Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`MICROSOFT CORPORATION
`Petitioner,
`
`v.
`
`BISCOTTI INC.
`Patent Owner
`
`Patent No. 8,144,182
`Issued: March 27, 2012
`Filed: September 16, 2009
`Inventors: Matthew B. Shoemake and Nadeem Ahmed
`Title:
`REAL TIME VIDEO COMMUNICATIONS SYSTEM
`____________________
`Inter Partes Review No. IPR2014-01457, -01458, -01459
`__________________________________________________________________
`
`REPLY DECLARATION OF DR. HENRY HOUH
`REGARDING U.S. PATENT NO. 8,144,182
`
`
`
`
`
`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, Cover
`
`

`
`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
`
`I.
`
`II.
`III.
`
`
`TABLE OF CONTENTS
`
`PATENT OWNER’S AND DR. BOVIK’S ARGUMENTS AND MY
`
`INTRODUCTION ........................................................................................... 1
`A.
`Engagement ........................................................................................... 1
`B.
`Background and Qualifications ............................................................. 1
`C.
`Compensation and Prior Testimony ...................................................... 1
`D.
`Information Considered ......................................................................... 2
`LEGAL STANDARDS FOR PATENTABILITY .......................................... 3
`RESPONSES ................................................................................................... 3
`A.
`Claim 6 .................................................................................................. 3
`B.
`Claim 7 ................................................................................................ 30
`C.
`Claim 18 .............................................................................................. 32
`D.
`Claim 21 .............................................................................................. 36
`E.
`Claim 22 .............................................................................................. 39
`F.
`Claim 23 .............................................................................................. 39
`G.
`Claim 24 .............................................................................................. 43
`H.
`Claim 25, 26, and 28 ........................................................................... 43
`I.
`Claims 29 and 31 ................................................................................. 46
`J.
`Claim 36 .............................................................................................. 47
`K.
`Claim 37 .............................................................................................. 52
`L.
`Claim 39 .............................................................................................. 59
`M. Claims 42 ............................................................................................. 63
`N.
`Claim 50 .............................................................................................. 65
`O.
`Claims 52 ............................................................................................. 67
`P.
`Claim 69 .............................................................................................. 68
`
`
`
`i
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`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. i
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`

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`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
`
`I.
`
`1.
`
`INTRODUCTION
`A. Engagement
`I have been retained by counsel for Microsoft Corporation
`
`(“Microsoft”) as an expert witness in the above-captioned proceeding. I am the
`
`Henry Houh who has previously submitted a declaration in these proceedings as
`
`Ex. 1003. I have been asked to provide this reply regarding the validity of the
`
`claims of the ’182 patent. The following is my written report.
`
`B.
`
`Background and Qualifications
`
`2.
`
`My background and qualifications are set forth in my previously
`
`submitted report, Ex. 1003.
`
`3.
`
`4.
`
`My Curriculum Vitae has been submitted as Exhibit 1004.
`
`C. Compensation and Prior Testimony
`I am being compensated at a rate of $550 per hour for my study and
`
`testimony in this matter. I am also being reimbursed for reasonable and customary
`
`expenses associated with my work and testimony in this investigation. My
`
`compensation is not contingent on the outcome of this matter or the specifics of my
`
`testimony.
`
`5.
`
`I have testified in Federal District Court as an expert witness four
`
`times. Most recently, I testified in the Prism v. AT&T Inc. matter in the District of
`
`Nebraska. I have also testified in the Two-Way Media LLC v. AT&T Inc. matter in
`
`the Western District of Texas, and the Verizon v. Vonage and Verizon v. Cox
`
`
`
`1
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`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. 1
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`

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`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
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`matters, both in the Eastern District of Virginia. I also testified at the hearing in In
`
`the matter of Certain digital media devices, including televisions, Blu-ray disc
`
`players, home theater systems, tablets and mobile phones, components thereof and
`
`associated software, Investigation No. 337-TA-882, U.S. International Trade
`
`Commission, and submitted expert reports and was deposed. I have provided
`
`deposition testimony for other cases filed in Federal District Court as well. I also
`
`have testified in Federal District Court once as a fact witness.
`
`6.
`
`In addition, I have submitted declarations in Microsoft v. B.E.
`
`Technology, LLC (IPR2014-00039, IPR2014-00040), Apple Inc. v. Evolutionary
`
`Intelligence, LLC (IPR2014-00086), Twitter, Inc. and Yelp Inc. v. Evolutionary
`
`Intelligence, LLC, Neulion Inc. v. Patent Owner, Cisco Systems, Inc. v. AIP
`
`Acquisition LLC, Cisco Systems, Inc. v. Constellation Technologies LLC, and
`
`Samsung Electronics Co., LTD et al v. Straight Path IP Group, Inc.
`
`D.
`
`Information Considered
`
`7.
`
`In addition to the information I identified in my first report I have also
`
`considered the decision by the Board regarding institution of these proceedings, the
`
`submissions of the Patent Owner in these proceedings and the declaration and
`
`deposition of Dr. Alan Bovik. My opinions are based on my years of education,
`
`research and experience, as well as my investigation and study of relevant
`
`materials. In forming my opinions, I have considered the materials I identify in
`
`
`
`2
`
`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. 2
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`

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`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
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`this report, those listed in Appendix A, and those identified and listed in Appendix
`
`A of Ex. 1003 (my earlier report).
`
`8.
`
`My analysis of the materials produced in this investigation is ongoing
`
`and I will continue to review any new material as it is provided. This report
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information
`
`and on my continuing analysis of the materials already provided.
`
`II. LEGAL STANDARDS FOR PATENTABILITY
`9.
`In expressing my opinions and considering the subject matter of the
`
`claims of the ’182 patent, I am relying upon the same legal principles that I
`
`discussed in Ex. 1003. See Ex. 1003 ¶¶17-44.
`
`III. PATENT OWNER’S AND DR. BOVIK’S ARGUMENTS AND MY
`RESPONSES
`A. Claim 6
`As I explained in Ex. 1003, Kenoyer discloses each of the elements of
`
`10.
`
`claim 6 of the ’182 patent. See Ex. 1003 at ¶¶232-248. In sum, Kenoyer describes
`
`a videoconferencing device that it refers to as a MCVCS/codec. Kenoyer describes
`
`embodiments of that codec that disclose each of the elements of claim 6. Id.
`
`Biscotti and its technical expert Dr. Alan Bovik contend that Kenoyer does not
`
`disclose “a video input interface to receive video from a set-top box,” “an audio
`
`input interface to receive audio input from the set-top box,” “an audio output
`
`
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`3
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`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. 3
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`

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`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
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`interface to provide audio output to an audio receiver,” and claims 6’s storage
`
`medium and instruction elements. See, e.g., Bovik Dec. (IPR2014-01457, Ex.
`
`2011; IPR2014-01458, Ex. 2006; Ex. IPR2014-01459, Ex. 2018) ¶ ¶ 80-103.
`
`a)
`
`“a video input interface to receive video input from a
`set-top box”
`As I explained in Ex. 1003, Kenoyer discloses “a video input interface
`
`11.
`
`to receive video from a set-top box.” See Ex. 1003 at ¶¶81, 233-234; see also id. at
`
`81.
`
`12.
`
`In paragraph 81 of Ex. 1003, I explained that Kenoyer describes a
`
`number of audio input, audio output, video input, and video output interfaces that
`
`are used included in embodiments of its videoconferencing codec, including
`
`camera ports, S-Video input, RCA input, VGA input, composite input, stereo mini-
`
`jack input, RCA output, VGA output, and 3.5mm headphone output jacks. See Ex.
`
`1003 at ¶81 (citing Ex. 1006 at 9:29-33, 11:1-2, 12:67-13:3).
`
`13.
`
`In paragraph 233 of Ex. 1003, I explained that Kenoyer describes
`
`embodiments in which the codec is connected to a set-top box. See Ex. 1003 at
`
`¶233. I provided quotations from Kenoyer that clarify that in some embodiments
`
`Kenoyer’s codec is in a housing that is independent from that of the set-top box,
`
`and that the set-top box was coupled to the codec with cables. See id. (quoting Ex.
`
`1006 at 10:25-28). I also explained that Kenoyer describes using the codec to
`
`“pass-through” programming from the set-top box. See id. (quoting Ex. 1006 at
`
`
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`4
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`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. 4
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`

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`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
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`10:25-28).
`
`14.
`
`In paragraph 234 of Ex. 1003, I explained that an interface is the point
`
`at which a connection is made between two elements, repeated the video input
`
`examples of VGA and Alt Video In, and opined that Kenoyer discloses “a video
`
`input interface to receive video from a set-top box.” See id. (quoting Ex. 1006 at
`
`Fig. 5, 8:56-9:34).
`
`15.
`
`In his declaration, Dr. Bovik contends that the portions of Kenoyer
`
`that describe connecting the codec to the set-top box with cables, and using the
`
`codec as a pass-through for the set-top box do not “mention any interface or any
`
`structure or any software for video input.” Bovik Dec. (IPR2014-01457, Ex. 2011;
`
`IPR2014-01458, Ex. 2006; Ex. IPR2014-01459, Ex. 2018) at ¶81. Dr. Bovik then
`
`argues that the portions of Kenoyer that describe the various input interfaces of
`
`Kenoyer’s codec do not say that those interfaces are to be used to connect the set-
`
`top box to the codec. See, e.g., Bovik Dec. (IPR2014-01457, Ex. 2011; IPR2014-
`
`01458, Ex. 2006; Ex. IPR2014-01459, Ex. 2018) at ¶81. Notably, neither Biscotti
`
`nor Dr. Bovik discuss what the two sets of disclosures, together, would have meant
`
`to a person of ordinary skill in the art.
`
`16.
`
`Biscotti and Dr. Bovik further argue that a person of ordinary skill in
`
`the art would know that VGA is not normally used for transmission of a cable or
`
`satellite signal. It is worth noting that claim 6 recites video input from a set-top
`
`
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`5
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`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. 5
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`

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`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
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`box, not “transmission of a cable or satellite signal.” Moreover, Dr. Bovik does
`
`not dispute that an Alt Video In, or the other Kenoyer video inputs I discussed in
`
`paragraph 81 of Ex. 1003 (e.g., S-Video input, RCA input, and composite input),
`
`were known to be capable of receiving input from a set-top box (and to transmit
`
`cable or satellite signals). Dr. Bovik concludes that a person of skill in the art
`
`would not understand from Kenoyer’s disclosure “what interface(s) would be used
`
`with which device(s) or content, and thus fails to disclose “‘a video input interface
`
`to receive audio [sic] input from the set-top box.’” Id. (italics added to emphasize
`
`the language of claim 6).
`
`17.
`
`As an initial matter, claim 6 simply requires a video input interface to
`
`which a set-top box can be connected. The claim element reads “a video input
`
`interface to receive video input from a set-top box.” Ex. 1001, cl. 6. Nothing in
`
`claim 6 requires that its video input interface be one that is normally used for
`
`transmission of cable or satellite signals, or even that it in fact be used to transmit
`
`cable or satellite signals.
`
`18.
`
`The ’182 patent specification lists “VGA interface,” “S-video inputs,”
`
`and “composite” interfaces as examples of its claimed video input interface. Ex.
`
`1001 at 10:27-31. Kenoyer discloses that embodiments of its codec include a
`
`VGA video input, and an Alt Video In, Ex. 1006 at Fig. 5, 8:56-9:34, which a
`
`person of skill in the art would understand would have been according to one of the
`
`
`
`6
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`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. 6
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`

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`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
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`video interface standards Kenoyer discloses, e.g., VGA, composite, or S-Video.
`
`See, e.g., Ex. 1003 at ¶81 (quoting Ex. 1006 at 9:29-33: “inputs including HD
`
`Camera input, S-Video input, Radio Corporation of America (RCA) (L+C+R
`
`analog) input, RCA output, VGA input, a composite input, and stereo mini-jack
`
`input may also be supported.”); Ex. 1003 at ¶234; Ex. 1006 at Fig. 5, 8:56-9:34.
`
`Thus Kenoyer discloses that embodiments of its codec include the very interfaces
`
`that the ’182 patent explicitly says can be the claimed video input interface.
`
`19.
`
`Even if Dr. Bovik were correct that claim 6 requires actual reception
`
`of set-top box video rather than merely an interface capable of receiving such
`
`input, his opinion that Kenoyer does not disclose this element would still be
`
`incorrect. One flaw in Dr. Bovik’s analysis is that he has not interpreted the
`
`disclosure of Kenoyer in the context of a person having ordinary skill in the art.
`
`20.
`
`In Ex. 1003, I opined that a person of skill in the art would have been
`
`someone with a good working knowledge of video conferencing,
`networking, and audio/video processing, capture, and display. The
`person would have gained this knowledge either through an
`undergraduate education in electrical or computer engineering or a
`comparable field, in combination with training or several years of
`practical working experience.
`Ex. 1003 at ¶62.
`Similarly, Dr. Bovik opined that
`
`
`
`7
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`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. 7
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`

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`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
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`It is my opinion that a person having ordinary skill in the relevant art
`at the time of invention is a person with a Bachelor of Science degree
`in computer science, electrical engineering, or similar degree and
`around one to two (1-2) years of work experience involving video
`network communication, consumer electronics design, and/or image
`processing.
`Bovik Dec. (IPR2014-01457, Ex. 2011; IPR2014-01458, Ex. 2006;
`Ex. IPR2014-01459, Ex. 2018) at ¶44.
`Under Dr. Bovik’s view, a person with this education and experience,
`
`21.
`
`would read Kenoyer’s description of a codec with video inputs and its direction to
`
`connect a set-top box to pass-through the programming of the set-top box using
`
`cables. After reading those disclosures, under Dr. Bovik’s view, a person of
`
`ordinary skill in the art would not understand that Kenoyer is indicating that the
`
`set-top box is connected to the codec using the disclosed interfaces.
`
`22.
`
`One important error in Dr. Bovik’s analysis is that rather than
`
`consider the import of Kenoyer’s disclosure of connecting the set-top box to the
`
`codec together with Kenoyer’s disclosure a codec with audio and video input
`
`interfaces, Dr. Bovik considers the disclosures only in isolation. See Bovik Dec.
`
`(IPR2014-01457, Ex. 2011; IPR2014-01458, Ex. 2006; Ex. IPR2014-01459, Ex.
`
`2018) at ¶¶81-82.
`
`23.
`
`I disagree with Dr. Bovik’s view. Based on my experience with
`
`persons with college education and industry experience in computer
`
`
`
`8
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`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. 8
`
`

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`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
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`science/electrical engineering, video conferencing, and video and audio, such
`
`persons would have considered Kenoyer’s disclosure of connecting a set-top box to
`
`codec in the context of Kenoyer’s disclosure that the codec includes video (and
`
`audio) inputs. Such persons would understand that each of the codec’s video
`
`inputs described by Kenoyer was capable of receiving video input from a set-top
`
`box. Thus, such persons would have interpreted Kenoyer’s disclosure of a codec
`
`separate from and coupled to a set-top box as meaning that the set-top box would
`
`be coupled to the codec using the interfaces that Kenoyer discloses are included in
`
`the codec. See Ex. 1006, 10:25-28.
`
`24.
`
`As further evidence of this, Ex. 1033 describes a computer that can be
`
`used for set-top box pass-through and for video conferencing . See, e.g., Ex. 1033
`
`at 42, 213. Ex. 1033 also illustrates that the video output from the set-top box is
`
`connected by a cable to the video input ports of the computer (that can be used for
`
`video conferencing). Ex. 1033 at 305.
`
`25.
`
`In support of his assertion that a person of ordinary skill in the art
`
`would not understand that the video input interfaces of the Kenoyer codec to be a
`
`video input interface for receiving video input from a set-top box, Dr. Bovik argues
`
`(incorrectly) that a person of ordinary skill in the art would know that VGA is not
`
`“ordinarily” used to transmit cable and satellite signals. See Bovik Dec. (IPR2014-
`
`01457, Ex. 2011; IPR2014-01458, Ex. 2006; Ex. IPR2014-01459, Ex. 2018) at
`
`
`
`9
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`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. 9
`
`

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`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
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`¶82. Dr. Bovik’s statement implicitly concedes that the VGA video input interface
`
`of Kenoyer’s codec is capable of receiving the video input from a set-top box as he
`
`never disputes that. See id. And Dr. Bovik does not dispute the Alt Video In and
`
`other video input interfaces of Kenoyer’s codec would have been understood to be
`
`compatible with set-top box video.
`
`26.
`
`Moreover, regarding VGA, Dr. Bovik is incorrect in his assertion that
`
`VGA was known to not ordinarily be used for cable and satellite transmissions.
`
`Neither of the quotations Dr. Bovik references says that. The first quotation
`
`simply indicates that VGA was originally developed as a standardized system for
`
`connecting PCs and monitors. See Bovik Dec. (IPR2014-01457, Ex. 2011;
`
`IPR2014-01458, Ex. 2006; Ex. IPR2014-01459, Ex. 2018) ¶81 (quoting Ex. 1033
`
`at 63). Nothing in that quote indicates that at the time of the purported invention of
`
`the ’182 patent VGA was not ordinarily used to transmit cable and satellite signals.
`
`The second quotation that Dr. Bovik references states that most TVs do not have a
`
`VGA port. See Bovik Dec. (IPR2014-01457, Ex. 2011; IPR2014-01458, Ex. 2006;
`
`Ex. IPR2014-01459, Ex. 2018) ¶81 (quoting Ex. 1033 at 63). This also says
`
`nothing about whether a VGA interface would have been recognized as being
`
`appropriate for transmission of cable and satellite signals. Indeed, the output of a
`
`set-top box is often presented in an interface type than the input (e.g., cable or
`
`satellite signals) of the set-top box. Set-top boxes often provided VGI, HDMI,
`
`
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`10
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`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. 10
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`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
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`composite, and S-Video outputs. See, e.g., Ex. 1046, RCA HD DirecTV receiver,
`
`at 9; Ex. 1047, Samsung HD DirecTV receiver, at 14; Ex. 1055 (U.S. Patent No.
`
`8,060,910) (filed Dec. 21, 2006, issued Nov. 15, 2011) at 1:31-38 (“Typically, a set
`
`top box (STB) 120 is required in order to unscramble or decrypt the media content
`
`and/or to decode digital media content.”), 6:51-61 (“the connection may utilize
`
`such connectors as composite video, S-video, component video, VGA, DVI
`
`(Digital Visual Interface), HDMI, IEEE 1394 (‘firewire’), and the like”). Dr.
`
`Bovik’s argument that VGA “is not ordinarily used for transmission of a cable or
`
`satellite signal” does not apply to the outputs of the STB.
`
`27.
`
`To the contrary, persons of skill in the art would have known that
`
`commercial set-top boxes included VGA interfaces specifically as a means to
`
`transmit cable and satellite signals. See, e.g., Ex. 1046 at 7 (RCA set-top box
`
`manual downloaded from DirecTV website showing VGA video interface); Ex.
`
`1047 at 21 (Samsung set-top box manual downloaded from DirecTV website
`
`showing VGA video interface).
`
`28.
`
`Various patents prior to the ’182 patent also describe using VGA to
`
`transmit cable and satellite signals. See, e.g., Ex. 1053, (Patent App. No.
`
`20050114899) (filed Nov. 17, 2003, published May 26, 2005) at ¶ 5 (“Now, there
`
`are two kinds of set-top boxes in the market, one is an analog set-top box and the
`
`other is a digital set-top box. It is important that only the analog set-top box (or
`
`
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`11
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`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. 11
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`

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`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
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`referred to as a TV BOX) can output a VGA signal while the digital set-top box
`
`cannot output the VGA signal.”); Ex. 1055 (U.S. Patent No. 8,060,910) (filed Dec.
`
`21, 2006, issued Nov. 15, 2011) at 1:31-38 (“Typically, a set top box (STB) 120 is
`
`required in order to unscramble or decrypt the media content and/or to decode
`
`digital media content.”), 6:51-61 (“the connection may utilize such connectors as
`
`composite video, S-video, component video, VGA, DVI (Digital Visual Interface),
`
`HDMI, IEEE 1394 (‘firewire’), and the like”).
`
`29.
`
`In his attempts to assert that a VGA input interface cannot be the
`
`video input interface of claim 6, Dr. Bovik has claimed that VGA was “never
`
`considered by anybody – you know, by the community, shall we say, as something
`
`to be used for television.” Ex. 1050, July 30, 2015 Bovik Dep. Tr. at 84:3-11. I
`
`note that Dr. Bovik here is focused on use of the interface for televisions, though
`
`the claim recites a video input interface for a set-top box not a television. Also as I
`
`explained above, the ’182 patent expressly says that VGA can be a video input
`
`interface to receive video from a set-top box, commercial systems that predate the
`
`patent included VGA interfaces, and patents that predate the ’182 patent describe
`
`VGA as an interface for set-top box video—each contradicting Dr. Bovik’s
`
`opinion.
`
`30.
`
`Regarding, S-video and composite interfaces, it was well-known that
`
`these interfaces were suitable for receiving the video from a set-top box. See, e.g.,
`
`
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`12
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`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. 12
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`

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`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
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`Ex. 1055 (U.S. Patent No. 8,060,910) (filed Dec. 21, 2006, issued Nov. 15, 2011)
`
`at 6:51-61; Ex. 1046 at 9 (RCA set-top box manual downloaded from DirecTV
`
`website showing back of set-top box with various interfaces including S-video);
`
`Ex. 1047 at 14 (Samsung set-top box manual downloaded from DirecTV website
`
`showing back of set-top box with various interfaces including S-Video). I note
`
`that Dr. Bovik agrees that these interfaces were suitable for this use. Ex. 1050,
`
`July 30, 2015, Bovik Dep. Tr. 32:3-21, 114:13-17. Indeed, Dr. Bovik conceded
`
`that S-video is a standard for video input and output interfaces. See Ex. 1050, July
`
`30, 2015 Bovik Dep. Tr., 32:13-15.
`
`31.
`
`Dr. Bovik also argues that “to the extent the codec has been
`
`incorporated into the set-top box, it would be unnecessary for the video input
`
`interface to receive video from a set-top box.” Bovik Dec. (IPR2014-01457, Ex.
`
`2011; IPR2014-01458, Ex. 2006; Ex. IPR2014-01459, Ex. 2018) ¶ 81. Dr. Bovik’s
`
`claims about Kenoyer’s codec being incorporated into the set-top box relate to a
`
`different embodiment and are irrelevant for a codec in an independent housing
`
`coupled to the set-top box with cables—a set of embodiments explicitly disclosed
`
`by Kenoyer. See, e.g., Ex. 1006 at 10:25-28.
`
`32.
`
`Dr. Bovik suggests (in the context of a different limitation) that
`
`Kenoyer does not disclose whether both audio and video is transmitted from the
`
`set-top box to the codec. Bovik Dec. (IPR2014-01457, Ex. 2011; IPR2014-01458,
`
`
`
`13
`
`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. 13
`
`

`
`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
`
`Ex. 2006; Ex. IPR2014-01459, Ex. 2018) ¶ 87 (discussing element “an audio input
`
`interface to receive audio input from the set-top box.”). But Kenoyer teaches one
`
`of skill a pass-through for “regular programming/games.” Ex. 1006 at 10:25-28.
`
`A person of skill in the art would have understood that “regular
`
`programming/games” includes passing through both audio and video. See, e.g.,
`
`Ex. 1006, 11:2-4 (STB with audio and video output interfaces); see also Ex. 1033
`
`(Briere) at 73 (“If you use an S-video or composite-video cable to connect to your
`
`TV source … you also need some separate cables to carry the audio signals that
`
`correspond with your TV video“); Ex. 1009 at 2 (audio and video connections
`
`connecting a cable box or satellite receiver); Vizio TV Manual (IPR2014-01457,
`
`Ex. 2018; IPR2014-01458, Ex. 2013; Ex. IPR2014-01459, Ex. 2025) at 11 (audio
`
`and video inputs for receiving content from a set-top box); Ex. 2017 (audio and
`
`video cables to connect VCR). Viewers of “regular programming” would expect
`
`both sound and video. At his deposition, Dr. Bovik conceded that television
`
`“programming” includes both video and audio. See, e.g., Ex. 1050, July 30, 2015,
`
`Bovik Dep. Tr. 14:2-21 (video); id., 15:3-16 (audio).
`
`33.
`
`Thus, I maintain my opinion that Kenoyer discloses “a video input
`
`interface to receive video input from a set-top box.”
`
`b)
`
`“an audio input interface to receive audio input from
`the set-top box.”’
`
`As I explained in Ex. 1003, Kenoyer discloses “an audio input
`
`14
`
`34.
`
`
`
`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. 14
`
`

`
`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
`
`interface to receive audio from a set-top box.” See Ex. 1003 at ¶¶81, 235.
`
`35.
`
`In paragraph 81 of Ex. 1003, I explained that Kenoyer describes a
`
`with audio input interfaces and describes a number of ways to implement the
`
`interfaces, including RCA input, stereo mini-jack input. See Ex. 1003 at ¶81
`
`(citing Ex. 1006 at 9:29-33, 11:1-2, 12:67-13:3).
`
`36.
`
`In paragraph 235 of Ex. 1003, I explained that Kenoyer describes
`
`connecting its codec embodiments to a set-top box. See Ex. 1003 at ¶233. I
`
`provided quotations from Kenoyer that clarify that in some embodiments
`
`Kenoyer’s codec is in a housing that is independent from the set-top box, and that
`
`the set-top box was coupled to the codec with cables. See id. (quoting Ex. 1006 at
`
`10:25-28). I also explained that Kenoyer describes using the codec to “pass-
`
`through” programming from the set-top box. See id. (quoting Ex. 1006 at 10:25-
`
`28). I further identified the Microphone and Alternate In audio input interfaces of
`
`Kenoyer’s codec. See id.
`
`37.
`
`Patent Owner also argues that Fig. 5 shows interfaces from the codec
`
`to a computer, not to a STB. See Patent Owner’s Response 10. But, Kenoyer
`
`explicitly explains in some embodiments its codec is coupled to a set-top box. See,
`
`e.g., Ex. 1003 ¶233 (citing Ex. 1006, 1:65-2:1, 10:25-28). Moreover, computers
`
`can be set-top boxes because they can contain tuners to receive television
`
`broadcasts. See, e.g., Ex. 1033 at 72.
`
`
`
`15
`
`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. 15
`
`

`
`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
`
`38.
`
`In his declaration, Dr. Bovik then argues that the portions of Kenoyer
`
`that describe the Microphone In and Alternate In input interfaces of Kenoyer’s
`
`codec do not say that those interfaces are to be used to connect the set-top box to
`
`the codec. See Bovik Dec. (IPR2014-01457, Ex. 2011; IPR2014-01458, Ex. 2006;
`
`Ex. IPR2014-01459, Ex. 2018) at ¶83-84. Biscotti and Dr. Bovik further argue
`
`that a person of ordinary skill in the art would know that Microphone In is not
`
`normally used to receive audio input from a set-top box. See Bovik Dec.
`
`(IPR2014-01457, Ex. 2011; IPR2014-01458, Ex. 2006; Ex. IPR2014-01459, Ex.
`
`2018) at ¶84. Dr. Bovik concedes that Alternate In can receive audio input (stating
`
`that Kenoyer discloses that it may receive input from a camera or microphone
`
`array) but does not dispute that an Alternate In interface, or the other Kenoyer
`
`audio inputs I discussed in paragraph 81 of Ex. 1003 (e.g., RCA input and stereo
`
`mini-jack input), were known to be capable of receiving audio from a set-top box.
`
`Ignoring the Kenoyer’s disclosures that the of embodiments in which a set-top box
`
`is connected to the codec with cables to pass-through the regular programming
`
`from a set-top box, Dr. Bovik concludes that while Kenoyer discloses that its codec
`
`may include audio input interfaces, a person of skill in the art would not think to
`
`use the audio input interfaces of Kenoyer’s codec to receive audio from a set-top
`
`box.
`
`39.
`
`
`
`Similar to what I explained above regarding the “a video input
`
`16
`
`Microsoft v. Biscotti
`IPR2014-01457, IPR2014-01458, and IPR2014-01459
`Petitioner Microsoft Corporation - Ex. 1052, p. 16
`
`

`
`Reply Declaration of Dr. Henry Houh Regarding U.S. Patent No. 8,144,182
`
`interface to receive video input from a set-top box” element, claim 6 simply
`
`requires an audio input interface to which a set-top box can be connected. Nothing
`
`in claim 6 requires that its audio input interface be one that is normally used to
`
`receive audio from a set-top box, or even that it in fact be used to receive audio
`
`from a set-top box. The ’182 patent specification identifies “RCA analog jacks” as
`
`an example of its claimed audio input interface. Ex. 1001 at 10:24-27. Dr. Bovik
`
`concedes that persons of skill in the art would have known that set-top boxes
`
`include RCA interfaces to convey audio. See Ex. 1050, July 30, 2015 Bovik Tr.
`
`114:4-8. Kenoyer explicitly describes embodiments of its codec that use the RCA
`
`interface standard for its audio input interfaces, Ex. 1003 ¶81; Ex. 1006 at 9:29-33,
`
`and says that embodiments of the codec have Microphone In and an Alternate In
`
`audio input interfaces, Ex. 2006, ¶235; Ex. 1006, Fig. 5, 8:56-9:34, which Dr.
`
`Bovik concede can receive audio, Ex. 2011, ¶83-84. Dr. Bovik’s incorrect
`
`argument that Kenoyer does not describe its codec’s audio input interfaces as
`
`receiving audio from a set-top box, Ex. 2011, ¶83-84, is irrelevant because claim 6
`
`does not include a limitation that the audio input interface actually receive audio
`
`from a set-top box. See Ex. 1001 at claim 6.
`
`40.
`
`Under Dr. Bovik’s interpretation of this claim element, Dr. Bovik has
`
`not interpreted the disclosure of Kenoyer in the context of a person having ordinary
`
`skill in the art. As I explained regarding the “a