trials@uspto.gov
`571-272-7822
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`SONY COMPUTER ENTERTAINMENT AMERICA LLC and
`GAMELOFT, S.A.,
`Petitioners,
`vs.
`ROTHSCHILD DIGITAL MEDIA INNOVATIONS, LLC,
`Patent Owner.
`- - - - - -
`Case IPR2015-01364
`Patent 6,101,534
`Technology Center 2400
`Oral Hearing Held: Thursday, August 18, 2016
`
`BEFORE: KALYAN K. DESHPANDE; MICHAEL J.
`FITZPATRICK (via video link); and SHEILA F. McSHANE,
`Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Thursday,
`August 18, 2016, at 1:02 p.m., Hearing Room D, taken at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`REPORTED BY: RAYMOND G. BRYNTESON, RMR,
`
`IPR2015-01364, Paper No. 23
`September 12, 2016
`
`CRR, RDR
`
`
`571-272-7822
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`SONY COMPUTER ENTERTAINMENT AMERICA LLC and
`GAMELOFT, S.A.,
`Petitioners,
`vs.
`ROTHSCHILD DIGITAL MEDIA INNOVATIONS, LLC,
`Patent Owner.
`- - - - - -
`Case IPR2015-01364
`Patent 6,101,534
`Technology Center 2400
`Oral Hearing Held: Thursday, August 18, 2016
`
`BEFORE: KALYAN K. DESHPANDE; MICHAEL J.
`FITZPATRICK (via video link); and SHEILA F. McSHANE,
`Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Thursday,
`August 18, 2016, at 1:02 p.m., Hearing Room D, taken at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`REPORTED BY: RAYMOND G. BRYNTESON, RMR,
`
`IPR2015-01364, Paper No. 23
`September 12, 2016
`
`CRR, RDR
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`ABRAN KEAN, ESQ.
`
`
`Erise IP
`
`
`5600 Greenwood Plaza Boulevard, Suite 200
`
`
`Greenwood Village, Colorado 80111
`
`
`720-689-5440
`
`
`
`
`
`
`
`
`ERIC A. BURESH, ESQ.
`MARK LANG, ESQ.
`Erise IP
`6201 College Boulevard, Suite 300
`Overland Park, Kansas 66211
`913-777-5600
`
`
`
`
`
`
`
`
`
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JOHN C. CAREY, ESQ.
`
`
`THOMAS K. LANDRY, ESQ.
`
`
`Carey Rodriguez Milian Gonya, LLP
`
`
`Espirito Santo Plaza
`
`
`1395 Brickell Avenue, Suite 700
`
`
`Miami, Florida 33131
`
`
`305-372-7474
`
`
`
`
`
`2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01364
`Patent 6,101,534
`
`
`
`
`P R O C E E D I N G S
`(1:02 p.m.)
`
`
`
`
`
`
`
`JUDGE McSHANE: Okay. Good afternoon,
`everyone. This is the final hearing in IPR2015- 01364, Sony
`Computer Entertainment America LLC v. Rothschild Digital
`Media Innovations, LLC.
`I am Judge McShane. Sitting to my right is Judge
`Deshpande. And on the screen we have Judge Fitzpatrick who
`is out of our Detroit office.
`Can we have appearances, please, Petitioner?
`MR. KEAN: Good afternoon, Your Honor. My
`name is Abran Kean. I'm with the law firm of Erise IP. With
`me today are my colleagues Eric Buresh and Mark Lang.
`JUDGE McSHANE: Will you be arguing today?
`MR. KEAN: Yes.
`JUDGE McSHANE: Okay. And for Patent Owner?
`MR. LANDRY: Thomas Landry with the law firm
`of Carey Rodriguez Milian Gonya. With me today is my
`colleague John Carey. I will be arguing for the Respondent
`Rothschild Digital Media Innovations.
`JUDGE McSHANE: Okay. Welcome, everyone.
`Thank you for coming. We included generally the procedure
`for today's proceeding in the trial order that was sent out but I
`will go over a few administrative issues right from the get-go
`so we're all on the same page.
`
`
`
`3
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01364
`Patent 6,101,534
`
`
`As the trial order indicated, each party is going to
`have one hour of time for argument. Petitioner has the right to
`reserve some rebuttal time.
`And if you are using demonstratives -- and we did
`get one set of demonstratives in from Petitioner here -- if you
`are using demonstratives, for the clarity of the record and also
`to help Judge Fitzpatrick, if you would refer to the number,
`the page number of the demonstrative, that would be
`appreciated.
`Something else, and if you could remember it, it
`would be helpful again for the remote judge, please try to
`speak into the microphone. I know it is tough sometimes.
`You may get agitated and start moving around. But please try
`to use the microphone.
`I will also try to remind counsel when they are
`approaching the end of the time they have allocated for them.
`But I will do the best I can to keep track of that.
`And one last thing. Under no circumstances are
`you to interrupt the other party when they are putting on
`demonstratives or presenting arguments to present objections.
`If you have objections, please wait until the time that you can
`respond or rebuttal.
`If you are the last in the queue and the attorney
`before you, for instance, Petitioner was doing a rebuttal, and
`you are last in the queue and they presented something you
`
`
`
`4
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01364
`Patent 6,101,534
`
`have an objection to, please let us know before we adjourn and
`then we can do something about it potentially.
`So with that, I think that was all of the
`administrative things we had, and with that if Petitioner would
`proceed.
`
`MR. KEAN: Thank you, Your Honor. I have hard
`copies of our demonstratives. If I may approach I will hand
`them to you.
`JUDGE McSHANE: Thank you.
`MR. KEAN: Thank you and good afternoon. And
`once again my name is Abe Kean with the firm Erise IP,
`presenting today on behalf of the Petitioner, Sony Computer
`Entertainment America, and also the joint party Gameloft.
`Turning to slide DX- 2, there are a couple excerpts
`here from the '534 patent which is at issue in this case. There
`is figure 2 and there is just a couple things I want to point out
`and emphasize about figure 2.
`In the green box there is a local computer and in
`the red box there is a server. This is an architecture we are
`going to see very often today in the patent, the '534 patent
`which is being challenged, and also in the prior art documents.
`What we have is we have a client and a server
`architecture and then there is a communications link between
`the two things. And so in figure 2 of the '534 patent up
`toward the top right corner, you have that communications link
`
`
`
`5
`
`
`
`Case IPR2015-01364
`Patent 6,101,534
`
`so the server is in communication with the local computer.
`And, again, that's an architecture that is going to be very
`familiar today as we step through the various evidence.
`On slides DX-3 and DX- 4 we have the claim
`language. I'm going to jump past that to slide DX-5. That's
`there in case we need to refer back to it. It may be useful later
`in the argument but we will step ahead here.
`These are the issues that we are going to be
`discussing today. So there are two grounds or two general
`grounds for institution. One, there is an obviousness grounds
`based on Mages and Batchelor for claims 1, 6 through 9, 21,
`23 and 24. And then there is another combination that
`involves a third reference, a reference called Hughes, and
`that's applied to claim 22.
`There are not that many issues left in this
`proceeding. Really most of the disputes boil down to three
`things. There is some dispute about claim construction. There
`is some dispute about the combination and application of
`Mages and Batchelor. And there is very minor dispute about
`the addition of Hughes and how that applies to the prior art.
`So those are the three issues the Petitioner, we plan to discuss
`today and we will step through those.
`Issue number 1 is claim construction. There are
`two terms that are part of the Institution Decision and are
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`6
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01364
`Patent 6,101,534
`
`disputed claim construction terms. One is access and one is
`this concept of contemporaneous connection.
`Now, the definition of access is really the linchpin
`of this case. And the reason for that is straightforward. Once
`you properly construe the definition of access and the broadest
`reasonable interpretation of that term, the application of the
`prior art here is really very straightforward.
`Now, there is some backstory here. There was a
`reexamination proceeding of this patent. And in the
`reexamination proceeding it went up on appeal and there was a
`construction on that appeal that seemed to suggest that the
`claims were limited to direct access. And the way -- what
`direct access meant in that context was the server needed to
`directly access the optical disk stored locally without
`intervention of the local processor.
`Now, that was the construction based on the
`record, based on the arguments in the reexamination. That's
`not the right construction here. Here we have agreement that
`indirect access should be included within the broadest
`reasonable interpretation of the claims.
`Now, what does indirect access mean? Indirect
`access means the server can direct the local processor to
`access things on the optical disk. So, in other words, the local
`processor is involved in the path. There is direction coming
`from the server through the local processor telling the local
`
`
`
`7
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01364
`Patent 6,101,534
`
`processor or directing the local processor to go and get
`information from the optical disk. That's the construction the
`Board provided in the Institution Decision, and there is a
`couple important points about that construction.
`One, both parties agree that that is right. This
`indirect path that goes through the processor, both parties
`agree on the record in this proceeding that that should be
`included within the scope of the broadest reasonable
`interpretation of the access concept.
`Another important point, and even more
`importantly, is this construction is right, based on the intrinsic
`record, based on the arguments of this proceeding.
`JUDGE McSHANE: Counsel, when you are talking
`about the term access, you are referring to the whole clause
`which I think the decision referred to as the remote access
`limitation, so it begins with -- in the last part of the claim,
`said remotely accessible, and it goes all of the way to the end
`is by local processor assembly. Is that correct?
`MR. KEAN: That's exactly right, Your Honor.
`And I was just referring to access as shorthand.
`JUDGE McSHANE: Got it. I just wanted to be
`
`clear.
`
`MR. KEAN: Yes, you are exactly right. Thank
`you. Here is the construction that the Board provided in the
`Institution Decision and here is what I mean by indirect access
`
`
`
`8
`
`
`
`Case IPR2015-01364
`Patent 6,101,534
`
`as provided by the Board, which the parties agree with. The
`remote access limitations -- the limitation you just referred to,
`Your Honor --
`JUDGE McSHANE: Yes, there it is.
`MR. KEAN: -- encompass a remote server
`assembly accessing the auxiliary site data by directing the
`local processor assembly to access the data.
`That's really the crux of this. So the server needs
`to direct the local processor to go and access information on
`the optical disk or the local memory.
`The Patent Owner agrees with this. So the Patent
`Owner -- here is a couple of excerpts from the Patent Owner's
`response. The Patent Owner has said that it's agreed that the
`claims cover communication on a path that transmits -- transits
`through a local processor. That's in the top box.
`In the second box, the intrinsic evidence -- this is
`the Patent Owner -- the intrinsic evidence overwhelmingly
`shows that the term direct was used in the sense that the
`remote server directs access.
`So, again, this is all in alignment. The Board's
`construction, the construction proposed by the Petitioner in the
`petition, and the Patent Owner's view of the landscape here is
`all in alignment. The path where the remote server directs the
`local processor to access things, access information and
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`9
`
`
`
`Case IPR2015-01364
`Patent 6,101,534
`
`addresses on the optical disk, that concept is within the scope
`of the claims under the broadest reasonable interpretation.
`Here is just one example from the intrinsic record
`to show that this is right. Now, this example includes a
`concept of restricted access, and we will talk about that later
`on in the presentation. It's a concept that appears in claims --
`in claim 24.
`But what's important here is that, the very last part
`of this excerpt, where it says the access is directed by the
`remote server assembly. So once, again, we have alignment
`here. We have a remote server that is directing access. And
`how does it do that? It directs the local processor and tells the
`local processor to retrieve information from the optical disk.
`JUDGE FITZPATRICK: Mr. Kean, you are on
`slide 9, correct?
`MR. KEAN: Thank you, Your Honor, for the
`reminder. Yes, sir, slide DX-9. And I will try to announce as
`I step through them. Thank you.
`I'm just turning to slide DX-10. So that is the
`access concept. Now, DX-10, this is one more claim
`construction issue and this one is really very minor, but there
`seems to be some dispute so we just wanted to try and clarify
`the situation. There is a concept of restricted access that
`appears in claims 2 and 24. There is a concept of only while
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`10
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01364
`Patent 6,101,534
`
`the client and server are connected that appears in claims 23
`and 24.
`
`Neither of those concepts appear in claim 1. And
`it was a little confusing to us. In the Patent Owner's response,
`it appeared that they were suggesting that these were concepts
`that needed to be read into independent claim 1, and we just
`want to point out that that is not accurate. Those concepts are
`not there. They're not in claim 1.
`They certainly are in claim 2, the restricted access
`concept. And then this concept of "only while" is in claim 23
`and 24, and the restricted access is also in claim 24.
`Importantly, all those concepts are also in the prior art and we
`will show why here in just a bit, but those concepts should not
`be read into claim 1.
`JUDGE FITZPATRICK: Mr. Kean, was there any
`briefing on either side about the significance of claim 2 being
`cancelled during the reexam and what effect that might have
`on the doctrine of claim differentiation?
`MR. KEAN: There really wasn't, Your Honor, a
`lot of emphasis on that. The only thing we are pointing out
`here with claim 2 is that this restricted access concept is in
`dependent claim 2 and not in independent claim 1, but there
`was not a lot of discussion about what the cancellation itself
`meant.
`
`JUDGE FITZPATRICK: Thank you.
`
`
`
`11
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01364
`Patent 6,101,534
`
`
`MR. KEAN: That's claim construction in this case.
`Those are really the only remaining issues on claim
`construction. And they are straightforward in this case
`because of the important one, which is the access concept, is
`one that both parties agree to. Both parties agree with the
`construction and the concept provided in the Institution
`Decision.
`
`Issue number 2 is the combination of Mages and
`Batchelor. There are kind of four sub- issues here. One is
`Batchelor, the Patent Owner has challenged that it is not
`analogous art. And then the Patent Owner has presented a
`couple of different challenges based on the application of the
`combination to different claims, and we will step through
`those one at a time.
`Starting first with just a high level discussion of
`the Batchelor reference, Your Honor, this is at DX-12, here we
`have a figure from Batchelor, it is figure 1, and also some
`description about what Batchelor does.
`So Batchelor includes an instruction that has
`command and address information. It tells the CPU to retrieve
`things, retrieve text and graphic information from the optical
`disk.
`
`One of the things I want to emphasize about the
`figure here is once, again, we have a remote computer, and
`that's the box in red, and then we have a local computer, and
`
`
`
`12
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01364
`Patent 6,101,534
`
`that's the box in green. And the Patent Owner has tried to
`characterize this Batchelor reference as just being TV, and
`they kind of oversimplify it by suggesting that's all it is.
`And I want to point out that, you know, there is a
`lot more to it than that. So if you look at the box in green,
`this is a computer. There is an optical disk there. There is a
`hard disk drive. There is a DRAM. There is a CPU.
`Batchelor expressly describes this as a personal
`computer. Batchelor involves two computers communicating
`over a communications link, just like the '534 patent does. It
`is the same concept.
`Now, here Batchelor illustrates the
`communications link in this figure as being a broadcast
`communications link. In the disclosure of Batchelor it also
`mentions that it could be cable, so that could also be wired.
`But as illustrated here, Batchelor teaches broadcast
`technology. So you have a remote computer talking to a local
`computer using broadcast technology as a communications
`link.
`
`Now, the question for analogous art --
`JUDGE FITZPATRICK: Mr. Kean, sorry, there is
`no reverse communication in Batchelor, is there, in the other
`direction?
`MR. KEAN: No, that's right, Your Honor. And
`that's also a concept that is not required by the claims.
`
`
`
`13
`
`
`
`Case IPR2015-01364
`Patent 6,101,534
`
`
`So when we are evaluating analogous art the first
`question is to look to whether or not it is in the same field of
`endeavor. Support for finding the field of endeavor comes
`from the patent's written description and claims, including the
`structure and the function of the invention.
`And so we look to the '534 patent here and look to
`see what it describes. So it describes a client computer
`communicating with the server computer and it described the
`communications link there. Now, in the '534 patent it
`described this communications link as including all sorts of
`different kinds of technologies.
`It says that explicitly included within the
`technology in the '534 patent there is a full band broadcast
`signal, an interlaced broadcast signal, or any other known data
`type signal. So the way the '534 patent describes the field of
`its endeavor, it includes various technology as a
`communications link between the server and the local
`computer.
`JUDGE DESHPANDE: Counsel, has there been
`any briefing on what the actual field of endeavor is for the
`'534 patent?
`MR. KEAN: Your Honor, we provided a definition
`and I believe I have that on the next slide, and that was
`included in our reply brief.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`14
`
`
`
`Case IPR2015-01364
`Patent 6,101,534
`
`
`So I'm turning to DX- 14. And this is the slide
`where we have listed the field of endeavor that we proposed in
`our reply brief. So we proposed that the field of endeavor
`should be defined to include at least interactive remote
`computer interface systems that utilize Internet or broadcast
`television transmissions.
`Now, there is one more important point to make on
`this slide. The Patent Owner has seemed to suggest that even
`if you allow that broadcast technology could be included
`within the field of endeavor of the '534 patent, that somehow
`that should exclude television broadcast. Well, that is
`inconsistent with what the Patent Owner has said in a different
`venue.
`
`So claim 13 explicitly includes a broadcast signal.
`And the Patent Owner in arguing claim construction there,
`suggested that the broadcast signal should include full band
`broadcast signals such as TV.
`And so there is no question that broadcast
`technology, including broadcast television technology, was
`contemplated to be within the field of endeavor of the '534
`patent. And really the analogous art inquiry ought to end
`there.
`
`As you all know, when you are looking to
`analogous art you first consider whether or not the art falls
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`15
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01364
`Patent 6,101,534
`
`within the field of endeavor. And if it does the analysis stops.
`There is no need for a further inquiry.
`But if you determine that it is outside the field of
`endeavor, then you look to whether or not it still would be
`relevant, would still be important to a person of skill in the art
`in solving the problems that were described in the patent, and
`that's the reasonably pertinent standard.
`You only get there if you determine that something
`is outside the field of endeavor. Here the Batchelor reference
`is so clearly within the field of endeavor it really should be
`found to be analogous art for that reason and that reason
`alone.
`
`But, nevertheless, if you turn to DX-16, excuse me,
`DX-15, here is an example of what the '534 patent says about
`the problem that it is trying to solve. So the '534 patent says:
`A significant problem associated with the use of such on- line
`technology, however, involves the substantial amount of time
`required to download various images and information.
`Well, if you look at the disclosure in Batchelor, it
`is designed to solve that exact problem. What Batchelor
`describes is you have a local optical disk that includes
`encyclopedia-type information, information that would require
`a lot of data that you don't need to transmit over the
`communications link in Batchelor. The reason you don't need
`to transmit it is because that optical disk is local, it is stored
`
`
`
`16
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01364
`Patent 6,101,534
`
`locally, and the local computer can access information on that
`optical disk when it is directed to do so by the remote
`computer in Batchelor.
`And so the point is even if for some reason
`Batchelor were not within the field of endeavor, it would still
`be reasonably pertinent to the problem that was described and
`identified by the '534 patent.
`I'm going to jump ahead to slide DX-18, Your
`Honor. This is the description of Mages. And I'm going to
`discuss the combination of Mages and Batchelor. Here once,
`again, we have a client, or a local computer communicating
`over a communications link with the server.
`Here we have got the local computer in the green
`box and the server in the red box. It is a very familiar
`architecture. It's the same architecture in the '534 patent,
`same architecture that we saw in Batchelor.
`Now, what is the reason for the combination? So
`Mages discloses server control of local media data. Mages
`describes that specific tracks on the CD-ROM can be
`controlled by the remote server. Mages describes a situation
`where the server sends triggering information and sends a key
`to the local computer instructing it to access information on
`the local CD.
`What Batchelor adds is it adds some detail on what
`that direction -- what that instruction actually involves, what
`
`
`
`17
`
`
`
`Case IPR2015-01364
`Patent 6,101,534
`
`it consists of. So if you look to Batchelor, one excerpt of
`Batchelor is in the box on the right, Batchelor explains that
`there is text and graphic information on the optical disk and
`then Batchelor explains that the remote computer there will
`instruct the CPU, instruct the local CPU to retrieve specific
`text and graphic information from the optical disk.
`Now, here is the value added by Batchelor.
`Batchelor explains exactly what that is and says that it
`contains command and address information. So it is
`commanding. It is instructing the local processor to take
`action. And it is providing the local processor with an address
`on the optical disk on where to retrieve the information.
`And so the combination here that we have
`presented in our petition takes that detail from Batchelor and
`adds it to the system of Mages. In the system of Mages you
`already have this communication between the client and the
`server. You already have server control of the client, server
`control of the information on the optical disk. But Batchelor
`adds some additional detail as to what precisely should be in
`that data packet and in that instruction.
`Now, why would a person of skill in the art be
`motivated to combine that teaching from Batchelor with
`Mages? Well, the answer is it would be desirable because, as
`described in Batchelor, it would enable the remote facility to
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`18
`
`
`
`Case IPR2015-01364
`Patent 6,101,534
`
`directly control utilization of specific tracks of the local
`CD-ROM.
`So we already know from Mages that server control
`of the local information is one of the goals. That's one of the
`solutions that Mages was presenting. The addition of
`Batchelor enhances that.
`It enhances that because it gives the server
`additional control because it has the server telling the local
`computer, one, it is instructing it to go get and retrieve
`information and, two, it is telling it the address. It is telling it
`specifically where to go on the optical disk in order to retrieve
`that information. And so that's the combination here.
`Our expert, Dr. Madisetti, has explained additional
`motivations in detail in paragraphs 41 through 49 of his
`declaration, but that's the real gist of it, is the addition of the
`concept of Batchelor to the data communications that are
`already taking place in Mages enhances that functionality that
`Mages was attempting to accomplish.
`I'm going to skip ahead to slide 22. Slide 21 kind
`of reiterated a couple of claim construction points but I want
`to move ahead to claims 23 and 24. These claims include a
`new limitation that says the addresses are accessible only
`while the local processor assembly is interactively online
`connected to the remote server assembly.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`19
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01364
`Patent 6,101,534
`
`
`And I would like to jump ahead to the next slide
`and to some specific examples from Mages. And the reason
`why is that Mages in its primary embodiment teaches access
`only one way. It teaches access while the client and the server
`are in communication.
`Now, what do I mean by that? Here are two
`examples from Mages on slide DX-23. In the first example it
`says the CD- ROM will only allow the end user to access --
`access to the video and audio on it by logging onto the host's
`server via a network such as the Internet.
`It goes on to say in the next excerpt: The only way
`to access the data is socket- to- socket connection with the
`server of the web page of the host.
`Now, one question that these two examples kind of
`bring to mind is timing. It brings to mind, you know, when
`does this all take place in the example, in the primary
`embodiment described in Batchelor? And I would like to turn
`the Board's attention to Mages, the Mages reference, '825, and
`to columns 7 and 8 there.
`And at the bottom of column 7, starting at about
`line 47, it explains -- now this is the primary embodiment in
`Mages explaining how it works, providing specific detail as to
`what happens when the server instructs the local processor to
`act -- it says: As soon as, the local computer, as soon as the
`encoded key arrives and is stored in RAM by means of the
`
`
`
`20
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01364
`Patent 6,101,534
`
`catcher program, a subroutine player in the program on the
`receiving computer begins to decode the trigger in order to
`invoke the correct track.
`So as soon as that key arrives, this is happening
`while there is a connection, there is a connection, it just
`received the key, and as soon as that key arrives the local
`processor takes action.
`It goes on to say at the top of column 8, that
`paragraph continues and goes on to about line 8 or 9 in column
`8 and it explains what happens next. It says: "It is noted and
`emphasized that as soon as the key has been decoded the video
`and/or audio data is immediately played back by the
`audio/video subsystems." And it goes on from there.
`So this is all happening immediately. This is
`happening while the local computer is online and
`communicating with the server in the primary embodiment in
`Mages.
`
`Now, how does the Patent Owner respond to this?
`The Patent Owner responds with speculation about things that
`Mages might do that it doesn't say it does. So the Patent
`Owner alleges that the trigger stored temporarily in RAM can
`be accessed offline. Now, the primary embodiment in Mages,
`that's the embodiment that is talking about the trigger being
`stored in RAM. Nowhere in that embodiment does it talk
`about saving something for later or giving the local computer
`
`
`
`21
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01364
`Patent 6,101,534
`
`an option to ignore the instruction. That is not in the primary
`embodiment in Mages.
`Patent Owner's expert, we asked Dr. Brogioli about
`this, he admitted that he didn't discuss this in his opinion. So
`their expert could not point to any evidence where Mages in
`its primary embodiment accesses these addresses when it is
`offline. This is pure speculation. And this is the reason why
`the case law is important.
`When you have a negative limitation like we have
`here, the "only while" concept in the claims, claims 23 and 24,
`that's a negative limitation. When you have a negative
`limitation like that, and we have demonstrated, as we have
`done here, that the affirmative requirements are met in the art,
`it is not enough to defeat that showing with speculation. That
`is not enough.
`It is the Patent Owner's job to come forward with
`some evidence. They have the burden of production to
`identify some reason that Mages does something else or does
`something different in the embodiment that we're relying on.
`They haven't done that here.
`And so speculation about things that it doesn't do,
`speculation about functionality that Mages doesn't describe,
`that is not enough to defeat a strong showing of obviousness.
`That's not enough to defeat the showing of obviousness that
`we have provided here.
`
`
`
`22
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01364
`Patent 6,101,534
`
`
`I'm going to turn to slide DX-26, and this is an
`excerpt from claim 24. It is one of the challenged claims and
`it does have this concept of restricted access. And, candidly,
`I'm not sure what the debate is here because this is precisely
`what Mages teaches. This is one of the purposes of Mages is
`to restrict access.
`If we turn to DX- 27, here is a couple examples. So
`at the top, it is the Patent Owner's argument that Mages sends
`a key that may or may not be used depending on the decision
`of the user of the local processor. That is made up. That is
`not coming from anywhere in the primary embodiment of
`Mages.
`
`Instead, Mages describes that the CD -ROM will
`only allow the end user to access video or audio data on it by
`logging into the host server. It goes on to say that the only
`way to access the data is a socket-to-socket connection with
`the server of the web page of the host.
`So once, again, we have this situation here where
`Mages expressly describes exactly what is claimed, and you
`can't defeat a showing like that by speculating about other
`things or saying Mages does something or teaches something
`that it doesn't teach in that primary embodiment.
`Turning to slide DX- 28, this is the third and final
`issue that we have in the proceeding, and this is the
`combination of Mages and Batchelor with the addition of the
`
`
`
`23
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01364
`Patent 6,101,534
`
`Hughes reference. And the purpose of the Hughes reference is
`it adds some detail that is relevant to claim 22.
`Claim 22 includes a couple of limitations that
`aren't -- that don't appear elsewhere in the challenged claims.
`So one of these is it generates a floor plan display that's
`hi
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
