UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`LG ELECTRONICS, INC.
`Petitioner
`
`v.
`
`ATI TECHNOLOGIES ULC
`Patent Owner
`_______________
`
`Case: IPR2015-00321
`
`Patent 7,095,945 B1
`_______________
`
`PETITIONER’S REPLY BRIEF IN SUPPORT OF THE PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,095,945
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`LG ELECTRONICS, INC.
`Petitioner
`
`v.
`
`ATI TECHNOLOGIES ULC
`Patent Owner
`_______________
`
`Case: IPR2015-00321
`
`Patent 7,095,945 B1
`_______________
`
`PETITIONER’S REPLY BRIEF IN SUPPORT OF THE PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,095,945
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Case IPR2015-00321
`Patent No. 7,095,945 B1
`Petitioner’s Reply
`
`PETITIONER’S EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 7,095,945
`Prosecution History of U.S. Patent No. 7,095,945
`Complaints filed in Related District Court Cases
`Declaration of Daniel Schonfeld, Ph.D. (“Schonfeld Decl.”)
`U.S. Patent No. 6,233,389 (“Barton”)
`U.S. Patent No. 6,397,000 (“Hatanaka”)
`U.S. Patent No. 6,591,058 (“O’Connor”)
`U.S. Patent No. 5,521,922 (“Fujinami”)
`Declaration of Jamie Beaber
`Declaration of Michael Maas
`Deposition transcript of Dr. Mangione-Smith
`Supplemental Declaration of Daniel Schonfeld (“Schonfeld
`Suppl. Decl.”)
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
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`ii
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`Case IPR2015-00321
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`Petitioner’s Reply
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`I.
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`II.
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`Table of Contents
`CLAIM CONSTRUCTION .......................................................................1
`A.
`“program portion” does not require construction ................................... 1
`B.
`“selecting a first program from the multiplexed packetized data
`stream”............................................................................................................ 2
`CLAIM 18 IS OBVIOUS OVER HATANAKA........................................3
`A.
`Hatanaka Discloses A First Demultiplexer For Receiving The
`Multiplexed Packetized Data Stream As Required By Claim 18 ........ 4
`1.
`Patent Owner Applies A Narrow Reading of Claim 18 .............. 4
`
`2.
`
`3.
`
`The ’945 Patent Does Not Narrow The Meaning Of The “First
`Demultiplexer”.................................................................................... 6
`Under a Proper Reading of Claim 18, Hatanaka Discloses The
`“First Demultiplexer”......................................................................... 8
`
`Hatanaka Discloses Simultaneous Record And Playback................... 12
`B.
`Hatanaka’s System Would Not Require Significant Modifications.. 15
`C.
`III. CLAIM 18 IS OBVIOUS OVER HATANAKA IN VIEW OF
`O’CONNOR.............................................................................................. 17
`A.
`O’Connor Discloses Simultaneous Recording And Playback............ 19
`B.
`Hatanaka Combined With O’Connor Would Function To Perform
`Claim 18 ....................................................................................................... 20
`IV. DR. SCHONFELD’S DECLARATION SHOULD BE AFFORDED
`FULL WEIGHT........................................................................................ 21
`STATEMENT OF MATERIAL FACTS IN DISPUTE .........................22
`V.
`VI. CONCLUSION .........................................................................................22
`
`iii
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`Case IPR2015-00321
`Patent No. 7,095,945 B1
`Petitioner’s Reply
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`In its June 26, 2015 Institution Decision on U.S. Patent No. 7,095,945 (the
`
`“’945 Patent”), the Board correctly found that Petitioner LG Electronics Inc. is
`
`likely to prevail in showing that (a) claim 18 is obvious over U.S. Patent No.
`
`6,397,000 (“Hatanaka”) (Ex. 1006) and (b) claim 18 is obvious over Hatanaka in
`
`view of U.S. Patent 6,591,058 (“O’Connor”) (Ex. 1007). See Decision (“Dec.”),
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`Paper 20, at 22. Nothing in Patent Owner’s Response should disturb that
`
`conclusion. Patent Owner’s Response is based entirely on a narrow reading of
`
`Hatanaka and an attempted redrafting of claim 18. Thus, for the reasons set forth in
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`the Petition and further explained below, claim 18 of
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`the ’945 Patent
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`is
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`unpatentable.
`
`I.
`
`CLAIM CONSTRUCTION
`
`A.
`
`“program portion” does not require construction
`
`As explained in the Petition, the terms of the ’945 Patent should be given
`
`their broadest reasonable construction in light of the specification. Petition, at 5-6.
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`In its preliminary response, Patent Owner argued for a construction of “program
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`portion” that the Board rejected in its Institution Decision, finding that “Patent
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`Owner does not specify how much less than all of a program constitutes a portion.”
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`Dec., at 6-7.
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`As the Board correctly found in its Institution Decision, the term “program
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`1
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`Petitioner’s Reply
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`portion” should be given its plain meaning because it is readily understood by a
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`person of ordinary skill in the art in view of the ’945 specification and “the
`
`antecedents in claim 18 convey the necessary meaning.” Dec., at 6. Because “claim
`
`18 recites no limits on the first and second portions, other than each being a
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`portion, i.e., some or all, of the first program” the term “program portion does not
`
`require any construction and should be given its broadest reasonable construction,
`
`plain meaning. Dec., at 7. Patent Owner simply recycles the same arguments with
`
`respect to “program portion” and similarly still fails to specify how much less than
`
`all a program constitutes a portion.
`
`Therefore, Petitioner respectfully requests that the Board again reject Patent
`
`Owner’s proposed construction for “portion” because the term “program portion
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`does not require any construction and should be given its broadest reasonable
`
`construction, plain meaning.” Dec., at 7.
`
`B.
`
`“selecting a first program from the multiplexed packetized data
`stream”
`
`The phrase “selecting a first program from the multiplexed packetized data
`
`stream” in claim 18 should be given its plain meaning in view of the claim
`
`language and the ’945 specification. While Patent Owner does not expressly
`
`propose a construction for this term, it is clear from its Response that Patent Owner
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`is attempting to improperly narrow claim 18 to require that the first demultiplexer
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`2
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`perform the selecting step. Response, at 31 (“Hatanaka fails to disclose a first
`
`demultiplexer that receives a multiplexed packetized data stream and selects a first
`
`program from the multiplexed packetized data stream for all three modes of
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`operation.”); see also id. at 36-38. Contrary to Patent Owner’s interpretation, claim
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`18 does not recite “selecting a first program from the multiplexed packetized data
`
`stream” at the first demultiplexer. Rather, claim 18 is silent as to what structure is
`
`performing the “selecting.” Furthermore, other than in the claim language, a first
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`and second demultiplexer are only mentioned in the abstract of the ’945 Patent.
`
`There, the only disclosure is that the first demultiplexer receive the multiplexed
`
`packetized data steam, which is a different limitation of claim 18. Finally, a person
`
`of ordinary skill in the art would not understand claim 18 to require that the first
`
`demultiplexer perform the step of selecting. See Ex. 1012, Schonfeld Supp. Decl.,
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`at ¶5. Patent Owner’s argument that the first demultiplexer must do the selecting in
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`this step of claim 18 is simply not supported by the plain language of the claim, or
`
`the ’945 Patent specification and should be rejected. The phrase “selecting a first
`
`program from the multiplexed packetized data stream” in claim 18 should be given
`
`its plain meaning in view of the claim language and ’945 specification.
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`II.
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`CLAIM 18 IS OBVIOUS OVER HATANAKA
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`Patent Owner argues that claim 18 is not obvious in view of Hatanaka based
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`on an improper
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`reading of claim 18 and a narrow reading of Hatanaka.
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`Specifically, Patent Owner challenges Hatanaka based on two primary grounds.
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`Patent Owner argues that Hatanaka does not disclose the same demultiplexer to
`
`receive a multiplexed packetized data stream and select a first program from the
`
`multiplexed packetized data stream. Response, at 5. Patent Owner also argues that
`
`Hatanaka does not disclose simultaneous recording and playing back different
`
`portions of the same program. Response, at 4. Each of these attacks is unavailing.
`
`As such, and as further set forth in the evidence of record, claim 18 is obvious over
`
`Hatanaka.
`
`A.
`
`Hatanaka Discloses A First Demultiplexer For Receiving The
`Multiplexed Packetized Data Stream As Required By Claim 18
`
`As discussed in the Petition, the first demultiplexer corresponds to the
`
`interface 12 and the second demultiplexer corresponds to demultiplexer 9.
`
`Petition, at 26. Patent Owner argues that Hatanaka does not disclose the same
`
`demultiplexer to receive a multiplexed packetized data stream and select a first
`
`program from the multiplexed packetized data stream. Response, at 5. But claim 18
`
`requires no such thing. Notwithstanding Patent Owner’s argument, demultiplexer
`
`12 corresponds to the first demultiplexer for all three modes of claim 18.
`
`1.
`
`Patent Owner Applies A Narrow Reading of Claim 18
`
`First, as explained above, nothing in claim 18 requires that
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`the first
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`Petitioner’s Reply
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`demultiplexer select a first program from the multiplexed packetized data stream.
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`All claim 18 requires is that
`
`the first demultiplexer receive the multiplexed
`
`packetized data stream. As can be seen in claim 18 below, each mode only requires
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`receiving at the first demultiplexer:
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`18. A method comprising:
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`determining a mode of operation;
`
`during a first mode of operation:
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`receiving a multiplexed packetized data stream at a first
`demultiplexer;
`selecting a first program from the multiplexed packetized data
`stream;
`decoding a video portion of the first program for display;
`during a second mode of operation:
`receiving the multiplexed packetized data stream at the first
`demultiplexer;
`selecting the first program from the multiplexed packetized data
`stream;
`storing the first program;
`during a third mode of operation:
`receiving the multiplexed packetized data stream at the first
`demultiplexer;
`selecting the first program from the multiplexed packetized
`data stream;
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`storing a first program portion of the first program;
`providing the first program portion to a second demultiplexer;
`selecting at the second demultiplexer a video portion of the first
`program portion;
`decoding the video portion of the first program portion for
`display; and
`storing a second program portion of
`simultaneous to the step of decoding.
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`the first program
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`Claim 18 does not require that any particular element, such as the first
`
`demultiplexer, perform the selecting step. While mode three specifies selecting at
`
`the second demultiplexer,
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`there is no requirement
`
`in claim 18 that
`
`the first
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`demultiplexer do any selecting. Dr. Mangione-Smith agreed this is not a literal
`
`requirement of claim 18. Ex. 1011, Mangione-Smith Tr., at 60:23-61:3; see also
`
`Ex. 1012, Schonfeld Suppl. Decl., at ¶5. Moreover, the fact that Patent Owner
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`expressly claimed selecting at the second demultiplexer during mode three strongly
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`suggests that the absence of an express disclosure of an element that does the
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`selecting in mode one was intended to be claimed broadly.
`
`2.
`
`The ’945 Patent Does Not Narrow The Meaning Of The
`“First Demultiplexer”
`
`Second, the ’945 Patent never defines the first and second demultiplexer.
`
`The only mention of a first and second demultiplexer is in the Abstract of the ’945
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`Petitioner’s Reply
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`specification, which only discloses that
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`the first demultiplexer
`
`receive a
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`multiplexed packetized data stream:
`
`stream carrying
`A multiplexed packetized data
`real-time
`multimedia programs is received at a first hardware demultiplexer.
`Based on a user input, a video and timing portion of a program
`associated with the multiplexed packetized data stream can be stored
`for subsequent display. One type of subsequent display is time shifted
`display, where the stored portion of the program is played back while
`new portions of the program are being stored. During time shifted
`play back, a second hardware demultiplexer can be used, so that
`one demultiplexer stores new data and maintains a current clock value
`while the other decodes and displays the stored data.
`Ex. 1001, at Abstract (emphases added). Dr. Mangione-Smith also could not
`
`identify any portion of the ’945 Patent
`
`that discussed the first and second
`
`demultiplexers of claim 18. Ex. 1011, Mangione-Smith Tr., at 64:18-24. He only
`
`assumed it did, but his assumption is not based on any evidence in the intrinsic
`
`record.1
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`1 He also could not identify any portion of the specification that explains
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`how a mode of operation is determined in the context of claim 18. Ex. 1011,
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`Mangione-Smith Tr., at 47:2-13.
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`3.
`
`Under a Proper Reading of Claim 18, Hatanaka Discloses
`The “First Demultiplexer”
`Hatanaka discloses “receiving a multiplexed packetized data stream at a
`
`first demultiplexer” in all three modes and “selecting a first program from the
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`multiplexed packetized data stream” also in all three modes. Hatanaka explains
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`that Figs. 1 and 6 depict receiving a digital broadcasting signal, which is a
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`multiplexed packetized data stream. Ex. 1006, at 6:18-20. As can be seen in Fig. 6,
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`that data stream travels through tuner 5, then QPSK Demodulator 6, then FEC 7
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`and then the same stream is provided to both interface 12 and demultiplexer 9,
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`through switch 8 set to contact a. Dr. Mangione-Smith agreed that the same stream
`
`is received at both interface 12 and demultiplexer 9. Ex. 1011, Mangione-Smith
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`Tr., at 96:20-98:11. 2 He also agreed that nothing precludes interface 12 from
`
`receiving the signal during play mode. Id. at 98:20-99:2. This is shown in
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`annotated Fig. 6 provided below, which shows the path of the multiplexed
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`2 Dr. Mangione-Smith also agreed that the ’945 Patent discloses what he
`
`identified as a first and second demultiplexer in Fig. 6 of the ’945 Patent as both
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`receiving the multiplexed data stream. Ex. 1011, Mangione-Smith Tr., at 70:6:-13.
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`He also agreed that either demultiplexer could select the first program from the
`
`multiplexed packetized data stream. Id. at 71:8-11.
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`packetized data stream in red where it can be played and recorded at the same time.packetized data stream in red where it can be played and recorded at the same time.packetized data stream in red where it can be played and recorded at the same time.
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`
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`
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`As shown above and confirmed by Dr. MangioneAs shown above and confirmed by Dr. Mangione-Smith, the stream that isSmith, the stream that is
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`
`
`
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`received at interface 12 is also sent through switchreceived at interface 12 is also sent through switch 17 and packet controller 18 for17 and packet controller 18 for
`
`
`
`
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`storage in the recording device. Dr. Mangionestorage in the recording device. Dr. Mangione-Smith admitted this could occur inSmith admitted this could occur in
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`
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`
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`the system of Hatanaka but simply presumed the signal does not follow this paththe system of Hatanaka but simply presumed the signal does not follow this paththe system of Hatanaka but simply presumed the signal does not follow this path
`
`
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`during play mode. Ex. 1011, Mangioneduring play mode. Ex. 1011, Mangione-Smith Tr., at 102:11-21.21. Finally, Dr,
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`
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`
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`
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`Mangione-Smith also admitted that the same program sent to storage after interfaceSmith also admitted that the same program sent to storage after interfaceSmith also admitted that the same program sent to storage after interface
`
`
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`12 could be retrieved from storage for playback.12 could be retrieved from storage for playback. Id. at 104:9-14.
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`Petitioner’s Reply
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`That is, during all three modes, a multiplexed packetized data stream is
`
`received at interface 12, the first demultiplexer. For all three modes, demultiplexer
`
`9 receives the same stream received at interface 12, selects a program, and
`
`separates and outputs the video portion relating to a specified program.
`
`Specifically, the ’945 Patent explains that:
`
`When the broadcasting signal is outputted from the present device, the
`playback changeover switch 8 is set at a contact to input the output
`from the FEC 7 to demultiplexer 9, which determines a type of a
`respective packet, using the PID57, etc., of the header 50, separates
`only packets of a video, audio, etc., relating to a specified program,
`and then outputs these packets to the MPEG decoder 10.
`Ex. 1006, at 3:16-22 (emphases added). Dr. Mangione-Smith admitted that
`
`demultiplexer 9 selects a program from the multiplexed packetized data stream.
`
`Ex. 1011, Mangione-Smith Tr., at 101:3-23. Hatanaka further explains that both
`
`demultiplexer 9 and interface 12 separate packets of video and audio information
`
`and add information relating to the program to be recorded:
`
`is recorded in the recording/playback
`When the received signal
`device 2, the output from the FEC 7 is inputted to the interface 12,
`which separates packets of video and audio information and
`added information relating to a program to be recorded as in the
`demultiplexer 9. When the received signal is recorded and played
`back by the recording/playback device 2, it is required to also record
`
`10
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`Petitioner’s Reply
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`and play back program information required for automatic selection of
`a broadcasting station. Thus, in addition to the packets selected by
`the demultiplexer 9,
`the interface 12 also selects a packet of
`program information relating to the program to be recorded and
`converts a part of the packet of program information.
`Ex. 1006, at 3:42-54 (emphases added).
`
`the playback
`When a reproduced picture is to be obtained,
`changeover switch 8 is set at
`the contact b to thereby send a
`reproduced
`packet
`to
`the
`demultiplexer 9.
`The
`demultiplexer 9 automatically selects a broadcasting station on
`the basis of the packet of program information which was selected
`and converted by the interface 12 when the data was recorded,
`and outputs only a packet required for the MPEG decoder 10.
`Video/audio signals are obtained in a manner similar to that in which
`an output is obtained from a broadcasting signal
`Id. at 4:27-35 (emphasis added).
`
`Patent Owner and Dr. Mangione-Smith’s interpretation of claim 18 relies
`
`entirely on an improper reading of claim 18—that the first demultiplexer must
`
`perform both the receiving and selecting steps—and therefore,
`
`it should be
`
`rejected. See Ex. 1011, Mangione-Smith Tr., at 74:8-75:12.
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`Additionally, claim 18 does not require that all operations follow the same
`
`processing path. Dr. Mangione-Smith admitted that claim 18 does not require all
`
`modes to occur in isolation or at the same time. Ex. 1011, Mangione-Smith Tr., at
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`11
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`54:9-19; Ex. 1012, Schonfeld Suppl. Decl., at ¶6. Thus, while the different modes
`
`operate on different paths in Hatanaka, each path of play, record, and playback
`
`meet the requirements of claim 18 because for all three modes, interface 12
`
`receives a multiplexed packetized data stream. Further, performing the playback
`
`mode necessarily meets the first and second modes of play and record because, as
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`Dr. Mangione-Smith confirmed, playback is playing content that was previously
`
`stored. Ex. 1011, Mangione-Smith Tr., at 56:14-17.
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`Therefore, Petitioner has shown by a preponderance of the evidence that
`
`Hatanaka discloses the claimed first demultiplexer recited for all three modes of
`
`claim 18.
`
`B.
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`Hatanaka Discloses Simultaneous Record And Playback
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`Patent Owner argues that “Hatanaka’s system will not simultaneous record
`
`and playback the same program, as required by claim 18.” Response, at 26.
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`Petitioner, however, has not argued that Hatanaka expressly discloses simultaneous
`
`storing and decoding. Instead, as argued in the Petition “[s]imultaneous storing and
`
`decoding would have been obvious to a person of ordinary skill in the art in view
`
`of Hatanaka because Hatanaka discloses a system that allows one to
`
`simultaneously record and decode different portions of a program.” Petition, at 26
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`(citing Ex. 1006, at 3:42-63, 1:21-22; see also Ex. 1004, Schonfeld Decl., at ¶¶188-
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`91).
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`As an initial matter, even under Patent Owner’s previously recited
`
`construction of “program portion,” Hatanaka discloses a first and second program
`
`portion as required by claim 18. A person of skill in the art would have understood
`
`that all video programs are made up of portions. Ex. 1012, Schonfeld Suppl. Decl.,
`
`at ¶¶8-10. For example, a video program may have portions A, B, and C.
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`Id.
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`Patent Owner has not pointed to anything in the ’945 Patent to preclude this
`
`reading of claim 18. Thus, Hatanaka’s disclosure of a video program necessarily
`
`discloses program portions.
`
`Further, as the Board correctly found, nothing in Hatanaka precludes storing
`
`a second program simultaneous to the step of decoding. See Dec., at 18. Patent
`
`Owner still fails to identify any disclosure in Hatanaka that precludes storing a
`
`second program of the first program simultaneous to the step of decoding. See id.
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`Instead, Patent Owner applies a narrow reading of Hatanaka in order to argue that
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`Hatanaka’s system is different.
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`As explained in the Petition and Dr, Schonfeld’s Declaration, Hatanaka
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`describes the recording and playback of broadcasts in Hatanaka and indicates that
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`playback can occur during recording. Dec., at 18; Petition, at 26; Ex. 1004,
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`Schonfeld Decl., at ¶¶188-191; Ex. 1012, Schonfeld Suppl. Decl., at ¶11 There is
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`nothing in Hatanaka that excludes this mode of operation or suggests it would not
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`have been obvious to one of skill in the art. Dec., at 18.
`
`First, Hatanaka discloses that the VCR storage device is one type of storage
`
`device that could be used in the system of Hatanaka. Ex. 1006, at 9:6-8. For
`
`example, multi-head VCRs were available at the time of the ’945 Patent and were
`
`capable of simultaneous storage and playback. Ex. 1012, Schonfeld Suppl. Decl.,
`
`at ¶12. That is, Patent Owner’s recitation of the state of the art of regarding
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`recording devices is incorrect. Response, at 24-25.
`
`In addition, other storage
`
`devices, like those mentioned in the ’945 Patent and Hatanaka (e.g., magnetic
`
`disks) were also available and capable of simultaneous storage and playback. Ex.
`
`1012, Schonfeld Suppl. Decl., at ¶¶13-15. Dr. Mangione-Smith concedes a system
`
`could use a multi-head VCR at the time of the ’945 Patent and that the ’945 Patent
`
`also discusses multi-disk units. Ex. 1011, Mangione-Smith Tr., at 43:5-22; Ex.
`
`1001, at 4:66. Such multi-head VCRs could simultaneously record and playback
`
`video data. Ex. 1012, Schonfeld Suppl. Decl., at ¶12.
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`Second, Hatanaka discloses the VCR storage device is only one option and
`
`could be replaced by a magnetic disk, optical disk, or semiconductor memory. Ex.
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`1006, at 9:6-8; Ex. 1012, Schonfeld Suppl. Decl., at ¶¶15-16. Dr. Mangione-Smith
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`admitted that Hatanaka discloses these other storage devices. Ex. 1011, Mangione-
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`Smith Tr., at 44:2-45:13, 90:15-92:10. Further, Dr. Mangione-Smith admitted that
`
`one of ordinary skill in the art would know how to replace the videocassette
`
`recorder in Hatanaka with those other storage devices. Id. at 92:3-10. As explained
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`by Dr. Schonfeld, one of skill in the art would understand that any of these
`
`recording devices disclosed in Hatanaka would work in the system disclosed by
`
`Hatanaka, and could simultaneously record and playback video data. Ex. 1012,
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`Schonfeld Suppl. Decl., at ¶¶12-17.
`
`Therefore, Petitioner has shown by a preponderance of the evidence that
`
`simultaneous record and playback of the same program would have been obvious
`
`in view of Hatanaka.
`
`C.
`
`Hatanaka’s System Would Not Require Significant Modifications
`
`Patent Owner argues that Hatanaka would require significant modifications
`
`to meet the challenged limitations of claim 18. Response, at 42. Any modifications,
`
`however, would have been minor and obvious to one of ordinary skill in the art, as
`
`discussed below.
`
`First, Hatanaka would not require an entire change to the data storage
`
`system. Response, at 43. As discussed above, Hatanaka discloses that the VCR is
`
`just one option for the storage device in the system disclosed in Hatanaka. Indeed,
`
`Patent Owner notes that it is only “the main disclosed recording medium” and,
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`15
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`Case IPR2015-00321
`Patent No. 7,095,945 B1
`Petitioner’s Reply
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`hence, not the only disclosed recording medium. Response, at 25. Magnetic disks,
`
`one of the options disclosed in Hatanaka, are also disclosed in the ’945 Patent. Ex.
`
`1001, at 4:66. One of skill in the art, upon reading Hatanaka, would understand
`
`that it would be a simple substitution of recording devices and no additional
`
`computer or bandwidth would be necessary. Ex. 1012, Schonfeld Suppl. Decl., at
`
`¶17.
`
`Second, Hatanaka would not need to add another packet controller nor
`
`would it require a redesign of the clock recovery system. Response, at 43-44.
`
`Patent Owner argues that “Hatanaka cannot simultaneously record and playback
`
`different portions of the same program, because block changeover switch 25
`
`presents such an operation.” Response, at 27. The switches of Hatanaka, however,
`
`do not preclude simultaneous storing and decoding. One of skill in the art would
`
`have found it obvious to change switch 25 faster, working at double the rate. Ex.
`
`1012, Schonfeld Suppl. Decl., at ¶18.
`
`Additionally, both the data clock 45 and fixed clock 46 could be made
`
`available directly to packet controller 18. Ex. 1012, Schonfeld Suppl. Decl., at
`
`¶18. Neither of these would require significant modifications of Hatanaka. Id.
`
`Accordingly, any modifications to Hatanaka would be minor and obvious to
`
`one of skill in the art. Ex. 1012, Schonfeld Suppl. Decl., at ¶¶16-18.
`
`16
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`Case IPR2015-00321
`Patent No. 7,095,945 B1
`Petitioner’s Reply
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`III. CLAIM 18 IS OBVIOUS OVER HATANAKA IN VIEW OF
`O’CONNOR
`
`Patent Owner contends that Hatanaka in view of O’Connor does not render
`
`obvious claim 18 based on Patent Owner’s alleged deficiencies in Hatanaka.
`
`However, as Patent Owner correctly notes, Petitioner only relies on O’Connor for
`
`the limitation: “storing a second program portion of the first program simultaneous
`
`to the step of decoding.” Response, at 47. And, as the title of O’Connor clearly
`
`states, O’Connor discloses “Time Shifting By Concurrently Recording And
`
`Playing A Data Stream.” Dec., at 19 (citing Ex. 1007, 3:23-28, 33-40, 3:62-4:4);
`
`Pettition, at 7 (citing Ex. 1007, Title). Thus, as with Patent Owner’s arguments in
`
`its Preliminary Response, these same arguments in the Patent Owner Response
`
`must fail.
`
`First, Patent Owner asserts that “O’Connor only discloses the concept of
`
`simultaneously recording and playing back different portions of the same program,
`
`but fails to provide details regarding the hardware that would be needed to
`
`accomplish this.” Response, at 6. Second, Patent Owner asserts that “O’Connor
`
`certainly does not disclose the specific structure recited in claim 18.” Response, at
`
`6. Each of these attacks on the Petition is unavailing.
`
`Notably, Patent Owner has not pointed to anything in claim 18 requiring a
`
`specific hardware or structure. O’Connor discloses the same level of detail as to its
`
`17
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`Case IPR2015-00321
`Patent No. 7,095,945 B1
`Petitioner’s Reply
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`structures as the ’945 Patent discloses. This can be seen in the comparison of Fig. 6
`
`of the ’945 Patent with Fig. 1 of O’Connor provided below.
`
`Incredibly, Dr.
`
`Mangione-Smith described O’Connor Fig. 1 as generic and high-level but refused
`
`to characterize Fig. 6 of the ’945 Patent in the same way. Ex. 1011, Mangione-
`
`Smith Tr., at 108:20-109:19, 110:21-111:7.
`
`Ex. 1001, Fig. 6 compared with Ex. 1007, Fig. 1.
`
`Petitioner also relies on O’Connor solely for the limitation of simultaneous
`
`recording and playback. As the Decision correctly notes, O’Connor discloses this
`
`limitation. Dec., at 19. Dr. Mangione-Smith agreed. Ex. 1011, Mangione-Smith
`
`Tr., at 107:15-20
`
`Therefore, Patent Owner’s arguments fail because Hatanaka in view of
`
`O’Connor renders obvious claim 18 of the ’945 Patent. As such, and as further set
`
`forth in the evidence of record, claim 18 is obvious over Hatanaka in view of
`
`18
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`Case IPR2015-00321
`Patent No. 7,095,945 B1
`Petitioner’s Reply
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`O’Connor.
`
`A.
`
`O’Connor Discloses Simultaneous Recording And Playback
`
`As discussed in the Petition and acknowledged by the Board, “O’Connor
`
`discloses a system in which a video stream is recorded simultaneously and
`
`retrieved from the storage unit for immediate playback or delayed playback.” Dec.,
`
`at 19 (citing Ex. 1007, 3:23-28, 33-40, 3:62-4:4). The Board also correctly notes
`
`that O’Connor’s “catch-up” mode “discloses a bypass in which, upon catch up,
`
`recording can be terminated and the incoming video stream can be provided to the
`
`video output directly.” Id. (citing Ex. 1007, at 5:49-67).
`
`The Petition explained that “O’Connor discloses simultaneous recording and
`
`playback of the video stream” and “[p]layback of a video steam includes decoding
`
`the video stream, thus, O’Connor discloses that a data is recorded and decoded at
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`the same time.” Petition, at 49 (citing Ex. 1007, at 4:9-24, 5:19-33; Schonfeld
`
`Decl., at ¶227,
`
`¶¶245-49). Dr. Mangione-Smith also agreed that O’Connor
`
`discloses simultaneous recording and playback. Ex. 1011, Mangione-Smith Tr., at
`
`107:15-20.
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`Therefore, Petitioner has shown by a preponderance of the evidence
`
`simultaneously storing and decoding would be obvious over Hatanaka in view of
`
`O’Connor.
`
`19
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`Case IPR2015-00321
`Patent No. 7,095,945 B1
`Petitioner’s Reply
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`B.
`
`Hatanaka Combined With O’Connor Would Function To
`Perform Claim 18
`
`Patent Owner’s argument that Hatanaka combined with O’Connor would not
`
`function properly is again based on a narrow reading of Hatanaka. Response, at
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`50. Patent Owner’s argument is based largely on its opinion that Hatanaka only
`
`discloses a digital VCR. Id. at 50-52. However, as explained above in Section
`
`II.B, other types of recording devices, which one of skill
`
`in the art would
`
`understand to be interchangeable with the digital VCR, are disclosed in Hatanaka.
`
`Both experts agree. Dr. Mangione-Smith explained that one of ordinary skill in the
`
`art would know how to replace Hatanaka’s digital VCR with the magnetic disk,
`
`optical disk, or semiconductor devices disclosed in Hatanaka. Ex. 1011, Mangione-
`
`Smith Tr., at 92:3-10. Further, as explained by Dr. Schonfeld, one of skill in the art
`
`would understand that any of these recording devices disclosed in Hatanaka would
`
`work in the system disclosed by Hatanaka and could simultaneously record and
`
`playback video data in view of the express disclosure in O’Connor. Ex. 1012,
`
`Schonfeld Suppl. Decl., at ¶20; see also Petition, at 49-50; Ex. 1004, Schonfeld
`
`Decl., at ¶250.
`
`Therefore, Petitioner has shown by a preponderance of the evidence that one
`
`of skill in the art would be motivated to combine O’Connor with Hatanaka to meet
`
`the limitation of claim 18 of simultaneously storing and decoding video data.
`
`20
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`Case IPR2015-00321
`Patent No. 7,095,945 B1
`Petitioner’s Reply
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`IV. DR. SCHONFELD’S DECLARATION SHOULD BE AFFORDED
`FULL WEIGHT
`
`Patent Owner disingenuously argues that Dr. Schonfeld’s declaration should
`
`be given no weight because it mirrors the Petition. To the contrary, Dr. Schonfeld
`
`provides expert opinions supported by technical analysis and factual support that
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`further bolster the arguments made in the Petition.
`
`First, Petitioner incorrectly argues that Dr. Schonfeld’s declaration repeats
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`the petition. Response, at 53 (citing Schonfel
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