`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC,
`Petitioner,
`
`v.
`
`ROTHSCHILD DIGITAL MEDIA INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01364
`Patent 6,101,534
`____________
`
`DECLARATION OF MICHAEL C. BROGIOLI, PH.D.
`
`
`
`
`
`
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`PATENT OWNER EX. 2008 - PAGE 1
`
`
`
`
`
`TABLE OF CONTENTS
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................ .. 2
`
`III. MY EXPERTISE AND THE PERSON OF ORDINARY SKILL ................ .. 5
`
`INTRODUCTION .............................................................................................. 2
`I.
`II. BACKGROUND AND QUALIFICATIONS ................................................... 3
`II. BACKGROUND AND QUALIFICATIONS ................................................. .. 3
`III. MY EXPERTISE AND THE PERSON OF ORDINARY SKILL .................. 5
`IV. APPLICABLE LEGAL STANDARDS .......................................................... 6
`V. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 10
`VI. THE ‘534 PATENT WOULD NOT BE CONSIDERED OBVIOUS
`WHEN COMBINING MAGES WITH BATCHELOR ............................... 10
`A. Batchelor Would Not Be Considered Reasonably Pertinent
`A. Batchelor Would Not Be Considered Reasonably Pertinent
`Technology By a POSITA ....................................................... 10
`Technology By a POSITA ..................................................... .. 10
`B. Claims 1, 6-9 and 21 Are Not Obvious When Considering
`B. Claims 1, 6-9 and 21 Are Not Obvious When Considering
`the Combination of Mages and Batchelor ............................... 15
`the Combination of Mages and Batchelor ............................. .. 15
`C. Claim 23 Is Not Obvious When Attempting To Combine
`C. Claim 23 Is Not Obvious When Attempting To Combine
`Mages and Batchelor ................................................................ 19
`Mages and Batchelor .............................................................. .. 19
`D. Claim 24 Is Not Obvious When Attempting to Combine
`D. Claim 24 Is Not Obvious When Attempting to Combine
`the Mages and Batchelor References ....................................... 22
`the Mages and Batchelor References ..................................... .. 22
`VII. CONCLUSION ............................................................................................. 23
`
`IV. APPLICABLE LEGAL STANDARDS ........................................................ .. 6
`
`V. LEVEL OF ORDINARY SKILL IN THE ART ........................................... .. 10
`
`VI. THE ‘534 PATENT WOULD NOT BE CONSIDERED OBVIOUS
`
`WHEN COMBINING MAGES WITH BATCHELOR ............................. .. 10
`
`VII. CONCLUSION ........................................................................................... .. 23
`
`1
`ATENT OWNER EX. 2008 - PAGE 2
`
`1 P
`
`
`
`PATENT OWNER EX. 2008 - PAGE 2
`
`
`
`
`I, Michael C. Brogioli, state and declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I am over 18 years of age and otherwise competent to make this
`
`Declaration.
`
`2.
`
`I have been retained as an expert witness to provide testimony on
`
`behalf of Rothschild Digital Media Innovations, LLC (“Patent Owner”) in this
`
`proceeding and make this Declaration based upon facts and matters within my own
`
`knowledge or on information provided to me by others.
`
`3.
`
`I understand that on June 9, 2015, Sony Computer Entertainment
`
`America LLC (“Petitioner”) filed a petition for inter partes review (the “Petition”)
`
`of U.S. Patent No. 6,101,534 (the “‘534 Patent”).
`
`4.
`
`I understand that on September 17, 2015, Patent Owner filed a
`
`preliminary response (the “Preliminary Response”) to the Petition.
`
`5.
`
`I understand that on December 15, 2015, the Patent Trial and Appeal
`
`Board issued a decision instituting inter partes review (the “Institution Decision”)
`
`on certain grounds advanced in the Petition.
`
`6.
`
`In connection with this matter, I reviewed the Petition, the Preliminary
`
`Response, the Institution Decision, and the exhibits to the Petition that remain
`
`relevant following the Institution Decision, and I consulted such other scientific
`
`
`
`2
`
`PATENT OWNER EX. 2008 - PAGE 3
`
`
`
`
`and technical materials as I deemed potentially relevant to forming my opinion,
`
`including those other materials discussed in this declaration.
`
`II. BACKGROUND AND QUALIFICATIONS
`7. My background and qualifications are set forth in detail in my
`
`curriculum vitae, filed herewith as Exhibit 2009.
`
`8.
`
`In brief, I received my Ph.D. in Electrical and Computer Engineering
`
`from Rice University. I received my M.S. in Electrical and Computer Engineering
`
`also from Rice University. I received my Bachelor’s degree in Electrical
`
`Engineering from Rensselaer Polytechnic Institute (“RPI”). At RPI, I was elected
`
`to Eta Kappa Nu, the scientific and engineering honor society and graduated cum
`
`laude. During my graduate studies, I was a Texas Instruments Fellowship recipient
`
`in the area of digital signal processing hardware and software systems.
`
`9. My doctorate dissertation topic is titled “Reconfigurable
`
`Heterogeneous DSP/FPGA Based Embedded Architectures for Numerically
`
`Intensive Embedded Computing Workloads.”
`
`10.
`
`I have extensive experience in hardware and software system design,
`
`including but not limited to multimedia, networking, distributed computing and
`
`gaming technology. While at Rice University, I developed a retargetable software
`
`compilation system used for computer networking, and multimedia based
`
`computing architectures. Also while at Rice, I developed a software based
`
`
`
`3
`
`PATENT OWNER EX. 2008 - PAGE 4
`
`
`
`
`computer architecture design framework and supporting software for multimedia
`
`and networking technologies. I further developed an adaptive and portable
`
`software library for numerical computations used in many modern network based
`
`software applications.
`
`11. While in graduate school, I interned at Intel Corp.’s microprocessor
`
`research labs and Texas Instruments’ advanced architecture and chip technology
`
`group in the areas of wireless computer networking. After completing graduate
`
`school, I worked in Freescale Semiconductor’s software solutions research group
`
`in the area of hardware and software systems, including networking, multimedia
`
`and gaming technology. At Freescale, I was a senior member of the technical staff
`
`responsible for software R&D and CPU design. I left Freescale to become a
`
`consultant in the field of embedded computing, communications, and
`
`software/hardware design.
`
`12.
`
`I have been a Chief Architect and Senior Engineer, and have been
`
`responsible for the management of technology, engineering road maps, and design
`
`of production and research software infrastructures and related optimizations.
`
`13.
`
`I have been engaged as an expert witness in multiple cases ranging
`
`from topics on wireless networking and microprocessor technology to networked
`
`computing and multimedia / gaming systems. I have also been an expert witness
`
`
`
`4
`
`PATENT OWNER EX. 2008 - PAGE 5
`
`
`
`
`involving reverse engineering of source code as well as a technical advisor relating
`
`to analysis of prior art and claim construction.
`
`14.
`
`I currently serve as an adjunct professor of Electrical and Computer
`
`Engineering at Rice University, teaching graduate courses in embedded computing,
`
`mobile computing, and software-hardware optimization and telecommunications. I
`
`am also the founder of Polymathic Consulting, where I provide engineering,
`
`research and development, and intellectual property consulting to clients ranging
`
`from early stage start-up companies to Fortune 100 companies. Lastly, I serve on
`
`the committees of numerous conferences on subject matter relating to hardware
`
`and software design.
`
`15.
`
`I’ve contributed to over 25 published articles and books including
`
`subject matter such as computer networking, computer hardware and computer
`
`software design. My curriculum vitae contains a list of recent publications.
`
`III. MY EXPERTISE AND THE PERSON OF ORDINARY SKILL
`16. As a result of my education and years of experience, I am intimately
`
`familiar with the technical subject matters at issue in this IPR. Accordingly, I
`
`believe that I am competent to provide expert opinions on the technology described
`
`in the ‘534 Patent as well as the teachings of the prior art references. I also believe
`
`that, based on my education and years of experience, I understand how the ’534
`
`
`
`5
`
`PATENT OWNER EX. 2008 - PAGE 6
`
`
`
`
`Patent and the relevant prior art would have been understood by a person of
`
`ordinary skill in the art at the time of the invention for the ’534 Patent.
`
`17.
`
`I understand that the ’534 Patent issued from Application No.
`
`08/922,926 which was filed on September 3, 1997. I further understand, based on
`
`the foregoing, that the date of the invention relating to the ’534 Patent is, for
`
`purposes of this proceeding, September 3, 1997.
`
`IV. APPLICABLE LEGAL STANDARDS
`
`18.
`
`I am a technical expert, not an attorney, and do not expect to offer any
`
`legal opinions. Nonetheless, I have been informed of legal standards applicable in
`
`this proceeding that relate to claim construction and patentability. I have applied
`
`those standards in forming the technical opinions expressed in this declaration.
`
`19.
`
`I understand that, in an IPR proceeding, claim terms are to be given
`
`the broadest reasonable construction in light of the specification and teachings of
`
`the patent, as they would be understood by a person of ordinary skill in the relevant
`
`art.
`
`20.
`
`I understand that factors relevant to determination of the level of
`
`ordinary skill in the art may include: (1) educational level of inventor; (2) nature of
`
`problems encountered in art; (3) prior solutions to those problems; (4) rapidity of
`
`innovation; (5) sophistication of technology; and (6) educational level of active
`
`workers in field.
`
`
`
`6
`
`PATENT OWNER EX. 2008 - PAGE 7
`
`
`
`
`
`21. Given my education and experience, I understand how a person of
`
`ordinary skill in the art pertaining to the ‘534 Patent would interpret and
`
`understand the claims and claim terms under these standards.
`
`22.
`
`I understand that claim terms are presumed to be given their ordinary
`
`and customary meaning as would be understood by one of ordinary skill in the art.
`
`I also understand that an inventor may provide a contrary definition of a term in the
`
`specification, if reasonably clear, deliberate and precise. I further understand that a
`
`particular embodiment appearing in the specification is not to be read into a claim
`
`if the claim language is broader than the embodiment.
`
`23.
`
`I have been informed and advised that, in order for a prior art
`
`reference to be anticipating, it must disclose each and every element and limitation
`
`in the challenged claim. I understand that a simple disclosure is not enough and
`
`the reference must teach the arrangement or combination of the elements and
`
`limitations as claimed.
`
`24.
`
`I have been informed and advised that a claim is obvious, and
`
`therefore not patentable, if the differences between the claim and the prior art are
`
`such that the claimed subject matter as a whole would have been obvious to a
`
`person of ordinary skill in the art at the time the invention was made. I further
`
`understand that this inquiry involves consideration of a number of factors including:
`
`(1) the scope and content of the prior art; (2) the differences between the claimed
`
`
`
`7
`
`PATENT OWNER EX. 2008 - PAGE 8
`
`
`
`
`invention and the prior art; (3) the level of ordinary skill in the art; and (4)
`
`secondary considerations or objective evidence of nonobviousness, including but
`
`not limited to commercial success, long-felt need for the invention, and failure of
`
`others.
`
`25.
`
`I understand that a conclusion that a claim would have been obvious is
`
`appropriate if all the claimed elements were known in the prior art, and one of
`
`ordinary skill in the art could have combined the elements as claimed by known
`
`methods with no change in their respective functions, yielding nothing more than
`
`predictable results. I further understand that the mere description of all claimed
`
`limitations in the prior art is not by itself sufficient to establish obviousness.
`
`26.
`
`I understand that if a prior art reference must be modified to support a
`
`proposed combination of references, and if such modification would render the
`
`prior art reference unsatisfactory for its intended purpose, or change the principle
`
`of operation of the reference, this makes it more likely that a claim was not
`
`obvious.
`
`27.
`
`I understand that if the prior art teaches away from a proposed
`
`combination of known elements, this makes it more likely that a claim was not
`
`obvious.
`
`28.
`
`I understand that hindsight must not be used when comparing prior art
`
`references to claimed inventions for purposes of determining obviousness. Rather,
`
`
`
`8
`
`PATENT OWNER EX. 2008 - PAGE 9
`
`
`
`
`a conclusion of obviousness must be rooted in the knowledge and skill of a person
`
`of ordinary skill in the art at the time of the invention (in this case, as of September
`
`3, 1997, the filing date of the application that led to the ‘534 Patent).
`
`29.
`
`I understand that a determination of obviousness requires a rationale
`
`for a proposed combination of references, and that such a rationale may be found
`
`in explicit statements in the prior art, in some teaching, suggestion or motivation
`
`that would have led a person of ordinary skill to combine the prior art references,
`
`or in the knowledge and common sense of one of ordinary skill in the art.
`
`30.
`
`I understand that a reference qualifies as prior art for an obviousness
`
`determination only if it is analogous to the claimed invention. I further understand
`
`that prior art is analogous only if it is (1) from the same field of endeavor; or (2)
`
`reasonably pertinent to the particular problem the inventor is trying to solve, such
`
`that a person of ordinary skill would have looked to that particular art to solve the
`
`particular problem at hand.
`
`31.
`
`I understand that the scope of the obviousness inquiry in this inter
`
`partes review is defined by the grounds on which the Institution Decision is based,
`
`and that, as stated in the Institution Decision, no other grounds are at issue.
`
`32.
`
`I have relied upon the foregoing standards to arrive at my opinions
`
`and conclusions herein.
`
`
`
`9
`
`PATENT OWNER EX. 2008 - PAGE 10
`
`
`
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`33.
`
`In my opinion, a person of ordinary skill in the art pertaining to the
`
`subject matter of the ’534 Patent at the time of the inventions claimed in the ‘534
`
`Patent would have had an undergraduate degree in computer science, computer
`
`engineering or electrical engineering. In addition, they would possess
`
`approximately two years of industry experience in the field of computer
`
`networking and/or distributed systems.
`
`VI. THE ‘534 PATENT WOULD NOT BE CONSIDERED OBVIOUS
`WHEN COMBINING MAGES WITH BATCHELOR
`
`34. Claims 1, 23 and 24 would not have been obvious to a person of
`
`ordinary skill in the art (“POSITA”) at the time of the invention over the proposed
`
`combinations of Mages and Batchelor for the reasons that are discussed in the
`
`following sections. It is also my opinion that Batchelor would not be considered
`
`analogous art by a POSITA at the time of the invention, or working in the field of
`
`computer networking in general.
`
`A. Batchelor Would Not Be Considered Reasonably Pertinent
`Technology By a POSITA
`
`35. The Batchelor reference comprises a system to display supplemental
`
`information in conjunction with a publicly broadcast television signal. The
`
`broadcast transmitter in Batchelor transmits a broadcast television signal
`
`comprising a video signal, and command and address information in the vertical
`
`
`
`10
`
`PATENT OWNER EX. 2008 - PAGE 11
`
`
`
`
`blanking interval (“VBI”). (Ex. 1004 Fig. 1; id. at 2:18-28.) The video signal and
`
`inserted data of Batchelor are received by the receiver of the system, and provided
`
`to the vertical blanking interval (“VBI”) decoder. (Id. Fig. 1; id. 2:29-30.) The
`
`VBI decoder, in this context, is used to separate out the data from the video signal.
`
`(Id. Fig. 1; id. 2:30-32.) The video signal is processed by an NTSC decoder and
`
`displayed on part of a computer monitor. (Id. Fig. 1; id. 2:33-35.) The VBI
`
`information can be used to retrieve, from the computer, text or graphics related to
`
`the subject matter of the video signal. (Id. 2:49-54.) As discussed in the abstract
`
`of Batchelor, the text or graphics can be “stored for later viewing” or displayed in
`
`split-screen with the video signal (id. Fig. 2; id. 2:55-58).
`
`36. The broadcast television system of Batchelor would not be considered
`
`analogous art by a POSITA in the field of the ‘534 invention. As an initial matter,
`
`the invention of Batchelor pertains to the medium of broadcast television signals
`
`and television transmitters, not packetized and distributed computer networks. In
`
`fact, in the case of Batchelor there is no remote server. This is for the very reason
`
`that Batchelor is directed at a television transmitter, and not a client server
`
`architecture. (Ex. 1004 Fig. 1; id. at 2:17-18 (“The broadcaster 12 may be any
`
`broadcasting system including satellite and cable networks.”); id. at 2:26-28 (“The
`
`video signal and accompanying inserted data are transmitted by a transmitter
`
`22.”).) A POSITA working in the field of computer networking technology,
`
`
`
`11
`
`PATENT OWNER EX. 2008 - PAGE 12
`
`
`
`
`specifically client server technologies, would not look towards the area of
`
`broadcast systems including satellite and cable television networks. Moreover, it is
`
`unlikely that a POSITA in the field of computer networking technology would
`
`even understand the underlying technologies required to enable broadcasting
`
`systems including satellite and cable networks as described in Batchelor. The
`
`notion of VBI in Batchelor plays no part in the way in which a POSITA would
`
`understand computer networks at the time of the invention, nor would a POSITA
`
`likely even understand or appreciate the general components that make up the
`
`television broadcast system described in Batchelor.
`
`37. The Batchelor reference also does not disclose a solution to the
`
`problem that Rothschild was trying to solve. That is to say, the need for an
`
`interactive, continuously updating, seamlessly navigable, three dimensional
`
`environment (see Ex. 1001 at 3:27-28, 4:61-5:6, 6:10-13, 12:38-44). Rather,
`
`Batchelor discusses the retrieval of text or graphics, via the VBI, that are
`
`independent of the video signal. This information is either then stored or displayed
`
`next to the video picture. This is entirely orthogonal to the navigation of a three-
`
`dimensional environment over a computer network. In fact, the broadcast nature
`
`of Batchelor defeats the invention of having a system in which navigation of a
`
`three-dimensional environment is possible.
`
`
`
`12
`
`PATENT OWNER EX. 2008 - PAGE 13
`
`
`
`
`
`38. As mentioned earlier, Batchelor does not apply to the field of
`
`computer networking, but it does disclose the language of “broadcasting” of
`
`information. Even if one were to consider the functionality of broadcasting in the
`
`context of computer networks, the definition is as follows: “Any packet destined
`
`for all stations on a network segment is considered broadcast traffic.” (Ex. 2010).
`
`In light of this definition, Batchelor is contemplating transmission of the same
`
`information in the VBI to all recipients thereby resulting in identical end user
`
`experiences for all users. This is the nature of broadcast television, where all
`
`subscribers to a given channel receive the same video stream. It would not be
`
`possible to provide the interactive and navigable environment disclosed in the ‘534
`
`using such a technology, as all users would be receiving the same stream of control
`
`information. In fact, the invention of Batchelor and the claimed broadcast
`
`functionality have nothing to do with navigating a three-dimensional environment
`
`over a computer network as again, Batchelor does not relate to client and server
`
`computer networks, and also does not contain a server.
`
`39. Batchelor does not disclose the encoding or structuring of auxiliary
`
`addresses or data specifically to permit access by a particular remote server, or to
`
`restrict access by a local processor without the direction from a remote server.
`
`Instead, Batchelor discusses the use of an off-the-shelf CD-ROM media format
`
`such as Compton’s encyclopedia (Ex. 1004 at 2:39-62). A CD-ROM device as
`
`
`
`13
`
`PATENT OWNER EX. 2008 - PAGE 14
`
`
`
`
`disclosed in Batchelor is a standard multimedia format that is commonly used
`
`across many devices including, but not limited to, computers. In fact, any CD-
`
`ROM player capable of one of the various CD-DA, ISO 10149 or other
`
`standardized formats, for example, would be able to access information stored on
`
`said off-the-shelf CD-ROM. See http://www.encyclopedia.com/doc/1O11-
`
`CDROMformatstandards.html. As these are openly available standards for CD-
`
`ROM formats, there would be no reason that content stored on the CD-ROM of
`
`Batchelor would only be accessible by a “particular” remote server or to serve the
`
`purpose to “restrict access by the local processor assembly unless the access is
`
`directed by the remote server assembly” as is the case in Rothschild (Ex. 1001 at
`
`14:33-40).
`
`40.
`
`In fact, the system of Mages has the requirement that a software
`
`program be used to govern the reception of the key in Mages, or the retention of
`
`the key for future use by the system (Ex. 1005 at 6:60-65). Replacing the use of
`
`the software controlled key system of Mages with a VBI based system, as is the
`
`case with Batchelor, would fundamentally change the nature of Mages’ invention.
`
`This is due to the broadcast nature of Batchelor, which is fundamentally different
`
`than the network based, and computer software administered connectivity related
`
`to Mages’ field of invention.
`
`
`
`14
`
`PATENT OWNER EX. 2008 - PAGE 15
`
`
`
`
`
`41. Batchelor also does not concern itself with the saving of download
`
`time over a computer network for at least the reason that Batchelor consists of a
`
`broadcast transmission that is not a network download and has no such bandwidth
`
`constraint. In the case of Batchelor, the VBI occurs at regular intervals thereby
`
`providing repeated transmissions of data to the recipient. In fact, it would not
`
`make sense in the context of Batchelor to monitor or conserve bandwidth. This is
`
`due, in part, to the fact that Batchelor aims to provide side by side video
`
`information to the user. There would be no difference in bandwidth requirements
`
`when transmitting a single screen image versus a side by side screen image to the
`
`user. The images themselves would merely contain different content but would not
`
`present different system bandwidth constraints.
`
`B. Claims 1, 6-9 and 21 Are Not Obvious When Considering the
`Combination of Mages and Batchelor
`
`42. As mentioned before, the broadcast technology and field of invention
`
`addressed in Batchelor is not analogous to that of the Rothschild invention. In
`
`addition to this, the proposed combination of the Mages reference with the
`
`Batchelor reference would still fail to disclose all elements of the claimed
`
`invention, and would not have been obvious to a POSITA.
`
`43. Batchelor itself discloses the access to information from an off-the-
`
`shelf CD-ROM encyclopedia as it would be understood by a POSITA at the time
`
`
`
`15
`
`PATENT OWNER EX. 2008 - PAGE 16
`
`
`
`
`of the invention. Such an off-the-shelf CD-ROM, as mentioned earlier, would be
`
`usable by any computer system with a standards compliant CD-ROM drive.
`
`Batchelor does not disclose any means in which the data on the CD-ROM were
`
`especially encoded or structured to be accessed by the broadcast transmitter in
`
`Batchelor, rather Batchelor simply reuses the existing off-the-shelf CD-ROM
`
`technology of the time. As such, there is no disclosure in Batchelor that the entries
`
`on the CD-ROM were especially encoded or structured to be accessed by the
`
`broadcast transmitter in Batchelor.
`
`44. Moreover, the local processor in Batchelor would have no impediment
`
`or barrier to accessing the media contained on said CD-ROM or any other entry in
`
`the Compton Encyclopedia. This would be the case with, or without, the presence
`
`and use of the broadcast video signal disclosed in Batchelor. The local processor
`
`of Batchelor would, quite simply, access the CD-ROM in the same manner as any
`
`other commercially available CD-ROM playback technology of the time.
`
`45. The addition of Mages to Batchelor does not disclose auxiliary site
`
`addresses or data encoded or structured to be accessed by a particular remote
`
`server. A POSITA would understand that Batchelor does not disclose a network
`
`technology, but rather the transmission of broadcast television signals, and that
`
`Mages discloses only a key that permits local data access at any time. This is
`
`
`
`16
`
`PATENT OWNER EX. 2008 - PAGE 17
`
`
`
`
`starkly in contrast to being at the direction of the remote server, which is also not
`
`disclosed in Batchelor.
`
`46. A POSITA would view the Batchelor reference as pertaining to the
`
`broadcasting of television signals, as not teaching the claim limitation of auxiliary
`
`site addresses and data encoded or structured to be accessed by a remote server,
`
`and as not even pertaining to the same field of technology present in Mages.
`
`Batchelor simply discloses the retrieval of information from an off-the-shelf CD-
`
`ROM technology, which would be usable by any computer with a CD-ROM drive.
`
`As such, there is also nothing in Batchelor that discloses information contained on
`
`the CD-ROM be especially encoded or structured to be accessed by the broadcast
`
`transmitter of Batchelor.
`
`47.
`
`It is my opinion that a POSITA would not have a reason to attempt
`
`combining Mages and Batchelor, or even possess the technical background to seek
`
`out an invention such as Batchelor. Moreover, said POSITA would not have made
`
`the leap from the proposed Mages and Batchelor combination to the invention
`
`described and claimed in Rothschild.
`
`48. Neither the Mages nor Batchelor reference describes a system
`
`whereby auxiliary site addresses are especially encoded or structured to be
`
`accessed by a remote server. Rather, a POSITA would again appreciate that
`
`Batchelor is not a related field of invention. And even the key disclosed in Mages
`
`
`
`17
`
`PATENT OWNER EX. 2008 - PAGE 18
`
`
`
`
`would not in itself require the involvement of a remote server; for example, the key
`
`of Mages could simply reside in memory on the local processor without the
`
`presence of a remote server. Nowhere does Mages or Batchelor disclose the
`
`auxiliary site addresses being structured to be accessed by the remote server.
`
`Mages simply sends a key that unlocks data on a CD-ROM for use by a local
`
`processor at any time regardless of involvement with the remote server.
`
`49.
`
`In fact, the uncrippling technology disclosed in Mages actually
`
`teaches away from key aspects of the invention of Rothschild. For example,
`
`Mages talks about the drawbacks of transmitting data over the Internet at the time,
`
`due to download speeds and time delays. Yet the very method that Mages
`
`describes for “crippling” the files via 7-zip compression technology would actually
`
`increase the time delays associated with data transmission and access, thereby
`
`circumventing the very problem that Mages’ invention is trying to solve. A
`
`POSITA would appreciate that time and resources required to uncompress the data
`
`via 7-zip or similar means would increase the amount of computation required, as
`
`well as time required to make use of the data by the local processor. This would be
`
`very undesirable in the context of Rothschild which seeks to produce an immersive,
`
`real-time experience for the end user.
`
`
`
`18
`
`PATENT OWNER EX. 2008 - PAGE 19
`
`
`
`
`
`50. For the reasons set forth in paragraphs 34-49 above, it is my opinion
`
`that the inventions recited in claims 1, 6-9 and 21 of the ‘534 Patent would not
`
`have been obvious to a POSITA at the time of invention.
`
`C. Claim 23 Is Not Obvious When Attempting To Combine Mages
`and Batchelor
`
`51. Claim 23 recites in part, “said select portions of said quantity of
`
`auxiliary site data at the auxiliary site addresses accessible only while the
`
`processor assembly is interactively online connected to the remote server
`
`assembly.” (Ex. 1001, 2:7-10). Neither Mages nor Batchelor teaches this
`
`limitation.
`
`52. Mages describes a key that may be held in RAM of the local
`
`processor, which one of skill in the art would recognize is markedly different from
`
`the functionality described in Claim 23 above. Specifically, in Claim 23, the
`
`auxiliary site addresses are accessible only while the local processor assembly is
`
`interactively online and connected to the remote server. From the standpoint of
`
`Mages, it does not matter whether the key is stored in RAM, on a hard disk drive,
`
`or other storage medium. Regardless, a POSITA would appreciate that the local
`
`processor’s ability to use the key is not contingent on the maintenance of said
`
`interactive online connection to the remote server.
`
`
`
`19
`
`PATENT OWNER EX. 2008 - PAGE 20
`
`
`
`
`
`53. As an example, in the case of Mages, the key in question could be
`
`downloaded onto the local processor before an interactive online connection is
`
`permanently severed. Nothing disclosed in Mages would prevent the local
`
`processor from using the key after being disconnected from the remote server, so
`
`long as the key has not been cleared from the memory system in which it is stored.
`
`In the case of a non-volatile hard disk drive, this could include power cycling the
`
`machine without resuming an online connection, and the local processor still
`
`possessing the ability to use the key.
`
`54. The Batchelor reference also fails to disclose this functionality, at
`
`least in part due to the fact that Batchelor does not describe a system in which the
`
`auxiliary site addresses are “accessible only while the local processor assembly is
`
`interactively online connected to the remote server assembly.” (Ex. 1001, 2:7-10,
`
`2:55-58.) As stated earlier, the CD-ROM technology disclosed in Batchelor
`
`would be understood by a POSITA, to be capable of being accessed at any time,
`
`regardless of whether a connection to a remote server existed. As described
`
`earlier, this would have been consistent with the functionality associated with, and
`
`the standards describing the functionality of, a then modern CD-ROM.
`
`55. As described above, the Batchelor reference also involves broadcast
`
`television transmission, and not a computer network as described in Rothschild.
`
`As such, the remote server does not even exist in the Batchelor system, and access
`
`
`
`20
`
`PATENT OWNER EX. 2008 - PAGE 21
`
`
`
`
`to auxiliary addresses and data cannot be dependent on periods of connection to the
`
`remote server when said remote server does not exist.
`
`56. One goal of the Rothschild invention, in light of combination of a
`
`local processor and a remote server, is to circumvent the need for excessive,
`
`separate and distinct resources that must be incorporated as part of the interface
`
`system. The combination of Batchelor with Mages, however, would teach away
`
`from this design goal. This is due at least to the fact that the video broadcast
`
`transmitter that is described in Batchelor would require a custom purpose block
`
`such as a VBI decoder, whereby “The receiving system includes a personal
`
`computer that contains a VBI decoder which can separate the data from the video
`
`signal.” (Ex. 1004, 1:45-47.)
`
`57. The Rothschild invention, on the other hand, discloses “Of course, it
`
`will be preferred for the local processor assembly 25’ to be specifically
`
`programmed, such as through a specific logic chip, to provide for control of the
`
`receiver assembly 6