UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC.
`Petitioner.
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`v.
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`ATI TECHNOLOGIES ULC.
`Patent Owner.
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`____________________
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`Case IPR2015-00321
`Patent 7,095,945 B1
`____________________
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`PATENT OWNER RESPONSE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2015-00321
`U.S. Patent No. 7,095,945
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1 
`
`I. 
`
`A. 
`
`B. 
`
`Statement of Relief Requested .............................................................. 1 
`
`Summary of Patent Owner’s Argument ................................................ 1 
`
`II. 
`
`BACKGROUND ............................................................................................. 7 
`
`A. 
`
`B. 
`
`’945 Patent Overview ............................................................................ 7 
`
`Claim 18 ................................................................................................ 9 
`
`III.  A PERSON OF ORDINARY SKILL IN THE ART (“POSA”). .................. 11 
`
`IV.  CLAIM CONSTRUCTION. ......................................................................... 11 
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`V.  ANALYSIS OF GROUNDS ......................................................................... 16 
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`A.  Hatanaka does not render obvious claim 18 of the ’945 patent .......... 17 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`Overview of Hatanaka .............................................................. 17 
`
`Hatanaka’s system will not simultaneous record and playback
`the same program, as required by claim 18. ............................. 26 
`
`Hatanaka does not disclose the claimed first demultiplexer. .... 31 
`
`Significant modifications to Hatanaka’s system would have be
`needed to cure all of Hatanaka’s deficiencies with respect to
`claim 18. .................................................................................... 41 
`
`B. 
`
`LG fails to establish that Hatanaka in view of O’Connor renders
`obvious claim 18. ................................................................................ 47 
`
`1. 
`
`2. 
`
`O’Connor does not remedy the deficiencies of Hatanaka with
`respect to the first demultiplexer. ............................................. 47 
`
`The combination of Hatanaka and O’Connor would not have
`functioned to perform claim 18’s third mode of operation
`without extensive modification and undue experimentation. ... 50 
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`IPR2015-00321
`U.S. Patent No. 7,095,945
`VI.  DR. SCHONFELD’S DECLARATION SHOULD BE AFFORDED
`LITTLE WEIGHT. ........................................................................................ 53 
`
`A.  Dr. Schonfeld’s deposition testimony highlights the absence of
`underlying facts or data to support his conclusions. ........................... 54 
`
`VII.  CONCLUSION ............................................................................................. 56 
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`IPR2015-00321
`U.S. Patent No. 7,095,945
`TABLE OF AUTHORITIES
`
`
`Cases 
`Application of McLaughlin,
`
`443 F.2d 1392 (C.C.P.A 1971) ...................................................................... 41
`
`Grain Processing Corp. v. Am. MaizeProds. Co.,
`
`840 F.2d 902 (Fed. Cir. 1988) ....................................................................... 45
`
`Hewlett-Packard Co. v. MCM Portfolio, LLC,
`
`IPR2013-00217, Institution Decision, Paper No. 10 (P.T.A.B.
`Sept. 10, 2013) ............................................................................................... 56
`
`
`In re Dembiczak,
`
`175 F.3d 994 (Fed. Cir. 1999) ....................................................................... 46
`
`In re Fine,
`
`837 F.2d 1071 (Fed. Cir. 1988) ..................................................................... 55
`
`In re Fritch,
`
`972 F.2d 1260 (Fed. Cir. 1992) ..................................................................... 55
`
`In re Kahn,
`
`441 F.3d 977 (Fed. Cir. 2006) ......................................................................... 7
`
`In re NTP, Inc.,
`
`654 F.3d 1279 (Fed. Cir. 2011) ..................................................................... 12
`
`In re Skvorecz,
`
`580 F.3d 1262 (Fed. Cir. 2009) ..................................................................... 12
`
`In re Wands,
`
`858 F.2d 731 (Fed. Cir. 1988). ...................................................................... 51
`
`Kinetic Techs., Inc. v. Skyworks Solutions, Inc.,
`
`IPR2014-00529, Institution Decision, Paper No. 8 (P.T.A.B. Sept.
`23, 2014) ................................................................................................. 53, 56
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`IPR2015-00321
`U.S. Patent No. 7,095,945
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`KSR Int’l Co. v. Teleflex Inc.,
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`550 U.S. 398 (2007)............................................................................ 7, 41, 50
`
`Microsoft Corp. v. Proxyconn, Inc.,
`
`789 F.3d 1292 (Fed. Cir. 2015) ..................................................................... 12
`
`NewRiver, Inc. v. Mobular Tech., Inc.,
`
`478 F. Supp. 2d 158 (D. Mass. 2007) ............................................................ 15
`
`Phonometrics, Inc. v. N. Telecom, Inc.,
`
`133F.3d 1459 (Fed. Cir. 1998) ...................................................................... 31
`
`Vitronics Corp. v. Conceptronic, Inc.,
`
`90 F.3d 1576 (Fed. Cir. 1996) ....................................................................... 13
`
`
`Statutes 
`
`35 U.S.C. § 316 .......................................................................................................... 1
`
`35 U.S.C. §§ 311–319 ................................................................................................ 1
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`
`
`Rules 
`
`37 C.F.R. § 42.100(b) .............................................................................................. 12
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`37 C.F.R. § 42.120 ..................................................................................................... 1
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`37 C.F.R. § 42.65 ..................................................................................................... 56
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`Exhibit Number Document Description
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`Exhibit List
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`IPR2015-00321
`U.S. Patent No. 7,095,945
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`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. (1998)
`“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.
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`Exhibit 5 from Deposition of Daniel Schonfeld, Ph.D.
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`“Digital video recorder,” from Wikipedia, obtained on
`September 28th, 2015;
`https://en.wikipedia.org/wiki/Digital_video_recorder
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`IPR2015-00321
`U.S. Patent No. 7,095,945
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`I.
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`INTRODUCTION
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`Patent Owner, ATI Technologies ULC (hereafter “Patent Owner”), hereby
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`respectfully submits this Patent Owner Response. This filing is timely under 35
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`U.S.C. §§ 311–319 and 37 C.F.R. § 42.120, because it was filed by September 28,
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`2015.
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`In instituting trial, the Board preliminarily determined that Petitioner, LG
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`Electronics Inc. (hereafter “LG”), demonstrated a reasonable likelihood of
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`succeeding in its challenge to claim 18 of U.S. Patent No. 7,095,945 (“the ’945
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`patent) as being obvious over U.S. Patent No. 6,397,000 to Hatanaka (“Hatanaka”)
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`and over the combination of Hatanaka and U.S. Patent No. 6,591,058 to O’Connor
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`(“O’Connor”). But Patent Owner demonstrates herein that LG’s characterization of
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`the teachings of Hatanaka are flawed and that O’Connor’s disclosure does not
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`make up for the deficiencies of Hatanka.
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`Statement of Relief Requested
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`A.
`Pursuant to 35 U.S.C. § 316, Patent Owner respectfully requests that the
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`Board find that LG has not met its burden of showing a prima facie case of
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`unpatentability of claim 18, and that claim 18 is therefore patentable over Hatanka
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`alone and over Hatanaka in combination with O’Connor.
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`Summary of Patent Owner’s Argument
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`B.
`The Board instituted trial on two grounds: (i) claim 18 as obvious over
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`Hatanaka; and (ii) claim 18 as obvious over Hatanaka in view of O’Connor.
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`IPR2015-00321
`U.S. Patent No. 7,095,945
`However, the art raised does not teach or disclose using two demultiplexers to
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`simultaneous record and playback portions of the same program.
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`LG mischaracterizes Hatanaka’s disclosure and this mischaracterization is
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`masked by conclusory expert statements. A careful reading and proper analysis of
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`Hatanaka reveals that Hatanaka’s system: (i) cannot simultaneous record and
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`playback different program portions of the same program; and (ii) does not use the
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`same first demultiplexer to play, record, and playback, as required by claim 18.
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`Further, a proper analysis of the combination of Hatanaka and O’Connor
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`demonstrates that: (i) O’Connor does not remedy Hatanaka’s deficiencies with
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`respect to the first demultiplexer; and (ii) the system resulting from the
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`combination of Hatanaka and O’Connor could not have performed claim 18’s third
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`mode of operation without making extensive non-obvious modifications.
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`The claimed invention: The ’945 patent is directed to a method for
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`displaying multimedia programs in real time and/or storing them for subsequent
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`display, including a time-shifted display in which the stored portion of a program
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`is played back while new portions of the same program are being stored
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`simultaneously. ’945 patent, Ex. 1001, Abstract.
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`Time-shifting is the recording of a program onto a storage medium to be
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`watched at a later time. Time-shifting provides a user/viewer powerful flexibility
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`to watch television or streamed programming at their convenience. For example, if
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`IPR2015-00321
`U.S. Patent No. 7,095,945
`a user/viewer is interrupted by a phone call during a television program, the
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`program can be recorded or paused for a few minutes. Then the program is played
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`back from the location of the pause, while the system continues recording the
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`television program. In that way, a user/viewer can avoid missing any portions of
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`the program. The ’945 patent does not claim to have invented time-shifting.
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`Rather, the ’945 patent claims a system and mechanism for efficient time-shifting
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`using a structure that includes two hardware demultiplexers. Specifically, claim 18
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`requires two demultiplexers, where one demultiplexer stores new data and
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`maintains a current clock value, while the second demultiplexer provides for the
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`decoding and display of stored data. ’945 patent at Abstract.
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`Ground 1: Patent Owner will establish that Hatanaka discloses a digital
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`video cassette recorder (VCR) that is incapable of performing the efficient time-
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`shifting functionality of claim 18. Hatanaka’s digital VCR is structurally different
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`than the claimed invention and is therefore unable to operate in such a way as to
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`meet the requirements of claim 18. Hatanaka’s digital VCR performs three
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`operations—(i) play; (ii) record; and (iii) playback of stored data. Hatanaka’s
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`operations use independent processing paths utilizing a series of switches, a clock
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`recovery component, and a clock generator component. These independent
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`processing paths prevent Hatanaka’s system from performing important features of
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`claim 18. Specifically, Hatanaka: (i) is incapable of simultaneously storing a
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`IPR2015-00321
`U.S. Patent No. 7,095,945
`second program portion of the first program while decoding a video portion of the
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`first program portion; and (ii) does not use the same first demultiplexer across all
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`three modes of operation.
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`First deficiency: Claim 18 requires simultaneously recording and playing
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`back different portions of the same program—a feature that Hatanaka’s digital
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`VCR cannnot perform for two reasons: (i) Hatanaka’s use of switches for its
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`clocking mechanisms; and (ii) the inability of a digital VCR, as disclosed by
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`Hatanaka, to simultaneously record and playback different portions of the same
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`program.
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`First, Hatanaka uses two different clocking mechanisms for record and
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`playback: (i) a clock recovery circuit for record; and (ii) a clock generator circuit
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`for playback. Each circuit generates a different clock and provides their respective
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`clocks to Hatanka’s packet controller. Hatanaka’s packet controller handles the
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`respective record and playback using the received clocks. Hatanaka uses a clock
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`changeover switch that controls whether the clock source is the clock recovery
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`circuit or the clock generator circuit. Consequently, only one clock is available for
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`Hatanaka’s packet controller circuit at any given time. This switch prevents
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`Hatanaka’s system from simulatenously performing record and playback.
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`Second, Hatanaka dicloses a digital VCR—a device that uses magnetic
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`tapes, which a POSA would have understood was incapable of simultaneous record
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`IPR2015-00321
`U.S. Patent No. 7,095,945
`and playback of different portions of the same program. Specifically, VCRs were
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`incapable of simultaneously reading and writing to different portions of a single
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`magnetic tape. And as a result, VCRs were limited to performing a single operation
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`on a single program—either, record or playback—never two operations at the same
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`time on different portions of the same program. This understanding is consistent
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`with Hatanaka’s disclosure. Although Hatanaka discloses that its system could use
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`different storage structures, a POSA would have understood that Hatanaka’s digital
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`VCR still could not simultaneously record and playback different portions of the
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`same program, because Hatanaka’s circuit configuration simply prevents this.
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`Second deficiency: Hatanaka’s three operations—play, record, playback—
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`do not use the same demultiplexer to receive a multiplexed packetized data stream
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`and select a first program from the multplexed packetized data stream, as required
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`by claim 18. Claim 18 recites three modes of operation and, during each mode of
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`operation, a first demultiplexer is used to receive a multiplexed packetized data
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`stream and select a first program from the multiplexed packetized data stream.
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`Claim 18 requires using the same first demultiplexer across all three modes of
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`operation—a configuration that is different than Hatanaka. Hatanaka’s three
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`operations use different processing paths and do not use the same demultiplexer
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`during each operation. Instead, Hatanaka uses one demultiplexer when playing a
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`broadcast stream, and a different demultiplexer when recording or playing back a
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`IPR2015-00321
`U.S. Patent No. 7,095,945
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`broadcast stream.
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`Due to Hatanaka’s structually different system, exenstive modifications to
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`Hatanaka’s system would be needed in order to meet claim 18’s requirements—
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`extensive modifications that would not have been obvious to a POSA. Modifying
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`Hatanaka’s digital VCR to perform simultaneous recording and playback and use
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`the same demultiplexer for each of its three operations, would have required a
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`complete reconstruction of Hatanaka’s system—a reconstruction that would not
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`have been obvious or achieved without using the ’945 patent as guidance.
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`Ground 2: Patent Owner will also establish that claim 18 is not obvious in
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`view of the combination of Hatanaka and O’Connor, because O’Connor does not
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`remedy the deficiencies of Hatanaka’s system. O’Connor only discloses the
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`concept of simultaneously recording and playing back different portions of the
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`same program, but fails to provide details regarding the hardware that would be
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`needed to accomplish this. And, O’Connor certainly does not disclose the specific
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`structure recited in claim 18. Thus, even if a POSA would have been motivated to
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`combine Hatanaka and O’Connor, LG has not provided any evidence that a POSA
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`would have arrived at the particular system recited in claim 18. In order for
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`Hatanka to provide the functionality disclosed by O’Connor, Hatanaka would have
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`still required extensive additional modifications, but there is no suggestion in either
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`Hatanaka or O’Connor regarding the additional modifications needed to arrive at
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`IPR2015-00321
`U.S. Patent No. 7,095,945
`the specific structure and operations required by claim 18.
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`Again, the ’945 patent does not purport to have invented time-shifting, only
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`a particular, efficient way to provide time shifting functionality using a specific
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`two demultiplexer arrangement. A non-obvious way that is not taught or suggested
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`by Hatanaka in view of O’Connor. LG fails to present any cogent reasoning or
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`evidence as to why a POSA would have or even could have modified or combined
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`Hatanaka and O’Connor with a reasonable expectation of success at arriving at the
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`claimed invention.
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`For the foregoing reasons, LG’s grounds for unpatentability are legally
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`deficient. See 37 C.F.R. § 42.104(b)(5); KSR Int’l Co. v. Teleflex Inc., 550 U.S.
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`398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). ATI
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`therefore respectfully requests that the Board find claim 18 patentable over
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`Hatanka and also over Hatanaka in combination with O’Connor. Patent Owner
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`supports its position with expert analysis from Dr. William Mangione-Smith. See
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`Ex. 2003.
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`II. BACKGROUND
`A.
`’945 Patent Overview
`The ’945 patent provides a novel approach to time-shifting, employing
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`multiplexed packetized data streams carrying real-time multimedia programs. ’945
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`patent at Abstract. The ’945 Patent teaches a system for video program time-
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`IPR2015-00321
`U.S. Patent No. 7,095,945
`shifting using reduced storage and CPU resource requirements as compared to the
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`prior art. Ex. 2003, Mangione-Smith Expert Declaration, ¶¶ 52-55.
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`A problem addressed by the ’945 patent is that time-shifting a digital signal
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`typically required the capture and storage of large data files. A few minutes of a
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`stored digital signal “require[d] a large amount of storage space. . . . The digital
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`signal … [could] be compressed to reduce the amount of storage space required.
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`However, compressing a video signal require[d] additional processing power,
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`resulting in additional costs.” ’945 patent, 1:22-27. The ’945 patent teaches an
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`innovative and efficient approach for time-shifting digital video data. Ex. 2003, ¶¶
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`52-55.
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`The ’945 patent’s system includes three modes of operation: (i) “Transparent
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`Mode,” where a digital data stream is received and immediately displayed; (ii)
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`“Continuous Time Shifting Mode,” where the digital data stream is received and
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`stored for later viewing; and (iii) “Part-Time Time-Shifting Mode,” where different
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`portions of the same program are simultaneously stored and decoded. ’945 patent,
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`3:45-4:14. During the Part-Time Time-Shifting Mode, two demultiplexers are
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`used, “so that one demultiplexer stores new data and maintains a current clock
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`value while the other decodes and displays the stored data.” ’945 patent at
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`Abstract. The result of this combination is a method and system for efficient time
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`shifting of multiplexed packetized data streams which reduces memory
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`IPR2015-00321
`U.S. Patent No. 7,095,945
`requirements and CPU utilization. ’945 patent at 6:45-61, 7:30-48; Ex. 2003, ¶¶
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`52-57.
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`B. Claim 18
`Claim 18 of the ’945 patent is recited below:
`
`A method comprising:
`determining a mode of operation;
`during a first mode of operation:
`
`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;
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`IPR2015-00321
`U.S. Patent No. 7,095,945
`selecting at the second demultiplexer a video portion of the first
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`program portion;
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`decoding the video portion of the first program portion for
`display; and
`
`storing a second program portion of the first program
`simultaneous to the step of decoding. ’945 patent at 9:33-61.
`
`Claim 18 recites three modes of operation and during each mode of
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`operation, the first demultiplexer is used to receive a multiplexed packetized data
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`stream. Ex. 2003, ¶ 67, See also ¶¶ 58-66, 68-70. Once the first demultiplexer
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`receives the multiplexed packetized data stream, the same first demultiplexer
`
`selects a first program of the multiplexed packetized data stream for all three
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`modes of operation. Ex. 2003, ¶ 67, See also ¶¶ 58-66, 68-70. After the first
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`demultiplexer receives a multiplexed packetized data stream and selects a first
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`program, the three modes of operation of claim 18 diverge in terms of processing.
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`Ex. 2003, ¶ 67, See also ¶¶ 58-66, 68-70.
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`During the first mode of operation (i.e., Transparent Mode), a video portion
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`of the selected first program is decoded for display. Ex. 2003, ¶¶ 58-59. During
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`the second mode of operation (i.e., Continuous Time Shifting Mode), the selected
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`program is stored. Ex. 2003, ¶¶ 60-63. And during the third mode of operation
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`(i.e., Part-Time Time-Shifting Mode), a first portion of the first program that has
`
`been stored, is retrieved and decoded. Ex. 2003, ¶¶ 64-69. Significantly, the
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`U.S. Patent No. 7,095,945
`decoding of the first portion of the first program occurs simultaneously with the
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`storing of a second portion of the first program. See Ex. 2003, ¶¶ 64-69.
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`The functionality of the third mode of operation allows, for example, a
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`system to pause and then resume playback of a “first portion” of a program while
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`the “second portion” of the program is simultaneously recorded. Ex. 2003, ¶ 69.
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`The simultaneous recording and playback takes place on different portions of the
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`same program in such a manner so as to minimize: (i) the bit-rate of the recorded
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`stream; (ii) the bandwidth through a host bus interface unit; and (iii) hard disk
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`movement. ’945 patent at 4:30-36.
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`III. A Person of Ordinary Skill in the Art (“POSA”).
`Based on the technology disclosed in the ’945 patent, one of ordinary skill in
`
`the art would have an undergraduate degree in electrical or computer engineering
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`or a closely related field. Furthermore, such a person would typically have two
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`years of industry experience related to the design and development of multimedia
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`computer systems. Ex. 2003, ¶¶ 33-34.
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`IV. Claim Construction.
`The Board should reconsider its construction of the terms “first program
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`portion” and “second program portion,” because the Board’s construction is
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`inconsistent with (i) the plain and ordinary meaning of the term “portion”; and (ii)
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`the context of claim 18, as would have been understood by a POSA. Ex. 2003, ¶¶
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`IPR2015-00321
`U.S. Patent No. 7,095,945
`71-78. The Decision states “claim 18 recites no limits on the first and second
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`portions, other than each being a portion, i.e., some or all, of the first program.”
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`Paper 20, Institution Decision, p. 7. Patent Owner disagrees. Any construction
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`that allows the “first program portion” and “second program portion” to mean all
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`of the first program is improper. Rather, a meaning of “part” or “some” of the first
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`program, where “part” or “some” is less than all of the first program, is the proper
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`construction. Ex. 2003, ¶¶ 71-78.
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`Patent Owner recognizes that claim terms in an IPR proceeding should be
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`construed under the broadest reasonable interpretation (“BRI”) standard. 37 C.F.R.
`
`§ 42.100(b). However, “[t]he protocol of giving claims their broadest reasonable
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`interpretation . . . does not include giving claims a legally incorrect interpretation.”
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`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (citing
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`to In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009)). Claims cannot be
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`construed so broadly as to ignore the specification and understanding of a person
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`of ordinary skill in the art. Id. The Federal Circuit has also stated that claim
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`construction requires considering both “intrinsic and extrinsic evidence,” and that a
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`reasonable “construction cannot be divorced from the specification and the record
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`evidence” including “extrinsic evidence show[ing] [w]hat a person of ordinary
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`skill in the art would recognize” regarding the subject matter claimed. In re NTP,
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`Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011).
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`Here, the Board’s construction of “first program portion” and “second
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`program portion” conflicts with the (i) dictionary definition of the term “portion”
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`and (ii) the meaning of the terms, as would have been understood by a POSA,
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`given the teachings of the specification and the literal language of claim 18. Ex.
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`2003, ¶ 72.
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`First, the dictionary definition for the term “portion does not encompass the
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`meaning “all.” Webster’s New World College Dictionary defines the term
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`“portion” as “a part or limited quantity of anything.” Webster’s New World
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`College Dictionary, Ex. 2007, p. 3. Any construction of the terms “first program
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`portion” and “second program portion” must take into consideration the meaning
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`of the term “portion.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
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`(Fed. Cir. 1996) (The starting point for construing a claim term is to “look to the
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`words of the claims themselves . . . to define the scope of the patented invention.”)
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`Thus, any construction of the terms “first program portion” and “second program
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`portion” that includes “all” of the first program would ignore the plain and
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`ordinary meaning of the term “portion.” Ex. 2003, ¶ 73. And such a construction
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`would be improper. Ex. 2003, ¶ 73.
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`Second, within the context of claim 18, the terms “first program portion”
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`and “second program portion” cannot encompass all of the first program, because
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`such a construction would render claim 18’s third mode of operation meaningless.
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`Claim 18’s third mode of operation recites:
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`(i) storing a first program portion of the first program;
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`(ii) providing the first program portion to a second demultiplexer;
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`(iii) selecting at the second demultiplexer a video portion of the first
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`program portion; and
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`(iv) decoding the video portion of the first program portion for display;
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`and
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`(v) storing a second program portion of the first program simultaneous to
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`the step of [decoding the video portion of the first program portion].
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`See ’945 patent at 9:53-61 (emphasis added).
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`As shown above, the last step of claim 18 requires that a second program
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`portion of the first program is stored while a video portion of the first program
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`portion is decoded. Ex. 2003, ¶ 74. However, a construction of the term “first
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`program portion” and “second program portion” which encompasses “all” of the
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`first program would not make sense to a POSA, given claim 18’s explicit
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`operations. Specifically, such a construction would not make sense given this last
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`step of claim 18. Ex. 2003, ¶ 75. For example, step (i) of claim 18’s third mode
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`(as shown above) requires “storing a first program portion,” and step (v) requires
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`“storing a second program portion.” If the terms first program portion and second
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`program portion both mean “all of the first program,” then the following scenario
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`would be described by the claim: The entire first program would be stored,
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`provided, selected, and decoded for display (steps (i)-(iv) of the third mode), but
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`then there would be nothing left to subsequently store, in accordance with step (v)
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`of the third mode of operation (i.e., storing a second program portion of the first
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`program). See ’945 patent at 9:53-61.
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`Since the first program is never received again, in order to make sense of
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`step (v) of the third mode, using a construction of “all of the first program,” the
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`system would be required to store the entire first program, read the entire first
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`program from storage, and then re-store the entire first program. Ex. 2003, ¶¶ 76-
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`77. A POSA would not have understood claim 18 to operate in such a manner. Ex.
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`2003, ¶¶ 76-77. Rather, a POSA would have understood that the only meaning of
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`“first program portion” and “second program portion” that fits within the context
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`of claim 18 is a meaning of “part” or “some” of the first program. Ex. 2003, ¶¶ 76-
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`77. A construction of “part” or “some” of the first program, where “part” or
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`“some” is less than all of a program, is consistent with both: (i) the plain and
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`ordinary meaning of the term “portion”; and (ii) the context of claim 18, as would
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`have been understood by a POSA. Ex. 2003, ¶ 78; see also NewRiver, Inc. v.
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`Mobular Tech., Inc., 478 F. Supp. 2d 158, 163 (D. Mass. 2007) (rejecting the
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`interpretation that the definition of ‘portion’ “encompasses a whole item,” where
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`“it is inconsistent with the ordinary meaning of the word, and nothing in the patent
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`itself suggests that the applicant meant to assign a meaning other than the
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`customary meaning to the term.”)
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`This construction is also consistent with the use of the modifiers “first” and
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`“second” that are used with the base term “program portion.” If “program portion”
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`is construed to include “all of a program,” then the modifiers “first” and “second”
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`become meaningless. But that cannot be the case. The patent drafter has clearly
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`evidenced an intent to have the two program portions (referenced by “first” and
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`“second”) be different from one another. So that proper construction of the term
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`“first program portion” is a portion of a program that is different from a “second
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`program portion,” thereby requiring the term “program portion” to mean a part or
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`some of a program that is “less than all of a program,” a construction that is
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`substantially identical to the construction originally submitted by Patent Owner in
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`its POPR. See Paper 19, 19; Ex. 2003, ¶¶ 79.
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`V. Analysis of Grounds
`LG argues that claim 18 is obvious over: (i) Hatanaka; and (ii) Hatanaka in
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`view of O’Connor. See Petition, Paper 2, p. 8. However, for at least the reasons set
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`forth below, there is no basis to conclude that claim 18 of the ’945 patent is
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`obvious under any of these theories.
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`IPR2015-00321
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`A. Hatanaka does not render obvious claim 18 of the ’945 patent
`In alleging that claim 18 of the ’945 patent is obvious in view of Hatanaka
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`alone, LG and their expert stretch and mischaracterize the teachings of Hatanaka—
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`often reading into Hatanaka much more than a POSA would have understood at the
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`time of the filing of the ’945 patent, November 6, 2000. The system disclosed by
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`Hatanaka is significantly different than the claimed invention of the ’945 patent.
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`As a result, Hatanaka’s system is missing key claimed features and cannot perform
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`the operations of claim 18 without significant modifications to its system—
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`modifications that would not have been obvious to a POSA at the time of the ’945
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`patent. Ex. 2003, ¶ 107.
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`1. Overview of Hatanaka
`Hatanaka describes a digital signal recording and playback device that
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`includes three sub-systems: a digital broadcasting receiving device (In