UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`DISH NETWORK L.L.C.,
`Petitioner,
`
`v.
`
`DRAGON INTELLECTUAL PROPERTY, LLC,
`Patent Owner.
`___________
`
`Case IPR2015-00499
`Patent 5,930,444
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`Before NEIL T. POWELL, STACEY G. WHITE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`DISH NETWORK L.L.C.,
`Petitioner,
`
`v.
`
`DRAGON INTELLECTUAL PROPERTY, LLC,
`Patent Owner.
`___________
`
`Case IPR2015-00499
`Patent 5,930,444
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`Before NEIL T. POWELL, STACEY G. WHITE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Page
`
`THE ASSERTED BASES OF INVALIDITY ............................................... 2
`
`THE PROBLEM SOLVED BY THE ’444 PATENT .................................... 3
`A.
`Interrupted Programming And The Inadequacy Of The Prior
`Art Devices ........................................................................................... 3
`The Invention Of The ’444 Patent........................................................ 4
`
`B.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 7
`
`IV. THE COMBINATION OF GOLDWASSER AND YIFRACH DOES
`NOT RENDER THE CHALLENGED CLAIMS OBVIOUS ....................... 7
`A. Goldwasser Overview .......................................................................... 7
`B. Goldwasser Does Not Disclose “A Keyboard Having A Record
`Key And A Playback Key” ................................................................ 12
`C. Yifrach Does Not Disclose “A Keyboard Having A Record Key
`And A Playback Key” ........................................................................ 14
`D. Goldwasser Does Not Disclose The “Control Circuit” Of
`Claim 1 ............................................................................................... 23
`Yifrach Does Not Disclose The Claimed Control Circuit ................. 26
`
`E.
`
`V.
`
`THERE IS NO MOTIVATION TO COMBINE GOLDWASSER
`AND YIFRACH ........................................................................................... 29
`A.
`Legal Standards On Obviousness And Motivation To Combine ....... 30
`B.
`The Conclusory Statements In The Petition And By Mr.
`Wechselberger Are Insufficient To Support A Finding Of A
`Motivation To Combine Goldwasser And Yifrach ............................ 31
`
`VI. CONCLUSION ............................................................................................. 38
`
`
`-i-
`
`
`
`
`
`Federal Cases
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`ActiveVideo Networks, Inc. v. Verizon Commc’n, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .................................................................... 37, 38
`
`CFMT, Inc. v. Yieldup Intern. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .......................................................................... 31
`
`Circuit Check Inc. v. QXQ Inc.,
`795 F.3d 1331 (Fed. Cir. 2015) .......................................................................... 36
`
`Daifuku Co., Ltd. and Daifuku America Corp., v. Murata Machinery, Ltd.,
`IPR2015-00084, Paper 10 (May 4, 2015) ........................................................... 36
`
`In re Geisler,
`116 F.3d 1465 (Fed. Cir. 1997) .......................................................................... 31
`
`In re Icon Health and Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) .......................................................................... 36
`
`K/S Himpp v. Hear-Wear Technologies, LLC,
`751 F.3d 1362 (Fed. Cir. 2014) .......................................................................... 32
`
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ........................................................................... 36
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 21
`
`In re Zurko,
`258 F.3d 1379 (Fed. Cir. 2001) ......................................................................... 32
`
`Kinetic Technologies, Inc. v. Skyworks Solutions, Inc.,
`IPR2014-00529, Paper 8 (Sept. 23, 2014) .................................................... 37, 38
`
`KSR Int’l. Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ...................................................................................... 30, 37
`
`-ii-
`
`
`
`
`
`Perreira v. Dep’t of Health and Human Serv.,
`33 F.3d 1375 (Fed. Cir. 1994) ...................................................................... 21, 22
`
`In re Soni,
`54 F.3d 746 (Fed. Cir. 1995) .............................................................................. 31
`
`TRW Automotive US LLC v. Magna Electronics Incorporated,
`IPR2014-00251, Paper 34 (June 25, 2015) ......................................................... 37
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) .......................................................................... 30
`
`Wang Labs., Inc. v. Toshiba Corp.,
`993 F.2d 858 (Fed. Cir. 1993) ............................................................................ 36
`
`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) .......................................................................... 36
`
`Regulations
`
`37 C.F.R. § 42.65(a) ................................................................................................. 22
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`Other Authorities
`Microsoft Computer Dictionary (4th ed. 1999) ....................................................... 20
`
`
`
`-iii-
`
`
`
`
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`
`LIST OF EXHIBITS
`
`Declaration of Adam Goldberg
`
`Curriculum Vitae of Adam Goldberg
`
`Claim Construction Memorandum Opinion and Order,
`Dragon Intellectual Property, LLC v. Apple, Inc., 1:13-cv-02058-RGA,
`Docs. 101, 103 (D. Del. Sept. 15, 2015)
`
`Deposition Transcript of Anthony J. Wechselberger (Oct. 8, 2015)
`
`Microsoft Computer Dictionary (4th ed. 1999)
`
`-iv-
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.120, Patent Owner Dragon Intellectual Property,
`
`LLC (“Dragon”) respectfully submits this Response to DISH Network L.L.C.’s
`
`(“DISH”) Petition for Inter Partes Review (“Petition”) of U.S. Patent No.
`
`5,930,444 (the “’444 Patent”).
`
`The two grounds on which the Board instituted Inter Partes Review are both
`
`based on a primary reference referred to as “Goldwasser.” The first ground asserts
`
`that independent Claim 1, as well as certain other claims, is obvious over the
`
`combination of Goldwasser and the Yifrach patent. DISH acknowledges that
`
`Goldwasser lacks the “keyboard having a record key and a playback key”
`
`limitation of Claim 1, and relies on the Yifrach disclosure to supply the claimed
`
`“keyboard with a record key and a playback key.” DISH asserts that one of
`
`ordinary skill would have been motivated to combine Goldwasser and Yifrach to
`
`achieve the invention of Claim 1.
`
`As discussed in more detail below, DISH has failed to meet its burden of
`
`establishing that Claim 1 would have been obvious to a person of ordinary skill in
`
`the art at the time of the invention of the ’444 Patent based on the proposed
`
`combination of Goldwasser and Yifrach. The Patent Office recently examined an
`
`almost identical obviousness combination, and found that it did not raise a
`
`substantial new question of patentability. In 2013 Supplemental Examination
`
`proceedings, the Patent Office found that Goldwasser did not, on its own, raise a
`
`-1-
`
`
`
`
`
`substantial new question of patentability because it failed to disclose the “keyboard
`
`having a control key and a playback key” and “control circuit” limitations of Claim
`
`1 of the ’444 Patent. The Patent Office also found that Goldwasser, when
`
`combined with a reference that disclosed a remote control with “record” and
`
`“playback” keys, also did not raise a substantial new question of patentability.
`
`For these and the reasons that follow, DISH’s challenge to the ’444 Patent
`
`should be rejected.
`
`I.
`
`THE ASSERTED BASES OF INVALIDITY.
`
`The Petition argues that the ’444 Patent is unpatentable over, inter alia,
`
`combinations of U.S. Patent No. 5,241,428 to Goldwasser, et al. (“Goldwasser”),
`
`U.S. Patent No. 5,126,982 to Yifrach (“Yifrach”), and PCT Pub. WO 90/15507
`
`(“Vogel”).
`
`The Board has instituted review on two grounds. See Institution Decision at
`
`20. Ground 1 alleges that independent Claims 1 and 14 and dependent Claims 7, 8,
`
`9, and 10 are invalid as obvious in light of the combination of Goldwasser and
`
`Yifrach. Claims 7, 8, 9, and 10 all depend from Claim 1. Independent Claim 1
`
`generally claims a recording apparatus, and the dependent claims provide
`
`additional specificity of various features of the device of Claim 1. The Board has
`
`observed that Claims 1 and 14 are “substantially similar.” Institution Decision at
`
`17. As Patent Owner demonstrates below, DISH has failed to carry the burden
`
`-2-
`
`
`
`
`
`necessary to establish that Claim 1 is invalid in light of the asserted references.
`
`Therefore, Ground 1 fails.
`
`Ground 2 asserts that Claims 2, 3, 4, and 13, each of which depends from
`
`Claim 1, are invalid as obvious over Goldwasser, Yifrach, and Vogel. See
`
`Institution Decision at 20. In general, the claims subject to Ground 2 add a remote
`
`control (Claims 2-4), and a timer circuit (Claim 13). Like Ground 1, Ground 2
`
`fails because DISH has failed to show that Claim 1 must be held invalid.
`
`II. THE PROBLEM SOLVED BY THE ’444 PATENT.
`
`A.
`
`Interrupted Programming And The Inadequacy Of The Prior Art
`Devices.
`
`The ’444 Patent is directed to solving a common problem confronted by
`
`viewers of live television programming, or listeners of live radio programming.
`
`Namely, the interruption of live broadcast programming by, for example, a
`
`telephone call. Ex. 1001 at 1:47-49. As the ’444 Patent explains, conventional
`
`recording devices at the time of the invention of the ’444 Patent did not provide
`
`satisfactory solutions to the problem of interruptions. Id. at 2:15-33. The prior art
`
`recording devices were largely tape-based, such as videocassette recorders (VCR)
`
`or, analogously, audiocassette tapes. A user of these devices, upon occurrence of
`
`an interruption, could initiate a recording of the programming, but could not
`
`immediately begin watching or listening to the programming from the point of
`
`interruption after the interruption had concluded. Id. at 1:50-63. Rather, the user
`
`-3-
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`
`
`
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`would be required to continue watching or listening to the remainder of the
`
`programming, rewind the tape, search for the point of interruption, and begin
`
`playback from the point of interruption. Id. at 2:6-10. This approach leads to
`
`diminishment of the value of the programming presented during the interruption,
`
`as the user is already aware of the outcome of the program, having already viewed
`
`the conclusion. Id. at 1:67-2:5.
`
`Alternatively, the user could rewind the recording immediately after the
`
`conclusion of the interruption. This is also an undesirable solution, as it would
`
`result in the user missing any programming presented while the user is rewinding
`
`and viewing the programming recorded during the interruption. Id. at 1:53-63.
`
`B.
`
`The Invention Of The ’444 Patent.
`
`The inventors of the ’444 Patent conceived an elegant solution to the
`
`problem of interrupted programming. The ’444 Patent describes and claims a
`
`recording device that enables a user to create a recording of programming
`
`presented during an interruption, and to begin replaying that programming upon
`
`the conclusion of an interruption with the press of a single button. Id. at 2:52-57.
`
`As stated in the preamble to Claim 1, the recording device of the ’444 Patent is “[a]
`
`recording and playback apparatus for the substantially immediate and seamless
`
`resumption of interrupted perception of broadcast program information based upon
`
`audio or video signals, or both, without missing the program information presented
`
`-4-
`
`
`
`
`
`during the interruption.” Id. at 8:28-32. Current audio and video consumer
`
`recording devices often refer to the ability of a device to record and “seamlessly
`
`resume” interrupted programming as “live pause.” Ex. 2001 at ¶15.
`
`Claim 1 of the ’444 Patent is as follows:
`
`A recording and playback apparatus for the substantially
`immediate and seamless resumption of interrupted perception
`of broadcast program information based upon audio or video
`signals, or both, without missing the program information
`presented during the interruption, comprising:
`[a] means for powering the apparatus;
`[b] a keyboard having a record key and a playback key;
`[c] a control circuit coupled responsively to said keyboard;
`[d] 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;
`[e] 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
`[f] 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,
`[g] said control circuit being configured so that
`substantially simultaneous recording and playback of
`program information is achieved when said record key is
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`-5-
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`
`
`
`
`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 at 8:29-64 (emphasis added).
`
`The recording device claimed in the ’444 Patent contains several features
`
`that set it apart from the prior art. In particular, the recording device employs
`
`random access memory, in contrast to the linear, tape-based memory of the prior
`
`art devices. Id. at 2:48-51. The device also includes a “keyboard having a record
`
`key and a playback key” that allows the user to initiate a recording of the
`
`programming presenting during an interruption, and later to initiate playback of the
`
`recording made during the interruption by actuating just a single key (“playback
`
`key”). Id. at 5:20-36.
`
`To achieve this single-key playback novelty, the claimed recording device
`
`also includes a novel control circuit that achieves “substantially simultaneous
`
`recording and playback” of content upon user actuation of the “record key,” and
`
`subsequent actuation of the “playback key.” Id. The control circuit causes
`
`playback of content recorded between actuation of the record and playback keys,
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`-6-
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`
`
`
`
`and the “time delay” of the playback is equal to the time between actuation of the
`
`record key and the playback key. Id.
`
`To invalidate Claim 1, the combination of the asserted references must have
`
`the claimed “keyboard having a record key and a playback key” that is recited in
`
`element 1[b]. 1 Any asserted combination of references must also include the
`
`particular “control circuit” that is claimed in element 1[c], and that is further
`
`described in element 1[g].
`
`III. LEVEL OF ORDINARY SKILL IN THE ART.
`
`The application leading to the ’444 Patent was filed on April 23, 1992. A
`
`person of ordinary skill in the art as of the filing date of the ’444 Patent would have
`
`at least a Bachelor’s degree in Computer Science or Electrical Engineering, and
`
`two years’ experience in the field of digital decoders, such as digital television or
`
`radio receivers. Ex. 2001 at ¶4.
`
`IV. THE COMBINATION OF GOLDWASSER AND YIFRACH DOES
`NOT RENDER THE CHALLENGED CLAIMS OBVIOUS.
`A. Goldwasser Overview.
`The Goldwasser patent is entitled “Variable-Delay Video Recorder.” Ex.
`
`1005 at 1. Goldwasser notes that devices existed at the time that enabled users,
`
`such as broadcasters, to record live content, and to play it back with a short time
`
`1 On September 9, 2015, the District Court construed “a keyboard having a
`record key and a playback key” as “a keyboard that has one or more keys that
`function as a record key and a playback key.” Ex. 2003 at 13.
`
`-7-
`
`
`
`
`
`delay. These technologies were useful, for example, to “permit deletion of
`
`inappropriate language or gestures.” Id. at 1:13-17. One of the shortcomings of
`
`these devices was that they did not enable a user “to vary the delay between the
`
`recording and playback of segments of video.” Id. at 1:25-27. According to
`
`Goldwasser, the delay between the “live” content recorded to the recording device
`
`and the “playback” of that live content to the broadcast audience was not variable
`
`in the prior art devices at the time.
`
`Goldwasser notes that the ability to vary the delay between recording and
`
`playback would be useful in the context of interrupted programming. Goldwasser
`
`noted the desirability of recording programming from a point of interruption, and
`
`then resuming programming from the point of interruption. Id. at 1:43-52.
`
`Goldwasser also notes the inability of conventional devices to achieve the
`
`described functionality. Id. at 1:29-32. Goldwasser describes that an “object” of
`
`its invention is to provide a device “that can be used to record and playback video
`
`material independently,” so that the point of playback can be varied, such as to
`
`“allow[] the user to effectively reposition the stored material with respect to the
`
`playback device to allow ‘fast forward’ or ‘rewind’ of the material being played
`
`back, without interruption of the recording.” Id. at 1:55-67.
`
`Goldwasser describes three embodiments to achieve the objects of the
`
`invention. The first embodiment (referred to as the “sequential” embodiment) uses
`
`-8-
`
`
`
`
`
`conventional videotape. Id. at 2:14-21. The write head of the sequential
`
`embodiment continuously records the video signal to the videotape. Id. at 2:36-38.
`
`In similar prior art devices that allowed simultaneous recording and playback, the
`
`read head would be positioned at a fixed point behind the write head so that the
`
`recorded content could be read out at some amount of time (even a negligible
`
`amount of time) after it was recorded. “However, instead of providing a fixed
`
`physical spacing between recording and playback heads as in the prior art, the
`
`device of the invention comprises an accumulator for physically storing a variable
`
`quantity of tape between the recording and playback heads.” Id. at 2:42-47. If a
`
`user desires to stop reading what is being written, the read head stops reading, and
`
`the tape that is recorded is “accumulated” until the read head is again engaged. Id.
`
`at 2:51-64. DISH does not rely on this embodiment for its obviousness
`
`combination.
`
`The third embodiment (referred to as the “multiple tape” embodiment), uses
`
`three essentially conventional video tape cassettes, and three separately
`
`controllable tape transport mechanisms with three corresponding record and
`
`playback heads. Id. at 3:21-25. The complication of this system through the
`
`sequencing and controlling of multiple videocassette recorders is shown in
`
`Goldwasser Figure 6. DISH also does not rely on this embodiment for its
`
`obviousness combination.
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`-9-
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`
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`DISH relies on the second embodiment, which is referred to as the “random
`
`access” embodiment. See Petition at 11, 41-51; Institution Decision at 14-15. In
`
`the “random access” embodiment, the recording device includes a sampling circuit
`
`that converts analog video signals into digital signals upon receipt by the device,
`
`which the device then stores in random access memory. Ex. 1005 at 6:22-42. The
`
`recorded signals can be read out of memory after being written, so that the reading
`
`and writing may be done simultaneously. Id. Figure 3 of Goldwasser is a
`
`schematic representation of this embodiment:
`
`The random access embodiment uses the signal sampling circuit 51 and an
`
`analog to digital converter 52 to create the digital samples of video signal that will
`
`be stored in the memory 53 of the recorder. Id. at 6:25-42. The locations at which
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`-10-
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`
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`the signals are stored are controlled by address controller 58. Id. at 6:44-49. The
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`address controller “is responsive to commands received from a user control panel
`
`50.” The “[o]peration of the address controller is generally described in
`
`connection with FIG. 4.” Id. at 44-49.
`
`Figure 4 is a flowchart that depicts the algorithm of the “random access
`
`embodiment.” Id. at 6:59-7:19 (discussing Fig. 4). As Goldwasser explains,
`
`playback (via the read pointer) occurs immediately after recording (via the write
`
`pointer) unless there’s an interruption that would cause playback to stop or change.
`
`
`
`Steps 100-104 describe the writing operation, where the address controller receives
`
`data from the analog to digital converter (step 100), stores or writes that data to a
`
`place in memory (step 102), and then the write head is moved to the next position
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`-11-
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`
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`in memory (step 104). Id. at 6:59-7:19. Steps 106-114 describe steps of a read
`
`operation, which may or may not be “interrupted.” Id. At stop 106, the address
`
`controller obtains data from memory and sends the data to the digital to analog
`
`converter (step 108). Id. Goldwasser describes the “interrupt” scenario depicted
`
`by Steps 110-116:
`
`At block 110 the interrupt mask of the computer is checked
`briefly to allow an interrupt from the user control panel 50. At
`block 112 any interrupt from the control panel is detected; such
`an interrupt might indicate, for example, that the orderly
`playback process implemented by blocks 106 and 108 is to be
`varied. If so, at block 114 the read pointer is changed to
`implement the command received via the interrupt. Block 100
`is then reentered. If no interrupt is detected, the read pointer is
`incremented at block 116 and block 100 is reentered, so that
`both recording and playback continue.
`Id. at 7:7-18. Whether or not an interrupt is received, the device continues to
`
`record, as indicated by the arrows returning to block 100. In his deposition, Mr.
`
`Wechselberger described that the writing continues in a loop. Ex. 2004 at 47:7-10.
`
`B. Goldwasser Does Not Disclose “A Keyboard Having A Record
`Key And A Playback Key”.
`
`It is undisputed that Goldwasser does not disclose “a keyboard having a
`
`record key and a playback key.” The only user interface disclosed is a “control
`
`panel.” See, e.g., Fig. 3 at 50. As the Board has observed, Goldwasser does not
`
`disclose details about any particular controls on the “control panel.” Institution
`
`Decision at 15. Neither DISH nor its expert contend that Goldwasser includes “a
`
`-12-
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`
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`keyboard having a record key and a playback key.” In other words, the parties and
`
`the Board appear to agree that Goldwasser does not contain “a keyboard having a
`
`record key and a playback key.”
`
`This conclusion is consistent with that reached by the Patent Office when it
`
`analyzed Goldwasser and other references during Supplemental Examination
`
`proceedings initiated by Patent Owner in 2013. See Ex. 1008. In its decision
`
`finding that Goldwasser did not create a substantial new question of patentability,
`
`the Patent Office repeatedly observed that Goldwasser does not contain “a
`
`keyboard having a record key and a playback key.” For example, the Patent Office
`
`found that:
`
`30. Goldwasser teaches a video recording apparatus (shown in
`Fig. 3) for simultaneously recording and playback of video
`material to/from random access memory (RAM) (i.e. 53 in Fig.
`3) (see Col. 2, lines 16-35 and Col. 6, tines 25-43). Goldwasser
`also teaches playing back the recorded data from any portion of
`the RAM while simultaneously recording (See Col. 6, lines 38-
`43). Furthermore, Goldwasser discloses a user control panel
`(i.e. 50 in Fig. 3) for generating commands that can be used to
`control the video recorder (see Col. 6, lines 44-49).
`31. In particular, Goldwasser fails to expressly teach or suggest:
`a. a keyboard having a record key and a playback key; and
`b. a control circuit, coupled to the keyboard, 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
`
`-13-
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`
`
`
`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. 1008 at 152-53 (emphasis added).2 Neither DISH nor its expert challenge this
`
`finding.
`
`C. Yifrach Does Not Disclose “A Keyboard Having A Record Key
`And A Playback Key”.
`
`As the Board observed, DISH relies upon the teaching of Yifrach, and
`
`specifically, its “freeze” and “playback” buttons, to disclose the claimed keyboard
`
`with playback and record keys. Petition at 43-46; Institution Decision at 15.
`
`However, the “freeze” and “playback” keys of Yifrach do not satisfy the “keyboard
`
`having a record key and a playback key” limitation of the Claim 1.
`
`The Yifrach Patent is entitled “Radio Receiver and Buffer System
`
`Therefore.” Ex. 1003 at 1. It explains the problem it intends to address as follows:
`
`It frequently happens that a person while listening to the radio
`is not particularly attentive to what is being broadcast but
`suddenly hears something which catches the listener's interest
`and which the listener would like to hear in full. This occurs
`especially when listening to the radio while operating an
`automotive vehicle since the attention of the driver, and
`sometimes of the passengers, is primarily occupied in operating
`the vehicle, in a conversation with another passenger, etc.
`Should the listener thus miss a part of a previously-broadcasted
`information, such information is lost to the listener unless the
`information is rebroadcasted.
`
`2 The page numbers cited in reference to Exhibit 1008 refer to the exhibit page
`numbers, as opposed to page numbers appearing on the original documents.
`
`-14-
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`
`
`
`
`Ex. 1003 at 1:9-20.
`
`Yifrach is thus directed to a solution “which permits the listener to play back
`
`information which had been previously broadcasted but not completely registered
`
`by the listener.” Id. at 1:26-28. DISH relies on the “Freeze Mode” embodiment of
`
`Yifrach. Petition at 44. As it explains, Yifrach accomplishes this objective by
`
`enabling the user to “freeze” the last sixty seconds of the broadcast, and listen to it
`
`later. Ex. 1003 at 4:51-52. A user of the Yifrach system who did not quite catch
`
`the details of the weather report that was just broadcast, for example, could
`
`“freeze” the last sixty seconds of the broadcast and, at a later commercial break,
`
`replay the “frozen” content that includes the weather report, in addition to any
`
`other content within the sixty seconds of content captured by the “freezing”
`
`operation. Id. at 3:59-61.
`
`The “Freeze Mode” embodiment of Yifrach relied upon by DISH is
`
`described in Column 4 of the patent and is depicted in Figure 2. See Petition at 44-
`
`46; Ex. 1010 at ¶¶ 136-137; Ex. 1003 at Fig 2; 4:13-5:7.
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`-15-
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`
`
`
`
`
`
`The Yifrach device employs a “cyclic storage device for continuously storing the
`
`audio signals” received by the device. Ex. 1003 at 2:62-3:10 (Fig. 2 item 22
`
`(“CSD”)). In the “Freeze Mode” embodiment, the “cyclic storage device
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`continuously stores the audio signals last outputted by the demodulator circuit 13
`
`over a predetermined time interval, e.g., 60 seconds.” Id. at 4:40-45. When the
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`“Freeze” button is actuated, it causes the device to transfer the contents of the
`
`buffer at that time, i.e., the last 60 seconds of already recorded content, to another
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`memory device, which is referred to a “further storage device.” Ex. 1003 at 7:46-
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`62, Fig 2. Later, when a user wishes to play back the “frozen” content, it presses
`
`the Playback button, at which point the device plays back the sixty seconds of
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`“frozen” content. Once the device has played the entire “frozen” content, the
`
`device automatically returns to “Normal-Listening Mode,” or real-time. Id. at
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`-16-
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`
`
`
`
`4:63-5:6. Yifrach therefore provides a backward-looking system of freezing
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`previously listened-to portions of radio broadcast into a further storage device for
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`later playback. Id. at 4:15-18.
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`DISH relies on Yifrach’s “freeze” and “playback” buttons to disclose the
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`“keyboard having a record key and a playback key” of Claim 1. In particular,
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`DISH’s expert, Mr. Wechselberger, opines that “Yifrach’s freeze button 32 is
`
`therefore within the broadest reasonable interpretation of the claimed ‘record
`
`key.’” Ex. 1010 at ¶ 136. The Freeze button in Yifrach is manifestly different
`
`from the “record key” of Claim 1. Ex. 2001 at ¶¶33-37.
`
`Mr. Wechselberger does not offer a construction of the term “record key,” a
`
`point he confirmed in his deposition. Mr. Wechselberger testified that he is not
`
`offering an opinion on the broadest reasonable construction of “record key.” Ex.
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`2004 at 56:24-57:3. Mr. Wechselberger also confirmed in his deposition that he is
`
`relying on the act of transferring the already recorded content in the cyclic storage
`
`device to the further storage device as the “recording” caused by actuation of the
`
`record key.” Ex. 2004 at 60:19-61:3 Despite the absence of a construction of
`
`“record key,” Mr. Wechselberger claims that the Freeze button, which causes the
`
`transfer of already recorded material from one memory device (the “cyclic storage
`
`device”) to a second memory device (the “further storage device”) is “within the
`
`broadest reasonable interpretation” of “record key” of Claim 1.
`
`-17-
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`
`
`
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`As Mr. Goldberg explains, one of ordinary skill in the art at the time of the
`
`invention of the ’444 Patent would not understand that Yifrach’s “Freeze” button
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`discloses the “record key” of Claim 1. Ex. 2001 at ¶¶36-39. Claim 1 makes clear
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`by its terms that the “record key” is one that, when actuated, cause the control
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`circuit to behave in a particular way, as part of the operation of “substantially
`
`simultaneous recording and playback.” Id. at ¶38.
`
`Claim 1 requires that the “keyboard” be “coupled responsively” to the
`
`“control circuit” of Claim 1. Ex. 1001 at 8:36. Features of the “control circuit” are
`
`further described in what is designated above as element 1(g) of Claim 1. Id. at
`
`8:52-64. In particular, the control circuit is configured to achieve “substantially
`
`simultaneous recording and playback” when (a) the “record key is first actuated to
`
`begin a recording by initiating storage of the broadcast program information” and
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`(b) the “playback key is subsequently and solely actuated to begin time delay
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`playback of the recording from the beginning thereof.” Id. Claim 1 continues that
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`the “time delay” must be “the same as the time elapsed between the actuation of
`
`said record key and the subsequent actuation of said playback key.” Id. One of
`
`ordinary skill would understand that the “record key” of Claim 1 is not directed to
`
`“any” type of recording, or that it would include re-recording of previously
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`recorded information, such as the transfer of already recorded content from
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`Yifrach’s “continuous storage device” to the “further storage device.” Ex. 2003 at
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`-18-
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`
`
`
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`¶¶36-39. Rather, one of ordinary skill would understand that the “record key” of
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`Claim 1 is addressed to beginning a recording of content that will be presented to
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`the device only after actuation of the record key. Id.3
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`Mr. Goldberg also explains other reasons why Yifrach’s “freeze” button is
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`not within a disclosure of the “record key” of Claim 1. For example, unlike the
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`record k
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