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
`
`PATENT OWNER’S MOTION FOR OBSERVATION
`ON CROSS EXAMINATION OF PETITIONER’S REPLY
`WITNESS DR. DANIEL SCHONFELD
`
`Mail Stop "PA TENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 223 13-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC.,
`Petitioner
`
`V.
`
`ATI TECHNOLOGIES ULC,
`Patent Owner
`
`Case IPR2015-00321
`Patent 7,095,945
`
`PATENT OWNER’S MOTION FOR OBSERVATION
`ON CROSS EXAMINATION OF PETITIONER’S REPLY
`WITNESS DR. DANIEL SCHONFELD
`
`Mail Stop "PA TENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 223 13-1450
`
`
`
`Case 1PR2015-00321
`U.S. Patent No. 7,095,945
`
`Exhibit Number Document Description
`
`EXHIBIT LIST
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
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`2006
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`2007
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`2008
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`2009
`
`2010
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`2011
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`2012
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`2013
`
`Affidavit of Aaron R. Fahrenkrog, dated January 15, 2015, filed
`and served concurrently herewith Patent Owner’s Motion for
`Pro Hac Vice Admission of Aaron R. Fahrenkrog Under 37
`C.F.R. § 42.10(c)
`Affidavit of William H. Manning, dated January 15, 2015, filed
`and served concurrently herewith Patent Owner’s Motion for
`Pro Hac Vice Admission of William H. Manning Under 37
`C.F.R. § 42.10(c)
`Declaration of Dr. William Mangione-Smith
`
`"A consumer digital VCR for digital broadcasting" by
`Hatanaka et al. (199 8)
`"A consumer digital VCR for advanced television" by
`Okamoto et al. (1993)
`"A consumer digital VCR for digital broadcasting" by
`Okamoto et al. (1995)
`Webster’s Dictionary Definition for "portion"
`
`Deposition Transcript of Daniel Schonfeld, Ph.D.
`
`Exhibit 5 from Deposition of Daniel Schonfeld, Ph.D.
`
`"Digital video recorder," from Wikipedia, obtained on
`September 28th 2015;
`https:Hen.wikipedia.org/wiki/Digital (cid:151) video recorder
`Intentionally Left Blank
`
`Intentionally Left Blank
`
`Transcript of Daniel Schonfeld, Ph.D dated February 12, 2016
`
`-1-
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`
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`Case 1PR2015-00321
`U.S. Patent No. 7,095,945
`
`Patent owner ATI Technologies LTLC respectfully asks the Board to consider
`
`this Motion for Observation on Cross-Examination of petitioner LU’s reply
`
`witness Dr. Daniel Schonfeld. Dr. Schonfeld’s reply declaration is Exhibit 1012,
`
`and the transcript of the cross-examination deposition is presented in its entirety as
`
`Exhibit 2013. The observations are set forth below.
`
`Observation 1: Dr. Schonfeld testified that switch 8 of Hatanka does not need
`to be toggled for simultaneous storing and decoding of different portions of
`the same program.
`
`Dr. Schonfeld testified that Hatanaka’s "switch 8 is independent of switch
`
`25" and that in order to meet claim 18’s simultaneous requirement, "there is no
`
`need for ... switch 8 to do any type of toggling." (Ex. 2013, 53:2:5, 53:18-22.)
`
`This is relevant to Petitioner’s theory that Hatanaka could perform simultaneous
`
`storing and decoding of different portions of the same program. Dr. Schonfeld
`
`testimony is relevant, because it is unsupported by Hatanaka. Hatanaka’ s system
`
`plays a live program when switch 8 is set to contact "a" and in order to record (i.e.
`
`store) the live program, Hatanaka’s switch 8 needs to be set to position "a" in order
`
`to receive the proper decoder clock 45 signal so that data packets can be stored
`
`with the correct timing information. (Hatanaka, 3:42-63 4:3 8-50, 3:16-32.) But
`
`Hatanaka’s switch 8 must be set to position "b" to play back (i.e., decoding)
`
`programming that was previously recorded (Hatanaka, 4:27-30) a requirement
`
`that precludes simultaneous storing and decoding of different portions of the same
`
`- 1 -
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`
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`Case 1PR2015-00321
`U.S. Patent No. 7,095,945
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`program, because switch 8 is unable to be in two different positions at the same
`
`time.
`
`Observation 2: Dr. Schonfeld testified, without any supporting evidence, that
`Hatanaka’s switches could be toggled at double the processing rate in order to
`simultaneously store and decode different portions of the same program.
`
`Dr. Schonfeld testified on cross-examination, without any supporting
`
`evidence, that Hatanaka’s switches could alternate positions at double the
`
`processing rate in order to perform simultaneous storing and decoding of different
`
`portions of the same program. (Ex. 2013, 6:22-7:11.) This is relevant to
`
`petitioner’s theory that Hatanaka could perform claim 18’s third mode of
`
`operation. (Petitioner’s Reply, p. 16). Dr. Schonfeld’s testimony is relevant for
`
`three reasons. First, Dr. Schonfeld and petitioner, for the first time, try to explain
`
`how Hatanaka’s switches could be toggled at double the processing rate to perform
`
`simultaneous storing and decoding of different portions of the same program - an
`
`explanation that is conclusory and not supported by any intrinsic or extrinsic
`
`evidence in the record. Second, Dr. Schonfeld does not cite to Hatanaka,
`
`O’Connor, or any other reference to support his opinion that toggling switches at
`
`double the processing rate would allow Hatanaka’ s VCR to perform claim 18’s
`
`third mode of operation. Third, when asked repeatedly to give an example of a
`
`processing rate, Dr. Schonfeld was unable or unwilling to do so.
`
`(See Ex. 2013,
`
`9:12-14:23.)
`
`-2-
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`
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`Case 1PR2015-00321
`U.S. Patent No. 7,095,945
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`Observation 3: Dr. Schonfeld testified that Hatanaka’s VCR did not need
`significant modifications to simultaneous store and decode different portions
`of the same program, but then lists significant modifications that would be
`needed.
`
`When asked how Hatanaka would perform simultaneous storing and
`
`decoding, Dr. Schonfeld speculated, without any support, about the different
`
`combination of modifications needed to Hatanaka’s system:
`
`. "the switches could alternate position at double the rate required for
`
`processing by either storage or playback." (Ex. 1012, ¶18);
`
`(cid:149) "using multiple heads in a VCR recording function over multiple
`
`tracks ... [using] multiple VCRs ... [using] a different storage device"
`
`(Ex. 2013, 66:18-24);
`
`(cid:149) having "data clock 45 and fixed clock 46 made available directly to
`
`packet control[ler] 18" (Ex. 2013, 54:22-25);
`
`(cid:149) inserting a phase lock loop into Hatanaka’s circuit and allowing the
`
`clock generator to send its clocks to the phase lock loop instead (Ex.
`
`2013, 64:2-7); and
`
`(cid:149) having "clock generator... [perform synchronization] with the data
`
`recovered from the program clock reference in the clock recovery
`
`circuit" (Ex. 2013, 64:23-65:1)
`
`-3-
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`
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`Case 1PR2015-00321
`U.S. Patent No. 7,095,945
`
`This is relevant to Dr. Schonfeld’s testimony that Hatanaka could perform
`
`simultaneous storing and decoding of different portions of the same program,
`
`without significant modifications: "I disagree with Dr. Mangione-Smith that
`
`Hatanaka would require significant modifications." (Ex. 2013, 18:7-9.)
`
`Observation 4: Dr. Schonfeld testified that he did not investigate whether the
`’945 patent disclosed any element capable of "selecting a first program from
`the multiplexed packetized data stream" other than a demultiplexer.
`
`With reference to the step in claim 18 of "selecting a first program from the
`
`multiplexed packetized data stream" (see, e.g., Ex. 2013, 22:1 (cid:151)28:19), Dr.
`
`Schonfeld testified on cross-examination that (1) the
`
`’945 patent "does disclose a
`
`demultiplexer" (Ex. 2013, 27:7-10), (2) "a demultiplexer may be used for
`
`selection" (Ex. 2013, 27:17-18), (3) other than a demultiplexer, he doesn’t recall
`
`whether the ’945 patent discloses anything else to do selection (Ex. 2013, 28:9-13),
`
`and (4) he never "investigated or looked at ever to find such a thing" when asked if
`
`the ’945 patent disclosed any other element that could do selecting (Ex. 2013,
`
`30:1-7). This is relevant to the petitioner’s new theory that a POSITA would have
`
`understood that claim 18 does not require that any particular element, such as the
`
`first demultiplexer, perform the selecting steps. (Petitioner’s Reply, pp. 4-6.) Dr.
`
`Schonfeld’s testimony is relevant because it confirms that (1) the
`
`1 945 patent
`
`discloses a demultiplexer capable of performing claim 18’s selecting step, (2) Dr.
`
`Schonfeld identified no other element in the
`
`’945 patent to do the selecting steps,
`
`4
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`
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`Case 1PR2015-00321
`U.S. Patent No. 7,095,945
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`and (3) a POSITA would have understood that claim 18’s selecting step is
`
`performed by the ’945 patent’s demultiplexer.
`
`Observation 5: Dr. Schonfeld provides no evidence to support his contention
`that a VCR could provide part-time time-shifting functionality and admitted
`that a VCR would lose a portion of a program being recorded if recording is
`paused.
`
`When asked whether a VCR could provide the part-time time-shifting
`
`functionality of the ’945 patent (Ex. 1001, 4:1-14), Dr. Schonfeld testified on
`
`cross-examination that "if you were to do it with a single VCR prior to that point in
`
`time, you could -- you could do -- you could record and then playback, but you
`
`would have to have multiple head VCRs, and there would be a certain -- there
`
`would be a small portion of the program that’s lost during the rewind which might
`
`take it a little bit of time, but other than that you could do -- you could do that with
`
`multiple head VCRs or multiple VCRs, without any loss of time." (Ex. 2013,
`
`37:13-23.) This testimony is relevant to the petitioner’s theory that a POSITA
`
`would understand that Hatanaka discloses claim 18’s third mode of operation
`
`(simultaneous storing and decoding of different portions of the same program).
`
`(Petitioner’s Reply, pp. 12-16.) The testimony is relevant because: (1) Dr.
`
`Schonfeld admits that "there would be a small portion of the program that’s lost
`
`during the rewind"; (2) Dr. Schonfeld admits that you would need multiple VCRs
`
`to perform the part-time time-shifting functionality; and (3) Dr. Schonfeld provides
`
`-5-
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`Case 1PR2015-00321
`U.S. Patent No. 7,095,945
`
`no evidence to support his contention that a VCR could provide the part-time time-
`
`shifting functionality.
`
`Observation 6: Dr. Schonfeld testified that Hatanaka discloses a VCR.
`
`Dr. Schonfeld testified on cross-examination that the primary reference-
`
`Hatanaka(cid:151)discloses a video cassette recorder (VCR). (Ex. 2013, 37:24-38:4.) This
`
`is relevant to the petitioner’s theory that a POSITA would have understood that
`
`Hatanaka could perform simultaneous storing and decoding of different portions of
`
`the same program.
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Michael B. Ray
`Registration No. 33, 997
`Lead Counsel for Patent Owner
`
`Date: February 26, 2016
`
`S
`
`
`
`Case 1PR2015-00321
`U.S. Patent No. 7,095,945
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF
`
`PETITIONER’S REPLY WITNESS DR. DANIEL SCHONFELD and the
`
`associated exhibit were served electronically via e-mail on February 26, 2016 in
`
`their entirety on the following counsel of record for Petitioner:
`
`Robert G. Pluta (Lead Counsel)
`Amanda K. Streff (Backup Counsel)
`MAYER BROWN, LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`rplutamayerbrown.com
`astreff@mayerbrown.com
`AMDIPRrnayerbrown.com
`
`Jamie B. Beaber (Backup Counsel)
`MAYER BROWN, LLP
`1999 K Street NW
`Washington, D.C. 20006
`jbeaber@mayerbrown.com
`
`Date: February 26, 2016
`
`1100 New York Avenue, N.W
`Washington, D.C. 20005
`(202) 371-2600
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & Fox
`P.L.L.C.
`
`c1
`
`Michael B. Ray
`Registration No. 33, 997
`Lead Counsel for Patent Owner
`
`-7-
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