IN THE 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
`U.S. Patent No. 5,930,444
`____________
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`DISH NETWORK L.L.C.,
`Petitioner
`
`v.
`
`DRAGON INTELLECTUAL PROPERTY, LLC.
`Patent Owner
`____________
`
`Case IPR2015-00499
`U.S. Patent No. 5,930,444
`____________
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2015-00499
`
`Page
`
`PRELIMINARY STATEMENT ..................................................................................... 1
`I.
`ARGUMENT ..................................................................................................................... 2
`II.
`A. CLAIMS 1 AND 14 ARE OBVIOUS OVER GOLDWASSER AND YIFRACH ...... 2
`1. The combination of Goldwasser and Yifrach discloses the claimed “keyboard
`having a record key and a playback key.” ................................................................. 2
`2. The combination of Goldwasser and Yifrach discloses the claimed “control
`circuit” and required functionality ............................................................................. 5
`3. The Proposed Combination of Goldwasser and Yifrach Results In The Claimed
`Combination .................................................................................................................. 7
`B. PETITIONER AND MR. WECHSELBERGER PROVIDED SUFFICIENT
`MOTIVATIONS TO COMBINE GOLDWASSER AND YIFRACH. ........................ 8
`C. PATENT OWNER POINTS TO NO ADDITIONAL ELEMENT IN
`INDEPENDENT CLAIM 14 OR THE DEPENDENT CLAIMS ............................... 11
`D. CONCLUSION ............................................................................................................... 11
`
`
`
`i
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`IPR2015-00499
`
`Page(s)
`
`
`
`
`
`CASES
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`Nos. 2015-1215, 2015-1226, slip. op. (Fed. Cir. Nov. 16, 2015) ..............................................4
`
`Astrazeneca LP v. Apotex, Inc.,
`633 F. 3d 1042 (Fed. Cir. 2010).................................................................................................5
`
`In re Merck & Co., Inc.,
`800 F.2d 1091 (Fed. Cir. 1986)..................................................................................................2
`
`KSR Intern. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................................................2
`
`
`
`
`
`ii
`
`
`
`IPR2015-00499
`
`Petitioner respectfully submit this reply to Patent Owner’s Response
`
`regarding the unpatentability of claims 1, 2, 3, 4, 7, 8, 9, 10, 13, and 14 of the ’444
`
`Patent (the “challenged claims”) as being obvious over Goldwasser and Yifrach
`
`(Ground 8), and Goldwasser, Yifrach and Vogel (Ground 9).
`
`I.
`
`PRELIMINARY STATEMENT
`
`Although Patent Owner’s Response (Paper 12) attempts to obfuscate the
`
`issues in this Trial, the questions before the Board are straightforward: (1) Does
`
`Yifrach disclose a keyboard with two keys; and (2) would it be obvious to use the
`
`two keys of Yifrach to implement the functionality of the “user control panel” of
`
`Goldwasser. The answer to both questions is “yes”, rendering the challenged
`
`claims unpatentable.
`
`Goldwasser teaches every element of the independent claims, except
`
`Goldwasser teaches interacting with the system via a “user control panel” rather
`
`than expressly reciting a “keyboard.” See Paper 1 (Pet.) at 45-46, 56. Ex. 1010
`
`(Wechselberger Decl.) ¶¶ 32, 40-42, 132, 154; Paper 12 at 12-14, 23-25. However,
`
`the use of a keyboard with distinct keys corresponding to distinct device
`
`functionality was a well-known design choice at the time of the ’444 Patent,
`
`rendering the claims unpatentable in view of Goldwasser and Yifrach. Paper 1
`
`(Pet.) at 56; Ex. 1010 (Wechselberger Decl.) ¶¶ 91, 152-154.
`
`Patent Owner’s Response never addresses the combination of the teachings
`
`
`
`1
`
`
`
`IPR2015-00499
`
`of Goldwasser and Yifrach proposed in Grounds 8 and 9. Instead, Patent Owner
`
`attacks the references individually, arguing: (1) Goldwasser lacks a keyboard with
`
`two keys (Paper 12 at 12-14, 24); and (2) Yifrach lacks two buttons that, when
`
`pressed, perform the functionality recited in the claims (Paper 12 at 14-23, 26-29).
`
`But the petition conceded those points (Paper 1 at 43-47, 56), making Patent
`
`Owner’s attacks irrelevant. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
`
`Cir. 1986) (“Non-obviousness cannot be established by attacking references
`
`individually where the rejection is based upon the teachings of a combination of
`
`references.”).
`
`In short, Patent Owner’s arguments and evidence fail to address the proper
`
`inquiry: whether a “person having ordinary skill in the art could have combined
`
`[the prior art teachings] in a fashion encompassed by [the claim], and would have
`
`seen the benefits of doing so.” KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 422
`
`(2007). Thus, the showing of unpatentability set forth in the petition remains
`
`unrebutted, and the Board should find the challenged claims are unpatentable.
`
`II. ARGUMENT
`A. CLAIMS 1 AND 14 ARE OBVIOUS OVER GOLDWASSER
`AND YIFRACH
`1.
`
`The combination of Goldwasser and Yifrach discloses the
`claimed “keyboard having a record key and a playback
`key.”
`
`Goldwasser provides all of the functionality of claim 1, but does not
`
`
`
`2
`
`
`
`IPR2015-00499
`
`explicitly disclose a keyboard with a record key and a playback key. Yifrach
`
`discloses a device with a freeze button and a playback button. Petitioner’s
`
`obviousness combination is based on the use of Yifrach’s two-button user interface
`
`to implement the “user control panel” of Goldwasser. (Paper 1 at 43-47, 56).
`
`Patent Owner does not dispute that Yifrach discloses “freeze” and
`
`“playback” keys for user control of the device. However, Patent Owner alleges
`
`that these keys do not satisfy the “keyboard having a record key and a playback
`
`key” limitation of the Claim 1. Paper 12 at 14. Patent Owner’s position is not
`
`based not on the lack of buttons themselves, but on the functionality that occurs in
`
`Yifrach when a user presses the freeze and playback buttons. Id. At 14-15.
`
`However, 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.
`
`(Paper 1 at 43-47, 56). That Yifrach’s logic circuit performs a function similar to
`
`that recited in the challenged claims provides further motivation for a person of
`
`ordinary skill in the art to combine the teachings of the two references.
`
`As Mr. Wechselberger explained, “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. Furthermore, the Petition, relying on
`
`
`
`3
`
`
`
`IPR2015-00499
`
`Dr. Wechselberger’s statement, stated that “the initiation of recording based on a
`
`user issuing a record command, for example by a button press, was well-known in
`
`the art.” Paper 1 at 56. This common-sense statement regarding the use of buttons
`
`to control devices stands unrebutted by Patent Owner or its expert witness,
`
`Mr. Goldberg. Mr. Wechselberger’s testimony is also supported by the numerous
`
`prior art references cited in the background section of the petition1 that describe
`
`remote controls with buttons corresponding to various functions performed by the
`
`recording/playback device that they control. See Paper 1 (Pet.) at 13 (citing Exs.
`
`1016 (Shimada); 1017 (Skerlos); 1018 (Sandbank) and Ex. 1004 (Vogel)). Indeed,
`
`the ’444 Patent admits that such remote controls were “well known” features on
`
`“all but the least expensive VCR’s presently known.” Ex. 1001 at 6:27-47; Paper 1
`
`at 13.
`
`To the extent Patent Owner contends that the claims require buttons
`
`explicitly labelled “record” and “playback,” Patent Owner has not proffered any
`
`claim construction argument in support of that contention. Moreover, this
`
`contention would run afoul of the printed matter doctrine, under which instructions
`
`1 See Ariosa Diagnostics v. Verinata Health, Inc., Nos. 2015-1215, 2015-1226,
`
`slip. op. at 12 (Fed. Cir. Nov. 16, 2015) (holding background art raised in a petition
`
`must “be considered by the Board even though it was not one of the []pieces of
`
`prior art presented as the basis for obviousness.”)
`
`
`
`4
`
`
`
`IPR2015-00499
`
`for using a device are given no patentable weight when they appear in a claim.
`
`Astrazeneca LP v. Apotex, Inc., 633 F. 3d 1042 (Fed. Cir. 2010) (finding invalid
`
`claim directed to the combination of prior art composition and instructions for
`
`using that composition). As in Astrazeneca, a requirement that the keyboard
`
`buttons be labeled “Record” and “Playback” would serve no purpose other than
`
`informing the user how to interact with the device – precisely the type of claim
`
`requirement that is given no patentable weight under the printed matter doctrine.
`
`Therefore, the combination of Goldwasser and Yifrach discloses the claimed
`
`two-button keyboard.
`
`2.
`
`The combination of Goldwasser and Yifrach discloses the
`claimed “control circuit” and required functionality
`
`In Petitioner’s Ground 8, the control circuit is disclosed by Goldwasser’s
`
`controller. Paper 1 at 46-47. Patent Owner argues that Goldwasser does not
`
`disclose the claimed “control circuit” because Goldwasser does not have a control
`
`circuit coupled to a keyboard with a record and a playback key. Paper 12 at 24
`
`(“Because Goldwasser lacks a record key and playback key, it cannot disclose the
`
`control circuit of the ’444 Patent”). Thus, Patent Owner’s argument with respect to
`
`the “control circuit” limitation is simply a rehash of its flawed argument related to
`
`the claimed keyboard.
`
`As previously noted, the petition concedes that Goldwasser discloses only a
`
`generic user control panel, not a keyboard with two keys. Goldwasser does,
`
`
`
`5
`
`
`
`IPR2015-00499
`
`however, disclose a control circuit coupled to a user control panel and configured
`
`to perform the functionality recited in the claim. See Paper 1 at 46-47.
`
`Although not clear from its response, Patent Owner may be arguing that
`
`Goldwasser’s storage of video information to memory is done without the need for
`
`the user to interact with the user control panel. See Paper 12 at 25. To the extent
`
`Patent Owner intended to make this argument, it is meritless. Goldwasser
`
`expressly states that the functionality of the recording device is controlled via the
`
`user control panel. See Ex. 1005 at 6:44-48 (“The locations at which the digitized
`
`video samples are stored in the random access memory 53 are controlled by an
`
`address controller 58, which in turn is responsive to commands received from a
`
`user control panel 50”) (emphasis supplied).
`
`Patent Owner’s witness (Mr. Goldberg) concedes that Goldwasser’s user
`
`control panel “provides a means for the user to control some aspects of the
`
`Goldwasser device.” Ex. 2001, ¶ 19. In fact, these so-called “aspects of the
`
`Goldwasser device” that are controlled by the user control panel are actually the
`
`key functionalities of recording and playback of content. See Ex. 1005 at 6:44-48
`
`(quoted above); 7:8-14 (“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
`
`
`
`6
`
`
`
`IPR2015-00499
`
`is to be varied.”)
`
`Lastly, Patent Owner emphasizes that Goldwasser does not stop recording
`
`when a user issues a command to change the location of the read operation (i.e. to
`
`playback a different portion of the program). Paper 12 at 11-12; Ex. 2001, ¶ 21.
`
`Patent Owner provides no argument as to how this feature of Goldwasser could
`
`distinguish it from the claim language, and Petitioner can surmise none. Indeed,
`
`this feature of Goldwasser is consistent with the stated purpose of the ’444 Patent,
`
`as reflected in the abstract: “substantially simultaneous recording and playback of
`
`television type signals is achieved, thus enabling user controlled programming
`
`delay.” (emphasis supplied). Like the claimed invention, Goldwasser continues to
`
`simultaneously record while the location of playback is changed based on input
`
`from the user control panel.
`
`3.
`
`The Proposed Combination of Goldwasser and Yifrach
`Results In The Claimed Combination
`
`Patent Owner alleges that the combination of Goldwasser and Yifrach would
`
`not result in the device of claim 1, because it would result in a “device that would
`
`‘freeze’ a discrete and predetermined amount of already recorded programming,
`
`and transfer that programming to a further storage device (a further storage device
`
`that is not disclosed to be a part of Goldwasser).” Paper 12 at 32. Here, however,
`
`Patent Owner misunderstands the proposed modification. Petitioner has proposed
`
`modifying Goldwasser by implementing its “User Control Panel” with two buttons,
`
`
`
`7
`
`
`
`IPR2015-00499
`
`as in Yifrach. (Paper 1 at 45-46). Patent Owner provides no argument or evidence
`
`rebutting petitioner’s showing directed to that combination. Accordingly, Patent
`
`Owner’s arguments as to the Yifrach “freeze” functionality (Paper 12 at 31-33) are
`
`simply irrelevant.
`
`B.
`
`PETITIONER AND MR. WECHSELBERGER PROVIDED
`SUFFICIENT MOTIVATIONS TO COMBINE GOLDWASSER
`AND YIFRACH.
`
`As discussed above, the combination of Goldwasser and Yifrach is simply
`
`providing two buttons to a user control panel. As stated in the petition:
`
`A person of ordinary skill in the art would have been
`motivated to combine Goldwasser and Yifrach. Ex. 1010 at ¶¶
`152-155. The combination of Goldwasser and Yifrach would
`produce a predictable result. Id. at ¶ 152. Any improvement to
`the user-interface by using Yifrach’s freeze and playback
`buttons as part of Goldwasser’s control panel 50 was
`predictable based on the knowledge of a person of ordinary
`skill in the art. Id.
`
`Paper 1 at 56.
`
`
`Patent Owner argues that a person of ordinary skill would not be motivated
`
`to combine the references by contrasting the functionality of the Yifrach and
`
`Goldwasser embodiments. But the functionality of the devices is not being
`
`combined. Instead, Yifrach’s two buttons are implemented on Goldwassser’s
`
`
`
`8
`
`
`
`IPR2015-00499
`
`control panel. Patent Owner cannot show why a practitioner would not place
`
`buttons on an existing control panel.
`
`Furthermore, the initiation of recording based on a user issuing a record
`
`command, for example by a button press, was well-known in the art. Id.
`
`Furthermore, these references are in the same field of inquiry and are directed
`
`towards solving the same problem. Both Goldwasser and Yifrach are directed to
`
`the delayed playback of audio or visual information. Ex. 1002 at Abstract, Ex.
`
`1005 at 1:55-68; Ex. 1010 at ¶ 154. Thus, it would have been obvious to a person
`
`having ordinary skill in the art to combine the features of Yifrach and Goldwasser.
`
`Ex. 1010 at ¶ 154.
`
`Patent Owner further alleges that combination of Goldwasser and Yifrach is
`
`improper because the references are not directed to the same field of inquiry.
`
`Mr. Wechselberger stated that “both Goldwasser and Yifrach are directed to
`
`delayed playback of audio or visual information.” Ex. 1010, ¶ 154. Patent Owner
`
`and Patent Owner’s expert Mr. Goldberg do not dispute this. Instead, Patent
`
`Owner argues that this definition of the relevant field inquiry is overbroad and that
`
`only a narrower field of inquiry is proper. The “Field of the Invention” of the ’444
`
`Patent states that the patent is directed to “information and entertainment systems,
`
`and more particularly, to a keyboard and memory equipped interface apparatus for
`
`the storage and processing of signals associated with such information and
`
`
`
`9
`
`
`
`IPR2015-00499
`
`entertainment systems.” Ex. 1001, 1:12-16. This alleged field is even broader
`
`than Mr. Wechselberger’s field of inquiry. Neither Patent Owner nor
`
`Mr. Goldberg argues that Goldwasser or Yifrach are not directed to “information
`
`and entertainment systems.” Yifrach’s Abstract states that
`
`A buffer system for radio receivers includes a cyclic storage
`device connectable to a demodulator circuit for continuously
`storing the audio signals last outputted thereby only over a
`predetermined time interval, enabling the listener to jump-
`back to hear a preceding portion of the radio broadcasts.
`
`Ex. 1003, Abstract (emphasis supplied).
`
`The Abstract of Goldwasser confirms that it is also directed to an
`
`“information or entertainment system:”
`
`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. A user can arrange to start recording a
`broadcast program (while the user is not at home, for example)
`in the conventional way via stored instructions, and then begin
`watching the recording several minutes or hours later, before
`the program is over, without stopping the recording.
`
`
`
`
`10
`
`
`
`IPR2015-00499
`
`Ex. 1005, Abstract.
`
`Even setting aside the ’444 Patent’s own description of the field of the
`
`alleged invention, Patent Owner cannot show that a person of ordinary skill in the
`
`art of video playback would not use the buttons from a radio-based application to
`
`control recording and playback of information in Goldwasser’s system. Nowhere
`
`does Patent Owner disclaim the use of the alleged invention to audio-only
`
`information, such as radio.
`
`Patent Owner’s attempt to define an arbitrarily narrow and oddly-shaped
`
`field of the invention to avoid obviousness after setting forth such a broad alleged
`
`“Field of the Invention” in the specification itself is simply without merit.
`
`C.
`
`PATENT OWNER POINTS TO NO ADDITIONAL ELEMENT
`IN INDEPENDENT CLAIM 14 OR THE DEPENDENT
`CLAIMS
`
`Patent Owner does not argue that any elements of independent claim 14 are
`
`not met by the references beyond those arguments advanced with respect to claim
`
`1. With respect to dependent claims 2, 3, 4, 7, 8, 9, 10, and 13, the Patent Owner
`
`does not allege that the references fail to disclose any of the limitations introduced
`
`in the dependent claims. Paper 12 at 38.
`
`D. CONCLUSION
`As set forth above and in the petition, claims 1, 2, 3, 4, 7, 8, 9, 10, 13, and 14
`
`are unpatentable.
`
`
`
`11
`
`
`
`
`
`
`
`
`
`
`December 28, 2015
`
`
`
`
`IPR2015-00499
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`
`
` / Eliot D. Williams /
`Eliot D. Williams (Reg. No. 50,822)
`G. Hopkins Guy III (Reg. No. 35,866)
`Attorneys for Petitioner
`
`
`
`
`
`12
`
`
`
`IPR2015-00499
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. 42.6(e)(1), the parties have agreed to accept service by
`
`electronic means. I hereby certify that on December 28, 2015, I caused a copy of
`
`the foregoing PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE to
`
`be served via electronic mail to the following addresses:
`
`
`Kai Zhu (Reg. No. 64,586)
`60 Cody Ln
`Los Altos, CA 94022
`Telephone: (650) 999-0172
`Facsimile: (928) 569-1639
`kz@dragonipllc.com
`
`Timothy Devlin (Reg. No. 41,706)
`Devlin Law Firm LLC
`1306 N. Broom Street, Suite 1
`Wilmington, DE 19806
`Telephone: (302) 449-9011
`Facsimile: (302) 353-4251
`tdevlin@devlinlawfirm.com
`
`
`
`
`
`
`
`Dated: December 28, 2015
`
`
`
`
`
`
`
` /Eliot D. Williams/
`Eliot D. Williams (Reg. No. 50,822)
`G. Hopkins Guy III (Reg. No. 35,866)
`1001 Page Mill Road, Bld. 1, Suite 200
`Palo Alto, California 94304-1007
`650.739.7510
`
`Attorneys for Petitioner
`
`
`
`
`
`13
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
