throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`PETITION FOR INTER PARTES
`REVIEW PURSUANT TO 37
`C.F.R. § 42.100 ET SEQ.
`
`In re U.S. Patent No. 6,101,534
`
`Currently in Litigation Styled: Rothschild Digital
`Media Innovations, LLC v. Sony Computer
`Entertainment America LLC, Case No. 5:14-cv-
`03928-PSG
`
`Issued: August 8, 2000
`
`Application Filed: September 3, 1997
`
`Applicant: Leigh M. Rothschild
`
`Title: Interactive, Remote, Computer Interface
`System
`
`Mail Stop Inter Partes Review
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`DECLARATION OF DR. VIJAY K. MADISETTI
`
`I, Vijay K. Madisetti, hereby declare the following:
`
`I.
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`BACKGROUND AND EDUCATION
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`1.
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`A detailed description of my professional qualifications, including a
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`list of publications, awards, and professional activities, is contained in my
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`curriculum vitae, a copy of which is attached as Appendix A.
`
`2.
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`I have been a Professor of Electrical/Computer Engineering at the
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`Georgia Institute of Technology (“Georgia Tech”) since 1989. I lead several
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`research and educational programs at Georgia Tech in the area of digital signal
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`processing, embedded computing systems, chip design, wireless and telecom
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`systems, and systems engineering.
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`3.
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`I earned a Bachelor of Technology (Honors) in Electronics &
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`Electrical Communications Engineering from the Indian Institute of Technology in
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`1984, and a Ph.D. in Electrical Engineering and Computer Science from the
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`University of California at Berkeley in 1989. I have published extensively, with
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`about 100 technical publications and eight books in the areas of computing, signal
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`processing and communications systems.
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`4.
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`I am an Institute of Electrical and Electronics Engineers (“IEEE”)
`
`Fellow and, in 2006, I was awarded the 2006 Frederick Emmons Terman Medal by
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`the American Society of Engineering Education (“ASEE”) and HP Corporation for
`
`my contributions to electrical engineering.
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`5.
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`I have authored or co-authored several books and have been an active
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`consultant to industry and various research laboratories (including MIT Lincoln
`
`Labs and JHU Applied Physics Laboratory). I have founded three companies in
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`the areas of embedded software, military chipsets, and wireless communications.
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`6.
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`I have taught classes at Georgia Tech in the Electrical/Computer
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`Engineering Department since 1989. Class topics have included embedded &
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`networked software systems; wireless & networking; digital signal processing;
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`speech, audio, video, and image processing; digital signal processing hardware and
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`software; and advanced computing environments.
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`7.
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`I have been active in the area of development of protocols in the
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`computer networked environment since the late 1980s, starting with my work on
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`“GAFFES: A Design of A Globally Distributed File System” (EECS Technical
`
`Report, UCB/CSD-87-361, June 1987), which described early work on security,
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`authentication and replication in the computer network context. I have also
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`developed algorithms for detection of erroneous (or false) information that can be
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`introduced and propagated into computer networks, and developed a preemptive
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`algorithm called WOLF that has been efficient in limiting the propagation by
`
`rolling back the effects of incorrect messages within a network. (See WOLF: A
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`Rollback Algorithm for Optimistic Distributed Simulation Systems, 1988). I have
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`also published papers in the area of coding theory for secure information storage
`
`and retrieval on storage disks and in the area of communications and noise
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`immunity in the context of computer storage networks (See, e.g., “Constrained
`
`Multritrack RLL Codes for the Storage Channel,” IEEE Transactions on
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`Magnetics, Vol. 31, Issue 3, 1995).
`
`8.
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`From 1996-1997, I collaborated with researchers at Lockheed Martin
`
`and the U.S. Army Research Laboratory in a collaborative Research Program
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`(called the “Federated Research Labs Initiative” or “FedLabs”) to develop a
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`networked Java/JNI/C/C++ based system called “Beehive: An Adaptive Distributed
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`Embedded Signal Processing Environment” (Proc. IEEE ICASSP 97), where a
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`real-time Java environment sits on top of a Real-Time OS PERC that was based on
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`the Windows and UNIX platforms. Researchers would collaborate across
`
`geographically distributed locations by connecting to sensors, devices, servers and
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`clients
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`in a distributed manner
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`to execute distributed signal processing
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`applications. For instance, a researcher at Army Labs would capture data remotely
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`from a sensor and route the video and image data to a server at Georgia Tech over
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`a network, where it would be operated upon by algorithms developed by Georgia
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`Tech faculty and students, and the results would be communicated over a network,
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`and would be displayed at the University of Maryland. The project involved a
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`variety of technologies that allowed distributed processing and control of
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`networked resources, as further described in the BEEHIVE 96 diagram and next
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`paragraph below.
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`9.
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`The architecture of BEEHIVE version 0.1 system is described as
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`follows, wherein Beehive provided a distributed access from remote objects to
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`local processing and storage (“data stores”) devices, and also to input devices
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`(keyboards, sensors, PDAs, and cameras).
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`In the 1998-2001 timeframe, I developed an infrastructure for web-
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`10.
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`based image and signal processing, called WebMPEG, that used efficient
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`transcoding applications written in C/C++ over the Internet through a Java-based
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`Web-based server environment running the Java Native Interface (JNI). See “Web-
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`Enabled Transcoding for Broadband Residential Networks (BRAN)” available at
`
`http://cse.spsu.edu/yes/pub.htm. As shown in the following architectural diagram
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`for WebMPEG at that website, one could use WebMPEG to offload complex
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`MPEG video transcoding tasks to a server that would interface with real-time
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`custom hardware processing boards to speed up computation requested by remote
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`clients.
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`
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`I am knowledgeable and familiar with standards related to the mobile,
`
`11.
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`avionics, wireless and telecommunications systems industries. As shown in
`
`Appendix A, some of my papers describe the application of these standards in
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`optimizing the design and testing of these systems. I am also knowledgeable and
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`familiar with microprocessor architecture and associated software and firmware
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`design for embedded, wireless and telecommunications terminals and base stations.
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`12.
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`I have authored, co-authored, or edited several books in the area of
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`computer systems and distributed systems in the past twenty years, including:
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`• V. Madisetti, VLSI Digital Signal Processors, IEEE Press (1995).
`• M. Romdhane, V. Madisetti, J. Hines, Quick-Turnaround ASIC
`Design in VHDL, Springer Verlag (1996).
`• V. Madisett, D. Williams (Editors), The Digital Signal Processing
`Handbook (First Edition) (1998).
`• V. Madisetti (Co-Editor), VHDL: A CD-ROM Interactive Tutorial:
`Electronics Systems Design Methodologies, IEEE Standards Press,
`(1997).
`• V. Madisetti, A. Arpnikanondt, Platform-Centric Approach
`System-on-Chip (SoC) Design (2001).
`• V. Madisetti, The Digital Signal Processing Handbook – Second
`Edition (2009/2010).
`• A.Bahga, V. Madisetti, Cloud Computing: A Hands-On Approach
`(2013).
`• A. Bahga, V. Madisetti, Internet of Things: A Hands-On Approach
`(2014).
`
`to
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`13.
`
`In the past two decades, I have authored several peer-reviewed papers
`
`
`
`in the area of computers, computer software applications, and software design, and
`
`these include:
`
`• V. Madisetti, et al., “The Georgia Tech Digital Signal
`Multiprocessor,” IEEE Transactions on Signal Processing, Vol. 41,
`No. 7, July 1993.
`• V. Madisetti, et al., “Rapid Prototyping on the Georgia Tech Digital
`Signal Multiprocessor,” IEEE Transactions on Signal Processing, Vol.
`42, March 1994.
`• V. Madisetti, “Reengineering legacy embedded systems,” IEEE
`Design & Test of Computers, Vol. 16, No. 2, 1999.
`• V. Madisetti,
`“Virtual Prototyping of Embedded
`et
`al.,
`Microcontroller-based DSP Systems,” IEEE Micro, Vol. 15, Issue 5,
`1995.
`
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`• V. Madisetti, et al., “Conceptual Prototyping of Scalable Embedded
`DSP Systems,” IEEE Design & Test of Computers, Vol. 13, Issue 3,
`1996.
`• V. Madisetti, et al., “Incorporating Cost Modeling in Embedded-
`System Design,” IEEE Design & Test of Computers, Vol. 14, Issue 3,
`1997.
`• V. Madisetti, “Electronic System, Platform & Package Codesign,”
`IEEE Design & Test of Computers, Vol. 23, Issue 3, June 2006.
`• V. Madisetti, et al., “A Dynamic Resource Management and
`Scheduling Environment
`for Embedded Multimedia
`and
`Communications Platforms,” IEEE Embedded Systems Letters, Vol.
`3, Issue 1, 2011.
`
`I have designed and implemented multiple processor networked
`
`14.
`
`computing systems that perform multimedia tasks (e.g., speech/audio recognition
`
`and video streaming) and avionics/embedded guidance systems since the
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`early1990s, and I have also implemented real-time operating systems in the same
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`time frame. Representative publications include: “The Georgia Tech Digital
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`Signal Multiprocessor (DSMP),” IEEE Transactions on Signal Processing, Vol. 41,
`
`Issue 7, 1993, and “Task Scheduling on the Georgia Tech Digital Signal
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`Multiprocessor,” Proceedings of IEEE ICASSP 1992. More recent work that is
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`related to multimedia processing on multiprocessor systems can be found in “A
`
`Dynamic Resource Management and Scheduling Environment for Embedded
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`Multimedia and Communications Platforms,” IEEE Embedded Systems Letters,
`
`Vol. 3, Issue 1, 2011. The table and figure below reflect the three generations of
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`Digital Signal Multiprocessors (DSMP’s) that were designed at Georgia Tech as
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`part of my research and education efforts.
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`15.
`
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`In collaboration with the U.S. Air Force, Lockheed Martin and
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`Hughes Corporation, I designed and implemented DSMP models for a 192-
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`processor multiprocessor system for processing real-time avionics data (infrared
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`search and track imaging and video applications – IRST), and this represented one
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`of the largest multiprocessor systems used in the mid-1990s timeframe on aircraft.
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`See my publications, “Virtual Prototyping of Embedded Microcontroller-Based
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`DSP Systems,” IEEE Micro, 1995 (Source of Figure 8 excerpted below), and also
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`“VHDL Token-Based Performance Modeling for 2D and 3D Infrared Search and
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`Track,” Proc. SPIE VIUF, 1998.
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`16.
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`I have been active
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`in
`
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`the area of wireless OFDM-MIMO
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`communications systems for several years. Some of my publications in this area
`
`include “Frequency Dependent Space-Interleaving of MIMO OFDM Systems”
`
`Proc. IEEE Radio and Wireless Conference (RAWCON ’03), 2003; “Embedded
`
`Alamouti Space Time Codes for High Rate and Low Decoding Complexity,”
`
`Proceedings of IEEE Asilomar Conf. on Signals, Systems and Computers,
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`2008; and “Asymmetric Golden Codes for Fast Decoding in Time Varying
`
`Channels,” Wireless Personal Communications (2011).
`
`17. Additional representative peer-reviewed publications in this area of
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`wireless embedded systems are the following: (i) Turkboylari, M. and Madisetti,
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`V.K., “Effect of Handoff Delay on System Performance of TDMA Cellular
`
`Systems,” 4th International Workshop, Mobile & Wireless Communication
`
`Network, pp. 411-415, 2002;
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`(ii) Jatunov, L. and Madisetti, V. K.,
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`“Computationally-Efficient SNR Estimation for Bandlimited Wideband CDMA
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`Systems,” IEEE Transactions on Wireless Communications, Issue 12, pp. 3480-
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`3491, December 2006; and (iii) N. Radia, Y. Zhang, M. Tatipamula, V. Madisetti,
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`“Next Generation Applications on Cellular Networks: Trends, Challenges, and
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`Solutions,” Proceedings on IEEE, Vol. 100, Issue 4, pp. 841-854, April 2012. I
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`have significant experience analyzing, designing, and testing systems based on
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`3GPP Technical Specifications, including specifications describing WCDMA and
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`HSDPA technologies, primarily used for 3G and 4G communications.
`
`18. More recently, I have co-authored two books: “Cloud Computing: A
`
`Hands-On Approach” (2013) and “Internet of Things: A Hands-On Approach”
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`(2014). These books discuss recent developments in security for cloud-based
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`computer networks and networked systems, and these books are already being used
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`as prescribed textbooks by several universities around the world.
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`19.
`
`I have worked as an expert in several legal matters in the prior four
`
`years, as identified on my CV.
`
`20.
`
`In summary, by the time frame of mid to late 1990s, I have taught,
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`worked, and performed research in the area of distributed computing systems,
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`client-server
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`technologies, distributed multimedia (audio, video, systems),
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`distributed control environments over the internet, and web-based computing
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`systems. I have published extensively in these areas in peer reviewed publications
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`during the time frame of the ‘534 patent, and also developed software and product
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`prototypes in related areas.
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`II. OPINION
`
`A. Level of a Person Having Ordinary Skill in the Art
`
`21.
`
`In determining the characteristics of a hypothetical person of ordinary
`
`skill in the art of U.S. Patent No. 6,101,534 (“the ‘534 Patent”) at the time of the
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`claimed invention in 1997, I considered several factors, including the type of
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`problems encountered in the art, the solutions to those problems, the rapidity with
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`which innovations are made in the field, the sophistication of the technology, and
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`the education level of active workers in the field. I also placed myself back in the
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`timeframe of the claimed invention, and considered students who I had taught and
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`with whom I had worked at the time. In my opinion, a person of ordinary skill in
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`the art would be a person with: (1) an undergraduate degree in applied
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`mathematics, computer science, computer engineering, electrical engineering,
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`physics, or similar technical fields; (2) a working knowledge of computers and
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`their processing, networking, storage, hardware, and software; and (3) two to four
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`years of experience (or, with a graduate degree in the above-stated fields, one to
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`two years of experience) in software and hardware analysis, design, and/or
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`development related to computer networking, including a working familiarity with
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`server and client communications.
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`B.
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`Background of Remote Multimedia Systems
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`22. The solution to the problem in the prior art, according to the description
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`of the ‘534 Patent, is to provide for enhancement of the online content of real estate
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`viewing software, by accessing auxiliary information for which downloading would
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`not be required (i.e., because the auxiliary data is locally-stored). See Ex. 1001, ‘534
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`Patent at Col. 1:6-13. Thus, a user at a local computer, having access to a CD-ROM
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`or the like which has been previously distributed, is able to go online to access
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`primary site information (e.g., through a website). See, e.g., id. at Col. 13:43-14:32.
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`When the interaction calls for interactive video, downloading is not necessary because
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`the system accesses the CD-ROM and initiates utilization of auxiliary data stored
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`thereon. See id. The auxiliary data is stored at specific auxiliary site addresses so that
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`the data is readily accessible when needed. See id.
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`23. However, this stored auxiliary data solution has been known to one of
`
`ordinary skill in the art well before the time of the purported invention of the ‘534
`
`Patent, and the so called “CD ROM/Online Hybrids” model uses a stored auxiliary
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`data solution and has been described in open and published literature in a variety of
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`contexts (online course delivery and education, online video delivery, etc.). For
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`instance in “CD-ROM/Online Hybrids: The Missing Link” by Richard R. Reisman, in
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`CD-ROM Professional, Vol 7, No. 4, April 1995 (attached as Appendix B), it is
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`disclosed that:
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`i.
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`“In the online oriented model, supplemental CDs can be sent monthly
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`to subscribers for us in conjunction with their online sessions. The
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`first such CD was delivered by CompuServe in June 1994, and
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`similar offerings are expected from America Online.” Id. at 3.
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`ii.
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`“In an online oriented hybrid, the supplementary information
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`distributed on a CD can be artfully integrated during an online
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`session to enhance the online experience.” Id.
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`iii.
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`“Teleshuttle Corporation offers a specialized service that fills a
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`critical gap in producing CDROM and online hybrid products.” Id. at
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`4.
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`iv.
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`“Another variant is to expand on the simple fetch-on-demand
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`operation. For example, fetches may be automatically scheduled
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`based on update availability, or be delayed to an off-hour, low cost
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`period. A more advanced option would be to shift from a user-
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`triggered “pull” to a publisher-triggered “push” operation. One of
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`ordinary skill in the art would understand that the publisher triggered
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`push is a combination of information and command from a remote
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`server (i.e., the publisher) that directly accesses and controls the local
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`storage contents and addresses associated with the local CD ROM”.
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`Id. at 7.
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`24. Other widely-known approaches to hybrid CDROM-Online delivery
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`existed at the time as well. In “Purdue-On-Line: A Facility and Distributed Learning
`
`Framework to Develop and Deliver Internet based Education,” by Elias Houstis, et al,
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`Computer Science Technical Reports, Purdue University, Oct. 2, 1997 (attached as
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`Appendix C), the authors use the next two figures reproduced below to help describe
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`a system that has been in use, prior to Oct. 2, 1997, by Purdue University in delivering
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`online educational courses to students.
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`
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`25. As shown in the figure below, the Purdue-On-Line (POL) environment
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`distributed video as supplemental information on a CD-ROM that is sent separately to
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`users and to be used in conjunction with the online content (that refers to the local
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`CD-ROM content/addresses) that is delivered over the internet from the remote
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`server. The delivered information and commands from the remote server would
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`control and access the local addresses associated with the local CD ROM.
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`26. Before the time of the claimed invention of the ‘534 Patent, it was also
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`well-known to use multiple methods for distribution of multimedia content from a
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`remote server to a local client over several different types of transport pipes: internet,
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`broadcast television, satellite, to name a few. See, e.g., Nortbert Gerfelder, “Video
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`Applications in the Era of Computer Networks – Computer & Video = Multimedia,”
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`Proceedings of 137th SMPTE Technical Conference and World Media Expo,” New
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`Orleans, September 6-9, 1995, pp. 54-68 (“Gerfelder”) (attached as Appendix D).
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`27. The ‘534 Patent also specifies that, in the preferred embodiment, access
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`to auxiliary site addresses by the local processor is restricted, “unless the access is
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`directed by the remote server assembly.” See Ex. 1001, ‘534 Patent at Col. 14:33-
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`15:2. Stated another way elsewhere in the ‘534 Patent specification, also describing
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`the preferred embodiment, the remote server assembly initiates utilization of selected
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`auxiliary site data by a local processor, and the auxiliary site data includes “operating
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`instructions” which serve “to instruct the local processor assembly to generate various
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`display images ….” See id. at Col. 5:40-6:5. The stated purpose of this restriction is
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`to prevent the user from utilizing auxiliary site data (e.g., data stored on the CD-
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`ROM) unless the use is in conjunction with a visit to a particular website or content
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`provider that is providing the primary site data. See id. at Col. 14:33-15:2.
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`28. Before the time of the claimed invention of the ‘534 Patent, it was also
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`well-known to use a network of computers, each with information stored on a CD-
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`ROM, to make this information available to remote computers over the Internet as
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`part of distributed libraries and archives. Thus, remote users would control access to
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`data and addresses in local CD-ROMs stored at digital libraries. This is another
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`example of how controlling addresses and data stored at local CD-ROMs was
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`routinely performed in the early1990s as part of digital libraries in the U.S. and
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`abroad. See, e.g., J. Marshall, “Networking Biomedical Information on CD-ROM at
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`the Walter and Eliza Hall Institute of Medical Research”, Information Transfer: New
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`Age – New Ways, 1993, pp. 285-288 (Proceedings of Third European Conference on
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`Medical Libraries, France, September 23-26, 1992) (attached as Appendix E).
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`Similarly, in “Hello Users: This is Control or CD ROM Access for All,” by S. Berta,
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`in ACM SIGUCCS XXI, 1993 (attached as Appendix F), a service to allow network
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`CD-ROM access to remote users at the University of Delaware was described,
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`expanding access of CD-ROM-based reference materials, which were previously only
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`accessible to users physically present in a library room, to users anywhere on the
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`network. In all these instances, one of ordinary skill in the art would understand that
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`the remote server (supporting the remote user) would be accessing and controlling
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`data and addresses associated with a local CD-ROM over a network.
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`29. The background examples I provide above, which comport with my
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`memory of the relevant time period, make clear that CD-ROM and online hybrid
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`systems were very common at the time of the claimed invention of the ‘534 Patent.
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`30.
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`I describe below straightforward combinations of the following prior
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`art references: U.S. Patent No. 5,892,825 to Mages et al. (“Mages”); U.S. Patent
`
`No. 5,724,103 to Batchelor (“Batchelor”); a 1996 printed publication titled
`
`“VEMMI: a new On-line Client/Server Multimedia Protocol for the Internet”
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`(“VEMMI”); U.S. Patent No. 5,861,881 to Freeman et al. (“Freeman”); and U.S.
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`Patent No. 5,736,977 to Hughes (“Hughes”). These combinations would render
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`claims of the ‘534 Patent obvious under 35 U.S.C. § 103(a), with the results being
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`very predictable, and with the combinations not requiring undue experimentation.
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`The benefits of these combinations would have included increased server control
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`of, and access to, data stored on a local CD-ROM. The benefits would also have
`
`included improved server-client communications, providing for improved display
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`of locally stored multimedia content in connection with remotely stored content
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`from a server. As such, a person of ordinary skill in the art would have been
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`highly motivated to combine the prior art.
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`C.
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`Legal Framework
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`31.
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`I understand that a patent claim is not patentable under 35 U.S.C. § 103
`
`if the differences between the patent claim and the prior art are such that the
`
`claimed subject matter as a whole would have been obvious at the time the claimed
`
`invention was made to a person having ordinary skill in the art to which the subject
`
`matter pertains. Obviousness, as I understand it, is based on the scope and content
`
`of the prior art, the differences between the prior art and the claim, the level of
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`ordinary skill in the art, and, to the extent that they exist and have an appropriate
`
`nexus to the claimed invention (as opposed to prior art features), secondary indicia
`
`of non-obviousness.
`
`32.
`
`I have been informed that whether there are any relevant differences
`
`between the prior art and the claimed invention is to be analyzed from the view of
`
`a person of ordinary skill in the art at the time of the invention. As such, my
`
`opinions below as to a person of ordinary skill in the art are as of the time of the
`
`invention, even if not expressly stated as such; for example, even if stated in the
`
`present tense.
`
`33.
`
`In analyzing the relevance of the differences between the claimed
`
`invention and the prior art, I have been informed that I must consider the impact, if
`
`any, of such differences on the obviousness or non-obviousness of the invention as
`
`a whole, not merely some portion of it. The person of ordinary skill faced with a
`
`
`
`21
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`PETITIONER EX. 1009 Page 21
`
`

`
`
`
`problem is able to apply his or her experience and ability to solve the problem and
`
`also look to any available prior art to help solve the problem.
`
`34. An invention is obvious if a person of ordinary skill in the art, facing
`
`the wide range of needs created by developments in the field, would have seen an
`
`obvious benefit to the solutions tried by the patent applicant. When there is a
`
`design need or market pressure to solve a problem and there are a finite number of
`
`identified, predictable solutions, it would be obvious to a person of ordinary skill to
`
`try the known options. If a technique has been used to improve one device, and a
`
`person of ordinary skill in the art would recognize that it would improve similar
`
`devices in the same way, using the technique would have been obvious.
`
`35.
`
`It is my understanding that a precise teaching in the prior art directed
`
`to the subject matter of the claimed invention is not needed and that one may take
`
`into account the inferences and creative steps that a person of ordinary skill in the
`
`art would have employed in reviewing the prior art at the time of the invention.
`
`For example, if the claimed invention combined elements known in the prior art
`
`and the combination yielded results that were predictable to a person of ordinary
`
`skill in the art at the time of the invention, then this evidence would make it more
`
`likely that the claim was obvious. On the other hand, if the combination of known
`
`elements yielded unexpected or unpredictable results, or if the prior art teaches
`
`
`
`22
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`PETITIONER EX. 1009 Page 22
`
`

`
`
`
`away from combining the known elements, then this evidence would make it more
`
`likely that the claim that successfully combined those elements was not obvious.
`
`36.
`
`I understand that hindsight must not be used when comparing the prior
`
`art to the invention for obviousness.
`
`37.
`
`It is my understanding that obviousness may also be shown by
`
`demonstrating that it would have been obvious to modify what is taught in a single
`
`piece of prior art to create the subject matter of the patent claim. Obviousness may
`
`be shown by showing that it would have been obvious to combine the teachings of
`
`more than one item of prior art. In determining whether a piece of prior art could
`
`have been combined with other prior art or combined with or modified in view of
`
`other information within the knowledge of one of ordinary skill in the art, the
`
`following are examples of approaches and rationales that may be considered:
`
`•
`
`•
`
`•
`
`•
`
`Combining prior art elements according to known methods to yield
`predictable results;
`Simple substitution of one known element for another to obtain
`predictable results;
`Use of a known technique to improve similar devices (methods, or
`products) in the same way;
`Applying a known technique to a known device (method, or product)
`ready for improvement to yield predictable results;
`
`
`
`23
`
`PETITIONER EX. 1009 Page 23
`
`

`
`
`
`•
`
`•
`
`•
`
`38.
`
`Applying a technique or approach that would have been "obvious to
`try" (choosing from a finite number of identified, predictable solutions,
`with a reasonable expectation of success);
`Known work in one field of endeavor may prompt variations of it for
`use in either the same field or a different one based on design
`incentives or other market forces if the variations would have been
`predictable to one of ordinary skill in the art; or
`Some teaching, suggestion, or motivation in the prior art that would
`have led one of ordinary skill to modify the prior art reference or to
`combine prior art reference teachings to arrive at the claimed
`invention.
`I understand that the rationale for modifying a reference and/or
`
`combining references may come from sources such as explicit statements in the
`
`prior art, or the knowledge of one of ordinary skill in the art, including any need or
`
`problem known in the field at the time, even if different from the specific need or
`
`problem addressed by the inventor of the patent claim.
`
`39.
`
`I understand that even if a prima facie case of obviousness is
`
`established, the final determination of obviousness must also consider "secondary
`
`considerations" if presented. In most instances, the patentee raises these secondary
`
`considerations of non-obviousness. In that context, the patentee argues an
`
`invention would not have been obvious in view of these considerations, which
`
`include: (a) commercial success of a product due to the merits of the claimed
`
`invention; (b) a long-felt, but unsatisfied need for the invention; (c) failure of
`
`
`
`24
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`PETITIONER EX. 1009 Page 24
`
`

`
`
`
`others to find the solution provided by the claimed invention; (d) deliberate
`
`copying of the invention by others; (e) unexpected results achieved by the
`
`invention; (f) praise of the invention by others skilled in the art; (g) lack of
`
`independent simultaneous invention within a comparatively short space of time;
`
`and (h) teaching away from the invention in the prior art.
`
`40.
`
`I further understand that secondary considerations evidence is only
`
`relevant if the offering party establishes a connection, or nexus, between the
`
`evidence and the claimed invention. The nexus cannot be to prior art features. The
`
`establishment of a nexus is a question of fact.
`
`D. Mages and Batchelor
`
`41.
`
`I have been asked to consider the combination of Mages and
`
`Batchelor, and it is my opinion that it would have been obvious to a person having
`
`ordinary skill in the art to combine the command and address information sent
`
`from the server in Batchelor with the system and functionality described in Mages.
`
`42. One of ordinary skill in the art would understand Batchelor to disclose
`
`a server that sends both video and associated text/binary data/commands that is
`
`broadcast over a packetized and digital network (i.e., satellite or cable). Ex. 1004,
`
`Batchelor at Col. 2:10-25, Col. 3: 1-25, Col. 3: 27-45. Batchelor also discloses
`
`that the video signals and associated data/text/binary commands may be stored in
`
`digital packetized format at the transmitter. Id. at Col. 3:1-50. Gerfelder discussed
`
`
`
`25
`
`PETITIONER EX. 1009 Page 25
`
`

`
`
`
`above also provides a disclosure of a remote server broadcasting video/data to
`
`local clients over a satellite and/or cable network. One of ordinary skill in the art
`
`at the time of the claimed invention of the ‘534 Patent would also know that
`
`transmission over cable would utilize digital packetized standards supporting the
`
`internet protocol, such as ANSI/SCTE 136-2 2013 and referenced standards. See
`
`also U.S. Patent No. 5,534,913 to Majeti et al., filed on March 31, 1994, for
`
`examples
`
`of
`
`computers
`
`accessing
`
`the
`
`internet
`
`over
`
`a
`
`cable
`
`modem/connection/network. Thus, one of ordinary skill in the art at the time
`
`would have recognized that similar digital, packetized data could be transmitted
`
`over cable or satellite regardless of whether it is being transmitted in use of the
`
`internet or some other data or broadcast network.
`
`43. Similar to Batchelor, and in the same field of endeavor, Mages
`
`describes a system wherein a remote server communicates video and data with a
`
`local computer to cause data on a CD-ROM to be made readable. Mages describes
`
`a method of “triggering video and/or audio data on a “HyperCD” (CD-ROM) via a
`
`trigger through a network for instant local access of encrypted data on local media.”
`
`See Ex. 1005, Mages at Abstract; see also id. at 1:22-25. Mages recognized that, at
`
`the time, there were d

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