UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Unified Patents Inc.
`Petitioner
`v.
`
`Dragon Intellectual
`Property, LLC.
`Patent Owner
`
`
`
`IPR2014- _____
`
`Patent 5,930,444
`
`____________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ........................................................................................... 1 
`
`
`
`I. 
`
`II.  MANDATORY NOTICES ............................................................................. 2 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`Real Party-in-Interest ............................................................................ 2 
`
`Related Matters ...................................................................................... 4 
`
`Identification of Lead and Back-Up Counsel........................................ 5 
`
`Service Information ............................................................................... 5 
`
`III. 
`
`PAYMENT OF FEES ..................................................................................... 5 
`
`IV.  REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 5 
`
`A.  Grounds for Standing ............................................................................ 5 
`
`B. 
`
`C. 
`
`D. 
`
`Statement of Precise Relief Requested (37 C.F.R. § 42.22(a))
`and Identification of Challenges (37 C.F.R. § 42.104(b)) .................... 6 
`
`How the Construed Claims are Unpatentable under the
`Statutory Grounds identified in 37 C.F.R. § 42.104(b)(2) and
`Supporting Evidence Relied upon to Support the Challenge ................ 6 
`
`Threshold Showing of Reasonable Likelihood That Petitioner
`Would Prevail With Respect To At Least One Challenged
`Claim (35 U.S.C. § 314(a)) Has Been Met ........................................... 7 
`
`V. 
`
`FACTUAL BACKGROUND .......................................................................... 7 
`
`A.  Declaration Evidence ............................................................................ 7 
`
`B. 
`
`C. 
`
`D. 
`
`The State of the Art as of 1992 ............................................................. 8 
`
`The Challenged ‘444 Patent ................................................................ 14 
`
`Prosecution History ............................................................................. 15 
`
`VI.  CLAIM CONSTRUCTION (37 C.F.R. § 42.104(B)(3)) .............................. 18 
`
`ii
`
`

`
`A. 
`
`Support for claim construction ............................................................ 19 
`
`VII.   THE GROUNDS SHOWING THAT PETITIONER HAS A
`REASONABLE LIKELIHOOD OF PREVAILING .................................... 24 
`
`A. 
`
`The Prior Art Discloses Each Claimed Feature and One of
`Ordinary Skill Would be Led to Form This Combination .................. 24 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`8. 
`
`Reasons to Combine Ulmer and Goldwasser ........................... 25 
`
`The Combination of Ulmer and Goldwasser Disclose the
`Claimed Keyboard .................................................................... 27 
`
`Ulmer Necessarily Discloses the Control Circuit of the
`Claims ....................................................................................... 29 
`
`Ulmer Discloses Simultaneous Recording and Playback ......... 29 
`
`Ulmer Discloses "One Button Playback": Ulmer
`Discloses Playback with Sole Actuation of the Playback
`Key, and With an Interval of Time Delay Being the Same
`as the Time Elapsed Between the Actuation of the
`Record Key and the Actuation of the Playback Key ................ 31 
`
`One-Button Playback Would Necessarily Be Supported
`By the Control Circuit ............................................................... 32 
`
`Claim 1’s Means for Powering Is Necessarily Present in
`Ulmer and Goldwasser .............................................................. 33 
`
`Ulmer Discloses Claim 8’s Key Means .................................... 34 
`
`B. 
`
`Claim Chart and Analysis Demonstrating How the Proposed
`Combination Renders Obvious Claims 1, 2, 7, 8, 10, 13, and 14 ....... 35 
`
`1. 
`
`Ulmer and Goldwasser Render Claim 14 Obvious ................... 57 
`
`VIII.  CONCLUSION .............................................................................................. 59 
`
`
`
`iii
`
` 
`
` 
`
`

`
`I.
`
`INTRODUCTION
`
`Pursuant to the provisions of 35 U.S.C. §§ 311-319, Unified Patents, Inc.,
`
`(“Unified” or “Petitioner”) hereby petitions the Patent Trial and Appeal Board to
`
`institute inter partes review of claims 1, 2, 7, 8, 10, 13, and 14 of U.S. Patent No.
`
`5,930,444 to Camhi, et al. (“the ‘444 Patent,” Ex. 1001).
`
`In short, the ‘444 Patent describes a digital VCR, in which the video 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. This 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 while the recording
`
`continues. The device is controlled by a remote control with buttons, including a
`
`record key and a playback key. The device/remote control also includes common
`
`VCR functions such as fast forward and reverse, pause, and single-frame advance.
`
`Ex. 1013, at ¶ 7; Ex. 1001, at Abstract; 2:37-37; 3:11-22; 3:54-4:8.
`
`During a Supplemental Examination, the PTO concluded that the ‘444
`
`Patent was originally granted because the prior art did not disclose the ability to
`
`initiate playback of a video after recording had begun using a single button
`
`activation, which Petitioner’s declarant, Dr. Hemami, describes as “one-button
`
`1
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`

`
`playback.” The prior art relied upon herein discloses “one-button playback” and
`
`also fills the gap that the Examiner found in the prior art during the Supplemental
`
`Examination.
`
`The Petitioner relies upon Ulmer (PCT Publication WO 89/12896) and
`
`Goldwasser (U.S. Pat. No. 5,241,428) to demonstrate that the challenged claims
`
`are unpatentable as being obvious. Ulmer was never considered by the Office, but
`
`Goldwasser was part of the Supplemental Examination. Here, Petitioner relies
`
`upon Ulmer in view of Goldwasser, a combination never considered by the Office,
`
`which casts Goldwasser in a new light.
`
`II. MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), Unified Patents provides the following
`
`mandatory disclosures.
`
`A. Real Party-in-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), 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’ participation in this proceeding, the
`
`filing of this petition, or the conduct of any ensuing trial.
`
`Unified Patents was founded by intellectual property professionals over
`
`concerns with the increasing risk of non-practicing entities (NPEs) asserting poor
`
`quality patents against strategic technologies and industries. The founders thus
`
`2
`
`

`
`created a first-of-its-kind company whose sole purpose is to deter NPE litigation
`
`by protecting technology sectors, like content delivery, the technology at issue in
`
`the ‘444 Patent. 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). Since its founding, Unified is 100% owned by its
`
`employees; subscribers have absolutely no ownership interest.
`
`Unified has sole and absolute discretion over its decision to contest patents
`
`through the USPTO’s post-grant proceedings. Should Unified decide to challenge
`
`a patent in a post-grant proceeding, it controls every aspect of such a challenge,
`
`including controlling which patent and claims to challenge, which prior art to apply
`
`and the grounds raised in the challenge, and when to bring any challenge.
`
`Subscribers receive no prior notice of Unified’s patent challenges. After filing a
`
`post-grant proceeding, Unified retains sole and absolute discretion and control over
`
`all strategy decisions (including any decision to continue or terminate Unified’s
`
`participation). Unified is also solely responsible for paying for the preparation,
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`

`
`filing, and prosecution of any post-grant proceeding, including any expenses
`
`associated with the proceeding.
`
`In the instant proceeding, 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. Unified is therefore the sole real-party-in-interest in this proceeding.
`
`B. Related Matters
`
`Dragon Intellectual Property, LLC (“Dragon”) has asserted the ‘444 Patent
`
`in ten litigations in Delaware District Court, all filed on December 20, 2013 and all
`
`are pending. Unified is not a party to any of these litigations.
`
` Dragon v. Charter Communications Inc., 1-13-cv-02062
` Dragon v. DirecTV LLC, 1-13-cv-02065
` Dragon v. Sirius XM Radio Inc., 1-13-cv-02067
` Dragon v. Apple Inc., 1-13-cv-02058
` Dragon v. Cox Communications Inc., 1-13-cv-02064
` Dragon v. Comcast Cable Communications LLC, 1-13-cv-02063
` Dragon v. DISH Network LLC, 1-13-cv-02066
` Dragon v. Time Warner Cable Inc., 1-13-cv-02068
` Dragon v. Verizon Communications, Inc., 1-13-cv-02069
` Dragon v. AT&T Services Inc., 1-13-cv-02061
`
`4
`
`

`
`C.
`
`Identification of Lead and Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel: Lead counsel is Michael L. Kiklis (Reg. No. 38,939) and
`
`back-up counsel is Scott A. McKeown (Reg. No. 42,866).
`
`D.
`
`Service Information
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
`
`served on the following:
`
`
`Address: Michael L. Kiklis or Scott McKeown
`Oblon Spivak
`1940 Duke Street
`Alexandria, VA 22314
`cpdocketkiklis@oblon.com and
`cpdocketmckeown@oblon.com
`Telephone: (703) 413-2707/(703)413-3000 (main)
`Fax:
`(703) 413-2220
`
`Email:
`
`
`III. PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge the required fees as well as
`
`any additional fees that might be due to Deposit Account No. 15-0030.
`
`
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the ‘444 Patent is satisfied.
`
`A. Grounds for Standing
`
`Petitioner certifies pursuant to 37 C.F.R. § 42.104(a) that the ‘444 Patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`5
`
`

`
`requesting inter partes review challenging the patent claims on the grounds
`
`identified herein.
`
`B.
`
`Statement of Precise Relief Requested (37 C.F.R. § 42.22(a)) and
`Identification of Challenges (37 C.F.R. § 42.104(b))
`Petitioner requests inter partes review and cancellation of claims 1, 2, 7, 8,
`
`10, 13, and 14 of the ‘444 Patent as being obvious under 35 U.S.C. § 103 in view
`
`of the following PCT publication and U.S. patent, each of which is prior art
`
`pursuant to 35 U.S.C. §§ 102(b) or 102(e):
`
`1. PCT Publication WO 89/12896 to Ulmer, published December
`28, 1989 (“Ulmer”)(Ex. 1002); and
`2. U.S. Pat. No. 5,241,428 to Goldwasser, et al., filed March 12, 1991
`(“Goldwasser”)(Ex. 1003).
`
`C. How the Construed Claims are Unpatentable under the Statutory
`Grounds identified in 37 C.F.R. § 42.104(b)(2) and Supporting
`Evidence Relied upon to Support the Challenge
`
`The challenged claims are to be construed as indicated in Section VI, below.
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), an explanation of how the challenged claims
`
`are unpatentable under the statutory ground identified above, including the
`
`identification of where each element of the claim is found in the prior art, is
`
`provided in Section VII, below, in the form of a claim chart and analysis. Pursuant
`
`to 37 C.F.R. § 42.104(b)(5), the appendix numbers of the supporting evidence
`
`relied upon to support the challenges and the relevance of the evidence to the
`
`6
`
`

`
`challenges raised, including identifying specific portions of the evidence that
`
`support the challenges, are provided in Section VII, below, in the form of a claim
`
`chart and analysis.
`
`D.
`
`Threshold Showing of Reasonable Likelihood That Petitioner
`Would Prevail With Respect To At Least One Challenged Claim
`(35 U.S.C. § 314(a)) Has Been Met
`
`The information and evidence presented in this Petition, including
`
`unpatentability ground detailed in Section VII, below, establishes a reasonable
`
`likelihood that Petitioner will prevail with respect to at least one of the challenged
`
`claims. See 35 U.S.C. § 314(a). Indeed, that section, supported by the Hemami
`
`declaration (Ex. 1013) demonstrates that the challenged claims are obvious in view
`
`of the relied upon prior art.
`
`V.
`
`FACTUAL BACKGROUND
`
` 
`
`A. Declaration Evidence
`
`This Petition is supported by the declaration of Professor Sheila S. Hemami,
`
`Ph.D. from Northeastern University (attached as Ex. 1013). Dr. Hemami offers her
`
`opinion with respect to the skill level of one of ordinary skill in the art (Ex. 1013,
`
`¶¶ 23 and 24), the content and state of the prior art (Ex. 1013, ¶¶ 25-41), the
`
`teachings and suggestions that one of ordinary skill would understand based on
`
`Exs. 1002-1003 (Ex. 1013, pps. 21-64), the reasons for combining the teachings
`
`from Exs. 1002-1003 (Ex, 1013, ¶¶ 50-73), and the manner in which one of
`
`7
`
`

`
`ordinary skill would combine those teachings (Ex. 1013, pps. 26-64). Dr. Hemami
`
`is Professor of Electrical and Computer Engineering at Northeastern University in
`
`Boston, Massachusetts and Chair of the Department of Electrical & Computer
`
`Engineering. She has over twenty years of experience in multimedia systems. See
`
`Ex. 1013.
`
`B.
`
`The State of the Art as of 1992
`
`VCR Functionality in 1992
`
`By March, 1992, 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 commonplace. Programming the VCR to record a
`
`future program was also commonplace. Ex. 1013, at ¶ 25; Ex. 1004.
`
`The '444 Patent itself admits 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
`
`8
`
`

`
`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. 1013, at ¶ 26.
`
`Remote controls in 1992:
`
`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). Ex. 1013, at ¶ 27.
`
`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
`
`(reproduced above). A person of ordinary skill would understand 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. Ex. 1013, at ¶ 28.
`
`Random access memory allowing simultaneous read and write
`
`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
`
`9
`
`

`
`read and write operations through the use of multiple heads were also known, see,
`
`e.g., U.S. 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. 4,972,396 to
`
`Rafner entitled "Multiple Independently Positionable Recording Reading Head
`
`Disk System" (Ex. 1013). Ex. 1013, at ¶ 30.
`
`Application of Random-Access Memory to Provide Simultaneous
`Read/Write Capabilities in a Digital VCR
`
`The idea of a digital VCR was not new. 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. 1013, at ¶ 31; Ex. 1007.
`
`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. 1013. 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
`
`10
`
`

`
`prior to termination of recording due to the use of separate read/write heads. Ex.
`
`1013, at ¶ 32.
`
`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 read/write heads,
`
`with a RAM allowing writing to a buffer when the write head is traversing and not
`
`writing to disk. Ex. 1013, at ¶ 33; Ex. 1005.
`
`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. Ex. 1013, at ¶ 34.
`
`11
`
`

`
`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 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. Ex. 1013, at ¶ 35.
`
`Control circuitry in a VCR responsive to the remote control
`commands
`
`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 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
`
`12
`
`

`
`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, 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 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. Ex. 1013, at ¶ 36.
`
`Such control circuitry is described in many patents pertaining to
`
`VTRs/VCRs operated by remote control, e.g. U.S. 4,885,579 A, entitled "Device
`
`for the remote control of a videorecorder or a videoreceiver" (issued December 5,
`
`1989)(Ex. 1008); U.S. 4,866,542, "Remote-controlling commander with a multi-
`
`function rotatry dial" (issued September 12, 1989)(Ex. 1009); and U.S. 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
`
`13
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`

`
`disks) and therefore the disclosed control unit must be in fact media-independent.
`
`Ex. 1013, at ¶ 37.
`
`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
`
`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. Ex. 1013, at ¶ 38.
`
`C.
`
`The Challenged ‘444 Patent
`
`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. This 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
`
`14
`
`

`
`device is controlled by a remote control with buttons, including "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. 1013, at ¶ 7; Ex. 1001, at Abstract; 2:37-37; 3:11-22; 3:54-4:8.
`
`The contested 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. As Dr. Hemami testifies, all the features
`
`of the contested claims were well known to one of ordinary skill in the art as of the
`
`earliest priority date of the ‘444 Patent. Ex. 1013, at ¶ 8.
`
`D.
`
`Prosecution History
`
`The Patent Owner filed a request for Supplemental Examination based, in
`
`part, on Goldwasser. In the Supplemental Examination, the Examiner made the
`
`following observations about the original prosecution:
`
`[I]ndependent claims 1 and 14 of the '444 Patent were allowed
`because none of the references of record taught or suggested a control
`circuitry being configured so that substantially simultaneous recording
`and playback of program information is achieved when said record
`key is first actuated to being a recording by initiating storage of the
`broadcast program information in said memory unit, and said
`playback key is subsequently and solely actuated to begin time delay
`playback of the recording from the beginning thereof by initiating
`retrieval of the stored program information in said memory unit, with
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`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. 1011, at ¶ 15.
`
`Dr. Hemami refers to the above operation as providing "one-button playback,"
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`which she describes as, after recording has begun, the user can initiate playback by
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`simply commanding playback with a single button activation (in contrast to VCRs,
`
`where a "stop" was required to initiate playback, the "stop" being the cessation of
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`recording). Ex. 1013, at ¶ 44.
`
`During Supplemental Examination, the Examiner found that Goldwasser,
`
`taken alone, did not raise a substantial new question of patentability because
`
`Goldwasser failed to expressly teach or suggest:
`
`a) a keyboard having a record key and a playback key; and
`
`b) a control circuit, coupled to the keyboard, being configured so that
`substantially simultaneous recording and playback of program
`information is achieved when said record key is first actuated to being
`a recording by initiating storage of the broadcast program information
`in said memory unit, and said playback key is subsequently and solely
`actuated to begin time delay playback of the recording from the
`beginning thereof by initiating retrieval of the stored program
`information in said memory unit, with the interval of the time delay
`being the same as the time elapsed between the actuation of said
`record key and the subsequent actuation of said playback key. Ex.
`1011, at ¶ 31.
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`In other words, the Patent Office found that Goldwasser alone did not provide
`
`"one-button playback." Ex. 1013, at ¶¶ 45-46.
`
`The Examiner also found that Goldwasser, in combination with Smith did
`
`not raise a substantial new question of patentability because Smith lacked a control
`
`circuit that performed “one-button playback.” See Ex. 1011, at ¶¶ 6, 25; Ex. 1013,
`
`at ¶ 47.
`
`As Dr. Hemami testifies, Smith teaches a remote control only, without any
`
`discussion of the corresponding control circuit at the remotely controlled
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`apparatus, let alone a control circuit that performed one-button playback.
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`Goldwasser provides a control circuit, but the "one-button playback" operation is
`
`not described. Similarly, the examiner found that the combination of Sata and
`
`Smith did not provide "one-button playback." As such, none of the prior art
`
`combinations disclosed a control circuit that performed one-button playback. Ex.
`
`1013, at ¶ 48.
`
`In contrast, one of ordinary skill in the art would recognize that Ulmer
`
`explicitly teaches "one-button playback" and discloses a control circuit which
`
`implements this function. Both Ulmer and Goldwasser are directed toward
`
`simultaneous recording and playback in a unit providing VCR-like functionality
`
`with digital video. While the Patent Office looked to Goldwasser to provide "one-
`
`button playback," this function is instead provided by Ulmer in Dr. Hemami’s
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`combination. The combination of Ulmer and Goldwasser discloses all features of
`
`each contested claim. Ex. 1013, at ¶ 49.
`
`VI. CLAIM CONSTRUCTION (37 C.F.R. § 42.104(B)(3))
`
`Pursuant to 37 C.F.R. § 42.204(b)(3), the claims subject to inter partes review
`
`shall receive the “broadest reasonable construction in light of the specification of
`
`the patent in which [they] appear[].” See 42 C.F.R. § 100(b). For the purposes of
`
`this petition, the Petitioner adopts the plain meaning for all claims terms. The
`
`Petitioner proposes a specific construction for several terms below:
`
`Claim Term
`Keyboard (claims 1, 2, 8, and 14)
`
`Means for powering the apparatus
`(claim 1)
`
`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)
`
`Frame advance key (claim 10)
`
`Timer circuit (claim 13)
`
`Control circuit (coupled responsively to
`the keyboard) (claim 1) (coupled also
`
`Proposed construction
`“the buttons or keys used to control
`the device”
`Function: powering the apparatus
`Structure: batteries for the remote
`control and AC power for the recorder
`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
`Structure: the fast forward, reverse,
`pause, and frame advance buttons (or
`"keys") on the remote control
`"a button that, when activated,
`performs frame-by-frame playback"
`“a circuit for implementing a timer
`function”
`“a circuit for controlling operations of
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`to the memory unit, claim 1)
`
`the recorder”
`
`A. Support for claim construction
`Keyboard (claims 1, 2, 8, and 14): Dr. Hemami testifies that one of ordinary skill
`
`in the art would interpret this term to mean "the buttons or keys used to control the
`
`device." She notes 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 keys are on a
`
`remote control–and that the use of this term in the specification is not necessarily
`
`inconsistent with the ordinary meaning of the term. At 6:7-12 and 6:66-67, the
`
`‘444 Patent supports this construction and clarifies that “keyboard” refers to the
`
`keys on the remote control. Ex. 1013, at ¶ 10-12.
`
`Moreover, the doctrine of claim differentiation dictates this result. Claim 1
`
`recites a “keyboard” and a “control circuit coupled responsively to said keyboard”
`
`and claim 2, which depends from claim 1, adds a remote control and recites
`
`“wherein said keyboard is housed in said remote control.” Thus, 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. Additionally, and for the
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`same reason, the recitation “a control circuit coupled responsively to said