UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`DRAGON INTELLECTUAL PROPERTY, LLC.
`Patent Owner
`
`_________________
`
`Case IPR2014-01252
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`Patent No. 5,930,444
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`_________________
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`PETITIONER’S REPLY BRIEF
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`Pursuant to 37 CFR §§ 42.23 and 42.24(c)(1), Unified Patents Inc.
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`(“Unified” or “Petitioner”) hereby submits the following Reply in Support of its
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`Petition for Inter Partes Review (“IPR”).
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`

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`TABLE OF CONTENTS
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`Petitioner’s Reply Brief
`IPR2014-01252
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`Introduction ...................................................................................................... 1
`I.
`II. Ulmer and the ’444 Patent Address the Same Problem .................................. 2
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`Patent Owner Mischaracterizes the ’444 Patent.................................... 4
`A.
`Patent Owner Mischaracterizes Ulmer .................................................. 5
`
`B.
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`The Preamble of Claim 1 is Not Limiting ............................................. 6
`C.
`III. A Person of Ordinary Skill in the Art Would Have Been Motivated to
`Combine Ulmer and Goldwasser .................................................................... 7
` Ulmer and Goldwasser Are Directed to the Same Problem ................. 8
`A.
`Combining Ulmer and Goldwasser Would Have Been Obvious as a
`
`B.
`Matter of Design Choice ....................................................................... 9
`Combining Ulmer and Goldwasser Would Have Yielded Predictable
`Results ................................................................................................. 11
`IV. The Combination of Ulmer and Goldwasser Discloses “A Keyboard Having
`a Record and Playback Key” ......................................................................... 12
` Ulmer Necessarily and Inevitably Provides for “A Keyboard Having a
`A.
`Record and Playback Key” ................................................................. 13
`Patent Owner Incorrectly Argues that Ulmer Does Not Inherently
`Disclose the Claimed Keyboard .......................................................... 16
`It Would Have Been Obvious to Use Buttons and/or Keys With
`Ulmer’s Remote .................................................................................. 20
`V. Ulmer Discloses the Control Circuit of the Claims of the ’444 Patent ......... 21
`VI. Ulmer Discloses “One-Button-Playback” ..................................................... 23
`VII. Mr. Goldberg Does Not Meet His Own Definition of One of Ordinary Skill
`in the Art ........................................................................................................ 24
`
`
`C.
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`
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`B.
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`
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`C.
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`i
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`Petitioner’s Reply Brief
`IPR2014-01252
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`I.
`
`Introduction
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`Respectfully, Patent Owner’s Response (“PO Resp.”) misinterprets or avoids
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`the teachings of the prior art, which render obvious the limitations of the
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`challenged claims. Patent Owner misconstrues the disclosure of U.S. Patent No.
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`5,930,444 (“the ’444 patent”). Patent Owner also ignores the disclosures of PCT
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`Publication WO 89/12896 to Ulmer (“Ulmer,” Ex. 1018)1 and U.S. Patent No.
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`5,241,428 to Goldwasser, et al. (“Goldwasser,” Ex. 1003). Patent Owner
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`selectively highlights portions of the three disclosures, attempting to show non-
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`existent differences between the references and the challenged claims. And Patent
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`Owner does not address the clear motivation to combine Ulmer and Goldwasser.
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`As shown by the Petition and the evidence of record, the combined device of
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`Ulmer and Goldwasser renders obvious claims 1, 2, 7, 8, 10, 13, and 14 (“the
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`challenged claims”) of the ’444 patent. Petitioner respectfully requests that the
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`Board cancel the challenged claims as unpatentable.
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`1 Ulmer was filed as Exhibit 1002 in this proceeding. On April 14, 2015, however,
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`the Board authorized Petitioner to file an updated version of Ulmer as Exhibit
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`1018. Exhibit 1018 contains the same translation of Ulmer previously filed with a
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`new certificate of translation. Paper 43.
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`1
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`

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`Ulmer and the ’444 Patent Address the Same Problem
`Ulmer and the ’444 patent disclose devices that address the same problem—
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`Petitioner’s Reply Brief
`IPR2014-01252
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`II.
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`allowing for simultaneous recording and playback. While Patent Owner attempts
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`to argue otherwise, Patent Owner’s declarant Mr. Goldberg acknowledges they
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`address the same problem. See Ex. 2022 at ¶ 25 (“Both the ’444 Patent and Ulmer
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`disclose a device allowing simultaneous recording and playback of TV
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`programs.”). Patent Owner’s and Mr. Goldberg’s later attempts to then distinguish
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`Ulmer from the ’444 patent by claiming they are directed to different problems
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`avoid addressing the admission, and are not persuasive.
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`Moreover, Ulmer discloses a device that addresses the same prior art
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`deficiencies that are outlined in the specification of the ’444 patent. Specifically,
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`the ’444 patent discloses that one of the issues it sought to solve was “the linear
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`nature of access to information stored on the reel to reel media employed by these
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`devices.” Ex. 1001 at 2:16-18. The ’444 patent goes on to note that:
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`[e]ven though the rate at which modern electronic circuits and
`microprocessors is sufficiently fast to process both the storage of
`information from one received program and retrieval of stored
`program information so as to be effectively simultaneous from the
`user’s perspective, because the magnetic heads can only access the
`small portion of media between
`the reels, and because
`the
`overwhelming majority of the storage media is wound onto the reels
`at any given moment, it is virtually impossible to access the media for
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`2
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`information storage and retrieval at more than one location in
`substantially simultaneous fashion.
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`Petitioner’s Reply Brief
`IPR2014-01252
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`Ex. 1001 at 2:16-32 (emphasis added). Thus, the ’444 patent discloses that one of
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`the primary problems of the prior art was an inability to store and access media
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`simultaneously.
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`Ulmer’s device does just that. Ulmer is directed to the same issue—
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`simultaneous recording and playback—addressed by the ’444 patent. Ulmer
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`discloses that:
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`The present invention also relates to a device for recording television
`images and reproducing them after playback, characterized in that it
`uses a recording medium of the direct-access memory type and that it
`includes a playback mechanism and a recorder mechanism, wherein
`the playback mechanism and the recorder mechanism are separate
`and independent, can operate simultaneously and can be placed and
`displaced independently of one another on the recording medium, and
`in that it includes buffer memories for synchronization and speed
`matching.
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`Ex. 1018 at 3 (emphasis added).
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`
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`Despite Mr. Goldberg admitting that Ulmer addresses the same issues as the
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`’444 patent, Patent Owner now argues that Ulmer and the ’444 patent are directed
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`to solving “very different problems.” PO Resp. at 12. Patent Owner attempts to
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`characterize the ’444 patent as solely relevant for “interruptions,” and Ulmer as
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`3
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`solely relevant for “advertising breaks.” PO Resp. at 12-13. But this distinction
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`Petitioner’s Reply Brief
`IPR2014-01252
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`ignores the disclosed objectives of the ’444 patent, the disclosures in the prior art,
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`Mr. Goldberg’s comments noted above, and the common-sense use of the prior art.
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`Patent Owner also improperly reads limitations from the preamble for claim 1 into
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`the claim. And Patent Owner ignores that Goldwasser explicitly teaches using its
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`device for interruptions, and thus, the combination of Ulmer and Goldwasser
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`likewise teach this limitation. Ex. 1013 at ¶ 57.
`
`A.
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`Patent Owner Mischaracterizes the ’444 Patent
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`The ’444 patent discloses that the described device has six disclosed
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`objectives to provide advantages over the prior art. Ex. 1001, 2:37-3:3. Patent
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`Owner and its declarant, Mr. Goldberg, ignore three of these objectives,
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`acknowledging only the three objectives relating to interruptions. Ex. 2022 at ¶ 7.
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`Patent Owner’s blinkered analysis of its patent (and the prior art) obscures what
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`one of ordinary skill in the art would have understood as the problems the ’444
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`patent addresses.
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`The three objectives that Mr. Goldberg does not address pertain to
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`simultaneous recording and playing, random access to storage media, and
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`acceptance of signals in a plurality of formats. Ex. 1001 at Abstract, 2:37-3:3. The
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`’444 patent’s abstract discloses using simultaneous recording and playing to enable
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`“user controlled programming delay.” Ex. 1001 at Abstract. Thus, Mr. Goldberg’s
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`description of the ’444 patent as relating only to interruptions distorts the disclosed
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`Petitioner’s Reply Brief
`IPR2014-01252
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`objectives of the ’444 patent.
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`Patent Owner Mischaracterizes Ulmer
`B.
`Mr. Goldberg also argues that Ulmer relates only to avoiding or eliminating
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`“undesired commercials within a television program.” Ex. 2022 at ¶ 24. Ulmer,
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`however, not only discloses that, it eliminates advertising breaks; it also discloses
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`that it eliminates “other sequences” from the recording. Ex. 1018 at 1, 3. While to
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`be sure, Ulmer uses advertising breaks as an example of the type of sequences that
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`can be eliminated, they are hardly the sole target of the invention.2 Ulmer’s ability
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`to simultaneously record and playback would also allow a user to start recording a
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`program and then begin watching it later. Ex. 1018 at 1, 7. As explained by Dr.
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`Hemani, a person of ordinary skill in the art at the time would have readily
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`recognized that this would also be suitable for use during a program interruption,
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`and that users would naturally use Ulmer’s device in that manner. Ex. 1013 at
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`¶ 56.
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`2 Ulmer acknowledges that “devices capable of recording then reproducing
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`television images, and making it possible to eliminate the advertising breaks by
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`playback at accelerated speed are already known.” Ex. 1018 at 1.
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`5
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`Moreover, Goldwasser discloses using the device during interruptions other
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`Petitioner’s Reply Brief
`IPR2014-01252
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`than commercial breaks. In particular, Goldwasser’s device allows a user to
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`“interrupt the playback of a program that is being recorded as it is being watched
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`(to take a telephone call, for example), and then resume playback of the program
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`(after the phone call is over) without stopping the recording.” Ex. 1003 at
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`Abstract. Given the overlap between Ulmer and Goldwasser’s devices, the readily
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`apparent motivation to combine the same, and the disclosure of Goldwasser of
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`what an average user would use such a device for, a person of ordinary skill in the
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`art would have understood that Ulmer’s device was capable of alleviating the
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`problems of interruptions during live broadcasting. Ex. 1013 at ¶ 57.
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`C.
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` The Preamble of Claim 1 is Not Limiting
`The preamble of claim 1 is not limiting because it expresses an intended use.
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`
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`Patent Owner seeks to read limitations from the preamble of claim 1 into the claim,
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`arguing that the ’444 patent is solely directed to “interruptions.” They argue the
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`“concept of ‘interruption’ is an important aspect of the ’444 patent” because it “is
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`recited in the preamble of Claim 1.” PO Resp. at 13. But this, in addition to being
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`conclusory, conflicts with Federal Circuit precedent. The preamble to claim 1 is
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`not limiting because it is used to state a purpose for the invention and because the
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`body of claim 1 describes “a structurally complete invention.” Catalina Mktg. Int’l
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`v. Coolsavings.com, 289 F.3d 801, 808 (Fed. Cir. 2002) (“[P]reambles describing
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`the use of an invention generally do not limit the claims because the patentability
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`Petitioner’s Reply Brief
`IPR2014-01252
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`of apparatus or composition claims depends on the claimed structure, not on the
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`use or purpose of that structure”).
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`Here, the preamble to claim 1 discloses the purpose for the ’444 patent’s
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`device, “recording and playback apparatus”—“for the substantially immediate and
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`seamless resumption of interrupted perception of program information.” Ex. 1001
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`at 8:29-64. The body of claim 1 then provides a structurally complete (if obvious)
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`device. Thus, while the preamble to claim 1 describes a purpose for the alleged
`
`invention, the body of claim 1 sets forth all of the elements the claim requires.
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`Accordingly, the preamble is not limiting.
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`III.
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`A Person of Ordinary Skill in the Art Would Have Been Motivated to
`Combine Ulmer and Goldwasser
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`Patent Owner’s argument that it would not be obvious to combine Ulmer
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`and Goldwasser is contrary to the teachings of the prior art, as well as the Board’s
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`express findings. PO Resp. § V.D. Ulmer and Goldwasser address the same
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`problem, as noted above. And both Ulmer and Goldwasser include elements that
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`would be seen as desirable improvements over the other’s device, such as “one-
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`button playback” and a timer circuit allowing for preprogramming. Thus, it would
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`Petitioner’s Reply Brief
`IPR2014-01252
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`have been obvious to a person of ordinary skill in the art to combine the two.3
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` Ulmer and Goldwasser Are Directed to the Same Problem
`A.
`Ulmer and Goldwasser are both directed to providing simultaneous
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`recording and playback as a mechanism to allow a viewer to skip portions of a
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`recorded video. To wit, Patent Owner repeatedly acknowledges that Ulmer is
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`directed to skipping advertisements. See, e.g., PO Resp. at 12, 44. Attempting to
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`differentiate Goldwasser from Ulmer for patentability purposes, however, Patent
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`Owner takes a conveniently narrow view of Goldwasser’s select disclosures and
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`ignores that it also clearly discloses a device directed to skipping advertisements.
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`Patent Owner’s primary support for its assertion that Goldwasser and Ulmer
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`are directed to different issues is the number of times the word “commercial” is
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`used in Goldwasser. PO Resp. at 43-44. Even though the word “commercial”
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`only appears twice in Goldwasser itself, it is plain from those two disclosures that
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`Goldwasser’s device also applies to skipping commercials. See Ex. 1003 at
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`3 At institution, this panel agreed this was a rational motivation supported by the
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`evidence, noting they were “persuaded that Petitioner’s assertions and evidence
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`provide rational underpinning for a conclusion that it would have been obvious to
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`combine the teachings of Ulmer and Goldwasser.” Paper 37 at 20.
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`8
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`Abstract (“[i]f there are portions of the program that the user does not want to see
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`Petitioner’s Reply Brief
`IPR2014-01252
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`(e.g. commercials), he can speed (i.e., fast forward) through those recorded
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`portions and catch up to the live broadcast”); Ex. 1003 at 2:62-64 (“[o]ne can
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`readily ‘fast forward’ through unwanted program material such as commercials,
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`while recording the entire program without interruption.”).
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`As Ulmer and Goldwasser are directed to the same problem, and hence the
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`same field of endeavor, it would have been obvious to a person of ordinary skill in
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`the art to combine their disclosures when creating a device for simultaneous
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`recording and playback of content. And, even if Patent Owner’s arguments that
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`the two address different problems were persuasive, the Federal Circuit holds that
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`analogous art may include prior art addressing different problems, as long as it is
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`from the same field of endeavor. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
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`2004) (stating that the scope of analogous art includes prior art “from the same
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`field of endeavor, regardless of the problem addressed”). Ulmer and Goldwasser
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`are thus analogous art.
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`B.
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` Combining Ulmer and Goldwasser Would Have Been Obvious as a
`Matter of Design Choice
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`There are also many reasons why a person of ordinary skill in the art would
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`have combined Ulmer and Goldwasser as a matter of design choice to achieve a
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`more desirable device. See e.g., Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed.
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`9
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`Cir. 2013) (stating that an obviousness inquiry must include considering “demands
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`Petitioner’s Reply Brief
`IPR2014-01252
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`known to the design community, the background knowledge possessed by a person
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`having ordinary skill in the art, and the inferences and creative steps that a person
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`of ordinary skill in the art would employ”) (internal quotations omitted); I/P
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`Engine, Inc. v. AOL Inc., 576 Fed. App’x 982, 989 (Fed. Cir. 2014) (“[T]he
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`obviousness inquiry not only permits, but requires, consideration of common
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`knowledge and common sense.”) (internal quotations omitted). While Ulmer and
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`Goldwasser teach many similar aspects of simultaneous recording and playback of
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`a video, both systems have features that would have been improvements over the
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`other’s system.
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`For example, Ulmer discloses user controlled recording and playback using
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`a remote control. Ex. 1018 at 1. Additionally, Ulmer discloses “one-button
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`playback,” allowing the user to initiate playback with the press of a single button.
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`Ex. 1013 at ¶¶ 49, 52. Ulmer also discloses that the playback can be frame-by-
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`frame. Ex. 1013 at ¶ 52. Similarly, Goldwasser is directed towards simultaneous
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`recording and playback and describes a timer circuit so that the simultaneous
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`recording and playback device can be preprogrammed. Ex. 1013 at ¶¶ 50, 53.
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`It would have been obvious to a person of ordinary skill in the art to employ
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`the timer circuit of Goldwasser with the simultaneous recording and playback
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`device of Ulmer to create a more desirable device—specifically, one that allowed
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`10
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`for delayed recording. Exs. 1003 at Abstract, 2:52-53; 1013 at ¶ 53. As explained
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`Petitioner’s Reply Brief
`IPR2014-01252
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`by Dr. Hemami, this feature would have been even more desirable because in 1992
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`delayed recording was an important aspect of VCRs and would have been in high
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`demand from consumers. Ex. 1013 at ¶ 25; Ex. 1004.; see also In re Taylor Made
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`Golf Co., 589 Fed. App’x 967, 971 (Fed. Cir. 2014) (stating that “the Supreme
`
`Court and [the Federal Circuit] require that, as part of the obviousness analysis, the
`
`prior art must be viewed in the context of what was generally known in the art at
`
`the time of the invention”). Thus, a person of ordinary skill in the art at the time
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`would have been motivated to improve the system of Ulmer to include the delayed
`
`recording of Goldwasser.
`
`C.
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` Combining Ulmer and Goldwasser Would Have Yielded
`Predictable Results
`
`Additionally, it would have been well within the technical skill of one of
`
`ordinary skill in the art to combine Ulmer and Goldwasser. They together
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`combine prior art elements according to known methods to yield predictable
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`results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The
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`combination of familiar elements according to known methods is likely to be
`
`obvious when it does no more than yield predictable results.”) As discussed above,
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`Ulmer and Goldwasser both disclose (a) devices allowing a user to control the
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`simultaneous recording and playback of video, (b) using a random access memory,
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`(c) user control of the device, (d) a control circuit coupled to the memory unit, and
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`Petitioner’s Reply Brief
`IPR2014-01252
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`(e) user controlled rate and sequence of a video during playback. Ex. 1013 at ¶ 51.
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`Moreover, Ulmer discloses a remote control coupled to the control circuit
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`and Goldwasser teaches a timer circuit allowing the device to be programmed.
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`Ex. 1013 at ¶¶ 52-53. There would have been nothing unpredictable about
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`combining Ulmer with Goldwasser to create a device that would allow the user to
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`pre-program the recording with a remote and then control the playback with a
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`remote later. Ex. 1013 at ¶ 53. Rather, this trivial modification—combining the
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`user-controlled recording and playback of Ulmer with the delayed timing of
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`Goldwasser—would have been obvious to a person of ordinary skill to achieve the
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`result of increased flexibility in the recording and playback of video. Ex. 1013 at
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`¶¶ 52-54.
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`IV.
`
`The Combination of Ulmer and Goldwasser Discloses “A Keyboard
`Having a Record and Playback Key”
`Contrary to Patent Owner’s arguments, the combination of Ulmer and
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`Goldwasser discloses “a keyboard having a record and playback key.” Under the
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`broadest reasonable construction, a “keyboard” should be construed as “the buttons
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`or keys used to control the device.” Petition at 19; Ex. 1013 at ¶¶ 10-12. The ’444
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`patent discloses that the “keyboard” encompasses the keys used to control the
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`device (e.g., record and play). Ex. 1001 at 3:64-66, 6:24-32. The specification
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`12
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`further discloses that these keys can be located on either the recorder or on a
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`Petitioner’s Reply Brief
`IPR2014-01252
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`remote control. Compare Ex. 1001 at Figs. 1 (showing the keys on the recorder)
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`with Ex. 1001 at Figs. 4 and 5 (showing the keys on a remote control); see also Ex.
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`1013 at ¶ 10. Based on these disclosures, a person of ordinary skill in the art
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`would therefore understand that the term “keyboard” was intended to cover both
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`embodiments and that the use of this term is not inconsistent with the ordinary
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`meaning of the term. Ex. 1013 at ¶ 10.
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`This construction is also supported by the doctrine of claim differentiation.
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`Claim 1 recites a “keyboard” and a “control circuit coupled responsively to said
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`keyboard” and claim 2, which depends from claim 1, adds a remote control and
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`recites “wherein said keyboard is housed in said remote control.” Ex. 1001 at
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`8:36-37, 8:66-68. Thus, as used in the claims, the term “keyboard” must be broad
`
`enough to cover keys that are on the device as well as those on a remote control.
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`Accordingly, the ’444 patent’s requirement of a “keyboard having a record and
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`playback key” simply requires a device having a button or key to control recording
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`and a button or key to control playback.
`
`A.
`
` Ulmer Necessarily and Inevitably Provides for “A Keyboard
`Having a Record and Playback Key”
`Ulmer discloses a user-controlled playback device with a remote control
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`input device. Patent Owner tries to read the user out and characterize Ulmer as a
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`device for automatic recording and playback. But Ulmer requires user control of
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`Petitioner’s Reply Brief
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`the device, a remote for controlling the device, and a multitude of recording and
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`playback functions controlled exclusively by the user’s input on the remote, and
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`thus necessarily and inevitably provides for a “keyboard having a record and
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`playback key.”
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`Ulmer discloses that the recording and playback functions of Ulmer’s device
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`are controlled by a “television viewer” i.e., a user. Ex. 1018 at 1 (“It is pointed out
`
`that it is the television viewer himself or herself who identifies the start and end of
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`the advertising break that he or she wishes to eliminate, and that it is he or she who
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`controls the device of the invention, for example with a remote”) (emphases
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`added). Because Ulmer’s device relies on user input, the device would necessarily
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`and inevitably have some mechanism with which to input the desired functions.4
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`Ulmer provides such a mechanism, disclosing a remote that allows the user to
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`input functions to control the device, stating that:
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`It 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.
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`Ex. 1018 at 1(emphasis added).
`
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`4 Patent Owner did not contest this.
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`Ulmer’s user-controlled remote necessarily and inevitably contains a
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`Petitioner’s Reply Brief
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`“keyboard having a record and playback key.” The ’444 patent makes clear that
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`the term “keyboard” encompasses the keys that are on a remote to control the
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`device. Ex. 1001 at 3:54-67, 6:7-12, 6:66-67, and Figures 1, 3, 4, and 5. By the
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`’444 patent’s priority date of April 23, 1992, remotes for televisions and VCRs
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`were commonplace, and had been for decades. Ex. 1013 at ¶¶ 25, 27-28; Ex. 2004.
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`The purpose of remotes at this time was to allow for the control of the device, be it
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`a television or a VCR, using buttons and/or keys to input functions. Ex. 1013 at ¶¶
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`59-60. Thus, a person of ordinary skill in the art would have understood that
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`Ulmer’s “remote” would necessarily and inevitably have buttons or keys to
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`“control[] the device of the invention.” Ex. 1018 at 1; Ex. 1013, ¶¶ 58-59.
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`Specifically, Ulmer’s remote has keys corresponding to the functionality of
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`“recording a television broadcast” and “starting playback of the recording
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`medium.” Ex. 1018 at 2. Ulmer’s remote also necessarily and inevitably allows
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`for user-controlled speed of the playback, and even for different relative speeds of
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`playback, as Ulmer discloses “the copy of the television images can be made in
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`one of the following modes: normal forward speed, accelerated forward speed,
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`slow forward speed, normal reverse speed, accelerated reverse speed, slow reverse
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`speed, freezing on image, image by image forward, image by image in reverse.”5
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`Petitioner’s Reply Brief
`IPR2014-01252
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`Ex. 1018 at 3. As Ulmer discloses a remote having keys to control the device’s
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`functionality (i.e., record a broadcast, begin playback of the broadcast, and control
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`the speed of playback) it necessarily and inevitably provides for a “keyboard
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`having a record and playback key.” Thus, Ulmer’s remote must have keys to
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`provide such functionality.
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`B.
`
` Patent Owner Incorrectly Argues that Ulmer Does Not Inherently
`Disclose the Claimed Keyboard
`Patent Owner’s arguments that Ulmer does not inherently disclose the
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`claimed keyboard consist primarily of reading limitations into Ulmer’s
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`specification and suggesting hypotheticals not grounded in the disclosures of
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`Ulmer. PO Resp. at 27-32. As Patent Owner acknowledges, if “the disclosure is
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`sufficient to show that the natural result flowing from the operation as taught
`
`would result in the performance of the questioned function” the disclosure is as
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`sufficiently anticipatory. Par Pharm., Inc. v. TWi Pharms., Inc., 773 F.3d 1186,
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`5 The functions disclosed in Ulmer correspond to those functions claimed in the
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`’444 patent, which requires that the keyboard include keys to start recording and
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`playback and “key means for enabling user control of the rate or sequence or both
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`of transfer of program information from said memory unit to the user’s display
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`device.” Ex. 1001 at 8:28-10:44.
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`1195 (Fed. Cir. 2014) (internal citations omitted). Specifically, a limitation is
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`Petitioner’s Reply Brief
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`inherent if it is “the natural result of the combination of elements explicitly
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`disclosed by the prior art.” Id. at 1196.
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`Overlooking Ulmer’s disclosure of a user-controlled remote that necessarily
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`and inevitably has buttons or keys to control the recording and playback of the
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`device, Patent Owner suggests that a user would have to know the length of a
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`commercial to operate Ulmer’s device, and that this knowledge would be used to
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`control the record and playback functions. PO Resp. at 30-31. While Ulmer does
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`allow the user to wait for a time T to play back the recorded broadcast, the time T
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`is a user-dependent input. Ex. 1018 at 2 (“waiting for a time T that corresponds
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`almost to the duration of all of the advertising breaks that it is wished to eliminate
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`from the broadcast that it is desired to watch”) (emphasis added). Even this
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`element would require keyed-in user input, and keys to input it on the remote.
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`Thus, Ulmer does not require the user to wait any specific time, as Patent Owner
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`contends. PO Resp. at 40. Instead, the duration the user waits, or time T, is
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`controlled by the user.
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`Moreover, Ulmer’s disclosure refutes Patent Owner’s position. Contrary to
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`Patent Owner’s assertions, Ulmer disavows and teaches away from any automatic
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`calculation of the variable T. Ex. 1018 at 1. According to Ulmer:
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`Petitioner’s Reply Brief
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`[I]t 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. The present invention therefore does not
`necessitate automatic recognition of the start and end of an
`advertising break but is able advantageously to integrate such a
`device.”
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`Ex. 1018 at 1 (emphasis added).
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`Patent Owner raises impractical hypothetical alternatives to using the remote
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`and keys disclosed by Ulmer. For example, Patent Owner’s expert, Mr. Goldberg,
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`suggests that in the late 1980s and early 1990s, a user could interact with a
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`recording device using a “numeric code” or “bar-code scanning systems.” PO
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`Resp. at 29; Ex. 2022 at ¶¶ 39-41. Even if this were a reasonable alternative, the
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`existence of other types of user interfaces at the time the ’444 patent was filed is
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`irrelevant—Petitioner’s arguments are not based on Ulmer’s disclosure of just any
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`user-controlled device; Petitioner relies on Ulmer’s specific disclosure of a remote.
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`As discussed above, Ulmer discloses that the user controls the recording and
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`playback with a remote. Ex. 1002 at 1 (“it is the television viewer himself or
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`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
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`invention, for example with a remote”) (emphases added). It is Ulmer’s disclosure
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`of this user interface, this remote, that Petitioner relies on to show that Ulmer
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`Petitioner’s Reply Brief
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`necessarily and inevitably discloses “a keyboard having a record key and a
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`playback key.” Ex. 1013, ¶¶ 58-59. Thus, Patent Owner’s argument that other
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`user interfaces may have existed is non-responsive to Petitioner’s argument that the
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`recording and playback keys necessarily appear on Ulmer’s remote.
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`Patent Owner does not rebut this, because it does not show that other
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`remotes existed at the time of the invention that performed record and playback
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`functions without the use of any “keys.” Instead, Patent Owner’s examples of
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`supposedly plausible alternatives to Ulmer’s remote would not be considered
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`“remote[s]” used by a “television viewer[s]” to “control the device.” Ex. 1018 at
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`1. Moreover, none of Patent Owner’s examples perform the functionality required
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`by Ulmer—record and playback—and are therefore simply not plausible. Ex. 1018
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`at 2. Further, even if Patent Owner’s hypothetical alternatives had such
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`functionality, Patent Owner has not even shown how such devices would operate
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`without keys. How would the user input this numeric code? How would they
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`activate this bar-code scanner?
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`Mr. Goldberg’s alternatives that would supposedly allow a user to pre-record
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`television programs all lack a critical element—the ability to play back the
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`recorded content. For example, the VCR Plus device was only an “automated
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`mechanism[] for initiating recordings.” Ex. 2022 at ¶ 39, Ex. 2024. Similarly, the
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`bar-code scanning wand let a user with a device “scan a bar code printed in TV
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`Petitioner’s Reply Brief
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`Guide or manually scan day, channel, time and duration to record.” Ex. 2002 at ¶
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`40, Ex. 2025. While these devices disclose methods of recording television
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`broadcasting, none of them disclose the playback functionality. As Ulmer’s device
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`requires both the recording and playback functionality, Mr. Goldberg’s apparent
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`alternatives lack plausibility, and even they appear to teach that such keys.
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`C.
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`It Would Have Been Obvious to Use Buttons and/or Keys With
`Ulmer’s Remote
`Furthermore, even assuming arguendo that Ulmer did not inherently
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`disclose a remote having keys and/or buttons, as Dr. Hemami has already
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`explained, it would have been obvious to a person of ordinar