Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 34
`Entered: June 15, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK L.L.C., and SIRIUS XM RADIO INC.,
`Petitioner,
`
`v.
`
`DRAGON INTELLECTUAL PROPERTY, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-004991
`Patent 5,930,444
`____________
`
`
`
`Before NEIL T. POWELL, STACEY G. WHITE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Case IPR2015-01735 has been joined with this proceeding
`
`
`571-272-7822
`
`
`
` Paper 34
`Entered: June 15, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK L.L.C., and SIRIUS XM RADIO INC.,
`Petitioner,
`
`v.
`
`DRAGON INTELLECTUAL PROPERTY, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-004991
`Patent 5,930,444
`____________
`
`
`
`Before NEIL T. POWELL, STACEY G. WHITE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Case IPR2015-01735 has been joined with this proceeding
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`
`I. INTRODUCTION
`DISH Network L.L.C. filed a Petition requesting inter partes review
`of claims 1–10, 13, and 14 of U.S. Patent No. 5,930,444 (Ex. 1001, “the
`’444 patent”). Paper 1 (“Pet.”). Dragon Intellectual Property, LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 6. Based on our review of
`these submissions, we instituted inter partes review of claims 1–4, 7–10, 13,
`and 14 of the ’444 patent on the proposed grounds of unpatentability under
`35 U.S.C. § 103. Paper 7 (“Dec.”). Specifically, we authorized this inter
`partes review to proceed as to the following grounds: (1) claims 1, 7–10,
`and 14 as obvious over Goldwasser2 and Yifrach;3 and (2) claims 2–4 and 13
`as obvious over Goldwasser, Yifrach, and Vogel.4 Id. at 20.
`After institution, Sirius XM Radio Inc. filed a petition requesting inter
`partes review of the ’444 patent on the same grounds asserted by Dish
`Network and a motion seeking joinder with this proceeding. Sirius XM
`Radio Inc. v. Dragon Intellectual Prop., LLC, Case IPR2015-01735, Papers
`1 (petition), 3 (motion for joinder). Patent Owner filed a partial opposition
`to Sirius XM’s motion for joinder. IPR2015-01735, Paper 7. We instituted
`an inter partes review and joined it with the case at bar. Paper 30.
`
`
`2 U.S. Patent No. 5,241,428, filed Mar. 12, 1991, issued Aug. 31, 1993
`(“Goldwasser”) (Ex. 1005).
`
` 3
`
` U.S. Patent No. 5,126,982, filed Sept. 10, 1990, issued June 30, 1992
`(“Yifrach”) (Ex. 1003).
`
` PCT Pub. WO 90/15507, published Dec. 13, 1990 (“Vogel”) (Ex. 1004).
`2
`
` 4
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`
`Patent Owner filed a Patent Owner’s Response (Paper 12, “PO
`Resp.”), and Petitioner5 filed a Reply (Paper 27, “Reply”). An oral hearing
`was conducted on February 9, 2016. A transcript of the oral hearing is
`included in the record. Paper 33 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`as to the patentability of claims 1–4, 7–10, 13, and 14. For the reasons
`discussed below, Petitioner has demonstrated by a preponderance of the
`evidence that claims 1–4, 7–10, 13, and 14 are unpatentable.
`
`A. Related Proceedings
`Petitioner informs us that the ʼ444 patent is at issue in Dragon
`Intellectual Property, LLC v. DISH Network L.L.C., No. 13–CV–2066
`(RGA) (D. Del). Pet. 1. In addition, the ’444 patent was at issue in
`IPR2014-01252, and a final written decision was entered in that proceeding
`finding claims 1, 2, 7, 8, 10, 13, and 14 to be unpatentable. Unified Patents
`Inc., v. Dragon Intellectual Prop., LLC, Case IPR2014-01252, slip op. at 21
`(Feb. 5, 2016) (Paper 64). An appeal of that case currently is pending before
`the Federal Circuit.
`
`B. The ’444 Patent (Ex. 1001)
`The ’444 patent discusses disadvantages in regards to known video
`cassette recorders’ (“VCRs”) inability to record and playback
`simultaneously. Ex. 1001, 1:47–2:35. The ’444 patent notes that a person
`may encounter interruptions such as telephone calls while viewing a
`program. Id. at 1:47–49. The ’444 patent explains that known VCRs allow
`
`
`5 We refer to Dish Network and Sirius XM Radio collectively as
`“Petitioner.”
`
`3
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`a user to record the portion of the program starting at the time of the
`interruption for later viewing. Id. at 1:50–58. Such VCRs, however, did not
`allow the user to watch immediately the remainder of the program from the
`point of the interruption to the end of the program. Id. at 1:50–2:14.
`The ’444 patent addresses these issues with an audiovisual recording
`and playback device that provides substantially simultaneous recording and
`playback, allowing user-controlled programming delay. Id. at Abstract. An
`embodiment of such a recording and playback device is depicted in Figure 3
`of the ’444 patent, reproduced below.
`
`
`Figure 3 depicts recorder 10 and its components, including memory unit 12;
`control circuit 14; inputs 22a, 22v, and 22m; outputs 24a, 24v, and 24m;
`tuner 26; modulator 32; and receiver 42. Id. at 3:54–64, 4:35–53, 4:59–5:4,
`6:7–18. An embodiment of a remote control unit for use with recorder 10 is
`depicted in Figure 5, reproduced below.
`
`4
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`
`
`Figure 5 shows remote control unit 46 and its components, including
`keyboard 16 and transmitter 44. Id. at 6:7–12, 6:25–28. Transmitter 44 of
`remote control unit 46 and receiver 42 of recorder 10 provide
`communication between remote control unit 46 and recorder 10. Id. at 6:8–
`28. Keyboard 16 has a number of keys, including record key 18 and
`playback key 20. Id. at 3:65–67.
`A user may actuate record key 18, for example, when a telephone call
`interrupts a program. Id. at 5:20–24. In response, control circuit 14 begins
`storing within memory unit 12 information received via input 22. Id. at
`5:24–25. When the interruption ends, the user may actuate playback key 20.
`Id. at 5:25–27. In response, the system retrieves and displays the recorded
`information, starting from the point of the interruption, while simultaneously
`continuing to store information from input 22. Id. at 5:25–36.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–4, 7–10, 13, and 14 of the ’444 patent
`of which claims 1 and 14 are independent. Claim 1 is illustrative of the
`challenged claims and is reproduced below:
`A recording and playback apparatus for the
`1.
`substantially immediate and seamless resumption
`5
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`
`of interrupted perception of broadcast6 program
`information based upon audio or video signals, or
`both, without missing the program information
`presented during the interruption, comprising:
`
`means for powering the apparatus;
`
`a keyboard having a record key and a playback
`key;
`
`a control circuit coupled responsively to said
`keyboard;
`
`a memory unit coupled responsively to said control
`circuit, said memory unit having a medium for
`storage of information, said storage medium
`having structure which enables substantially
`random access to information stored in said
`medium for retrieval of the stored information
`from said storage medium;
`
`at least one input, said input being connected to a
`user’s audio/video program signal source and
`also being coupled to said memory unit so as to
`enable program information presented by the
`signal source to be transferred to and stored in
`said memory unit; and
`
`at least one output, said output being connected to
`a user’s audio or video display device or both,
`said output further being connected to said
`memory unit so as to enable the transfer of
`program information from said memory unit to
`the user’s display device, said control circuit
`being
`configured
`so
`that
`substantially
`simultaneous
`recording and playback of
`program information is achieved when said
`
`6 A Certificate of Correction was issued March 5, 2013, replacing
`“perception of program information” with “perception of broadcast program
`information.” Ex. 1001, 14.
`
`6
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`
`record key is first actuated to begin a recording
`by initiating storage of the broadcast program
`information in said memory unit, and said
`playback key
`is subsequently and solely
`actuated to begin time delay playback of the
`recording from
`the beginning
`thereof by
`initiating retrieval of
`the stored program
`information in said memory unit, with the
`interval of the time delay being the same as the
`time elapsed between the actuation of said
`record key and the subsequent actuation of said
`playback key.
`
`Ex. 1001, 8:29–64.
`
`II. ANALYSIS
`
`A. Claim Interpretation
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012). Pursuant to
`that standard, the claim language should be read in light of the specification,
`as one of ordinary skill in the art would interpret it. In re Suitco Surface,
`Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, absent any special
`definitions, we give claim terms their ordinary and customary meaning, as
`would be understood by one of ordinary skill in the art at the time of the
`invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Any special definitions for claim terms must be set forth with
`reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`For purposes of the Decision to Institute, we construed the terms (1)
`“means for powering the apparatus,” (2) “means for wireless communication
`7
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`between said remote control and said control circuit,” and (3) “key means.”
`Dec. 8–9. Neither party raised any concerns regarding these constructions
`during trial. Based on our review of the full record, we discern no reason to
`modify or further discuss in this Final Written Decision our constructions for
`these claim phrases. For convenience, those claim constructions are
`reproduced in the table below.
`
`
`Term
`
`“means for powering
`the apparatus”
`(Claim 1)
`
`“means for wireless
`communication
`between said remote
`control and said
`control circuit”
`(Claim 3)
`
`“key means”
`(Claim 8)
`
`Ex. 1001,
`6:20–24
`
`Ex. 1001,
`6:7–18,
`Figs. 3, 4
`
`Support Recited Function / Corresponding
`Structure
`Function: “powering the apparatus”
`
`Structure: A/C power source or
`alternative power sources such as D/C
`power or batteries
`Function: “wireless communication
`between said remote control and said
`control circuit”
`
`Structure: Receiver and transmitter
`interposed between the control circuit
`and keyboard for communication there
`between
`Function: “enabling user control of the
`rate or sequence or both of transfer of
`program information from said memory
`unit to the user’s display device, and such
`variation of rate or sequence results in a
`corresponding variation of the interval of
`the time delay”
`
`Structure: keys on the keyboard that,
`when actuated, cause the control circuit
`to vary the rate or sequence or both of the
`transfer of program information from the
`memory unit to the user’s display device
`
`Ex. 1001,
`6:24–45,
`Fig. 5
`
`8
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`B. Obviousness of Claims 1, 7–10, and 14 over Goldwasser and Yifrach
`Petitioner alleges that claims 1, 7–10, and 14 of the ’444 patent are
`unpatentable under 35 U.S.C. § 103 over Goldwasser and Yifrach. Pet. 41–
`56. Petitioner relies on a Declaration from Anthony J. Wechselberger.
`Ex. 1010. For the reasons discussed below, we conclude that Petitioner has
`established by a preponderance of the evidence that claims 1, 7–10, and 14
`would have been obvious over Goldwasser and Yifrach.
`1. Overview of Goldwasser (Ex. 1005)
`Goldwasser is a United States Patent titled “Variable-Delay Video
`Recorder” that issued August 31, 1993, from an application filed March 12,
`1991. Ex. 1005, at [22], [45], [54]. Goldwasser describes “[a] video
`recorder and playback device allowing simultaneous recording and playback
`of program material.” Id. at Abstract. One of the problems that Goldwasser
`purports to solve is the inconvenience that arises from the inability of
`conventional VCRs to allow a user to view material as it is being recorded.
`Id. at 1:29–42. For example, “often one will be watching a particular
`program when one must temporarily cease watching it, for example, to take
`a telephone call or the like. It would obviously be convenient to be able to
`record the program from that point forward, complete the telephone call, and
`simply watch the remainder delayed by the length of time of the
`interruption.” Id. at 1:43–49.
`One embodiment disclosed by Goldwasser is a “‘random access’
`embodiment” whereby the video signal is converted to a digital signal and
`recorded in random access memory, which could include magnetic or optical
`media or solid state memory. Id. at 2:16–21. This random access
`embodiment is depicted in Figure 3 of Goldwasser, reproduced below.
`
`9
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`
`
`Goldwasser’s Figure 3 is a schematic diagram of its random access
`embodiment. Id. at 3:49–50. The recording device depicted in Figure 3
`includes signal sampling circuit 51 and analog-to-digital converter 52, which
`are used together to create digital samples of the video signal being record.
`Id. at 6:25–28. These samples are stored in random access memory 53. Id.
`at 6:28–29. Address controller 58 controls the storage of these digitized
`video samples and is responsive to commands from user control panel 50.
`Id. at 6:44–48. Playback can take place from any portion of the memory at
`any speed without impacting the recording. Id. at 6:38–40.
`2. Overview of Yifrach (Ex. 1003)
`Yifrach is a United States Patent titled “Radio Receiver and Buffer
`System Therefore” that issued June 30, 1992, from an application filed
`September 10, 1990. Ex. 1003, at [22], [45], [54]. Figure 2 of Yifrach is
`reproduced below.
`
`10
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`
`
`Figure 2 is a block diagram of an embodiment that “enables the listener not
`only to hear the radio broadcasts in a real-time manner, but also to freeze a
`portion of the broadcast for later playback.” Id. at 4:14–18. Yifrach’s
`“Normal-Listening Mode” allows users to listen to a broadcast in real time.
`Id. at 3:40–44. A user may interrupt the real-time broadcast by depressing
`freeze button 32. Id. at 4:46–47. Freeze button 32 controls logic circuit 31,
`and depressing this button causes the system to enter Freeze Mode. Id. In
`Freeze Mode, the last sixty seconds of the broadcast are stored in further
`storage device 30, and cyclic storage device 22 continues to store the audio
`signal. Id. at 4:51–56. The listener can playback the frozen portion of the
`broadcast at any time by depressing Playback button 33, which controls
`logic circuit 31 and causes the device to enter Playback Mode. Id. at 4:63–
`67. After the frozen portion has been played, the system automatically
`returns to Normal-Listening Mode. Id. at 5:3–6.
`11
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`
`3. Analysis
`Independent claim 1 recites a recording and playback apparatus for
`the substantially immediate and seamless resumption of interrupted
`perception of program information. Ex. 1001, 8:28–31. Independent claim
`14 recites a method for enabling the substantially immediate resumption of
`perception of broadcast program information. Id. at 10:4–6. We analyze
`these claims together because there is considerable overlap as to their
`limitations.
`Petitioner relies upon Goldwasser’s teaching for essentially all of the
`elements of independent claims 1 and 14 with the exception of the claimed
`keyboard with a record and playback key. Tr. 5:19–21. Specifically,
`Petitioner relies upon Goldwasser’s teaching of a recording device that
`allows for simultaneous playback and recording of a broadcast program.
`Pet. 41–42; see also PO Resp. 10 (describing Goldwasser as disclosing a
`device in which “reading and writing [of video signals] may be done
`simultaneously”). As described in Goldwasser, recording is controlled by
`address controller 58, which is responsive to commands received from user
`control panel 50. See Pet. 40–41; see also PO Resp. 10–11 (noting that the
`address controller controls where video signals are stored and is responsive
`to the user control panel). The user control panel may be used to send an
`interrupt that varies the playback of video recorded by the device. Ex. 1005,
`7:7–18. Goldwasser, however, does not provide a detailed description of the
`user control panel and thus lacks an explicit teaching of a keyboard.
`Pet. 43–46. Thus, Petitioner relies upon the teaching of Yifrach, specifically
`its freeze and playback buttons, to disclose the claimed keyboard with
`playback and record keys. Id. Petitioner’s contentions and evidence
`
`12
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`demonstrate persuasively that the combination of Goldwasser and Yifrach
`teach or suggest the limitations of claims 1 and 14.
`Patent Owner raises several arguments in response to Petitioner’s
`assertions. Specifically, Patent Owner contends that (1) the cited art does
`not teach the recited keyboard having a record key and a playback key (PO
`Resp. 12–23), (2) the cited art does not teach the recited control circuit (id. at
`23–29), and (3) there is no motivation to combine Goldwasser and Yifrach
`(id. at 29–38). We shall address each argument in turn.
`First, Patent Owner argues that “a keyboard having a record key and a
`playback key” is not taught by the cited art. Id. at 12–23. Petitioner relies
`upon Goldwasser to teach a “user control panel” that controls the location
`from which video is stored and by which a user can control the recording
`and playback of video. Pet. 45 (citing Ex. 1005, 6:44–49; Ex. 1010 ¶ 132).
`Goldwasser, however, does not provide details as to the user control panel.
`In addition, Goldwasser indicates that a key pad could be used to control at
`least one embodiment of its device. See Ex. 2004, 43:16–44:5; Ex. 1005,
`8:9–13 (describing a “multiple tape” embodiment that is controlled by a
`microprocessor “responsive to user controls input at a key pad, remote
`control device or the like”). As with the aforementioned user control panel,
`however, there is no discussion or description of what is to be found on this
`key pad. See Ex. 2001 ¶ 27. Goldwasser discloses that a user can pause a
`recording and resume playback, but it does not provide specifics as to the
`user interface that allows the user to perform these actions. See Pet. 45–46
`(citing Ex. 1005, Abstract, 1:56–60). Thus, Petitioner relies upon Yifrach to
`provide a teaching of record and playback keys. Id. at 46. Yifrach teaches
`freeze button 32 and playback button 33, which, in conjunction with the
`
`13
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`teachings of Goldwasser’s user control panel, are relied upon to teach the
`claimed record and playback buttons. Pet. 45.
`Petitioner cites Yifrach’s freeze and playback keys, which are used in
`“Normal-Listening Mode.” Pet. 46 (citing Ex. 1003, Fig. 2, 4:63–5;6;
`Ex. 1010 ¶¶ 135–137). In Normal-Listening Mode, audio is stored
`continuously to cyclic storage device 22. Ex. 1003, 3:18–24. This buffering
`permits the user to hear the broadcast in a continuous manner and allows the
`user to rehear portions of the broadcast on demand. Id. at 1:52–58; Ex. 1010
`¶ 136. The freeze button allows users to record the last sixty seconds of the
`broadcast to another buffer, the further storage device. This recorded audio
`may then be played back when the user depresses the playback button.
`Pet. 45 (citing Ex. 1003, 4:63–5:6, Fig. 2). Under the Petitioner’s proposed
`ground, this teaching is to be viewed in conjunction with the teaching of
`Goldwasser, which allows the user “to pause playback for a variable period
`of time without interrupting the recording.” Ex. 1005, Abstract; Pet. 44.
`Patent Owner argues that these teachings are insufficient to render
`obvious the claimed record and playback key. According to Patent Owner,
`Yifrach’s freeze key is “manifestly different” from the recited record key.
`PO Resp. 17 (citing Ex. 2001 ¶¶ 33–37). As noted by Patent Owner,
`actuating Yifrach’s freeze key causes the device to “transfer[] the already
`recorded content in the cyclic storage device to the further storage device.”
`Id. (citing Ex. 2004, 60:19–61:3). Patent Owner’s declarant, Mr. Adam
`Goldberg, asserts that a button that causes the transfer of previously
`recorded data to another storage device does not render obvious the claimed
`record button because it does not “begin a recording.” Ex. 2001 ¶¶ 36–39;
`PO Resp. 19. Patent Owner asserts that transferring previously recorded
`
`14
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`data from one buffer to another would have been understood by one of
`ordinary skill in the art to be copying and not recording. PO Resp. 19–20.
`Petitioner responds by stating that “the functionality that occurs in
`Yifrach when these buttons are activated is irrelevant to the Grounds of
`unpatentability. As to the claimed functionality, Petitioner relies on the
`control circuit functionality of Goldwasser, not Yifrach.” Reply 3 (citing
`Pet. 43–47, 56). In other words, Petitioner is relying upon Yifrach to teach
`the two-button interface and not the actions that occur when those buttons
`are pushed. Petitioner’s declarant Mr. Wechselberger testifies that “the use
`of a separate ‘Freeze’ and ‘Playback’ buttons, as disclosed in Yifrach . . .
`was a well-known user interface design choice to a person of ordinary skill
`in the art at the time of the alleged invention.” Ex. 1010 ¶ 91. Yifrach is a
`reference that uses such a two-button interface. Goldwasser included a
`detailed description of the simultaneous recording and playback found in the
`limitations of claims 1 and 14. Thus, when the teachings are viewed
`together, they would have taught the whole of the disputed limitations.
`“Non-obviousness cannot be established by attacking references individually
`where the rejection is based upon the teachings of a combination of
`references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
`(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Therefore, our
`analysis must go further than reviewing what is taught by each isolated
`reference. Instead, we must focus on what one of ordinary skill in the art
`would learn from the combination of teachings found in the cited references.
`Id. Pursuant to such analysis, we find that Yifrach’s playback and freeze
`keys combined with Goldwasser’s simultaneous recording and playback
`
`15
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`would have taught one of ordinary skill in the art the claimed “keyboard
`having a record key and a playback key.”
`Patent Owner further notes that Goldwasser discloses starting a
`recording using stored instructions and not by actuating a record key. PO
`Resp. 22 (citing Ex. 1005, Abstract). According to Patent Owner, one of
`ordinary skill in the art would not have been motivated to modify
`Goldwasser’s user control panel to use keys instead of stored instructions.
`Id. Goldwasser, however, does not describe the user control panel’s user
`interface. Mr. Wechselberger testified that the use of buttons as disclosed in
`Yifrach “was a well-known user interface design choice to a person of
`ordinary skill in the art at the time of the alleged invention.” Ex. 1010 ¶¶ 91,
`151. Mr. Wechselberger also testified that record and playback buttons were
`found on all VCRs since at least the 1980s. Id. ¶ 26. We find that it would
`not have been beyond the skill of an ordinarily skilled artisan to implement
`Goldwasser’s user control panel with keys as recited in Yifrach. See KSR
`Int’l v. Teleflex, 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to
`improve one device, and a person of ordinary skill in the art would recognize
`that it would improve similar devices in the same way, using the technique is
`obvious unless its actual application is beyond his or her skill.”). Thus, we
`find that one of ordinary skill in the art would have been motivated to
`implement Goldwasser’s user control panel with buttons as described in
`Yifrach.
`Second, Patent Owner asserts the cited art does not teach the recited
`control circuit. PO Resp. 23–29. Patent Owner argues that Goldwasser’s
`address controller is not described as being configured to perform the actions
`
`16
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`recited in the claims. Id. at 25. Claim 1 recites a control unit responsively
`coupled to a keyboard and a memory unit in which
`said control circuit being configured so that substantially
`simultaneous recording and playback of program information is
`achieved when
`
`said record key is first actuated to begin a recording by
`initiating storage of the broadcast program information in said
`memory unit, and
`
`said playback key is subsequently and solely actuated to begin
`time delay playback of the recording from the beginning thereof
`by initiating retrieval of the stored program information in said
`memory unit,
`
`with the interval of the time delay being the same as the time
`elapsed between the actuation of said record key and the
`subsequent actuation of said playback key.
`
`
`Ex. 1001, 8:52–64. Thus, the claims require that the control circuit be
`configured (1) to achieve substantially simultaneous recording and playback
`when the record key is actuated to begin a recording; (2) to begin playback
`when the playback key is subsequently and solely actuated; and (3) such that
`the interval of the time delay is the same as the time that has elapsed
`between actuating the record and playback keys.
`Patent Owner argues that “[b]ecause Goldwasser lacks a record and a
`playback key, it cannot disclose the control circuit of the ’444 Patent.” PO
`Resp. 24. In an obviousness analysis, however, a single reference’s lack of
`disclosure as to an aspect of the claims is not fatal to an asserted ground of
`unpatentability. As discussed above, we look to the teachings of the cited
`references to see what one of ordinary skill in the art would have learned
`from the combination of teachings put forth by the Petitioner. Here, we have
`
`17
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`found that the record and playback keys would have been obvious in light of
`the teachings of Goldwasser and Yifrach. The analysis as to whether
`Goldwasser and Yifrach would have taught the recited control circuit flows
`from our previous discussion of the record and playback keys. Thus, we
`look to see whether Goldwasser teaches the recited configuration for the
`control circuit, and we do this in light of our finding that the combination of
`Goldwasser and Yifrach would have taught the recited keys.
`Goldwasser discloses
`[a] video recorder and playback device allowing simultaneous
`recording and playback of program material, including means
`for controllably varying a time delay between the recording and
`playback of recorded material. This allows, for example,
`playback of previously recorded material to be temporarily
`stopped and then resumed without interrupting the recording of
`new material.
`Ex. 1005, Abstract. According to Petitioner, Goldwasser describes address
`controller 58, which controls the location where video signals are stored or
`accessed and is responsive to commands received from user control panel
`50. See Pet. 47 (citing Ex. 1005, Figs. 3, 4; Ex. 1010 ¶ 139). Petitioner
`argues that this disclosure teaches or at least suggests the claimed control
`circuit. Id. We find that Goldwasser’s address controller, when viewed in
`light of Yifrach’s two-button interface and Goldwasser’s user control panel,
`would have taught one of ordinary skill in the art a control circuit configured
`to allow for simultaneous recording when the record key is actuated to begin
`a recording and playback when the playback key is subsequently and solely
`actuated to begin playback. We also find that these disclosures would have
`taught a control circuit configured such that the interval of the time delay is
`the same as the time that has elapsed between actuating the record and
`
`18
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`playback keys. Thus, we find that the cited art would have taught the
`claimed control circuit.
`Finally, Patent Owner contends that one of ordinary skill in the art
`would not have been motivated to combine the teachings of Goldwasser and
`Yifrach. PO Resp. 29–38. Patent Owner argues that Petitioner has not
`provided sufficient evidence to support its assertion that one of ordinary skill
`would have combined these references. Id. at 29. Mr. Goldberg testifies on
`behalf of Patent Owner that combining Yifrach’s freeze and playback
`buttons with Goldwasser’s control panel would not result in the claimed
`invention. Id. at 32 (citing Ex. 2001 ¶¶ 37, 55, 56). In addition, Patent
`Owner contends that Goldwasser and Yifrach are directed to different
`problems in different fields of inquiry and, thus, a person of ordinary skill
`would not have combined them. Id. at 34–35.
`Petitioner responds by stating that Patent Owner has mischaracterized
`Petitioner’s argument. Reply 7. Petitioner is not arguing that Goldwasser
`should be modified to include the freeze and playback functionality of
`Yifrach; instead, Petitioner’s ground is directed to implementing
`Goldwasser’s user control panel with a two-button user interface as
`described in Yifrach. Id. at 7–8. As discussed above, we find that one of
`ordinary skill in the art would have been motivated to implement
`Goldwasser’s user control panel with buttons and that such a modification
`would have been within the knowledge of one of ordinary skill in the art.
`As to the problems addressed by the Goldwasser and Yifrach, Patent
`Owner asserts that “‘problems’ articulated in the references demonstrate that
`they are not ‘the same,’ or even similar in a meaningful way.” PO Resp. 34.
`We disagree with Patent Owner’s assertion. Yifrach’s device is designed to
`
`19
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`remedy the problem of a listener missing a portion of a previously broadcast
`program by allowing the listener to playback a portion that may have been
`missed due to the listener’s inattentiveness. Id. at 34–35 (citing Ex. 1003,
`1:9–20, 1:24–28). Goldwasser allows a user to cease watching a program in
`order to handle an interruption such as a phone call and then resume viewing
`the program after the completion of the interruption. Id. (citing Ex. 1005,
`1:13–18, 1:26–32, 1:43–49). We find that Petitioner’s description of the
`field of common inquiry (“delayed playback of audio or visual information”)
`is reasonable in light of the evidence. See Pet. 56; Ex. 1010 ¶ 154. Like the
`’444 patent, both cited references are directed to providing individuals with
`the ability to enjoy a broadcast program despite interruptions that may cause
`the user to step away from, or provide less than his or her full attention to,
`the broadcast. The references describe different reasons for the user’s
`distraction, but the common thread is that the user is not paying full attention
`to the broadcast and the user seeks a way to record and playback content that
`the user would have missed due to that distraction. Thus, we find that the
`cited references are analogous art because they are from the same field of
`endeavor, and that they are pertinent to the particular problem addressed in
`the ’444 patent. Based on the full record, we find that Petitioner has
`provided sufficient evidence of a motivation to combine Goldwasser and
`Yifrach. Accordingly, we are persuaded that Petitioner has demonstrated by
`a preponderance of the evidence the unpatentability of independent claims 1
`and 14 over Goldwasser and Yifrach.
`Claims 7–10 depend from claim 1. We have reviewed Petitioner’s
`arguments and supporting evidence with respect to these claims (Pet. 51–
`54), and we determine that Petitioner has demonstrated by a preponderance
`
`20
`
`
`
`
`
`IPR2015-00499
`Patent 5,930,444
`
`of the evidence that the combination of Goldwasser and Yifrach also teaches
`or suggests the limitations of those claims, as set forth in the Petition. For
`example, claim 7 depends from claim 1 and further recites that the storage
`medium comprises solid state random acce
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
