Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 43
`
`Date Entered: June 23, 2016
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`
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`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
` ____________
`
`
`
`Before BRIAN J. McNAMARA, RAMA G. ELLURU, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73
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`
`

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`IPR2015-00321
`Patent 7,095,945 B1
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`
`BACKGROUND
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`On June 26, 2015, we instituted an inter partes review of claim 18 of U.S.
`
`Patent No. 7,095,945 B1 (Ex. 1001, “the ’945 Patent”"). Paper 20 (“Dec. to
`
`Inst.”). ATI Technologies ULC (“Patent Owner”) filed a Patent Owner Response.
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`Paper 23 (“PO Resp.”). In support of its positions, Patent Owner cites to the
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`declaration of Dr. William Mangione-Smith. Ex. 2003 (“Mangione-Smith Decl.”).
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`LG Electronics, Inc. (“Petitioner”) filed a Reply. Paper 29 (“Reply”). In support
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`of its positions, Petitioner cites to the declarations of Dr. Dan Schonfeld. Ex. 1004
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`(“Schonfeld Decl. 1”); Ex. 1012 (“Schonfeld Decl. 2”). Patent Owner filed a
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`Motion for Observations on Cross Examination (Paper 32), which Petitioner
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`opposed (Paper 35). An oral hearing was conducted on March 21, 2016, and the
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`transcript has been entered into the record. Paper 42 (“Tr.”).
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`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is
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`issued pursuant to 35 U.S.C. §318(a). We base our decision on the preponderance
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`of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Having reviewed the
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`arguments of the parties and the supporting evidence, we conclude that Petitioner
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`has demonstrated by a preponderance of the evidence that claim 18 of the ’945
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`Patent is unpatentable.
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`THE ’945 PATENT (EXHIBIT 1001)
`
`The ’945 Patent explains that a transport stream (“TS”) consists of fixed
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`length packets based on a four byte header and 184 bytes of data payload obtained
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`from larger data blocks. Ex. 1001, col. 1, ll. 61–64. Elementary Streams (“ES”)
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`are packetized into fixed or variable length packetized elementary stream (“PES”)
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`packets and PES packets are merged to create a program with its own system time
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`clock (“STC”). Id. at col. 1, l. 65–col. 2, l. 9. ES within one program have
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`periodic time stamps corresponding to the STC counter to indicate proper timing
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`IPR2015-00321
`Patent 7,095,945 B1
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`for each ES. Id. at col. 2, ll. 10–12. Figures 1–4 of the ’945 Patent illustrate
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`conventional signal structures. Id. at col. 2, ll. 49–50.
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`The ’945 Patent discloses a system and method for displaying multimedia
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`programs in real time and/or storing them for subsequent display, including as a
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`time shifted display in which the stored portion of the program is played back
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`while new portions of the program are being stored. Ex. 1001, Abstract. The ’945
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`Patent discloses three modes of operation: (1) a receive only mode, i.e., the
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`Transparent Mode, in which a digital transport stream receiver (“DTSR”) receives
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`a live broadcast, which is accessed immediately and not saved (id. at col. 3, ll. 45–
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`53); (2) a Continuous Time Shifting Mode, in which a received program is stored
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`in the form of full transport stream packets or PES packets; and (3) a Part-Time
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`Shifting Mode, in which a time shifted program is played at a user defined speed,
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`e.g., fast forward, while the host central processing unit (“CPU”) receives and
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`stores a real time event. Id. at col. 4, ll. 1–8.
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`Figure 6 is a block diagram of a system using two digital transport stream
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`receivers. Id. at col. 2, ll. 54–56. The ’945 Patent discloses several programmed
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`embodiments of the Part-Time Shifting mode using this system. Id. at col. 6, l. 13–
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`col. 7, l. 48.
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`
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`ILLUSTRATIVE CLAIM
`
`Claim 18 is the only claim at issue and is reproduced below:
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`18. A method comprising:
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`determining a mode of operation;
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`during a first mode of operation:
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`receiving a multiplexed packetized data stream at a first
`demultiplexer;
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`IPR2015-00321
`Patent 7,095,945 B1
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`selecting a first program from the multiplexed packetized data
`stream;
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`decoding a video portion of the first program for display;
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`during a second mode of operation:
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`receiving the multiplexed packetized data stream at the first
`demultiplexer;
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`selecting the first program from the multiplexed packetized data
`stream;
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`storing the first program;
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`during a third mode of operation:
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`receiving the multiplexed packetized data stream at the first
`demultiplexer;
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`selecting the first program from the multiplexed packetized data
`stream;
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`storing a first program portion of the first program;
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`providing the first program portion to a second demultiplexer;
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`selecting at the second demultiplexer a video portion of the first
`program portion;
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`decoding the video portion of the first program portion for
`display; and
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`storing a second program portion of the first program
`simultaneous to the step of decoding.
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`Ex. 1001, col. 9, ll. 33–61.
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`
`CLAIM CONSTRUCTION
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`In our Decision to Institute, we declined to construe the terms “first program
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`portion” and “second program portion” because their definitions were clear from
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`the antecedents in claim 18. Dec. to Inst. 6–7. Patent Owner contends that our
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`determination that claim 18 recites no limits on the first and second portions, other
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`than being a portion, e.g., some or all of the first program, is inconsistent with the
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`IPR2015-00321
`Patent 7,095,945 B1
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`plain and ordinary meaning of “portion” and the context of the claim, as the term
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`“portion” would have been understood by one of ordinary skill in the art. PO
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`Resp. 11–12. Patent Owner contends that the term “first program portion” should
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`be construed to mean “part” or “some” of the first program that is less than all of
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`the first program. Id. Patent Owner cites the dictionary definition of “portion” as
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`“a part or limited quantity of anything.” Id. at 13 (citing Ex. 2007, 3 (Webster’s
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`New World College Dictionary)). Patent Owner further argues that the “first
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`program portion” and the “second program portion” cannot encompass all of the
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`first program, as that would render claim 18’s third mode of operation
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`meaningless. Id. at 14–15. According to Patent Owner, because step (i) of the
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`third mode requires storing a “first program portion” and step (v) requires storing a
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`“second program portion,” if the term “portion,” in “first program portion”
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`includes storing an entire program in step (i), there would be nothing left to store in
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`step (v). Id.
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`Patent Owner distinguishes the second mode, in which a first program is
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`stored, from the third mode, in which a portion, i.e., a second portion of the first
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`program is stored. PO Resp. 13–16; see Tr. 22:19–24:23. The claim language
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`does not define a program or program portion. The specification refers to time
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`shifting a “viewed program,” states that PES packets from various ES are merged
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`together to form a program (service) with its own STC, and states that all ES
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`components of a program are synchronized with the STC counter to indicate the
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`proper timing of each ES. Ex. 1001, col. 1, ll. 12–13, col. 2, ll. 7–13. However, a
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`program is not defined by any limitations of time or content. Thus, neither the
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`language of claim 18 nor the description in the specification of the ’945 Patent
`
`places specific constraints on what constitutes a program or a portion of a program.
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`In the first and second modes in claim 18, the first program is selected and
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`decoded or stored, respectively. The distinction in the third mode of claim 18 is
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`that the first program portion is that portion of the first program that is stored and
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`whose video is provided to the second demultiplexer to select a portion of the first
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`program portion for display; the second program portion is that portion of the first
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`program that is being stored at the same time the video portion of the first program
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`portion is being decoded for display. Patent Owner’s claim construction argument
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`that there would be no need for the third mode if the entire program were recorded
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`applies only when there is no time shifting, i.e., when at all times the first program
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`portion being stored and provided to the second demultiplexer for decoding is the
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`same as the second program portion being stored. However, at all other times, the
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`third mode is required to provide a time shift between the overlapping parts of the
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`first program portion stored (the video portion of which is decoded at the second
`
`demultiplexer) and the second program portion being stored simultaneously with
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`the decoding. Under Patent Owner’s construction, claim 18 would not apply to a
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`system that continues to record when a user called away before the beginning of a
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`program activates the third mode and does not return until after the entire program
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`has been completed.
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` In the absence of specific definitions, claim 18 does not preclude the second
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`program portion from overlapping the entirety of the first program or the first
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`program portion, as would occur when a user, who is called away at the beginning
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`of a first program, activates the third mode for the duration of the first program.
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`Indeed, some overlap of the first program portion, and the second program portion
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`is required for the third mode to provide time shifting.
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`We construe only those claim terms that require analysis to conduct our
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`review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
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`Cir. 1999) (holding that “only those terms need be construed that are in
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`controversy, and only to the extent necessary to resolve the controversy”). For the
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`reasons discussed further herein, we determine that our analysis does not require
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`the express construction of other terms, and we decline to provide constructions
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`beyond those provided in our Decision to Institute. See Dec. to Inst. 6–7.
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`
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`ANALYSIS OF PRIOR ART CHALLENGES
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`Obviousness of Claim 18 Over Hatanaka
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`The ’945 Patent concerns an implementation of time-shifting. Time-shifting
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`is the recording of a program onto a storage medium to be watched at a later time.
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`PO Resp. 2. Petitioner contends that claim 18, which recites three modes of
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`operation, is obvious over Hatanaka because Hatanka discloses a first and second
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`demultiplexer and storage device and because simultaneous storing and decoding
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`would have been obvious in the context of such a system. Pet. 25–26. Patent
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`Owner notes that the ’945 Patent does not claim to have invented time-shifting, but
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`teaches a system and mechanism for efficient time-shifting using a structure that
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`includes two hardware demultiplexers. PO Resp. 3. According to Patent Owner,
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`claim 18 recites two demultiplexers, where the first demultiplexer stores new data
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`and maintains a current clock value, while the second demultiplexer provides for
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`the decoding and display of stored data. Id. (citing Ex. 1001, Abstract).
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`Patent 7,095,945 B1
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`In our Decision to Institute, we provided the following annotated version of
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`Figure 1 of Hatanaka:
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`
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`Dec. to Inst. 13.
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`As shown in Figure 1, Hatanaka discloses a system with digital broadcast
`
`receiver 1 that provides an NTSC encoded television video output and analog
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`audio output, analog receiver/encoder 3, and recording/playback device 2. Ex.
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`1006, col. 2, ll. 30–50, Fig. 1. The status of playback changeover switch 8, signal
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`changeover switch 17, and clock changeover switch 25 control signal routing. Id.
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`Fig. 1. For example, when playback changeover switch 8 is set to “a,” the digital
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`broadcast received at input 4 is routed through demultiplexer 9 to MPEG decoder
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`10, and clock recovery circuit 13 is controlled to have the same frequency as a
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`clock (the program reference clock (“PRC”)) used in compressing the video at the
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`broadcast station. Id. at col. 3, ll. 7–41. If the received signal is recorded,
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`changeover switch 17 is set at “c,” and packet control circuit 18 divides received
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`188 byte packet data into a ninety-two byte packet and a ninety-six byte packet,
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`and adds a time stamp. Id. at col. 3, ll. 42–63. Clock changeover switch 25 is set
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`to “e,” so that decoder clock 45 is input to packet control circuit 18. Id. at col. 4, ll.
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`48–50. In playback mode, the respective packets are output by packet control
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`circuit 18 in accordance with the time stamps. Id. at col. 4, ll. 43–45. During
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`reproduction, packet control circuit 18 cannot use decoder clock 45, so clock
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`changeover switch 25 is set to “f,” so that clock generator 24 provides fixed clock
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`46 to packet control circuit 18, and a packet is output at time generated by fixed
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`clock 46, allowing clock recovery circuit 13 to generate a stable clock. Id. at col.
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`4, ll. 51–64. When an analog video and audio are received, encoders 30 and 31
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`and multiplexer 32, which adds signals to comply with MPEG2 standards, deliver
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`multiplexed stream 44, similar to that of the output of interface 12 of digital
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`broadcast receiver 1, to packet control circuit 18 by setting signal changeover
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`switch 17 to “d”. Id. at col. 5, ll. 1–67. During recording and playback of the
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`received analog audio and video, clock changeover switch 25 is set to “f,” so that
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`packet control circuit 18 uses fixed clock 46. Id. at col. 6, ll. 8–15.
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`Petitioner provides the following, annotated version of Figure 6 of Hatanaka:
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`Petitioner’s Annotated Version of Fig. 6 of the ’945 Patent
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`
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`Pet. 25. By its annotations, Petitioner contends that Hatanaka discloses the recited
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`first demultiplexer as interface 12, the recited second demultiplexer as
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`demultiplexer 9, as well as the correspondence between the recited decoding step
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`and MPEG decoder 10 and the recited storing step and a storage unit. Pet. 24–25
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`(citing Ex. 1006, col. 3, ll. 16–56, col. 9, ll. 6–13 and Schonfeld Decl. ¶¶ 159–
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`187); see Tr. 37:13–21.
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`Patent Owner contends that Hatanaka is deficient as a reference to establish
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`obviousness for two reasons: (1) the digital VCR disclosed in Hatanaka is
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`incapable of simultaneously storing a second program portion of the first program
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`while decoding a video portion of the first program portion, and (ii) Hatanaka does
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`not use the same first demultiplexer across the three modes of operation. PO Resp.
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`3–4.
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`We begin with Patent Owner’s second contention, i.e., that Hatanaka does
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`not disclose the claimed first demultiplexer because Hatanaka does not use the
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`same first demultiplexer across the three modes of operation. PO Resp. 31–40.
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`According to Patent Owner, “Hatanaka fails to disclose a first demultiplexer that
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`receives a multiplexed packetized data stream and selects a first program from the
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`multiplexed data stream for all three modes of operation.” Id. at 31. Patent Owner
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`points to Hatanaka’s play operation, which uses demultiplexer 9 to provide the
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`multiplexed data stream to decoder 10, noting that interface 12 has no role in
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`Hatanaka’s play operation. Id. at 32. Patent Owner then describes the play
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`processing path in Hatanaka in which interface 12 is not responsible for
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`demultiplexing the broadcast stream and selecting the program sent to decoder 10.
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`Id. at 32–33. Patent Owner also challenges as ambiguous the testimony of
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`Petitioner’s expert, Dr. Schonfeld, suggesting that the first demultiplexer in
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`Hatanaka is some kind of combination of interface 12 and demultiplexer 9. Id. at
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`34–36. Patent Owner then returns to its argument that, when interface 12 receives
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`a multiplexed data stream and selects a program, the selected program is never
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`decoded for display, but instead is stored. Id. at 36–37.
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`Petitioner disputes Patent Owner’s contention that claim 18 requires the
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`same demultiplexer receive a multiplexed packetized data stream and select a first
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`program from the multiplexed packetized data stream. Reply 4. Petitioner notes
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`that claim 18 recites receiving a multiplexed packetized data stream at a first
`
`demultiplexer, but that Patent Owner’s expert acknowledged the broad language of
`
`claim 18 does not recite a literal requirement that the first demultiplexer do any
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`selecting. Reply 6 (citing Transcript of Deposition Dr. Mangione-Smith
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`(“Mangione-Smith Tr.”), Ex. 1011, 60:23–61:3); see also, Mangione-Smith Tr.
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`100:5–14 (Although Dr. Mangione-Smith testified that a person of ordinary skill
`
`would understand the claim language to require that the first multiplexer to select
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`the program, that specific language is not in the claim.).1
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`In patent law, “the name of the game is the claim.” In re Hiniker Co., 150
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`F.3d 1362, 1369 (Fed. Cir. 1998). Patent Owner’s argument is inconsistent with
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`the language of claim 18. Claim 18 does not require the first demultiplexer play
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`any specific role in either the first or second mode of operation, other than to
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`receive the packetized data stream. For each of the three modes, claim 18 recites
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`receiving the packetized data stream at the first demultiplexer. For the three
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`modes, claim 18 next recites selecting a first program from the demulitplexed data
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`stream. Claim 18 does not recite that the first program is selected by or output
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`from the first demultiplexer.
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`Hatanaka discloses a hard wired connection that routes the packetized signal
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`to interface 12 at all times. As Petitioner points out, Patent Owner’s expert, Dr.
`
`Mangione-Smith, testified that nothing precludes interface 12 from receiving the
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`signal during play mode. Reply 8 (citing Mangione-Smith Tr. 98:20–99:2). Thus,
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`we are not persuaded by Patent Owner’s arguments concerning modifications
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`required to Hatanaka for operation of the first demultiplexer in the three recited
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`operational modes. PO Resp. 44–46. We agree with Petitioner that the arguments
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`in the Patent Owner Response and Dr. Mangione-Smith’s interpretation of claim
`
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`1 Petitioner and Patent Owner rely on substantially similar assessments of the level
`of ordinary skill in the relevant art. Ex. 1004 ¶ 21; PO Resp. 11 (citing Ex. 2003
`¶¶ 33–34). Each of Petitioner’s and Patent Owner’s declarants appear to exceed
`the qualifications required for a person of ordinary skill in the relevant art (see Ex.
`1004 ¶¶ 5–13; Ex. 2003 ¶¶ 6–14), and we credit their testimony as to what such a
`person would have understood at the time of the invention.
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`18 are based on an improper reading of claim 18 that the first demultiplexer must
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`perform both the receiving and selecting steps.
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`We now turn to Patent Owner’s other contention, i.e., that the digital VCR
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`disclosed in Hatanaka is incapable of simultaneously storing a second program
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`portion of the first program while decoding a video portion of the first program
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`portion. In our Decision to Institute, we noted that the portions of Hatanaka cited
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`by Petitioner in its claim charts and the Schonfeld Declaration describe the
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`recording and playback of broadcasts in Hatanaka and indicate playback can occur
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`during recording, but that Hatanaka is silent about what information is being
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`retrieved from the storage medium and played back at the time a program is being
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`recorded. Dec. to Inst. 18. Petitioner cites Dr. Mangione-Smith’s testimony that
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`the same program sent to storage after interface 12 could be retrieved from storage
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`for playback, although it is not clear Dr. Mangione-Smith conceded the storage and
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`playback could be simultaneous. Id. at 9 (citing Mangione-Smith Tr. 104:9–14).
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`Petitioner acknowledges that Hatanaka does not explicitly disclose
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`simultaneous recording and decoding for display different portions of a program.
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`Tr. 9:4–11; see Reply 12. Instead, Petitioner contends that considering Hatanaka’s
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`disclosure it could be implemented in recording media other than a VCR using
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`magnetic tape (e.g., semiconductor memory), simultaneous recording and playback
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`of video data would have been obvious to one of ordinary skill. Pet. 26; see Tr.
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`8:22–9:22.
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`Patent Owner contends that claim 18 requires simultaneously recording and
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`play back of different portions of the same program that Hatanaka cannot provide.
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`PO Resp. 4, 26–30. Patent Owner notes that Hatanaka discloses a digital VCR
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`using switches for its clocking mechanisms to provide (i) a clock recovery circuit
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`for recording and (ii) a clock generator circuit for playback. Id. at 4. Patent Owner
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`argues that Hatanaka uses a clock changeover switch, such that only one clock is
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`available for Hatanaka’s packet controller circuit at any given time, thereby
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`preventing simultaneous recording and playback. Id. According to Patent Owner,
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`clock changeover switch 25 provides different clocks to packet controller 18 based
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`on whether the switch is in position “e” or “f.” Id. at 27. During recording, with
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`the contact set to “e,” decoder clock 45 generated by clock recovery circuit 13 is
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`used by packet controller 18 to generate time stamp information, but, during
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`playback, with the clock changeover switch set to “f,” fixed clock 46 from clock
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`generator 24 is input to packet controller 18 to assist in retrieving packets of data
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`from magnetic tape. Id. at 28. Patent Owner states that because “clock changeover
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`switch 25 is a standard switch, clock changeover switch 25 only allows packet
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`controller 18 to receive an individual input from either decoder clock 45 (contact
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`“e”) or clock generator 24 (contact “f”), not both simultaneously.” Id. at 29.
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`Patent Owner further argues that Hatanaka would require extensive modification to
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`the hard disk, packet controller, the clock recovery system, and demultiplexer to
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`overcome its deficiencies with respect to the obviousness of claim 18. PO Resp.
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`43–44.
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`As noted above, Petitioner does not argue that Hatanaka expressly discloses
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`simultaneous storing and decoding. Reply 12. Instead Petitioner asserts this
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`feature would have been obvious to one of ordinary skill because Hatanaka
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`discloses a system that allows a person to record and decode simultaneously
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`different portions of the same program. Id. Petitioner supports this argument by
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`noting that Hatanaka discloses it can employ other forms of video recording
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`devices, and that Patent Owner’s expert, Dr. Mangione-Smith, acknowledges that
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`one of ordinary skill would know how to replace Hatanaka’s digital VCR with
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`other recording devices available at the time, such as a multi-head VCR, optical
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`disk or semiconductor memory. Reply 14–15 (citing Mangione-Smith Tr. 92:3–
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`10). According to Petitioner, systems using multi-head VCRs and other storage
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`devices would work in the system disclosed by Hatanaka and would accommodate
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`simultaneous recording and playback of video data. Id. at 14 (citing Schonfled
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`Decl. 2 ¶¶ 12–17). On this point, Petitioner further notes that the ’945 Patent itself
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`discloses using multi-disk drive units to reduce latencies. Id.; Ex. 1001, col. 4, ll.
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`66–67. Thus, Petitioner has demonstrated that a person of ordinary skill would
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`have reason to apply Hatanaka to devices that record a second portion of a first
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`program at the same time a first portion of that program is being decoded for
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`display.
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`Petitioner also disputes Patent Owner’s contentions concerning the need for
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`extensive modifications to Hatanaka to meet the limitations of claim 18. Reply
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`15–16. Claim 18 does not recite any particular structure to carry out the claimed
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`method. For an obviousness analysis, prior art references must be “considered
`
`together with the knowledge of one of ordinary skill in the pertinent art.” In re
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571 F.2d
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`559, 562 (CCPA 1978)). Moreover, “it is proper to take into account not only
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`specific teachings of the reference but also the inferences which one skilled in the
`
`art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825,
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`826 (CCPA 1968).
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`Petitioner notes that a person of ordinary skill would recognize that the
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`switches of Hatanaka could be operated at frequencies that would permit
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`simultaneous recording and playback, or that output from both data clock 45 and
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`fixed clock 46 could be provided directly to packet controller 18 and/or
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`synchronized using a phase locked loop, thus eliminating the need for switch 25.
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`Pet 16; Schonfeld Decl. 2 ¶ 18. Although Patent Owner argues that these are
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`significant modifications to Hatanaka (Mot. For Observations 3), Petitioner notes
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`that any of the ways Dr. Schonfeld mentions for simultaneous recording and
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`playback could be done with the same circuit, as in Figure 1 of Hatanaka (Resp. to
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`Motion for Observations 3). Although it appears that some modifications would be
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`required, in the context of method claim 18, which is not limited to any specific
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`structure, Petitioner’s argument that such modifications would have been minor
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`and obvious to one of ordinary skill is persuasive. Reply 16 (citing Schonfeld
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`Decl. 2 ¶¶ 16–18).
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`Claim 18 also recites “selecting at the second demultiplexer a video portion
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`of the first program portion” and “decoding the video portion of the first program
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`portion for display.” During the oral hearing, Patent Owner argued that selecting
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`the claimed video portion is different from selecting the first program portion
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`because the first program portion includes more than just video, i.e., it includes
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`audio, and packet identifiers. Tr. 26:1–11. Hatanaka discloses that in recording,
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`the respective broadcasting, video, and audio packets of the broadcasting stream
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`are multiplexed on a time divisional basis. Ex. 1006, col. 6, ll. 33. As Petitioner
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`notes, Hatanaka discloses demultiplexer 9 selects only one of the digital and analog
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`broadcasts on the basis of the packet (PAT2) converted in the recording and inputs
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`the selected program packet to MPEG decoder 10 to obtain the video and the audio
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`of the desired system. Pet. 36; Ex. 1006, col. 6, ll. 46–52. Hatanaka also states
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`that demultiplexer 9, MPEG decoder 10, NTSC encoder 11, and D/A converter 14
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`also may be provided in the recording/playback device, so that the recording
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`2 A reference PAT describes the packet identification number (“PID”) of a packet
`in a PMT (PMT represents the PID of packets of video/audio which compose one
`program) corresponding to each program. Ex. 1006, col. 5, ll. 34–41, Fig. 5
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`playback device is capable of providing a reproduced video by itself. Ex. 1006,
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`col. 7, ll. 24–28.
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`In consideration of the foregoing analysis, Petitioner has demonstrated by a
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`preponderance of the evidence that claim 18 is unpatentable as obvious over
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`Hatanaka.
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`Obviousness Over Hatanaka and O’Connor
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`Recognizing that Hatanaka does not disclose explicitly the step of storing a
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`second program portion of the first program simultaneous with the step of
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`decoding, Petitioner cites O’Connor as disclosing simultaneous decoding and
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`storing. Pet. 49. Petitioner cites Figure 3 of O’Connor as showing an embodiment
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`for retrieving a portion of the video stream from a random access storage unit,
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`while continuing to record the incoming video stream. Pet. 52. O’Connor
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`discloses a time shifting system in which buffers allow incoming video to be
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`recorded while supplying enough data to the output display, permitting a viewer
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`who begins viewing a program after it started to watch the program from the
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`beginning, while continuing to record the rest of the program, or to replay scenes
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`during a live broadcast, while continuing to record the remainder of the broadcast.
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`Pet. 53 (citing Ex. 1007, col. 11, l. 14–col. 12, l. 10).
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`Patent Owner contends that O’Connor does not remedy the deficiencies of
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`Hatanaka. PO Resp. 47. Patent Owner argues that O’Connor does not disclose the
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`claimed first demultiplexer. Id. at 47–49. However, as discussed above, Hatanaka
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`discloses the recited first demultiplexer. Patent Owner acknowledges that
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`“O’Connor suggests simultaneous recording and playback,” but argues that
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`O’Connor does not disclose with sufficient specificity the actual hardware that
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`would be used to perform its time shifting. Id. at 48–49. According to Patent
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`Owner, if a person of ordinary skill attempted to integrate O’Connor’s suggestion
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`of the desirability to provide a pause/resume functionality that requires the ability
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`to record and playback portions of the same program simultaneously with
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`Hatanaka, it is unclear how the resulting system would operate. Id. at 50.
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`“It is well-established that a determination of obviousness based on
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`teachings from multiple references does not require an actual, physical substitution
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`of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012); In re Etter, 756
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`F.2d 852, 859 (Fed. Cir. 1985) (en banc) (noting that the criterion for obviousness
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`is not whether the references can be combined physically, but whether the claimed
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`invention is rendered obvious by the teachings of the prior art as a whole). In that
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`regard, one with ordinary skill in the art is not compelled to follow blindly the
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`teaching of one prior art reference over the other without the exercise of
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`independent judgment. Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889
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`(Fed. Cir. 1984); see also, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420–21
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`(2007) (stating that a person with ordinary skill in the art is “a person of ordinary
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`creativity, not an automaton,” and “in many cases . . . will be able to fit the
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`teachings of multiple patents together like pieces of a puzzle”).
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`Notwithstanding Patent Owner’s attacks on the testimony of Petitioner’s
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`expert, Dr. Schonfeld, as piecemeal (PO Resp. 52–56), Dr. Schonfeld has provided
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`testimony consistent with Hatanaka’s disclosure that devices, other than single
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`head magnetic tape VCRs, can be used, as discussed above (see Ex. 2008, 98:7–
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`18). Patent Owner acknowledges that, to the extent that Hatanaka does not
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`disclose simultaneously recording and decoding portions of a broadcast, such an
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`arrangement is suggested, by O’Connor. PO Resp. 48–49. As we noted above,
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`claim 18 of the ’945 Patent is not limited to a particular structure; nor does the
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`’945 Patent disclose a structure other than a single block diagram (Figure 6) the
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`elements of which, especially CPU 632, are described in functional terms. Ex.
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`1001, Fig. 6, col. 5, l. 7–col. 6. l. 67.
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`Therefore, we conclude that Petitioner has shown by a preponderance of the
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`evidence that claim 18 is unpatentable as obvious over the combination of the
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`teachings of Hatanka and O’Connor.
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`CONCLUSION
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`In consideration of the above, we conclude that Petitioner has demonstrated
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`by a preponderance of the evidence that claim 18 of the ’945 Patent is unpatentable
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`under 35 U.S.C. § 103 over Hatanaka alone and over the combination of the
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`teachings of Hatanaka and O’Connor.
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`In consideration of the above it is,
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`ORDER
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`ORDERED that claim 18 of the ’945 Patent is unpatentable, and
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`FURTHER ORDERED, that because this is a final written decision, parties
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`to the proceeding seeking judicial review of the decision must comply with the
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`notice and service requirements of 37 C.F.R. § 90.2.
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