix):
`
`Exhibits Nos. References and Declaration
`1002
`PCT Publication WO 89/12896 with certified translation
`(“Ulmer”)3
`U.S. Patent No. 5,241,428 (“Goldwasser”)
`
`1003
`
`
`
`E.
`
`The Asserted Ground of Unpatentability
`Petitioner challenges the patentability of claims 1, 2, 7, 8, 10, 13, and
`14 of the ’444 patent based on the following ground (Pet. 6):
`References
`Basis
`Claims Challenged
`Ulmer and
`§ 103
`1, 2, 7, 8, 10, 13,
`Goldwasser
`and 14
`
`
`
`
`3 In this Decision, we cite to the certified translation of Ulmer, which is
`appended to the original French version of Exhibit 1002.
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`II. ANALYSIS
`
`Claim Interpretation
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); see Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`Petitioner proffers constructions for a number of claim terms. Pet.
`18–24. No claim terms require express construction for purposes of this
`Decision.
`
`Real Party-in-Interest
`In the Petition, “Petitioner certifies that Unified Patents is the real
`party-in-interest, and further certifies that no other party exercised control or
`could exercise control over Unified Patents’[s] participation in this
`proceeding, the filing of this petition, or the conduct of any ensuing trial.”
`Pet. 2. Petitioner states that intellectual property professionals created
`Unified Patents in view of “concerns with the increasing risk of non-
`practicing entities (NPEs) asserting poor quality patents against strategic
`technologies and industries.” Id. Petitioner asserts that
`Companies in a technology sector subscribe to Unified’s
`technology specific deterrence, and in turn, Unified
`performs many NPE-deterrent activities, such as
`analyzing
`the
`technology sector, monitoring patent
`activity (including patent ownership and sales, NPE
`demand letters and litigation, and industry companies),
`conducting prior art research and invalidity analysis,
`providing a range of NPE advisory services to its
`subscribers, sometimes acquiring patents, and sometimes
`challenging patents at the United States Patent and
`Trademark Office (USPTO).
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`A.
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`B.
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`Id. at 3. Petitioner further states that it has exclusive discretion over whether
`to challenge a patent and, if so, how to conduct the resulting challenge. Id.
`at 3–4. With respect to this case, Petitioner asserts that
`Unified exercised its sole discretion and control in
`deciding to file this petition against the ‘444 Patent,
`including paying for all fees and expenses. Unified shall
`exercise sole and absolute control and discretion of the
`continued prosecution of this proceeding (including any
`decision to terminate Unified’s participation) and shall
`bear all subsequent costs related to this proceeding.
`
`Id. at 4.
`Patent Owner contends that the Petition does not identify all real
`parties-in-interest. Prelim. Resp. 2. Patent Owner argues that “[t]he Board
`should not permit Unified Patents and its members the ‘second bite at the
`apple’ the real party-in-interest requirement is intended to guard against.”
`Id. Patent Owner argues that the inquiry regarding real party-in-interest is
`not limited to issues of direction and control. Id. at 18.
`Noting that the ’444 patent has been asserted against ten companies in
`patent infringement proceedings (id. at 1), Patent Owner argues that the
`Petition does not identify all real parties-in-interest because Petitioner
`“failed to identify the parties who provided the funding for [Petitioner] to
`file this proceeding” (id. at 2). Patent Owner asserts that Petitioner accepted
`payments from other groups to pay for Petitioner’s inter partes review
`(“IPR”) activity, without listing any of those other groups as real parties-in-
`interest. Id. at 16. Patent Owner states that “a party cannot accept payment
`from another group to file an IPR and fail to name the company paying for
`the action.” Id.
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`Patent Owner also argues that Petitioner is like RPX Corporation
`(hereafter, “RPX”), the Petitioner in a number of cases styled RPX Corp. v.
`VirnetX Inc.: IPR2014-00171, IPR2014-00172, IPR2014-00173, IPR2014-
`00174, IPR2014-00175, IPR2014-00176, and IPR2014-00177 (“the RPX
`cases”). Id. at 16–17. In the RPX cases, RPX’s Petitions were denied
`because Apple Inc. (hereafter “Apple”) was found to be an unnamed real
`party-in-interest, and Apple was time-barred under 35 U.S.C. § 315(b). See,
`e.g., RPX Corp. v. Virnetix Inc., Case IPR2014-00171, slip op. at 3 (July 14,
`2014) (Paper 57) (public version of Paper 49). Patent Owner notes that RPX
`was found to be like a trade association (Prelim. Resp. at 6), and that
`“Unified Patents likens itself to a trade association” (id. at 10). Additionally,
`Patent Owner argues that, like RPX, Petitioner does not face a risk of having
`the ’444 patent asserted against it, nor the risk of a potential damages award
`in pending district court proceedings. Id. at 17. Patent Owner asserts that “it
`is quite obvious that Unified Patents is not the real party-in-interest.” Id.
`In connection with these arguments, Patent Owner discusses
`extensively circumstances associated with the conduct of Petitioner’s
`business and the filing of the Petition in this case. Id. at 1–2, 7–20. For
`example, Patent Owner asserts that Unified Patents was formed in 2012 for
`the purpose of circumventing the estoppel provisions of 35 U.S.C. § 315. Id.
`at 1. Patent Owner alleges that “[t]he primary value offered by Unified
`Patents[] to its members is the challenging through inter partes review and
`similar proceedings of patents asserted in litigation by non-practicing entities
`against Unified Patents’ members.” Id. Patent Owner notes that the
`deterrence services Unified Patents purports to provide include patent
`acquisition, monitoring activity, and filing of inter partes review
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`proceedings. Id. at 10. Patent Owner similarly observes that Petitioner tries
`to emphasize aspects of its business other than IPR activities. Id. Patent
`Owner states, however, that “[m]ost of the non-IPR related activities of
`Unified Patents appear to be of little practical significance.” Id.
`In response, Petitioner argues that none of its members participated in
`or directly paid for filing the Petition in this case. Paper 20, 1, 4–9.4
`Petitioner again asserts that its members did not and could not exercise
`control over its conduct of this case, including the decision to file the
`Petition. Id. Petitioner adds that its members had no prior knowledge of
`Petitioner’s plan to file the Petition in this case. Id. at 1, 5–9. Conceding
`that Petitioner receives subscription fees for its services as a whole,
`Petitioner argues that there is no evidence that any member directly funded
`the present IPR proceeding. Id. at 1, 6–8.
`Petitioner provided Patent Owner limited discovery relating to the real
`party-in-interest issue. The discovery included voluntary production of
`documents, interrogatory responses, and the deposition of a corporate
`representative of Petitioner, Mr. Kevin Jakel (Ex. 2001). All documents
`produced in the discovery and filed as exhibits in this proceeding are marked
`
`
`4 In Paper 15, we authorized Petitioner to file a reply brief addressing the
`arguments Patent Owner presented in the Preliminary Response regarding
`the real party-in-interest issue. Petitioner filed two versions of its Reply
`Brief: Paper 20, a redacted, public version, and Paper 18, an unredacted,
`confidential version. We have considered all of the content in both versions
`of Petitioner’s Reply Brief. In this Decision, we cite to the public version
`(Paper 20). The confidential version (Paper 18) currently remains under
`seal.
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`as “HIGHLY CONFIDENTIAL-ATTORNEYS’ EYES ONLY,” pursuant to
`a Protective Order stipulated to by the parties (Ex. 1014).5
`Patent Owner is correct that the inquiry regarding real parties-in-
`interest is not limited to determining who directed or controlled a
`proceeding. On the record at this stage of the proceeding, however, we are
`not persuaded by Patent Owner’s contention that one or more other
`organizations paid Petitioner to file the Petition in this IPR. Patent Owner
`does not allege to have any direct evidence of any organization giving funds
`to Petitioner for the purpose of filing the Petition in this case. Additionally,
`even if we assume to be accurate all of Patent Owner’s allegations about
`circumstances related to the conduct of Petitioner’s business and the filing of
`the Petition in this case, they do not demonstrate that another entity paid
`Petitioner for the purpose of conducting this IPR proceeding. For example,
`even if we accept Patent Owner’s allegations that Petitioner engages in no
`activity of practical significance other than filing IPR petitions with money
`received from its members, this does not demonstrate that any member paid,
`directed, or suggested to Petitioner to challenge the ’444 patent, specifically.
`See, e.g., Prelim. Resp. 10. Nor do Patent Owner’s other circumstantial
`allegations, even if accurate, demonstrate as much.
`By contrast, in the RPX cases, the evidence demonstrated that the
`actions of RPX and Apple were like certain prohibited behavior discussed in
`In re Guan, Reexamination Control No. 95/001,045 (Aug. 25, 2008)
`(Decision Vacating Filing Date), which stated that
`
`5 There are several pending motions to seal that seek to keep the discovery
`and certain pleadings out of the public record. Papers 12, 17, 27, 28 and 30.
`Currently, we have not entered the Protective Order stipulated by the parties.
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`[a]n entity named as the sole real party in interest may
`not receive a suggestion from another party that a
`particular patent should be the subject of a request for
`inter partes reexamination and be compensated by that
`party for the filing of the request for inter partes
`reexamination of that patent without naming the party [as
`a real party-in-interest] who suggested and compensated
`the entity for the filing of a request for inter partes
`reexamination of the patent.
`Guan at 7–8 (emphasis added); see, e.g., IPR2014-00171, Paper 57, 7. Here,
`the present record does not demonstrate that any of Petitioner’s members
`suggested or compensated Petitioner for the filing of the Petition challenging
`the ’444 patent.
`Given this, the alleged similarities between RPX and Petitioner do not
`persuade us that the result here should be the same as in the RPX cases.
`That Petitioner likens itself to a trade association does not persuade us that
`its members constitute real parties-in-interest. As the Office Trial Practice
`Guide (“Practice Guide”) explains, membership in a trade association does
`not make an entity automatically a real party-in-interest to a petition filed by
`the trade association. 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012); see also
`Paper 20, 4. Additionally, without more compelling accompanying
`allegations, Patent Owner’s assertion that Petitioner faces no risk of having
`the ’444 patent asserted against it is unremarkable, as the filing of or threat
`of a lawsuit is not a prerequisite for a Petition for an IPR proceeding. See 77
`Fed. Reg. at 47,459.
`For the foregoing reasons, on this record, we are persuaded that
`Petitioner did not fail to name all real parties-in-interest in the Petition. We
`note, however, that this Decision does not foreclose Patent Owner from
`continuing to argue the real party-in-interest issue in the Patent Owner
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`Response. If the record should evolve in favor of Patent Owner on this
`issue, we would take appropriate action at that time.
`
`C. Obviousness of Claims 1, 2, 7, 8, 10, 13, and 14 over Ulmer and
`Goldwasser
`
`
`
`1. Ulmer (Ex. 1002)
`Ulmer discloses a “[d]evice for simultaneous recording and playback
`of television images” and a method of operating such a device. Ex. 1002, 1.
`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:
`- recording a television broadcast on the recording
`medium;
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`- 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.
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`2. Goldwasser (Ex. 1003)
`Goldwasser discloses a video recorder and playback device that
`allows recording and playing back program material simultaneously, as well
`as recording and playing back material independently. Ex. 1003, Abst,
`col. 1, ll. 55–60. The device allows “controllably varying a time delay
`between the recording and playback of recorded material.” Id.
`When a person watching a program experiences an interruption, the
`user can operate the device to commence recording of the program. Id. at
`Abst., col. 1, ll. 43–49. When the interruption ends, the user can operate the
`device to begin playing back the program from the point of the interruption,
`while continuing to record the program simultaneously. Id. This allows a
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`user to watch the portion of the program remaining after the interruption,
`only delayed by the length of the interruption. Id. at col. 1, ll. 43–49.
`Goldwasser shows one embodiment of its device in Figure 3,
`reproduced below.
`
`
`Figure 3 of Goldwasser shows the recording and playback device’s various
`components, including user control panel 50, signal sampling circuit 51,
`analog-to-digital converter 52, random access memory 53, digital-to-analog
`converter 54, video signal generator 55, data compressor 57, address control
`58, and decompressor 59. Id. at col. 6, ll. 25–55. In this embodiment, the
`playback and recording device receives a video signal at signal sampling
`circuit 51, processes the video signal, and stores video samples of the video
`in random access memory 53. Id. at col. 6, ll. 25–29. The device plays back
`material by retrieving video samples stored in random access memory 53
`and processing those video signals to output a conventional video signal
`from video signal generator 55. Id. at col. 6, ll. 29–36.
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`3. 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. Petitioner asserts 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. 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.” Id. at
`25. Petitioner elaborates that due to 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.
`Petitioner asserts that Ulmer discloses most of the limitations in the
`body of independent claim 1, as well as the limitation in dependent claim 2.
`For example, Petitioner asserts that Ulmer’s system includes the “keyboard
`having a record key and a playback key” recited in claim 1, as well as the
`recitation in claim 2 that the claimed apparatus “further compris[es] a remote
`control unit, and wherein said keyboard is housed in said remote control
`unit.” Pet. 27–29, 37–38, 51. Petitioner notes that Ulmer explicitly
`discloses that its system includes a remote control unit. Id. at 28, 37, 51.
`Petitioner explains that a person of ordinary skill in the art would understand
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`that the remote control unit disclosed by Ulmer necessarily would have had
`a keyboard. Id. at 28 (citing Ex. 1013 ¶¶ 59–60 (Declaration of Sheila S.
`Hemami)); see id. at 37. Noting that Ulmer explicitly discloses that its
`system allows recording and playback, Petitioner further explains that a
`person of ordinary skill in the art would understand that Ulmer’s keyboard
`would have a record key and a playback key. Id.
`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. Id. at 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
`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 notes that Ulmer discloses the following 5-step operation:
`- recording a television broadcast on the recording
`medium;
`
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`- 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.
`Ex. 1002, 2; Pet. 31–32.
`Petitioner asserts that a person of ordinary skill in the art would
`understand that the step of starting playback 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).
`Regarding the “means for powering the apparatus” recited in claim 1,
`Petitioner asserts that a person of ordinary skill in the art would understand
`that Ulmer’s system necessarily includes this limitation. Id. at 33–34 (citing
`Ex. 1013 ¶ 71). Specifically, Petitioner asserts that a person of ordinary skill
`in the art would understand that Ulmer’s apparatus is configured to be
`plugged into an AC wall outlet in a user’s home, and that Ulmer’s remote
`control would be powered by batteries. Id. at 33. Petitioner explains that
`consumer electronic devices like Ulmer’s are designed to be plugged into
`AC wall outlets, and that virtually all remote controls in the 1992 timeframe
`were powered by batteries. Id.
`
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`Relying on the testimony of Ms. 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. Ms. 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, Ms. 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). As noted above, Petitioner explains
`that a person of ordinary skill in the art would be motivated to combine
`Goldwasser’s 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).
`On this record, we are persuaded 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. Accordingly, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood that it would prevail in demonstrating
`the unpatentability of independent claim 1 and dependent claim 2 over
`Ulmer and Goldwasser.
`
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`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
`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. On this record,
`Petitioner’s assertions and evidence persuade us that Petitioner has
`demonstrated a reasonable likelihood it would prevail in its challenge of
`dependent claims 7, 8, and 10 as unpatentable over Ulmer and Goldwasser.
`
`5. Claim
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