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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`DISH NETWORK L.L.C.,
`Petitioner
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`v.
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`DRAGON INTELLECTUAL PROPERTY, LLC.
`Patent Owner
`____________
`
`Case IPR2015-00499
`U.S. Patent No. 5,930,444
`____________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`TABLE OF CONTENTS
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`IPR2015-00499
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`Page
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`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
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`TABLE OF AUTHORITIES
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`IPR2015-00499
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`Page(s)
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`CASES
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`Ariosa Diagnostics v. Verinata Health, Inc.,
`Nos. 2015-1215, 2015-1226, slip. op. (Fed. Cir. Nov. 16, 2015) ..............................................4
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`Astrazeneca LP v. Apotex, Inc.,
`633 F. 3d 1042 (Fed. Cir. 2010).................................................................................................5
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`In re Merck & Co., Inc.,
`800 F.2d 1091 (Fed. Cir. 1986)..................................................................................................2
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`KSR Intern. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................................................2
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`ii
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`Petitioner respectfully submit this reply to Patent Owner’s Response
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`regarding the unpatentability of claims 1, 2, 3, 4, 7, 8, 9, 10, 13, and 14 of the ’444
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`Patent (the “challenged claims”) as being obvious over Goldwasser and Yifrach
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`(Ground 8), and Goldwasser, Yifrach and Vogel (Ground 9).
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`I.
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`PRELIMINARY STATEMENT
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`Although Patent Owner’s Response (Paper 12) attempts to obfuscate the
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`issues in this Trial, the questions before the Board are straightforward: (1) Does
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`Yifrach disclose a keyboard with two keys; and (2) would it be obvious to use the
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`two keys of Yifrach to implement the functionality of the “user control panel” of
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`Goldwasser. The answer to both questions is “yes”, rendering the challenged
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`claims unpatentable.
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`Goldwasser teaches every element of the independent claims, except
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`Goldwasser teaches interacting with the system via a “user control panel” rather
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`than expressly reciting a “keyboard.” See Paper 1 (Pet.) at 45-46, 56. Ex. 1010
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`(Wechselberger Decl.) ¶¶ 32, 40-42, 132, 154; Paper 12 at 12-14, 23-25. However,
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`the use of a keyboard with distinct keys corresponding to distinct device
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`functionality was a well-known design choice at the time of the ’444 Patent,
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`rendering the claims unpatentable in view of Goldwasser and Yifrach. Paper 1
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`(Pet.) at 56; Ex. 1010 (Wechselberger Decl.) ¶¶ 91, 152-154.
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`Patent Owner’s Response never addresses the combination of the teachings
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`of Goldwasser and Yifrach proposed in Grounds 8 and 9. Instead, Patent Owner
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`attacks the references individually, arguing: (1) Goldwasser lacks a keyboard with
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`two keys (Paper 12 at 12-14, 24); and (2) Yifrach lacks two buttons that, when
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`pressed, perform the functionality recited in the claims (Paper 12 at 14-23, 26-29).
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`But the petition conceded those points (Paper 1 at 43-47, 56), making Patent
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`Owner’s attacks irrelevant. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
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`Cir. 1986) (“Non-obviousness cannot be established by attacking references
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`individually where the rejection is based upon the teachings of a combination of
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`references.”).
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`In short, Patent Owner’s arguments and evidence fail to address the proper
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`inquiry: whether a “person having ordinary skill in the art could have combined
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`[the prior art teachings] in a fashion encompassed by [the claim], and would have
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`seen the benefits of doing so.” KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 422
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`(2007). Thus, the showing of unpatentability set forth in the petition remains
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`unrebutted, and the Board should find the challenged claims are unpatentable.
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`II. ARGUMENT
`A. CLAIMS 1 AND 14 ARE OBVIOUS OVER GOLDWASSER
`AND YIFRACH
`1.
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`The combination of Goldwasser and Yifrach discloses the
`claimed “keyboard having a record key and a playback
`key.”
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`Goldwasser provides all of the functionality of claim 1, but does not
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`explicitly disclose a keyboard with a record key and a playback key. Yifrach
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`discloses a device with a freeze button and a playback button. Petitioner’s
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`obviousness combination is based on the use of Yifrach’s two-button user interface
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`to implement the “user control panel” of Goldwasser. (Paper 1 at 43-47, 56).
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`Patent Owner does not dispute that Yifrach discloses “freeze” and
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`“playback” keys for user control of the device. However, Patent Owner alleges
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`that these keys do not satisfy the “keyboard having a record key and a playback
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`key” limitation of the Claim 1. Paper 12 at 14. Patent Owner’s position is not
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`based not on the lack of buttons themselves, but on the functionality that occurs in
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`Yifrach when a user presses the freeze and playback buttons. Id. At 14-15.
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`However, the functionality that occurs in Yifrach when these buttons are activated
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`is irrelevant to the Grounds of unpatentability. As to the claimed functionality,
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`Petitioner relies on the control circuit functionality of Goldwasser, not Yifrach.
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`(Paper 1 at 43-47, 56). That Yifrach’s logic circuit performs a function similar to
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`that recited in the challenged claims provides further motivation for a person of
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`ordinary skill in the art to combine the teachings of the two references.
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`As Mr. Wechselberger explained, “the use of a separate ‘Freeze’ and
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`‘Playback’ buttons, as disclosed in Yifrach … was a well-known user interface
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`design choice to a person of ordinary skill in the art at the time of the alleged
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`invention.” Ex. 1010, ¶ 91. Furthermore, the Petition, relying on
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`Dr. Wechselberger’s statement, stated that “the initiation of recording based on a
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`user issuing a record command, for example by a button press, was well-known in
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`the art.” Paper 1 at 56. This common-sense statement regarding the use of buttons
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`to control devices stands unrebutted by Patent Owner or its expert witness,
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`Mr. Goldberg. Mr. Wechselberger’s testimony is also supported by the numerous
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`prior art references cited in the background section of the petition1 that describe
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`remote controls with buttons corresponding to various functions performed by the
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`recording/playback device that they control. See Paper 1 (Pet.) at 13 (citing Exs.
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`1016 (Shimada); 1017 (Skerlos); 1018 (Sandbank) and Ex. 1004 (Vogel)). Indeed,
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`the ’444 Patent admits that such remote controls were “well known” features on
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`“all but the least expensive VCR’s presently known.” Ex. 1001 at 6:27-47; Paper 1
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`at 13.
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`To the extent Patent Owner contends that the claims require buttons
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`explicitly labelled “record” and “playback,” Patent Owner has not proffered any
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`claim construction argument in support of that contention. Moreover, this
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`contention would run afoul of the printed matter doctrine, under which instructions
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`1 See Ariosa Diagnostics v. Verinata Health, Inc., Nos. 2015-1215, 2015-1226,
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`slip. op. at 12 (Fed. Cir. Nov. 16, 2015) (holding background art raised in a petition
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`must “be considered by the Board even though it was not one of the []pieces of
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`prior art presented as the basis for obviousness.”)
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`for using a device are given no patentable weight when they appear in a claim.
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`Astrazeneca LP v. Apotex, Inc., 633 F. 3d 1042 (Fed. Cir. 2010) (finding invalid
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`claim directed to the combination of prior art composition and instructions for
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`using that composition). As in Astrazeneca, a requirement that the keyboard
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`buttons be labeled “Record” and “Playback” would serve no purpose other than
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`informing the user how to interact with the device – precisely the type of claim
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`requirement that is given no patentable weight under the printed matter doctrine.
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`Therefore, the combination of Goldwasser and Yifrach discloses the claimed
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`two-button keyboard.
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`2.
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`The combination of Goldwasser and Yifrach discloses the
`claimed “control circuit” and required functionality
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`In Petitioner’s Ground 8, the control circuit is disclosed by Goldwasser’s
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`controller. Paper 1 at 46-47. Patent Owner argues that Goldwasser does not
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`disclose the claimed “control circuit” because Goldwasser does not have a control
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`circuit coupled to a keyboard with a record and a playback key. Paper 12 at 24
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`(“Because Goldwasser lacks a record key and playback key, it cannot disclose the
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`control circuit of the ’444 Patent”). Thus, Patent Owner’s argument with respect to
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`the “control circuit” limitation is simply a rehash of its flawed argument related to
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`the claimed keyboard.
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`As previously noted, the petition concedes that Goldwasser discloses only a
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`generic user control panel, not a keyboard with two keys. Goldwasser does,
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`however, disclose a control circuit coupled to a user control panel and configured
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`to perform the functionality recited in the claim. See Paper 1 at 46-47.
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`Although not clear from its response, Patent Owner may be arguing that
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`Goldwasser’s storage of video information to memory is done without the need for
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`the user to interact with the user control panel. See Paper 12 at 25. To the extent
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`Patent Owner intended to make this argument, it is meritless. Goldwasser
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`expressly states that the functionality of the recording device is controlled via the
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`user control panel. See Ex. 1005 at 6:44-48 (“The locations at which the digitized
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`video samples are stored in the random access memory 53 are controlled by an
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`address controller 58, which in turn is responsive to commands received from a
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`user control panel 50”) (emphasis supplied).
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`Patent Owner’s witness (Mr. Goldberg) concedes that Goldwasser’s user
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`control panel “provides a means for the user to control some aspects of the
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`Goldwasser device.” Ex. 2001, ¶ 19. In fact, these so-called “aspects of the
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`Goldwasser device” that are controlled by the user control panel are actually the
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`key functionalities of recording and playback of content. See Ex. 1005 at 6:44-48
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`(quoted above); 7:8-14 (“At block 110 the interrupt mask of the computer is
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`checked briefly to allow an interrupt from the user control panel 50. At block 112
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`any interrupt from the control panel is detected; such an interrupt might indicate,
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`for example, that the orderly playback process implemented by blocks 106 and 108
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`is to be varied.”)
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`Lastly, Patent Owner emphasizes that Goldwasser does not stop recording
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`when a user issues a command to change the location of the read operation (i.e. to
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`playback a different portion of the program). Paper 12 at 11-12; Ex. 2001, ¶ 21.
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`Patent Owner provides no argument as to how this feature of Goldwasser could
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`distinguish it from the claim language, and Petitioner can surmise none. Indeed,
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`this feature of Goldwasser is consistent with the stated purpose of the ’444 Patent,
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`as reflected in the abstract: “substantially simultaneous recording and playback of
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`television type signals is achieved, thus enabling user controlled programming
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`delay.” (emphasis supplied). Like the claimed invention, Goldwasser continues to
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`simultaneously record while the location of playback is changed based on input
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`from the user control panel.
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`3.
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`The Proposed Combination of Goldwasser and Yifrach
`Results In The Claimed Combination
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`Patent Owner alleges that the combination of Goldwasser and Yifrach would
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`not result in the device of claim 1, because it would result in a “device that would
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`‘freeze’ a discrete and predetermined amount of already recorded programming,
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`and transfer that programming to a further storage device (a further storage device
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`that is not disclosed to be a part of Goldwasser).” Paper 12 at 32. Here, however,
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`Patent Owner misunderstands the proposed modification. Petitioner has proposed
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`modifying Goldwasser by implementing its “User Control Panel” with two buttons,
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`as in Yifrach. (Paper 1 at 45-46). Patent Owner provides no argument or evidence
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`rebutting petitioner’s showing directed to that combination. Accordingly, Patent
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`Owner’s arguments as to the Yifrach “freeze” functionality (Paper 12 at 31-33) are
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`simply irrelevant.
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`B.
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`PETITIONER AND MR. WECHSELBERGER PROVIDED
`SUFFICIENT MOTIVATIONS TO COMBINE GOLDWASSER
`AND YIFRACH.
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`As discussed above, the combination of Goldwasser and Yifrach is simply
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`providing two buttons to a user control panel. As stated in the petition:
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`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.
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`Paper 1 at 56.
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`Patent Owner argues that a person of ordinary skill would not be motivated
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`to combine the references by contrasting the functionality of the Yifrach and
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`Goldwasser embodiments. But the functionality of the devices is not being
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`combined. Instead, Yifrach’s two buttons are implemented on Goldwassser’s
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`control panel. Patent Owner cannot show why a practitioner would not place
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`buttons on an existing control panel.
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`Furthermore, the initiation of recording based on a user issuing a record
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`command, for example by a button press, was well-known in the art. Id.
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`Furthermore, these references are in the same field of inquiry and are directed
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`towards solving the same problem. Both Goldwasser and Yifrach are directed to
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`the delayed playback of audio or visual information. Ex. 1002 at Abstract, Ex.
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`1005 at 1:55-68; Ex. 1010 at ¶ 154. Thus, it would have been obvious to a person
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`having ordinary skill in the art to combine the features of Yifrach and Goldwasser.
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`Ex. 1010 at ¶ 154.
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`Patent Owner further alleges that combination of Goldwasser and Yifrach is
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`improper because the references are not directed to the same field of inquiry.
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`Mr. Wechselberger stated that “both Goldwasser and Yifrach are directed to
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`delayed playback of audio or visual information.” Ex. 1010, ¶ 154. Patent Owner
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`and Patent Owner’s expert Mr. Goldberg do not dispute this. Instead, Patent
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`Owner argues that this definition of the relevant field inquiry is overbroad and that
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`only a narrower field of inquiry is proper. The “Field of the Invention” of the ’444
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`Patent states that the patent is directed to “information and entertainment systems,
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`and more particularly, to a keyboard and memory equipped interface apparatus for
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`the storage and processing of signals associated with such information and
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`entertainment systems.” Ex. 1001, 1:12-16. This alleged field is even broader
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`than Mr. Wechselberger’s field of inquiry. Neither Patent Owner nor
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`Mr. Goldberg argues that Goldwasser or Yifrach are not directed to “information
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`and entertainment systems.” Yifrach’s Abstract states that
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`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.
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`Ex. 1003, Abstract (emphasis supplied).
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`The Abstract of Goldwasser confirms that it is also directed to an
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`“information or entertainment system:”
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`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.
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`Ex. 1005, Abstract.
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`Even setting aside the ’444 Patent’s own description of the field of the
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`alleged invention, Patent Owner cannot show that a person of ordinary skill in the
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`art of video playback would not use the buttons from a radio-based application to
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`control recording and playback of information in Goldwasser’s system. Nowhere
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`does Patent Owner disclaim the use of the alleged invention to audio-only
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`information, such as radio.
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`Patent Owner’s attempt to define an arbitrarily narrow and oddly-shaped
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`field of the invention to avoid obviousness after setting forth such a broad alleged
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`“Field of the Invention” in the specification itself is simply without merit.
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`C.
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`PATENT OWNER POINTS TO NO ADDITIONAL ELEMENT
`IN INDEPENDENT CLAIM 14 OR THE DEPENDENT
`CLAIMS
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`Patent Owner does not argue that any elements of independent claim 14 are
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`not met by the references beyond those arguments advanced with respect to claim
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`1. With respect to dependent claims 2, 3, 4, 7, 8, 9, 10, and 13, the Patent Owner
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`does not allege that the references fail to disclose any of the limitations introduced
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`in the dependent claims. Paper 12 at 38.
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`D. CONCLUSION
`As set forth above and in the petition, claims 1, 2, 3, 4, 7, 8, 9, 10, 13, and 14
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`are unpatentable.
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`December 28, 2015
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`IPR2015-00499
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`Respectfully submitted,
`BAKER BOTTS L.L.P.
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`
`
` / Eliot D. Williams /
`Eliot D. Williams (Reg. No. 50,822)
`G. Hopkins Guy III (Reg. No. 35,866)
`Attorneys for Petitioner
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. 42.6(e)(1), the parties have agreed to accept service by
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`electronic means. I hereby certify that on December 28, 2015, I caused a copy of
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`the foregoing PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE to
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`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
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`Dated: December 28, 2015
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`
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`
` /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
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`13