throbber
DECLARATION OF SHEILA S. HEMAMI, Ph.D.
`
` 
`
`
`
`
`
`
`I, Sheila S. Hemami, Ph.D., declare as follows:
`
`
`(1.)
`
`I have been asked to provide testimony as to what one of ordinary
`
`skill in the art would understand with respect to U.S. Patent No. 5,930,444 (the
`
`‘444 Patent) and various prior art. I provide this testimony below.
`
`QUALIFICATIONS
`
`(2.)
`
`The following is a brief review of my qualifications. Additional
`
`details regarding my qualifications are provided in my Curriculum Vitae, which is
`
`attached as Exhibit A hereto. My Curriculum Vitae documents the details of my
`
`professional experience in the area of video and image compression and
`
`transmission and lists all of my publications, as well as certain of my Professional
`
`Service Activities, awards and honors, and speaking engagements.
`
`(3.)
`
`I am currently a Professor of Electrical and Computer Engineering at
`
`Northeastern University in Boston, Massachusetts. I am also the Chair of the
`
`Department of Electrical & Computer Engineering.
`
`(4.)
`
`I have performed research and written on numerous aspects of video
`
`and image compression and transmission as a graduate student at Stanford
`
`University, as a Member of the Technical Staff at Hewlett-Packard Laboratories,
`
` 
`
`1
`
`Unified Patents Exhibit 1013, p. 1
`
`

`
` 
`
`and as a Professor of Electrical and Computer Engineering at Cornell University,
`
`and as a Professor of Electrical and Computer Engineering at Northeastern
`
`University. I have published over 100 refereed journal and conference papers in
`
`the area of video and image compression and transmission. I have also supervised
`
`eleven (11) Ph.D theses in this area. While at Hewlett-Packard Laboratories I was
`
`a member of the Interactive Video Initiative, working on video-on-demand system
`
`architectures.
`
`(5.)
`
`I am a Fellow of the Institute of Electrical and Electronics Engineers
`
`(“IEEE”) and a member of the Signal Processing Society therein. I have served as
`
`the Editor-in-Chief for the IEEE Transactions on Multimedia Journal and as
`
`Associate Editor for signal representation, coding and compression for the IEEE
`
`Transactions on Signal Processing journal. I have also served as the Chair of the
`
`Image & Multidimensional Signal Processing Technical Committee (now known
`
`as the Image, Video, & Multidimensional Signal Processing Technical
`
`Committee). In 2012, I was the Technical Program co-chair for IEEE’s flagship
`
`image, video, and signal processing conference —the International Conference on
`
`Image Processing— which involved overseeing the peer review process for over
`
`2000 submitted papers and organizing the technical program.
`
`(6.)
`
`I testified at trial as an expert in a patent case dealing with video and
`
`audio compression and transmission in the U.S. District Court for the Eastern
`
` 
`
`2
`
`Unified Patents Exhibit 1013, p. 2
`
`

`
` 
`
`District of Texas, Forgent Networks v. Echostar, et al. I have also given in-court
`
`technology tutorials in patent cases.
`
`SUMMARY OF THE ‘444 PATENT
`
`(7.)
`
`The ‘444 Patent describes essentially a digital VCR, in which the
`
`video signal (and associated audio) is recorded not on magnetic videotape, but on a
`
`digital memory unit which is described as a random access device. A feature of
`
`the memory unit is that it provides the capability of simultaneous read/write, which
`
`enables the digital VCR to record and playback at the same time. The playback
`
`can be of any recorded video, which provides the user with the ability to, for
`
`example, pause viewing during the recording of a program, and then immediately
`
`begin viewing again from the paused location. The device is controlled by a
`
`remote control with buttons, which the patent describes as a keyboard with "at least
`
`one record key and at least one playback key." The device/remote control also
`
`includes common VCR functions such as fast forward and reverse, pause, and
`
`single-frame advance. Ex. 1001, at Abstract; 2:37-37; 3:11-22; 3:54-4:8.
`
`(8.)
`
`The claims include the following features:
`
` a remote control
` a memory unit providing random access; and
` a memory control circuit providing simultaneous read and write capabilities.
`
` 
`
`3
`
`Unified Patents Exhibit 1013, p. 3
`
`

`
` 
`
`As I discuss below, all of these features were well known to one of ordinary skill in
`
`the art as of the earliest priority date of the ‘444 Patent. I understand that the ‘444
`
`Patent is a continuation of another application filed on April 23, 1992. For the
`
`purposes of my analysis below, I consider April 23, 1992 to be the priority date for
`
`the ‘444 Patent.
`
`CLAIM INTERPRETATION
`
`(9.)
`
`In proceedings before the USPTO, I understand that the claims of an
`
`unexpired patent are to be given their broadest reasonable interpretation in view of
`
`the specification from the perspective of one skilled in the relevant field. I have
`
`used this standard in my analysis below for all of the claim terms. However, there
`
`are a number of terms used in the claims that deserve some discussion in this
`
`context, including means-plus-function claim terms, and I discuss them below.
`
`(10.)
`
`Keyboard (claims 1, 2, 8, and 14)
`
`I believe that one of ordinary skill in the art would interpret this term to mean "the
`
`buttons or keys used to control the device." I note that these keys can be either
`
`located on the recorder or on a remote control. The specification discloses in Fig.
`
`1 that the keys used to control the device (e.g., record and play) are on the device
`
`itself. In Figs. 3 and 4, these keys are disclosed as being on a remote control. One
`
`of ordinary skill would therefore understand that the term “keyboard” was intended
`
`to cover both embodiments, when the keys are on the device itself and when the
`
` 
`
`4
`
`Unified Patents Exhibit 1013, p. 4
`
`

`
` 
`
`keys are on a remote control. One of ordinary skill in the art would recognize that
`
`the use of this term in the specification is not necessarily inconsistent with the
`
`ordinary meaning of the term.
`
`(11.)
`
`I note that the term “keyboard” must be construed broad enough to
`
`cover the keys on a remote control because the specification itself uses the term in
`
`this manner. For example, in the embodiment where the keyboard is on a remote
`
`control, the specification states:
`
`Turning now to FIGS. 3 and 4, a further embodiment of the instant
`invention is shown. Therein, receiver 42 and transmitter 44 are
`interposed between control circuit 14 and keyboard 16 for
`communication therebetween so as to enable keyboard 16 to be placed
`within a discrete remote control housing 46. Ex. 1001, at 6:7-12.
`
`Also shown on the keyboard of the remote control of FIG. 5 is
`terminate key 60, the actuation of which is responded to . . . Ex.
`1001, at 6:66-67.
`
`In these quotes, the specification is clearly referring to the keyboard as the keys on
`
`the remote control. One of ordinary skill would immediately understand that the
`
`"keyboard" is in fact the buttons or keys used to control the device.
`
`(12.)
`
`As further support of my analysis, I note that claim 1 simply recites a
`
`“keyboard” and a “control circuit coupled responsively to said keyboard” and
`
`claim 2, which depends from claim 1, adds a remote control to claim 1 and recites
`
` 
`
`5
`
`Unified Patents Exhibit 1013, p. 5
`
`

`
` 
`
`“wherein said keyboard is housed in said remote control.” One of ordinary skill in
`
`the art would thus understand that the term “keyboard” as used in the claims must
`
`be broad enough to cover keys that are on the device as well as keys that are on a
`
`remote control. For these reasons, I further note that “a control circuit coupled
`
`responsively to said keyboard” would be understood by one of ordinary skill in the
`
`art to cover both a local “direct” coupling as well as a remote coupling.
`
`(13.) Means for powering the apparatus (claim 1)
`
`This element is found in claim 1, and I have been informed that it is known as a
`
`“means-plus-function” claim element in which a function is specified without the
`
`corresponding structure. I have been informed that means-plus-function claim
`
`elements are interpreted as covering the structure described in the specification for
`
`performing the specified function as well as equivalents thereof. I therefore
`
`reviewed the ‘444 Patent to identify the structure that corresponds to the specified
`
`function: “powering the apparatus.” This function is performed in the patent by
`
`batteries for the remote control and AC power for the recorder itself, as clearly
`
`stated at 6:19-24 " It should be noted that the power source contemplated for
`
`remote control unit 46 is batteries, as opposed to AC power source contemplated
`
`for recorder 10, however alternative power sources may be applied to the instant
`
`invention without departure from the spirit or scope thereof." I note that there is no
`
` 
`
`6
`
`Unified Patents Exhibit 1013, p. 6
`
`

`
` 
`
`other structure disclosed in the ‘444 Patent for performing this function. I have
`
`assumed this structural definition in my analysis.
`
`(14.)
`
`I have been informed that in order to constitute a structural
`
`“equivalent,” the prior art feature must perform the same functionality in
`
`substantially the same way to produce substantially the same result. The ‘444
`
`Patent does not specifically provide details of the way in which batteries are used
`
`for the remote and the way in which AC power is used for the device. So, I
`
`therefore conclude that the way is merely using some sort of battery power source
`
`for the remote and an AC power source for the device itself. The specification of
`
`the ‘444 Patent provides no more details that allow me to perform a more detailed
`
`analysis. The result of the means for powering the apparatus limitation is that the
`
`apparatus receives power so that it is rendered operational.
`
`(15.)
`
`Key means for enabling user control of the rate or sequence or
`both of transfer of program information from said memory unit
`to the user's display device (claim 8)
`
`I have been informed that this element is also a means-plus-function claim
`
`element. I therefore reviewed the ‘444 Patent to identify the structure that
`
`corresponds to the specified function: enabling user control of the rate or sequence
`
`or both of transfer of program information from said memory unit to the user's
`
`display device. The structure that corresponds to this function is the fast forward,
`
`reverse, pause, and frame advance buttons (or "keys") on the remote control. (See
`
` 
`
`7
`
`Unified Patents Exhibit 1013, p. 7
`
`

`
` 
`
`my discussion of keyboard supra at ¶¶ 10-12). In fact, when referring to these
`
`buttons on the remote control, the ‘444 Patent states:
`
`The enhanced remote control has additional function keys intended
`for use during time delay playback by recorder 10, as described above
`and initiated by user actuation of playback key 20. These additional
`function keys include fast forward 52 and reverse 54, pause 56, and
`frame advance 58. Control circuit 14 is adapted to respond to user
`actuation of these keys by controlling the rate and sequence with
`which stored information retrieved from memory unit 12 is transferred
`to outputs 24 for display. This enables the recorder of the instant
`invention to approximate the enhanced playback features which have
`become well known from their presence on all but the least expensive
`VCR's presently known and marketed. Ex. 1001, at 6:28-41(emphasis
`added).
`
`Figure 5 shows 6 keys, labeled "rec," "play," "ff," "rev," "pause," "f.adv", and
`
`"terminate." The specific keys that correspond to controlling the rate or sequence
`
`would be understood by one of ordinary skill in the art to be "ff," "rev," “pause”
`
`and "f.adv." These buttons correspond to their expected functionality from a VCR,
`
`as stated in the patent at 6:36-40 "This enables the recorder of the instant invention
`
`to approximate the enhanced playback features which have become well known
`
`from their presence on all but the least expensive VCR's presently known and
`
`marketed." The "f.adv" key is further described at 6:50-56 as "The operation of
`
`frame advance key 58, which is used in conjunction with the pause function, is
`
` 
`
`8
`
`Unified Patents Exhibit 1013, p. 8
`
`

`
` 
`
`contemplated to advance one frame each time the key is actuated by the user,
`
`although ideally, maintained actuation of the frame advance key for more than a
`
`period of one or two seconds would result in the successive advance of stored
`
`frames in slow motion stop action fashion."
`
`(16.)
`
`The way in which the structure (the "ff," "rev," “pause” and "f.adv."
`
`keys) works is just like their conventional VCR counterpart and as each key’s
`
`name implies:
`
`ff – fast forward;
`rev – reverse;
`pause – pause playback; and
`f.adv. – advance one frame at a time.
`
`The result of this means-plus-function element is the manipulation of playback
`
`speed.
`
`(17.)
`
`Frame advance key (claim 10)
`
`Claim 10 further defines the key means to include a frame advance key “for
`
`advancing the transfer of program information to the user's display device at a rate
`
`sufficiently slowly so that a user may review the content of the program
`
`information transferred from said memory unit on a frame by frame basis.” Ex.
`
`1001, at 9:28-33. One of ordinary skill in the art would recognize that this term
`
`means “a button that, when activated, performs frame-by-frame playback.” The
`
`specification describes a button that enables users to review the content of the
`
` 
`
`9
`
`Unified Patents Exhibit 1013, p. 9
`
`

`
` 
`
`program information on a frame-by-frame basis function, called the "f.adv" button
`
`(or "key") on a remote control. Figure 5 shows 6 keys, labeled "rec," "play," "ff,"
`
`"rev," "pause," "f.adv", and "terminate." The specific key corresponding to frame-
`
`by-frame playback would be understood by one of ordinary skill in the art to be
`
`"f.adv." The "f.adv" key is further described at 6:50-56 as “The operation of frame
`
`advance key 58, which is used in conjunction with the pause function, is
`
`contemplated to advance one frame each time the key is actuated by the user,
`
`although ideally, maintained actuation of the frame advance key for more than a
`
`period of one or two seconds would result in the successive advance of stored
`
`frames in slow motion stop action fashion.”
`
`(18.)
`
`Timer circuit (claim 13)
`
`Claim 13 refers to a timer circuit but this term only appears in the claim. A person
`
`of ordinary skill in the art would understand this to mean “a circuit for
`
`implementing a timer function.” One of ordinary skill would also understand that
`
`such a circuit can be fully specified by its functionality. A person of ordinary skill
`
`in the art would understand that the term “circuit” is very broad and can encompass
`
`discrete electronic components, a microprocessor or other programmable chip or
`
`chipset implementing an algorithm, a custom or semi-custom integrated circuit,
`
`combinations of the above hardware, or other electronic means of implementing a
`
` 
`
`10
`
`Unified Patents Exhibit 1013, p. 10
`
`

`
` 
`
`control algorithm. The specification refers to a timer consistent with my
`
`construction:
`
`In FIG. 6, another embodiment of the instant invention is shown,
`having programmable timer 62, to which control circuit 14 is
`responsively coupled for unattended beginning and ending of the
`recording function. So equipped, the instant invention may be used in
`circumstances where the user may not be available for manual
`execution of these functions. For example, if the user anticipates the
`possibility that there may be some delay in arriving in time for the
`beginning of desired programming, recording may be initiated by
`timer 62 after appropriate setting by the user. Timer 62 may also be
`applied to unattendedly cease the recording at a preselected time, and
`thereby conserve memory, for example in instances where the
`interruption or delayed arrival could possibly extend beyond the end
`of the desired programming. Ex. 1001, at 7:10-24.
`
`The specification therefore describes a timer, although not specifically a timer
`
`circuit.
`
`(19.)
`
`Control circuit (coupled responsively to the keyboard) (claim 1)
`(coupled also to the memory unit, claim 1)
`
`A person of ordinary skill would understand the control circuit to mean “a circuit
`
`for controlling operations of the recorder.” The operations of the recorder, for
`
`example, include play, record, reverse, etc., as indicated by the user control
`
`through the keyboard. One of ordinary skill would also understand that such a
`
`circuit can be fully specified by its operation or functionality (i.e., by the control
`11
`
` 
`
`Unified Patents Exhibit 1013, p. 11
`
`

`
` 
`
`algorithm that it implements). A person of ordinary skill in the art would
`
`understand that the term circuit is very broad (as I mentioned previously) and can
`
`encompass discrete electronic components, a microprocessor or other
`
`programmable chip or chipset implementing an algorithm, a custom or semi-
`
`custom integrated circuit, combinations of the above hardware, or other electronic
`
`means of implementing a control algorithm. The existence of such a control circuit
`
`is required in order for the device to operate, and as such, a control circuit, whether
`
`it is expressly disclosed in a reference or not, is necessarily present (see discussion
`
`below). The control circuit implements an algorithm, and as such, specification of
`
`an algorithm is sufficient for one of ordinary skill in the art to understand that such
`
`a control circuit must exist in order to execute the algorithm. While the '444
`
`Patent discusses the operation of the control circuit extensively (e.g., 3:54-67;
`
`4:53-58; 5:5-36), no actual hardware comprising the circuit or in fact anything
`
`other than the box labeled "control" in the figures (Figs. 7-9) is disclosed, which is
`
`consistent with my conclusions in this paragraph. I have also discussed above that
`
`the “coupled responsively to said keyboard” could be a direct (local) coupling or
`
`remote coupling.
`
`ANTICIPATION
`
`(20.)
`
`I have been informed that claims may be found unpatentable as
`
`anticipated. I understand this to mean that a claim is unpatentable if there is a
`
` 
`
`12
`
`Unified Patents Exhibit 1013, p. 12
`
`

`
` 
`
`single prior art reference that discloses each limitation of the claim either expressly
`
`or inherently.
`
`INHERENCY
`
`(21.)
`
`I understand a limitation to be inherently disclosed in a prior art
`
`reference if it is necessarily present in the reference.
`
`OBVIOUSNESS
`
`(22.)
`
`I have been informed that a patent claim can be found unpatentable as
`
`obvious where the differences between the subject matter sought to be patented
`
`and the prior art are such that the subject matter as a whole would have been
`
`obvious at the time the invention was made to a person having ordinary skill in the
`
`relevant field. I understand that an obviousness analysis involves a consideration
`
`of (1) the scope and content of the prior art; (2) the differences between the
`
`claimed invention and the prior art; (3) the level of ordinary skill in the pertinent
`
`field; and (4) secondary considerations of non-obviousness.
`
`ONE OF ORDINARY SKILL IN THE ART
`
`(23.)
`
`I have been informed that “a person of ordinary skill in the relevant
`
`field” is a hypothetical person to whom an expert in the relevant field could assign
`
`a routine task with reasonable confidence that the task would be successfully
`
`carried out. I have been informed that the level of skill in the art is evidenced by
`
`the prior art references. The prior art discussed herein demonstrates that a person
`
` 
`
`13
`
`Unified Patents Exhibit 1013, p. 13
`
`

`
` 
`
`of ordinary skill in the field, at the time of the ‘444 Patent’s earliest priority date,
`
`would be very familiar with image and video compression, processing, and
`
`transmission. Such a person would understand digital video, the differences
`
`between analog and digital video, and analog-to-digital conversion to obtain digital
`
`video from analog video; video compression and video compression standards
`
`(including the audio component of the standards), and hardware/software
`
`associated with digital audio/video storage and playback (e.g., remote controls and
`
`video playback devices), including compression software and hardware and
`
`memory devices.
`
`(24.)
`
`Based on my experience I have an understanding of the capabilities of
`
`a person of ordinary skill in the relevant field. I have supervised and directed
`
`many such persons over the course of my career. Further, I had those capabilities
`
`myself at the time the ‘444 Patent’s earliest priority date.
`
`STATE OF THE ART AS OF 1992
`
`VCR Functionality in 1992:
`
`(25.)
`
`A Consumer Reports review of VCRs in March, 1992, indicates that
`
`infrared remotes were commonplace, programming to record at a later time was
`
`commonplace, and controlling fast forward or reverse or frame advance (jog-
`
`shuttle) was also commonplace. Programming the VCR to record a future program
`
`was also commonplace. Ex. 1004.
`
` 
`
`14
`
`Unified Patents Exhibit 1013, p. 14
`
`

`
` 
`
`(26.)
`
`The '444 Patent itself refers to well-known "enhanced playback
`
`features" provided by the invention when describing the user's ability to control the
`
`unit via fast forward, reverse, pause, and frame advance at 6:27-41:
`
`The enhanced remote control has additional function keys intended
`for use during time delay playback by recorder 10, as described above
`and initiated by user actuation of playback key 20. These additional
`function keys include fast forward 52 and reverse 54, pause 56, and
`frame advance 58. Control circuit 14 is adapted to respond to user
`actuation of these keys by controlling the rate and sequence with
`which stored information retrieved from memory unit 12 is transferred
`to outputs 24 for display. This enables the recorder of the instant
`invention to approximate the enhanced playback features which have
`become well known from their presence on all but the least expensive
`VCR's presently known and marketed.
`
`Remote controls in 1992:
`
`(27.)
`
`Remote controls for televisions and VCRs were well established in the
`
`1970's and IR remote controls had replaced the previous ultrasonic-based remote
`
`controls by the mid-80's. Many patents were filed and issued around 1980
`
`pertaining to infrared technology and its use in television and VCR (or VTR, for
`
`video tape recorder, as they were also known) operation.
`
`(28.)
`
`Remote controls at the time the '444 Patent was filed provided keys to
`
`enable enhanced playback features, as recited in the '444 Patent itself at 6:27-41
`
`(which I reproduced above in ¶ 26). A person of ordinary skill would understand
`15
`
` 
`
`Unified Patents Exhibit 1013, p. 15
`
`

`
` 
`
`that a remote control had keys or buttons with which the user interfaced with the
`
`remote control, and such keys would include the well-known keys that the ‘444
`
`Patent mentions above, such as fast forward, rewind, frame advance, and pause.
`
`Digital video and video compression in 1992
`
`(29.)
`
`Video compression was well known at the time of the '444 Patent.
`
`Video compression standards existed and new standards were in development. An
`
`existing standard was H.261, which was finalized in 1990 by the CCITT and
`
`compressed digital video to rates 64 kbps to 2 Mbps and associated audio.
`
`Additionally, work on the video compression standard now known as MPEG-1
`
`began in 1990 by the ISO, and a largely complete draft of the standard was
`
`published in April 1991.
`
`Random access memory allowing simultaneous read and write:
`
`(30.)
`
`Dual-ported RAM allows Read and Write to happen on the same
`
`clock cycle. Video RAM is a well-known example. Both were well established
`
`and well known in 1992. Furthermore, multi-head disk drives that achieved
`
`simultaneous read and write operations through the use of multiple heads were also
`
`known, see, e.g. US Patent 5,134,499 to Sata et al. (Ex. 1005) entitled "Video
`
`Recording Apparatus Having Control Means Provided Therein for Independently
`
`Controlling the Writing Head and the Reading Head," which was considered by the
`
`examiner during prosecution of the ‘444 Patent, and also U.S. Patent No.
`
` 
`
`16
`
`Unified Patents Exhibit 1013, p. 16
`
`

`
` 
`
`4,972,396 to Rafner entitled "Multiple Independently Positionable Recording
`
`Reading Head Disk System" (Ex. 1006).
`
`Application of Random-Access Memory to Provide Simultaneous
`Read/Write Capabilities in a Digital VCR
`
`(31.)
`
`The idea of a digital VCR was not novel. U.S. Patent 5,625,464 to
`
`Compoint entitled "Continuous Television Transmission Reproduction and
`
`Playback" (priority date March 5, 1991) continuously records an incoming
`
`television signal by digitizing it and writing it to a two-headed hard disk, which
`
`enables simultaneous reading and writing. Ex. 1007.
`
`(32.)
`
`U.S. Patent 4,972,396 to Rafner entitled "Multiple Independently
`
`Positionable Recording-Reading Head Disk System" (issued November 20, 1990)
`
`describes a multi-headed hard disk system in which reading from and writing to the
`
`disk can occur at the same time. Ex. 1006. Rafner provides an example of use of
`
`the device to provide VCR-type functionality, where compressed digital video is
`
`stored and provides a contrast with conventional tapes because viewing can begin
`
`prior to termination of recording due to the use of separate read/write heads.
`
`(33.)
`
`U.S. Patent 5,134,499 to Sata entitled "Video recording apparatus
`
`having control means provided therein for independently controlling the writing
`
`head and the reading head" (filed August 3, 1989) describes an apparatus in which
`
`viewing can begin prior to the termination of recording using two separate
`
` 
`
`17
`
`Unified Patents Exhibit 1013, p. 17
`
`

`
` 
`
`read/write heads, with a RAM allowing writing to a buffer when the write head is
`
`traversing and not writing to disk. Ex. 1005.
`
`(34.)
`
`PCT Publication WO 89/12896 to Ulmer entitled "Device for
`
`simultaneous recording and playback of television images" (published December
`
`28, 1989) allows users to perform VCR-like functionality on television signals. Ex.
`
`1002. Ulmer discloses a device having a remote control that allows playback of a
`
`recorded video signal while the recording is still taking place. The video is stored
`
`in a digital random-access memory, which enables simultaneous recording and
`
`playback. Ulmer discloses user control of the unit through a remote control, and
`
`clearly indicates the simple operation of the device: record, wait for a user-
`
`selected interval of time, playback. Ulmer describes extensively the operation of
`
`the control circuit that allows for not only simultaneous reading and writing but
`
`also providing the enhanced playback features of fast forward, reverse, pause, and
`
`frame-by-frame playback.
`
`(35.)
`
`U.S. Patent No. 5,241,428 to Goldwasser entitled "Variable-delay
`
`video recorder" (filed March 12, 1991) describes a video recorder and playback
`
`device allowing simultaneous recording and playback and allowing for a user-
`
`controlled time delay between the recording and the playback. Ex. 1003. A user
`
`can pause the playback of a signal being recorded for an arbitrary amount of time,
`
`and then resume playback. Goldwasser describes a video recorder and playback
`
` 
`
`18
`
`Unified Patents Exhibit 1013, p. 18
`
`

`
` 
`
`device allowing for a user-controlled time delay between the recording and the
`
`playback. The video is stored in a digital random-access memory, allowing
`
`simultaneous recording and playback. A user can pause the playback of a signal
`
`being recorded for an arbitrary amount of time, and then resume playback.
`
`Goldwasser includes a user control panel and a control circuit coupled to the user
`
`control panel and the memory. In addition to pausing, Goldwasser also includes
`
`fast forwarding and rewinding.
`
`Control circuitry in a VCR responsive to the remote control commands
`
`(36.)
`
`Independent claims 1 and 14 in the '444 Patent include a "control
`
`circuit" that is coupled to the "keyboard." This control circuit provides "selective
`
`storage or retrieval of information or both, to and from memory unit 12 as the case
`
`may be. Control circuit 12 (sic - should be 14) is in turn responsively coupled to
`
`keyboard 16. . . ." Ex. 1001, at 3:60-65. It is further described at 6:34-37 as
`
`"Control circuit 14 is adapted to respond to user actuation of these keys by
`
`controlling the rate and sequence with which stored information retrieved from
`
`memory unit 12 is transferred to output 24 for display." A person of ordinary skill
`
`would understand that such a control circuit is not a novel feature of this invention,
`
`but is a requirement for any remote-controlled/keyboard-controlled device, as the
`
`receipt of the command at the player itself is not sufficient to control the device;
`
`the received command needs to be passed on to the electronics that control the
`
` 
`
`19
`
`Unified Patents Exhibit 1013, p. 19
`
`

`
` 
`
`device itself, e.g., executing commands that result in the actual execution of play,
`
`fast forwarding, etc. Rather, the command "receiver" at the device would decode
`
`the received signal and then pass on the requested command to a device controller.
`
`(37.)
`
`Such control circuitry is described in many patents pertaining to
`
`VTRs/VCRs operated by remote control, e.g. US 4,885,579 A, entitled "Device for
`
`the remote control of a videorecorder or a videoreceiver" (issued December 5,
`
`1989)(Ex. 1008); US 4,866,542, "Remote-controlling commander with a multi-
`
`function rotatry dial" (issued September 12, 1989)(Ex. 1009); and US 4,426,662 A,
`
`"IR Remote control detector/decoder" (issued January 17, 1984)(Ex. 1010). While
`
`these patents apply to magnetic-tape based VCRs/VTRs, it would be readily
`
`apparent to one of ordinary skill that the need for and operation of such a control
`
`device would be independent of the actual storage media. The '444 Patent itself
`
`teaches multiple storage media (semiconductor memory, optical disks, magnetic
`
`disks) and therefore the disclosed control unit must be in fact media-independent.
`
`(38.)
`
`In conclusion, the state of the art as of 1992 was that all the features of
`
`the contested claims were well known to those of ordinary skill in the art. VCR
`
`functionality and control via a remote control were well known. The existence of
`
`control circuitry to execute commands on the recorder apparatus when those
`
`commands were received from the remote control was also well understood. Use
`
`of random-access memories to provide simultaneous reading and writing was well
`
` 
`
`20
`
`Unified Patents Exhibit 1013, p. 20
`
`

`
` 
`
`known, and the application of these memories to provide simultaneous recording
`
`and playback in a digital VCR was established art. 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.
`
`PRIORT ART ANALYSIS OF ULMER (PCT Publication WO 89/12896) and
`GOLDWASSER (U.S. Patent No. 5,241,428)
`(39.)
`
`I've been asked to consider the patentability of the '444 Patent in view
`
`of Ulmer (Ex. 1002) and Goldwasser (Ex. 1003). I provide my testimony below as
`
`to what one of ordinary skill in the art would understand.
`
`(40.)
`
`Ulmer describes a "Device for simultaneous recording and playback
`
`of television images" which allows users to perform VCR-like functions on
`
`television signals such as record, pause, play, and rewind. Ulmer's device includes
`
`a remote control by which a user can control the device. The device has a reading
`
`mechanism and a recording mechanism described as being "being separate and
`
`independent, capable of operating simultaneously" and therefore allows the user to
`
`skip commercials. Ulmer explicitly describes user control of the device as starting
`
`recording, waiting some amount of time, and then starting playback. Ex. 1002, at
`
`1-2 and 81.
`
`
`
`1 These page numbers refer to the page numbers of the English translation part of
`
`Ex. 1002.
`
` 
`
`21
`
`Unified Patents Exhibit 1013, p. 21
`
`

`
` 
`
`(41.)
`
`Goldwasser describes a "Variable-delay video recorder" which
`
`effectively implements a digital VCR providing simultaneous recording and
`
`playback. Under the control of a user, an input video signal is converted from
`
`analog to digital, compressed, and written into a random-access memory which
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket