UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`
`Case No. ______
`
`
`
`DECLARATION OF CHARLES D. KNUTSON, Ph.D.
`IN SUPPORT OF APPLE INC.’S PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 7,900,229
`
`Apple Ex. 1016
`
`
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`
`Case No. ______
`
`
`
`DECLARATION OF CHARLES D. KNUTSON, Ph.D.
`IN SUPPORT OF APPLE INC.’S PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 7,900,229
`
`Apple Ex. 1016
`
`
`
`I, Charles D. Knutson, hereby declare as follows:
`
`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`Declaration of Charles D. Knutson, Ph.D.
`
`
`I.
`1.
`
`INTRODUCTION
`
`I am presently an Emeritus Professor of Computer Science at Brigham Young
`
`University in Provo, Utah.
`
`2.
`
`I have prepared this Declaration in connection with Apple Inc.’s (“Apple”)
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`Petition for Inter Partes Review of U.S. Patent No. 7,900,229 (“the ’229 Patent”),
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`which is to be filed concurrently with this Declaration.
`
`3.
`
`In the course of preparing this Declaration, I reviewed the ’229 Patent (Apple
`
`1001) and its prosecution file history (Excerpts included in Apple 1002). I have also
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`reviewed the prior art references and other documents relevant to the state of the art
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`discussed in this Declaration, including:
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`• European Patent Application No. 00124464.9, Publication No. EP 11 00268
`
`A2 to Tomioka (“Tomioka”) (Apple 1003),
`
`• Jochen Schiller, Mobile Communications (2000) (“Schiller”) (Excerpts included
`
`in Apple 1004),
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`• Certified English Translation of Japanese Unexamined Patent Application
`
`Publication H11-7453 to Kotani (“Kotani”) (Apple 1005),
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`• U.S. Patent No. 7,305,691 (“Cristofalo”) (Apple 1006),
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`• U.S. Patent Application Publication No. 2002/0111154 (“Eldering”) (Apple
`
`1007),
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`Apple 1016 – Page 1
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`Petition for Inter Partes Review
`Declaration of Charles D. Knutson, Ph.D.
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`• U.S. Patent Application Publication No. 2002/0111172 (“DeWolf”) (Apple
`
`1008),
`
`• U.S. Patent No. 5,861,881 (“Freeman”) (Apple 1009),
`
`• Gerard O’Driscoll, The Essential Guide to Set-Top Boxes and Interactive TV
`
`(2000) (“O’Driscoll”) (Excerpts included in Apple 1010),
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`• Andrew Tokmakoff and Harry van Vliet, “Home Media Server Content
`
`Management,” Internet Multimedia Management Systems II, Proceedings of
`
`SPIE Vol. 4519 (July 2001) (“Tokmakoff”) (Apple 1011),
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`• Matt Carmichael, “This Ad’s for You,” Advertising Age (April 17, 2000)
`
`(“Carmichael”) (Apple 1012),
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`• “Introduction to MPEG-7 (v3.0)” (Neil Day and José Martinez eds.), ISO/IEC
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`JTC1/SC29/ WG11, Singapore (March 2001) (Apple 1013),
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`• Introduction to MPEG-7 Multimedia Content Descriptoin Interface (B.S.
`
`Manjunath, Philippe Salembier and Thomas Sikora eds.) (2002, reprinted 2003)
`
`(Apple 1014), and
`
`• Tomasz Imielinski and Julio C. Navas, “GPS-Based Geographic Addressing,
`
`Routing, and Resource Discovery,” Communications of the ACM (April 1999)
`
`(Apple 1015).
`
`4.
`
`I have been retained by Apple Inc. (“Apple” or “Petitioner”) as an expert in the
`
`field of computer science, network engineering and architectures, and related
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`Apple 1016 – Page 2
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`Declaration of Charles D. Knutson, Ph.D.
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`technologies, including network security. I am being compensated at my normal
`
`consulting rate of $450 per hour for my time. My compensation does not depend in
`
`any way on the substance of my conclusions and is not affected by the outcome of
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`this proceeding.
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`5.
`
`I have no financial interest in Apple. I similarly have no financial interest in the
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`’229 Patent or the owner of the ’229 Patent, and I have had no contact with the
`
`named inventor of the ’229 Patent.
`
`II. EXPERIENCE AND QUALIFICATIONS
`6.
`I received a Bachelor of Science degree in computer science from Brigham
`
`Young University in 1988 and a Master of Science degree in computer science from
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`Brigham Young University in 1994. I received a doctoral degree in Computer Science
`
`from Oregon State University in 1998.
`
`7.
`
`I have been engaged in the software development industry since 1986 in
`
`engineering, management, research, and instructional positions.
`
`8.
`
`I was employed as a development engineer, test engineer, and manager at
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`Novell, Inc. between March 1989 and September 1994. During that time, I became
`
`very familiar with the theory and operation of data communication systems.
`
`9.
`
`I was Vice President of Research and Development for Counterpoint Systems
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`Foundry, Inc. (acquired in 1997 by Extended Systems, Inc., currently a division of
`
`OpenSynergy GmbH) from September 1996 to September 1999. My development
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`Apple 1016 – Page 3
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`group created the infrared beaming capability that 3Com Corporation employed in
`
`their PalmOS handheld devices. My development group also created infrared and
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`Bluetooth development platforms that have become de facto standards in the
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`embedded/handheld device market worldwide.
`
`10.
`
`I was chair of the Test and Interoperability Committee of the Infrared Data
`
`Association (IrDA) from February 1998 to October 1999, and served as a member of
`
`the IrDA Architecture Council from February 1998 to April 2008. I was also a
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`member of the Infrared Object Exchange (IrOBEX) Working Group from January
`
`2002 to December 2005, helping to define standards for data object exchange in IrDA
`
`and Bluetooth.
`
`11.
`
`I created industrial coursework on IrDA and Bluetooth technologies for
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`companies engaged in the business of designing and manufacturing short-range
`
`wireless protocol products for the embedded device market.
`
`12.
`
`I created and presented short courses on wireless data communications at the
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`Embedded Systems Conference, Portable by Design Conference, Wind River
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`Developers Conference, and other industry venues over a nine-year period from 1997
`
`to 2005.
`
`13.
`
`I have authored or co-authored two books on networking and data
`
`communications, 34 academic articles (18 of which involve data communications), six
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`Apple 1016 – Page 4
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`standards documents for the Infrared Data Association, and 43 trade journal and
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`magazine publications (most of which involve data communications).
`
`14.
`
`I have served in leadership positions, including Organizing Committee,
`
`Technical Program Committee, Panel Moderator, Session Chair, Tutorial Instructor
`
`and Reviewer, at academic conferences focused on wireless data communications and
`
`mobile computing. These conferences include the ACM SIGMOBILE International
`
`Conference on Mobile Computing and Networking, the ACM Symposium on Mobile
`
`Ad Hoc Networking & Computing, the IEEE GLOBECOM General Symposium,
`
`the IEEE International Conference on Computer Communications and Networks,
`
`the IEEE Symposium on Ad Hoc Wireless Networks, the IEEE Vehicular
`
`Technology Conference Symposium on Integrated Heterogeneous Wireless
`
`Networks, the IEEE Wireless Communications and Networking Conference, and the
`
`International Telemetering Conference.
`
`15.
`
`I have served as a reviewer for academic journals focused on wireless data
`
`communications and mobile computing including IEEE Transactions on Information
`
`Technology in Biomedicine and IEEE Transactions on Wireless Communications.
`
`16.
`
`I was the founder and Director of the Mobile Computing Laboratory in the
`
`Computer Science Department of Brigham Young University in Provo, Utah from
`
`2000 to 2008, conducting research in short-range wireless data communications, with
`
`emphasis on infrared and Bluetooth data communications.
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`Apple 1016 – Page 5
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`U.S. Patent No. 7,900,229
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`Declaration of Charles D. Knutson, Ph.D.
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`I designed and created a graduate course in wireless data communications in
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`17.
`
`the Computer Science Department at Brigham Young University, and taught this
`
`course annually from 2000 to 2005.
`
`18. During my tenure as Director of the Brigham Young University Mobile
`
`Computing Laboratory, I advised twelve graduate students (11 Master of Science
`
`candidates and one doctoral candidate) whose research focused on wireless data
`
`communications.
`
`19. During a three-year period from 2001 to 2003, the Brigham Young University
`
`Mobile Computing Lab engaged actively in wireless medical informatics research,
`
`yielding two Master of Science graduates and several publications.
`
`20. Additional details concerning my professional qualifications, experience, and
`
`publications are set forth in my current curriculum vitae, attached as Apple 1007.
`
`III. LEGAL STANDARDS
`21.
`I am not an attorney and have not been asked to offer my opinion on the law.
`
`For the purposes of this Declaration, I have been informed about certain aspects of
`
`the law that are relevant to my opinions. My understanding of the law is summarized
`
`below.
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`Apple 1016 – Page 6
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`Declaration of Charles D. Knutson, Ph.D.
`
`
`Claim Construction
`
`A.
`I have been informed and understand that claim construction is a matter of law
`
`22.
`
`and that the final claim construction for this proceeding will be determined by the
`
`Patent Trial and Appeal Board.
`
`23.
`
`I have been informed and understand that a claim term of an unexpired patent
`
`in an Inter Partes Review is to be given the “broadest reasonable construction in light
`
`of the specification.” 37 C.F.R. § 42.100(b). Accordingly, for the purposes of my
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`analysis in this proceeding, I have applied the broadest reasonable construction of the
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`claim terms as they would be understood by one of ordinary skill in the relevant art in
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`light of the specification as of the priority date of the ’229 Patent. I understand that
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`this claim construction standard differs from the legal standard used for construing
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`claim terms in the course of litigation in a district court. Accordingly, I reserve the
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`right to revise my opinions relating to claim construction in the event that I am called
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`to testify in connection with litigation in a district court.
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`Indefiniteness
`
`B.
`I have been informed and understand that a claim is indefinite under 35 U.S.C.
`
`24.
`
`§ 112(2) if it fails to “inform those skilled in the art about the scope of the invention
`
`with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
`
`2129-30 (2014). If a claim uses a term of degree, the claim is indefinite if the
`
`specification does not provide some standard for measuring that degree and if one of
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`Apple 1016 – Page 7
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`Declaration of Charles D. Knutson, Ph.D.
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`ordinary skill in the art could not ascertain the scope of the claim from the
`
`specification.
`
`Anticipation
`
`C.
`I have been informed and understand that a patent claim can be anticipated—
`
`25.
`
`and therefore not patentable—if all of the elements of the claim are disclosed by a
`
`single prior art reference.
`
`26.
`
`I have been informed and understand that anticipation does not require that a
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`prior art reference expressly disclose each and every claim element using the same
`
`terminology as recited by the claims. I understand that a claim is anticipated if each
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`and every element as set forth in the claim is found, either expressly or inherently, in a
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`single prior art reference. For example, I understand that a claim limitation is
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`inherently disclosed if it is not explicitly present in the written description of the prior
`
`art, but would necessarily be embodied or met by an apparatus or method as taught
`
`by the prior art. Moreover, I understand that anticipation does not require that the
`
`prior art use the same terminology recited within the patent claims.
`
`D. Obviousness
`I have been informed and understand that a patent claim is obvious and
`
`27.
`
`therefore invalid if the claimed subject matter, as a whole, would have been obvious
`
`to a person of ordinary skill in the art as of the priority date of the patent based on
`
`one or more prior art references and/or the knowledge of one of ordinary skill in the
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`Apple 1016 – Page 8
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`art. I understand that an obviousness analysis must consider (1) the scope and
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`content of the prior art, (2) the differences between the claims and the prior art, (3)
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`the level of ordinary skill in the pertinent art, and (4) secondary considerations, if any,
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`of non-obviousness (such as unexpected results, commercial success, long-felt but
`
`unmet need, failure of others, copying by others, and skepticism of experts).
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`28.
`
`I understand that a prior art reference may be combined with other references
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`to disclose each element of the invention under 35 U.S.C. § 103. I understand that a
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`reference may also be combined with the knowledge of a person of ordinary skill in
`
`the art, and that this knowledge may be used to combine multiple references. I
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`further understand that a person of ordinary skill in the art is presumed to know the
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`relevant prior art. I understand that the obviousness analysis may take into account
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`the inferences and creative steps that a person of ordinary skill in the art would
`
`employ.
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`29.
`
`In determining whether a prior art reference could have been combined with
`
`other prior art or other information known to a person having ordinary skill in the art,
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`I understand that the following principles may be considered:
`
`a.
`
`b.
`
`A combination of familiar elements according to known methods is
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`likely to be obvious if it yields predictable results;
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`The substitution of one known element for another is likely to be
`
`obvious if it yields predictable results;
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`Apple 1016 – Page 9
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`
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
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`Declaration of Charles D. Knutson, Ph.D.
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`The use of a known technique to improve similar items or methods in
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`the same way is likely to be obvious if it yields predictable results;
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`The application of a known technique to a prior art reference that is
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`ready for improvement, to yield predictable results;
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`Any need or problem known in the field and addressed by the reference
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`can provide a reason for combining the elements in the manner claimed;
`
`A person of ordinary skill often will be able to fit the teachings of
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`multiple references together like a puzzle; and
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`The proper analysis of obviousness requires a determination of whether
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`a person of ordinary skill in the art would have a “reasonable expectation
`
`of success” – not “absolute predictability” of success – in achieving the
`
`claimed invention by combining prior art references.
`
`30.
`
`I am informed that whether a prior art reference invalidates a patent claim as
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`obvious is determined from the perspective of a person of ordinary skill in the art.
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`While there is no requirement that the prior art contain an express suggestion to
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`combine known elements to achieve the claimed invention, a suggestion to combine
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`known elements to achieve the claimed invention may come from the prior art as a
`
`whole, or individually, as filtered through the knowledge of one skilled in the art. In
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`addition, the inferences and creative steps a person of ordinary skill in the art would
`
`employ are also relevant to the determination of obviousness.
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`Apple 1016 – Page 10
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`Declaration of Charles D. Knutson, Ph.D.
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`31. When a work is available in one field, design alternatives and other market
`
`forces can prompt variations of it, either in the same field or in another. If a person
`
`of ordinary skill in the art can implement a predictable variation and would see the
`
`benefit of doing so, that variation is likely to be obvious. In many fields, there may be
`
`little discussion of obvious combinations, and in these fields market demand – not
`
`scientific literature – may drive design trends. When there is a design need or market
`
`pressure and there are a finite number of predictable solutions, a person of ordinary
`
`skill in the art has good reason to pursue those known options.
`
`32.
`
`It is my understanding that there is no rigid rule that a reference or
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`combination of references must contain a “teaching, suggestion, or motivation” to
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`combine references. But, I understand that the “teaching, suggestion, or motivation”
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`test can be a useful guide in establishing a rationale for combining elements of the
`
`prior art. This test poses the question as to whether there is an express or implied
`
`teaching, suggestion, or motivation to combine prior art elements in a way that
`
`realizes the claimed invention, and it seeks to counter impermissible hindsight
`
`analysis.
`
`IV. OVERVIEW OF THE ’229 PATENT
`33. The ’229 Patent was filed on October 15, 2002 and does not claim priority to
`
`an earlier application. Apple 1001 cover. The ’229 Patent claims “a system and
`
`method for utilizing user profiles in an interactive television system,” in which a user
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`Apple 1016 – Page 11
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`U.S. Patent No. 7,900,229
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`Declaration of Charles D. Knutson, Ph.D.
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`profile may be created or updated based on a user’s activity on a first device, and the
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`system may select and send data to a user on a second device based at least in part on
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`the user profile. Id. Abstract. As the ’229 Patent acknowledges, interactive television
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`systems were well known at the time of the application for the ’229 Patent, they
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`frequently included a “set-top box connected to a television set and a recording
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`device, but may consist of any number of suitable devices,” and they allowed
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`opportunities for personalization. See, e.g., id. 1:15-18, 30-45. Independent Claim 14
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`recites such known components, claiming a “remote unit,” a “set-top box” and a
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`“broadcast station coupled to convey a programming signal to the set-top box.” Id.
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`Claim 14. The “remote unit” may be a “mobile unit” such as a cellular phone, a
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`personal digital assistant (“PDA”), or a portable computer system, or it may be a
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`“fixed unit” such as a personal computer. See, e.g., id. at 2:11-15, 2:28-30, 5:60-6:4, Fig.
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`3. The system components may also communicate with one another. For example,
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`the “mobile unit” may be used to enter and transmit information that may be used to
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`update a user profile to the set-top box over a network, and the mobile unit may
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`record a user’s actions as “usage history” that is transmitted back to the TV system.
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`Id. 6:5-9, 10:61-67. Another example of communication is that a mobile unit may be
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`used to program a set-top box to record programming. Id. 9:52-61.
`
`34.
`
` The ’229 Patent claims a system and method in which “a user may access the
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`system through various means” and the system “creat[es] and maintain[s] a user
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`Apple 1016 – Page 12
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`Declaration of Charles D. Knutson, Ph.D.
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`profile which reflects activity of the user within the system.” Id. 1:63-2:1. For
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`example, Independent claim 14 recites that the system is configured to “update a user
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`profile responsive to a first user activity being initiated via a first device corresponding
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`to one of the remote unit and the set-top box,” “detect a second user activity, the
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`second user activity being initiated via a second device corresponding to one of the
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`remote unit and the set-top box, the second device being different from the first
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`device,” “access the user profile in response to the second user activity” and “transmit
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`data responsive to the second user activity, wherein the transmitted data is based at
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`least in part on the user profile, and wherein the first user activity affects a content of
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`said data transmitted to the user responsive to the second user activity.” Id. Claim 14.
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`35. Claim 14’s “first” and “second” user activities include “an activity related to
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`television viewing” and “an activity unrelated to television viewing,” which are
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`performed on the separate “first” and “second” devices. Id. The “first activity” may
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`be either “related to television viewing” or “unrelated to television viewing” and the
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`second activity may be either “unrelated to television viewing” or “related to
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`television viewing,” respectively. Id. As the specification states, “Ultimately, all user
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`interaction with the system may affect the user profile which may in turn affect the
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`information the user receives from any accessing device.” Id. 13:3-6. For example, a
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`“user’s activity such as television viewing may create or update a user profile which
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`reflects the user’s viewing activities” and other activities such as “cell phone or other
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`Apple 1016 – Page 13
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`mobile unit activities and communications” may create or update a user profile. Id. at
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`2:1-6; see also 2:59-66, 7:18-42. “Similarly, Web surfing activity may affect the data the
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`user receives when making accesses using a wireless PDA.” Id. 13:1-3. Information is
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`conveyed to a user “based at least in part on the data in the user profile” across
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`devices. Id. 2:6-7. For example, “a user’s cell phone activity may affect the
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`information the user receives at home on their television, and vice versa.” Id. 2:8-10.
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`The “user profile may be created and/or updated based on accesses from any device
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`within the system” and “the user profile may be used to select information to
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`presentation to any device within the system.” Id. 12:1-4. Thus, all of a user’s
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`activities—whether performed on a first device or a second device, and whether
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`“related to television viewing” or “unrelated to television viewing”—may create or
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`update a user profile, which in turn may affect the information the user receives on
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`any accessing device.
`
`36.
`
`Independent Claim 26 recites the same steps as Claim 14, but specifies that
`
`they are performed by a computer readable storage medium containing program
`
`instructions that can be executed by a computing device. See Apple 1001 Claim 26.
`
`Claim 26 claims a first and second device without limiting the devices to a “remote
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`unit” or “set-top box.” Id. Dependent claims 15-16, 19, 21, 24, 28, 30, and 31 recite
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`additional aspects such as updating the user profile in response to a second user
`
`activity (Claim 15), transmitting non-requested data to a user based on a user profile
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`Apple 1016 – Page 14
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`Declaration of Charles D. Knutson, Ph.D.
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`(Claims 19 and 30), updating a user profile and transmitting data based on the physical
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`location of a user’s device (Claims 24 and 31), using a remote unit without a set-top
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`box for one activity (Claim 16), using a remote unit that is a cellular phone, a personal
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`digital assistant, a fixed unit, or a portable computer system (Claim 28), the capability
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`for the set-top box and remote unit to communicate (Claim 21). Every claim element
`
`is disclosed by the prior art as discussed in Section VII, below.
`
`V.
`37.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`For the purpose of my analysis in connection with this Petition, I have been
`
`asked to assume that the relevant time of the claimed invention of the ’229 Patent is
`
`October 15, 2002, the date on which the application of the ’229 Patent was filed.
`
`Based on my review of the ’229 Patent and my background and experience in the field
`
`of computer science, it is my opinion that one of ordinary skill in the art as of the
`
`filing date of the ’229 Patent would be someone with a bachelor’s degree or higher in
`
`computer science, computer engineering, or the equivalent, plus two or more years of
`
`experience in the field of networking and data communications, or a similar field.
`
`38.
`
`In forming this opinion, I have considered the types of problems encountered
`
`in the art, the prior art solutions to those problems, the rapidity with which
`
`innovations were made, the sophistication of the technology, and the educational level
`
`of active workers in the field. By the filing date of the ’229 Patent in October 2002, I
`
`was a person of at least ordinary skill in the art.
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`Apple 1016 – Page 15
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`Declaration of Charles D. Knutson, Ph.D.
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`VI. CLAIM CONSTRUCTION
`39.
`I have been asked to consider the constructions of the following claim terms:
`
`A.
`
`“activity related to television viewing” and “activity unrelated to
`television viewing”
`40. Claims 14 and 26 recite an “activity related to television viewing” and an
`
`“activity unrelated to television viewing.” Apple 1001 Claims 14 and 26. The
`
`specification of the ’229 Patent does not define an “activity related to television
`
`viewing” or an “activity unrelated to television viewing,” and does not provide any
`
`guidance as to how these relative terms should be applied or distinguished. For
`
`example, it is unclear what would make an activity “related to television viewing” or
`
`“unrelated to television viewing.” The boundaries of the claims are left unclear to one
`
`of ordinary skill in the art. Based on this, I cannot provide a definition that precisely
`
`identifies the bounds of these terms.
`
`41. During prosecution, however, the Applicant identified a number of discrete
`
`activities that the Applicant believed are “related to television viewing” or
`
`“unrelated to television viewing.” For example, the Applicant indicated that
`
`certain activities are “related to television viewing” such as watching television,
`
`setting a user’s favorite channels, setting and scheduling program reminders,
`
`accessing program listings, adjusting parental control settings, accessing an
`
`interactive television program guide, and scheduling recordings. See, e.g., Apple
`
`1002 at 192-93, 167-169. The Applicant also identified certain other activities as
`
`Apple 1016 – Page 16
`
`
`
`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`Declaration of Charles D. Knutson, Ph.D.
`
`being “unrelated to television viewing” such as web browsing, shopping, accessing
`
`and using a stock ticker application, using an e-mail or chat application, gaming,
`
`and banking. See, e.g., id. at 140-42, 169-170.
`
`42.
`
`In my opinion, this handful of isolated examples do not clearly demarcate the
`
`boundary between activities “related to television viewing” and activities “unrelated to
`
`television viewing.” While the bounds of these terms are indefinite, I understand that
`
`indefiniteness is not a basis to challenge the claims through the inter partes review
`
`process. For the purpose of analyzing whether the ’229 Patent is anticipated or
`
`rendered obvious in view of the prior art for this inter partes review, I considered
`
`“activity related to television viewing” to include at least the activities the Applicant
`
`identified during prosecution, such as watching television, setting a user’s favorite
`
`channels, setting and scheduling program reminders, accessing program listings,
`
`adjusting parental control settings, accessing an interactive television program guide,
`
`and scheduling recordings. I similarly considered “activity unrelated to television
`
`viewing” to include at least web browsing, shopping, accessing and using a stock
`
`ticker application, using an e-mail or chat application, gaming, and banking. The prior
`
`art discloses a broad range of diverse activities, and these broad categories of activities
`
`necessarily disclose activities that are either “related to television viewing” or
`
`“unrelated to television viewing.”
`
`Apple 1016 – Page 17
`
`
`
`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`Declaration of Charles D. Knutson, Ph.D.
`
`
`B.
`“remote unit”
`43. Claims 14, 16, 21, and 28 recite a “remote unit.” See Apple 1001 Claims 14, 16,
`
`21, and 28. The specification does not define the term “remote unit.” The
`
`specification discloses, however, that a “remote unit” may be either a “mobile unit” or
`
`a “fixed unit.” See, e.g., id. Abstract (referring to “a remote mobile or fixed unit”); see
`
`also id. 12:66-13:1 (referring to a “mobile or other remote unit”). Also Figure 3 is a
`
`diagram of a communications network as claimed in Claim 14. E.g., id. Fig. 3, 5:36-38.
`
`Fig. 3 does not label a “remote unit,” but instead depicts a “mobile unit” and a “fixed
`
`unit” along with the other system components recited in independent Claim 14 (i.e., a
`
`“set-top box” and a “broadcast station”):
`
`
`44. Based on these disclosures a person of ordinary skill in the art would
`
`understand that a “remote unit” comprises either a “mobile unit” or a “fixed unit.”
`
`Apple 1016 – Page 18
`
`
`
`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`Declaration of Charles D. Knutson, Ph.D.
`
`The ’229 Patent specification states that a “mobile unit [] may be one of several
`
`different devices configured for wireless communications” such as a cellular
`
`telephone, a personal digital assistant, or a mobile computer system, and also states
`
`that “[o]ther embodiments of mobile unit 305 are possible and contemplated.” Id.
`
`5:60-6:4. A “fixed unit” may be a device such as a personal computer that is
`
`configured to communicate with other units via wireless or hard-wired means. Id.
`
`5:45-59.
`
`“set-top box” and “broadcast station”
`
`C.
`I understand that in co-pending litigation in the district court, the parties
`
`45.
`
`disagree over the construction of the terms “set-top box” and “broadcast station.” I
`
`understand that the parties dispute whether a “set-top box” must have the capability
`
`to tune and decode programming signals. Apple 1018 at 16. A set-top box was well
`
`known and understood in the art to be a device that decodes and tunes television
`
`signals to convert them to a format that is understood by a television. See, e.g., Apple
`
`1010 at 2, 30-32. In my opinion, the prior art discloses a “set-top box” under any
`
`definition, including Patent Owner’s proposed definition: “a device that receives a
`
`programming signal and outputs audio and video signals for presentation on a
`
`display.” See Apple 1018 at 16; see also Section VII, below.
`
`46. The parties also dispute whether a “broadcast station” must have the capability
`
`to transmit programming signals to all network destinations simultaneously. Apple
`
`Apple 1016 – Page 19
`
`
`
`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`Declaration of Charles D. Knutson, Ph.D.
`
`1018 at 17. Patent Owner also proposes an unnecessary requirement that a broadcast
`
`station is equipped to “receive signals” from the devices to which it conveys signals.
`
`Id. In my opinion, the disputes are immaterial to this Petition, because the prior art
`
`explicitly discloses “broadcast” and a “network broadcast center.” A broadcast
`
`station was well known in the art under any definition, including Patent Owner’s
`
`proposed definition: “a facility equipped both to convey signals to multiple devices
`
`and to receive signals from those devices.” See Section VII, below.
`
`VII. THE INVALIDATING PRIOR ART
`47.
`It is my opinion that Claims 14-16, 19, 21, 24, 26, 28, 30 and 31 of the ’229
`
`Patent are anticipated or rendered obvious in view of the prior art references
`
`discussed below. I note that the citations to the references below are exemplary, and I
`
`reserve the right to rely upon other relevant portions of the references if I am called
`
`to testify regarding the invalidity of Claims 14-16, 19, 21, 24, 26, 28, 30 and 31.
`
`A.
`
`Tomioka, Schiller, and Kotani
`1.
`Overview of Tomioka
`48. European Published Patent Application EP 1 100 268 A2 (“Tomioka”), which
`
`is submitted along with Apple’s Petition as Apple 1003, is entitled “Audi[o]visual
`
`information management system.” Apple 1003 cover. Tomioka was filed on August
`
`11, 2000 and published on May 16, 2001. Id.
`
`Apple 1016 – Page 20
`
`
`
`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`Declaration of Charles D. Knutson, Ph.D.
`
`49. Tomioka discloses a system and method for utilizing a user profile to transmit
`
`interactive multimedia data to users based on user preferences derived from user
`
`input and usage history. E.g., Apple 1004 cover, ¶¶ 0001, 0006, 0037-38, 0040,
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