Trials@uspto.gov
`571-272-7822
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` Paper 24
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`Date: September 26, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC and
`GAMELOFT, S.A.,
`Petitioners,
`
`v.
`
`ROTHSCHILD DIGITAL MEDIA INNOVATIONS, LLC,
`Patent Owner.
`
`
`
`Case IPR2015-01364
`Patent 6,101,534
`
`
`
`
`Before KALYAN K. DESHPANDE, MICHAEL J. FITZPATRICK, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`FITZPATRICK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
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`

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`IPR2015-01364
`Patent 6,101,534
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`I.
`
`INTRODUCTION
`
`Co-Petitioner Sony Entertainment America LLC (“Sony”), filed a
`Petition to institute an inter partes review of claims 1, 6–9, and 21–24 of
`U.S. Patent No. 6,101,534, as amended by U.S. Patent Reexamination
`Certificate 6,101,534 C1, (Ex. 1001, “the ’534 patent”) pursuant to
`35 U.S.C. § 311(a). Paper 3 (“Pet.”). Patent Owner, Rothschild Digital
`Media Innovations, LLC, filed a Preliminary Response pursuant to
`35 U.S.C. § 313. Paper 7 (“Prelim. Resp.”). In a December 15, 2015,
`Decision, we granted the Petition, instituting trial on all claims on the
`following grounds:
`
`claims 1, 6–9, 21, 23, and 24 being unpatentable under
`35 U.S.C. § 103(a)1 as obvious over Mages (Ex. 1005)2 and Batchelor
`(Ex. 1004)3; and
`
`claim 22 being unpatentable under 35 U.S.C. § 103(a) as
`obvious over Mages, Batchelor, and Hughes (Ex. 1008).4
`
`Paper 8 (“Inst. Dec.”).
`
`After institution, Patent Owner filed a Patent Owner Response (Paper
`15, “PO Resp.”) to which Sony filed a Reply (Paper 17, “Reply”). On June
`22, 2016, we joined Gameloft, S.A. (“Gameloft”), as an additional petitioner
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, took
`effect on March 18, 2013. Because the application from which the ’534
`patent issued was filed before that date, our citations to 35 U.S.C. § 103(a)
`are to its pre-AIA version.
`2 U.S. Patent No. 5,892,825, filed Nov. 25, 1996, issued Apr. 6, 1999.
`3 U.S. Patent No. 5,724,103, filed Nov. 13, 1995, issued Mar. 3, 1998.
`4 U.S. Patent No. 5,736,977, filed Apr. 26, 1995, issued Apr. 7, 1998.
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`pursuant to 35 U.S.C. § 315(c). Paper 20. Gameloft has not sought to
`present its own arguments or evidence in this proceeding and is represented
`here by the same counsel as Sony. See Ex. 3001, 8; see also Paper 21
`(Sony’s and Gameloft’s joint request for oral argument). We refer to Sony
`and Gameloft collectively as “Petitioner.”
`
`A hearing for oral arguments was held on August 18, 2016, and a
`transcript of the hearing is included in the record. Paper 23 (“Tr.”).
`As discussed below, Petitioner has shown by a preponderance of the
`evidence that all of the challenged claims are unpatentable.
`
`A. The ’534 Patent
`
`The ’534 patent relates to an interactive remote computer interface
`system. Ex. 1001, 1:6–7.5 In general, it describes a system in which local
`data and remote data are combined for local use. Id. at Abstract. The use of
`local data stored on, for example, a CD-ROM reduces the amount of data
`required to be downloaded in order to render a desired display of data, while
`the use of remote data allows for providing updated data from a centralized
`source. Id. at 6:41–46, 7:4–8.
`
`The system includes a remote server, a local processor, and a data
`storage assembly associated with the local processor. Ex. 1001, 5:20–42.
`The remote server includes primary site data and at least one primary site
`address that includes at least a portion of the primary site data. Id. at 5:20–
`
`
`5 Our citations to the ’534 patent as issued are to “Ex. 1001,” whereas our
`citations to U.S. Patent Reexamination Certificate 6,101,534 C1 are to “Ex.
`1001, C1.”
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`25. The data storage assembly may be a hard drive but is preferably a
`compact, portable, and interchangeable computer readable medium such as a
`CD-ROM. Id. at 5:40–45. The data storage assembly includes auxiliary site
`data associated with the primary site data and is encoded with a plurality of
`remotely accessible auxiliary site addresses, each of which includes select
`portions of auxiliary site data. Id. at 5:46–53.
`
`Petitioner fairly describes operation of an embodiment of the ’534
`patent as follows:
`a user at a local computer, having access to a CD-
`ROM or the like that has been previously distributed
`and stored at a local computer, is able to go online
`to access primary site information (e.g., through a
`website). See, e.g., [Ex. 1001] at Col. 13:43–14:32.
`When the interaction calls for interactive video,
`downloading is not necessary because the system
`accesses the CD-ROM, and initiates utilization of
`auxiliary data stored thereon. See id. The auxiliary
`data is stored at specific auxiliary site addresses on
`the CD-ROM so that the data is readily accessible.
`See id.
`Pet. 4. Additionally, it is clear from the specification that one focus of the
`’534 patent is application of the invention to a real estate context. Ex. 1001,
`7:30–35 (“the present invention is directed towards a system for the display
`of a three dimensional space, generally 10, and preferably, a real state
`display system 10 structured to provide for the remote exhibition of real
`estate space”). But the challenged claims, discussed below, are not limited
`to such an application.
`
`B. The Challenged Claims
`
`Petitioner challenges claims 1, 6–9, and 21–24. Pet. 2–3. Claims 1,
`4
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`An interactive, remote, computer interface system
`
`23, and 24 are independent, and the remaining challenged claims (claims 6–
`9, 21, and 22) ultimately depend from claim 1. Claim 1 is illustrative and
`reproduced below.
`1.
`comprising:
`a remote server assembly, said remote server assembly
`including a quantity of primary site data;
`said remote server assembly including at least one
`primary site address, said primary site address including at least
`a portion of said primary site data and being distinct so as to
`identify a location thereof on a computer network;
`a local processor assembly;
`said local processor assembly being coupled in data
`transmitting and receiving communication with said remote
`server assembly;
`said local processor assembly being structured to access
`said primary site address so as to achieve said data transmitting
`and receiving communication with said remote server
`assembly;
`at least one data storage assembly associated with said
`local processor assembly and structured to contain a quantity of
`auxiliary site data thereon, said auxiliary site data being
`associated with said primary site data;
`said data storage assembly including a compact, portable
`and interchangeable computer readable medium;
`said compact, portable and interchangeable computer
`readable medium including a plurality of remotely accessible,
`auxiliary site addresses encoded therein, each of said remotely
`accessible, auxiliary site addresses including select portions of
`said quantity of auxiliary site data; and
`said remotely accessible, auxiliary site addresses being
`structured to be remotely accessed by said remote server
`assembly so as to initiate utilization of said select portions of
`
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`said quantity of auxiliary site data by said local processor
`assembly in conjunction with said primary site data.
`Ex. 1001, 16:41–17:9.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`“A claim in an unexpired patent that will not expire before a final
`written decision is issued shall be given its broadest reasonable construction
`in light of the specification of the patent in which it appears.” 37 C.F.R.
`§ 42.100(b). Pursuant to that standard, the claim language should be read in
`light of the specification, as it would be interpreted by one of ordinary skill
`in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010).
`Thus, we generally give claim terms their ordinary and customary meaning.
`See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The
`ordinary and customary meaning is the meaning that the term would have to
`a person of ordinary skill in the art in question.”) (internal quotation marks
`omitted).
`
`1. The Remote Access Limitations
`Independent claim 1 recites:
`said remotely accessible, auxiliary site addresses
`being structured to be remotely accessed by said
`remote server assembly so as to initiate utilization
`of said select portions of said quantity of auxiliary
`site data by said local processor assembly.
`Ex. 1001, 17:5–10. Similarly, each of independent claims 23 and 24 recites:
`said remotely accessible, auxiliary site addresses
`being structured to be remotely accessed by said
`remote server assembly;
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`said remote server assembly remotely accessing
`said auxiliary site data to initiate utilization of said
`select portions of said quantity of auxiliary site data
`by said local processor assembly.
`Ex. 1001, C1, 1:58–2:4, 2:41–48.
`
`In the Petition, Sony proposed that these limitations of claims 1, 23,
`and 24 (the “remote access limitations”) mean that “[t]he remote server
`assembly accesses the auxiliary site data (either by accessing the data
`directly or by directing the local processor assembly to access the data) to
`initiate utilization of the auxiliary site data by the local processor assembly.”
`Pet. 15 (emphasis added). In the Preliminary Response, Patent Owner
`argued that the remote access limitations mean that “the auxiliary site
`addresses are formatted such that they are available to the local processor
`assembly while a remote server assembly is acting in network
`communication with the local processor assembly.” Prelim. Resp. 21. Thus,
`both parties proposed that the remote access limitations encompass the local
`processor assembly accessing the auxiliary site data under some
`circumstance.
`
`Consistent with the parties’ proffered constructions, in the Institution
`Decision, we construed the remote access limitations as “encompass[ing] a
`remote server assembly accessing the auxiliary site data by directing the
`local processor assembly to access the data to initiate utilization of the
`auxiliary site data by the local processor assembly.” Inst. Dec. 11. Neither
`party has argued since that this construction is erroneous, and we maintain it
`in this Final Written Decision. See PO Resp. 21–30; Reply 4–6.
`
`Nonetheless, a claim construction issue remains, as Patent Owner
`
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`argues that certain statements in the Institution Decision, relating to the
`construction of the remote access limitations, create “semantic confusion” or
`are incorrect as they relate to the terms “direct” and “indirect.” See PO
`Resp. 21–23, 28–29. In that regard, Patent Owner argues the following:
`
`There is no need for the Board to . . . label[] the claim
`construction in the Reexamination Decision as inconsistent with
`the claim construction in the Institution Decision. The decisions
`are consistent, and the appearance of contradictory Board
`decisions should not be created.
`PO Resp. 30. Thus, although Patent Owner does not oppose our
`construction of the remote access limitations, it wants to avoid any
`suggestion that our construction is different than the one previously adopted
`by this Board. Yet, it is different.
`
`The “Reexamination Decision,” referred to by Patent Owner, is a
`Board decision on appeal from a final rejection in Reexamination Control
`No. 90/008,591 (“the ’591 reexamination”) of, among other claims and
`rejections, claim 1 of the ’534 patent as anticipated by Mages. Ex. 1003,
`779. In that decision, the Board reversed the final rejection, stating:
`
`Since the language of claim 1 requires that the encoded auxiliary
`site addresses are structured to be accessed by the remote server,
`we find, according to that claim, that the addresses are directly
`accessed by the remote server. The scope of claim 1 does not
`cover encoded auxiliary site addresses that are structured to be
`accessed by a local processor or any other intermediary,
`ultimately resulting in the addresses being indirectly accessed by
`the remote server.
`[T]he broadest reasonable interpretation of claim 1 is limited to
`remotely accessible auxiliary site addresses encoded on a
`compact, portable and interchangeable computer readable
`medium being structured to be remotely accessed by the remote
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`server assembly directly.
`Ex. 1003, 787–87 (underlining added).6
`
`In the Institution Decision, we acknowledged this prior Board
`construction, but we did not adopt it. Inst. Dec. 8–9. Our understanding
`was, and remains, that the prior Board construction would exclude the
`remote server indirectly accessing the auxiliary site addresses via the local
`processor. And, as so understood, the prior Board construction was at odds
`with both parties’ positions in this inter partes review. See Pet. 15 (arguing
`that the remote access limitations mean the “remote server assembly
`accesses auxiliary site data (either by accessing the data directly or by
`directing the local processor assembly to access the data) to initiate
`utilization of the auxiliary site data by the local processor assembly.”)
`(emphasis added); Prelim. Resp. 21 (arguing that the remote access
`limitations mean that “the auxiliary site addresses are formatted such that
`they are available to the local processor assembly while a remote server
`assembly is acting in network communication with the local processor
`assembly”) (emphasis added).
`
`Our understanding of the prior Board construction is informed by
`considering Patent Owner’s arguments to the Board in obtaining the prior
`construction. Of particular import is the following such argument:
`
`the
`third point evidences, yet again,
`The Examiner’s
`Examiner[’s] unreasonableness in considering the language of
`the claim. In this instance the Examiner somehow (without any
`
`6 The quoted Board statements were expressly directed to the remote access
`limitation of claim 1, but they implicitly relate to the remote access
`limitations of claims 23 and 24 as well. Ex. 1003, 787.
`9
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`evidence for support) believes that a remote server assembly
`accessing auxiliary site data (i.e., within the data storage
`assembly associated with the local processor assembly) is
`disclosed by sending some information that allows access. To
`“allow access” is not the same as “accessing.” A person, living
`in Maryland, sending a key to a person in California with the key
`opening a door to a room in California is not “accessing” the
`room by sending the key. Instead, the person in California that
`is adjacent to the door when the key is inserted into the lock and
`the door has been opened is “accessing” the room. Although the
`Examiner continues to set forth broad interpretations of the
`language at issue, these interpretations are not reasonable.
`Ex. 1003, 760–61. Having considered this argument by Patent Owner, the
`Board construed the claims narrowly as including only auxiliary site
`addresses that “are directly accessed by the remote server” and not auxiliary
`site addresses that “are structured to be accessed by a local processor or any
`other intermediary, ultimately resulting in the addresses being indirectly
`accessed by the remote server.” Ex. 1003, 787.
`
`The prior Board construction is different than the one we adopt here
`and, thus, we decline to clarify any “semantic confusion,” as argued by
`Patent Owner, because there is none.
`
`2. Initiate Utilization
`The remote access limitations, reproduced and discussed above,
`include the following language: “initiate utilization of said select portions of
`said quantity of auxiliary site data by said local processor assembly.” Patent
`Owner argues that “initiate utilization” should be construed to mean
`“occasions or causes the initiation of utilization.” PO Resp. 30‒31. Patent
`Owner’s proposed construction would convert the verb “initiate” to the noun
`“initiation” and introduce a new verb in its place (“occasions or causes”).
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`By doing this, Patent Owner’s construction changes the focus of what the
`remote accessing is required to do. Per the claim language, the remote
`accessing is required to initiate the utilization of auxiliary site data. Per
`Patent Owner’s construction, however, the remote accessing would be
`required to initiate the initiation of utilization of auxiliary site data. Patent
`Owner’s construction needlessly confuses the language of the claims. We
`do not adopt it. Further, an express construction is unnecessary, as the plain
`and ordinary meaning of “initiate utilization” is readily apparent.
`
`B. Obviousness in View of Mages and Batchelor
`
`Petitioner contends that claims 1, 6–9, 21, 23, and 24 would have been
`obvious over Mages and Batchelor. Pet. 2. In assessing obviousness, “the
`scope and content of the prior art are to be determined; differences between
`the prior art and the claims at issue are to be ascertained; and the level of
`ordinary skill in the pertinent art resolved.” Graham v. John Deere Co., 383
`U.S. 1, 17 (1966).7
`
`1. Mages (Ex. 1005)
`Mages states that there are “considerable drawbacks and deficiencies
`in transmitting video images and/or audio data over the Internet” from a
`remote server, including “considerable time delays.” Ex. 1005, 3:28–52.
`
`
`7 Additionally, secondary considerations such as “commercial success, long
`felt but unsolved needs, failure of others, etc., might be utilized to give light
`to the circumstances surrounding the origin of the subject matter sought to
`be patented. As indicia of obviousness or nonobviousness, these inquiries
`may have relevancy.” Graham, 383 U.S. at 17–18. Patent Owner, however,
`has not presented any such evidence.
`11
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`Mages, thus, teaches a networked computer system in which audio/video
`data is stored locally (e.g., on a CD-ROM), the use of which is controlled by
`a remote server. Id. at 4:15–17 (“Specific tracks on the CD-ROM can
`thereby be controlled by the remote server.”), Abstract (“A method of
`triggering video imaging 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.”). Mages states the following:
`It is the primary objective of the present invention to
`separate keys and data by providing a CD-ROM having its
`informational data of video and/or audio that is crippled, which
`data may only be read after it has been “uncrippled” by receiving
`“uncrippling” triggering data over the Internet from a server of a
`host system, so that a company’s host computer serving the
`Internet may transmit the “uncrippling” data over the Internet to
`an end-user’s receiving computer in order to uncripple and,
`thereby, actuate the CD-ROM, so that the data thereon may be
`read by the end-user’s receiving computer only in volatile
`memory such as RAM.
`It is another objective of the present invention to enable
`server control of the local media data by providing such a
`“crippled” CD-ROM with video and/or audio data thereon,
`whereby content by a company on the Internet may be better
`controlled, and whereby in conjunction with the content, video
`and/or audio playback may be combined with any updated,
`textual information, such as current price of a product or
`products, location of a store or stores in the vicinity of the end-
`user’s residence, etc. Specific tracks on the CD-ROM can
`thereby be controlled by the remote server.
`Id. at 3:62–4:17. Also, “[s]ince the uncrippling trigger is much smaller than
`the entire media file, it saves considerable amount of transmission time.” Id.
`at Abstract.
`
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`2. Batchelor (Ex. 1004)
`Batchelor describes combining information received from a broadcast
`transmission with information locally stored on a local CD-ROM and
`displaying the combined information together. Ex. 1004, 4:7–17. A
`broadcaster has a data source and a video source, which are inputted to a
`vertical blanking interval (VBI) inserter. Id. at 2:14–22, 3:1–25. “The video
`signal and accompanying inserted data are transmitted by a transmitter.” Id.
`at 2:26–28. After receipt of the transmission, a VBI decoder separates the
`combined signal into (1) a video signal, which is further processed by an
`NTSC decoder, and (2) a data signal. Id. at 2:29–34. The data is sent to a
`local CPU which it instructs, via “command and address information” to
`retrieve specific text and graphic information from an optical disk (e.g., a
`CD-ROM) and display the text and graphic information on a display, along
`with the NTSC video signal. Id. at 2:49–54.
`
`3. Petitioner’s Application of the Art to the Challenged Claims
`
`Petitioner relies on Mages as teaching all of the subject matter of
`claims 1, 6–9, 21, 23, and 24, except that it additionally relies on Batchelor
`for the remote access limitations of claims 1, 23, and 24. Pet. 18–35. In that
`regard, Petitioner notes that both references recognize the desirability of
`locally storing data on a CD-ROM and remotely directing access to that
`data. Pet. 19–20 (citing Ex. 1005, 4:15–17; Ex. 1004, 1:30–58). Petitioner
`persuasively argues that one of ordinary skill would have found it obvious to
`modify the operation of the remote server of Mages to access and control the
`specific data on a local CD-ROM, as taught by Batchelor. Pet. 20. “In other
`words, the uncrippling or triggering data [of Mages] could include specific
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`command and address information as provided in Batchelor.” Id.; see also
`Tr. 58:16–17 (counsel for Patent Owner describing Batchelor as teaching “a
`direct command to the auxiliary”).
`
`Patent Owner argues against the unpatentability challenge based on
`the intertwined reasons of claim construction and prior consideration of
`Mages during the ’591 reexamination. PO Resp. 39–41. Those arguments,
`however, were considered and rejected in the Institution Decision and again
`above. Patent Owner additionally argues that: (1) Batchelor is non-
`analogous art, (2) the proposed combination fails to disclose all limitations
`of the challenged claims, and (3) a person of ordinary skill in the art would
`not have combined the teachings as asserted by Petitioner. Id. at 33–39, 41–
`48. We address these additional arguments below.
`
`Batchelor is Analogous Art
`a)
`Patent Owner argues that Batchelor is not analogous art. PO
`Resp. 33–39. Whether it is presents a question of fact. In re Clay, 966 F.2d
`656, 658 (Fed. Cir. 1992) (“Whether a reference in the prior art is
`‘analogous’ is a fact question.”). “Two criteria have evolved for
`determining whether prior art is analogous: (1) whether the art is from the
`same field of endeavor, regardless of the problem addressed, and (2) if the
`reference is not within the field of the inventor’s endeavor, whether the
`reference still is reasonably pertinent to the particular problem with which
`the inventor is involved.” Id. at 658–59.
`
`(1) Batchelor Is From The Same Field of Endeavor
`Patent Owner argues that Batchelor does not meet the first criterion
`because it is from the field of “broadcast television” whereas the challenged
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`claims are in the field of “interactive computer networks.” PO Resp. 33–35.
`We are not persuaded that the ’534 patent or Batchelor are limited to such
`narrowly defined fields.
`
`The ’534 patent involves interactive computer networks as Patent
`Owner argues, but it additionally and explicitly contemplates the use of
`broadcast transmission within the scope of its invention. In particular, it
`describes and claims using broadcast transmission to send auxiliary site data,
`for example, from a remote server assembly to a storage medium at a local
`processor assembly for the purpose of updating auxiliary site data stored on
`the local storage medium. Ex. 1001, 15:45–16:13 (description of same),
`18:10–11 (claim 13); see also In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir.
`2004) (“the scope of the field of endeavor” is found “in the application’s
`written description and claims, including the structure and function of the
`invention”). Petitioner argues that the “field of endeavor should be defined
`here to include at least interactive remote computer interface systems that
`utilize Internet or broadcast television transmissions.” Reply 9. Based on
`the written description and claim 13 of the ’534 patent, we agree.
`
`Batchelor, likewise, is not as limited as Patent Owner argues. It
`involves broadcast television as Patent Owner argues, but it also involves
`computers. For example, according to its “Field of Invention,” Batchelor
`“relates to a method and apparatus for inserting database address
`information into the vertical blanking interval of a video signal that is
`received by a personal computer.” Ex. 1004, 1:11–15. It describes a system
`that “includes a personal computer 10 that receives video signals and other
`information from a broadcaster 12 [that] includes a vertical blanking interval
`
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`(VBI) inserter 16 that has one input connected to a video source 18 and
`another input connected to a data source 20.” Id. at 2:15–24. Further, its
`claims are directed to “systems” reciting common computer-related features,
`including “data signal,” “non-volatile storage,” “monitor,” and “central
`processing unit.” Id. at 4:28–46, 4:54–5:5. We find that Batchelor is from
`the same field of endeavor as the ’534 patent.
`
`(2) Batchelor Is Reasonably Pertinent To The Particular Problem With
`Which The Inventor Is Involved
`Even if Batchelor were from a different field than the ’534 patent, it
`nonetheless would meet the second criterion set forth in Clay. Batchelor is
`reasonably pertinent to the particular problem with which the ’534 patent
`was involved, i.e., how to provide and control a presentation (for example, a
`presentation of animated three dimensional images, video content, or audio
`content) from a remote location while avoiding the time-consuming step of
`transmitting all of the data used to generate the presentation. See, e.g.,
`Ex. 1001, 3:20–25 (“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. Such is particularly
`the case with any kind of animated three dimensional images or with video
`and/or audio information.”).
`
`Because Batchelor discloses a system in which a remote source
`controls a local display of data without transmitting all of the data to be
`displayed, it is reasonably pertinent to the problem involved in the ’534
`patent.
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`b)
`
`Petitioner Presents Adequate Reasoning To Support The Combination
`A claimed invention “is not proved obvious merely by demonstrating
`that each of its elements was, independently, known in the prior art.” KSR
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). To prove obviousness,
`there must have been, at the time of invention, “an apparent reason to
`combine the known elements in the fashion claimed by the patent at issue.”
`Id. Such reason cannot be provided by the very patent being challenged as
`obvious. Id. at 421 (“A factfinder should be aware, of course, of the
`distortion caused by hindsight bias and must be cautious of arguments reliant
`upon ex post reasoning.”); Cheese Sys. v. Tetra Pak Cheese & Powder Sys.,
`725 F.3d 1341, 1352 (Fed. Cir. 2013) (“Obviousness cannot be based on the
`hindsight combination of components selectively culled from the prior art to
`fit the parameters of the patented invention.”) (quotation marks omitted).
`
`The Petition offers the following reasons for why a person of ordinary
`skill in the art would have made the proposed combination:
`
`Mages and Batchelor both recognize the desirability of locally
`storing data on a CD-ROM and a remote server directing access
`to that data. Ex. 1005, Mages at 4:15–17; Ex. 1004, Batchelor at
`1:30–58. Upon reading the disclosure of Batchelor, one of
`ordinary skill in the art would have recognized and appreciated
`that the remote server of Mages could access and control the
`specific tracks of the local CD-ROM as specifically provided by
`Batchelor. Ex. 1009, Madisetti Decl., at ¶¶22–49. In other
`words, the uncrippling or triggering data could include specific
`command and address information as provided in Batchelor. Id.
`This would have been desirable because, as taught by Batchelor,
`it would enable the remote facility to directly control the
`utilization of specific tracks on the local CD-ROM such that two
`complementary
`pieces
`of
`information
`are
`displayed
`simultaneously. Id.; Ex. 1004, Batchelor at 1:30–39.
`17
`
`

`
`IPR2015-01364
`Patent 6,101,534
`
`Pet. 19–20 (Petitioner’s italicization of references and bolding of exhibit
`numbers removed). In short, Petitioner argues that Batchelor expressly
`provides a reason to modify Mages to provide remote access and control of
`specific data portions on a local CD-ROM.
`
`Patent Owner argues that Petitioner has failed to demonstrate a
`sufficient reason for the proposed combination of prior art teachings from
`Mages and Batchelor. PO Resp. 44–47. However, Patent Owner’s specific
`arguments in that regard do not rebut the actual reasoning offered by
`Petitioner, and they are otherwise not persuasive, as discussed below.
`
`Patent Owner first argues that “the challenge is based on a hindsight
`combination of references from the disparate fields of computer systems and
`broadcast television.” PO Resp. 45. The reasoning offered by Petitioner,
`however, is based on explicit teachings of the prior art, not on the claimed
`invention. See Pet. 19–20. Also, and as discussed above, the references are
`not from disparate fields, as Batchelor is analogous art.
`
`Patent Owner next argues that the “allegedly obvious combination
`was sufficiently nonobvious that it never before occurred to anyone in the
`‘534 Patent’s lengthy history of prosecution, reexamination and litigation.”
`PO Resp. 45. Patent Owner, however, does not cite any law, and we are
`aware of none, that holds that a patent’s claims are nonobvious based on any
`ground or rejection of obviousness not previously raised during prosecution,
`reexamination, and litigation of that patent.
`
`Patent Owner also argues that “the system of Mages requires a
`software program to govern the reception and retention of the key,”
`“[r]eplacement of the software-governed key system of Mages with a VBI-
`18
`
`

`
`IPR2015-01364
`Patent 6,101,534
`
`type command as in Batchelor would fundamentally change the essential
`nature of Mages,” and “[t]he ‘proposed substitution would destroy the basic
`objective’ of the central elements of Mages.” PO Resp. 46 (citing Ex. 1005,
`6:60–65; Ex. 2008 ¶ 40 and quoting Trivascular, Inc. v. Samuels, 812 F.3d
`1056, 1068 (Fed. Cir. 2016)). This argument is not persuasive because it is
`based on the false premise that Petitioner proposes that the person of
`ordinary skill in the art would have completely replaced the Mages system
`with a VBI system. Petitioner does not. Rather, Petitioner proposes that the
`skilled person would have used the command and address information from
`Batchelor as the “trigger data” already included in Mages. Pet. 20; see also
`Reply 16 (“No systems are being replaced, and no operations are being
`changed. Rather the data being transmitted from the host computer in
`Mages is merely ‘command and address’ information, such as a command to
`display specific data residing at a specific place on the CD-ROM, as
`described in Batchelor.”) (internal citations omitted).
`
`Petitioner provides sufficient reasoning for why a person of ordinary
`skill in the art would have made the proposed combination.
`
`c)
`
`The Proposed Combination of Mages and Batchelor Discloses the
`Subject Matter of Claims 1, 6–9, 21, 23, and 24
`Petitioner shows how its proposed combinat