UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC.
`Petitioner,
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`v.
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`ATI TECHNOLOGIES ULC
`Patent Owner.
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`____________________
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`Case IPR2015-01620
`Patent 7,095,945 B1
`____________________
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`PATENT OWNER PRELIMINARY RESPONSE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

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`IPR2015-01620
`U.S. Patent No. 7,095,945
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`TABLE OF CONTENTS
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`
`I. 
`
`II. 
`
`INTRODUCTION .......................................................................................... 1 
`
`BACKGROUND ............................................................................................ 5 
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`A. 
`
`B. 
`
`’945 patent overview ............................................................................. 5 
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`Claim 21 ................................................................................................ 5 
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`III.  A PERSON OF ORDINARY SKILL IN THE ART (“POSA”) .................... 6 
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`IV.  LG’s Petition is procedurally barred .............................................................. 7 
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`A. 
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`B. 
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`LG’s second Petition is time barred and LG does not deserve a
`second bite at the apple. ........................................................................ 7 
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`The second Petition and LG’s first Petition are entirely
`redundant. .............................................................................................. 9 
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`V. 
`
`LG STILL FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT IT WILL PREVAIL ................................................ 12 
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`A.  Overview of Hatanaka. ........................................................................ 12 
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`B. 
`
`All of LG’s obviousness grounds against claim 21 are deficient. ...... 20 
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`1. 
`
`2. 
`
`3. 
`
`Deficiencies of Hatanaka. ........................................................ 21 
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`It would not have been obvious to combine Hatanaka and
`Hoogenboom to arrive at claim 21, because the
`combination would have required significant
`reconstruction ........................................................................... 30 
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`Anderson does not teach “a first clock recovery module
`... wherein the first clock recovery module is to generate
`a clock at the output … before the select packets are
`stored in the storage device.” ................................................... 34 
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`VI.  CONCLUSION ............................................................................................. 39 
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`Exhibit List
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`Exhibit Number Document Description
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`IPR2015-01620
`U.S. Patent No. 7,095,945
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`Invalidity Contentions served by Counsel for LG Electronics,
`Inc. et al., dated October 2, 2014, Case No. 3:14-cv-1012-SI
`Exhibit I-01 (945) US5517250 - Hoogenboom Service Chart
`
` IPR2015-00321, Institution Decision, Paper No. 20
`
`“A consumer digital VCR for digital broadcasting” by
`Hatanaka et al. (1998)
`“A consumer digital VCR for advanced television” by
`Okamoto et al. (1993)
`“A consumer digital VCR for digital broadcasting” by
`Okamoto et al. (1995)
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`IPR2015-01620
`U.S. Patent No. 7,095,945
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`I.
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`INTRODUCTION
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`Patent Owner, ATI Technologies ULC (hereafter “Patent Owner”), hereby
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`respectfully submits this Patent Owner Preliminary Response. This filing is timely
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`under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42.120, because it was filed by
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`November 6, 2015.
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`This is the second of two IPR petitions that Petitioner LG Electronics, Inc.
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`(hereafter “LG”) has filed against Patent Owner’s U.S. Patent 7,095,945 (“the
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`‘’945 patent”1). The Board should deny institution, because: (i) this Petition is
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`time-barred; (ii) this Petition is redundant; and (iii) LG still has not shown a
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`reasonable likelihood that it would prevail with respect to claim 21.
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`First, the Board should exercise its discretion and deny LG’s second Petition
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`against the ’945 patent, because LG is time-barred from bringing this Petition
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`under 35 U.S.C. § 315(b). This Petition was filed more than a year after LG was
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`served with a complaint alleging infringement of the ’945 Patent. On July 24,
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`2015, more than sixteen months after Patent Owner served LG with the complaint
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`(and after previously failing in its challenge of claim 21 in IPR2015-00321), LG
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`filed this second Petition for inter partes review of the ’945 Patent. Paper 2. LG
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`also filed a motion to join this proceeding with IPR2015-00321. Paper 3. Patent
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`Owner opposed that motion. Paper 7. LG seeks joinder in an effort to circumvent
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`1 IPR2015-00321 was filed on December 10, 2014.
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`IPR2015-01620
`U.S. Patent No. 7,095,945
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`the § 315(b) one-year statutory bar.
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`The Board should exercise its discretion and deny this second Petition. The
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`Board has repeatedly denied joinder where a petitioner attempts, as is the case
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`here, to use a prior institution decision as a roadmap to remedy unsuccessful
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`challenges advanced in a first petition. The Board has been especially critical of
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`such tactics by petitioners when the follow up petition would be time-barred under
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`§ 315(b), absent joinder. See, e.g., Medtronic, Inc. et al. v. Endotach LLC,
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`IPR2014-00695, Paper 18, pp. 3-4 (P.T.A.B. Sept. 25, 2014).
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`Second, LG’s second Petition and first Petition are redundant. LG has
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`already failed to get trial instituted on three grounds of rejection against claim 21
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`in its first Petition. LG now proposes two more grounds of rejection without
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`explaining how this second Petition is not an improper circumvention of the IPR
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`rules. Hence, consistent with previous Board rulings, the Board should also find
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`this second Petition redundant.
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`Finally, after failing in its initial challenge of claim 21, LG still has not
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`established a reasonable likelihood of prevailing with any of its new proposed
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`grounds against claim 21. LG has not shown how Hatanaka in combination with
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`either Hoogenboom or Anderson renders claim 21 obvious. Although LG has
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`advanced Hoogenboom and Anderson specifically to address the shortcomings
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`identified in its first Petition against the ’945 patent, Hatanaka still suffers from
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`IPR2015-01620
`U.S. Patent No. 7,095,945
`several deficiencies which are not cured by either Hoogenboom or Anderson. For
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`example, Hatanaka does not teach (i) “a storage device having a data port coupled
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`to the output of the first transport stream demultiplexer to receive the select
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`packets, wherein the storage device is to store the select packets,” (ii) “a decoder
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`having … a second input coupled to the dataport of the storage device to receive
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`the select packets...” or (iii) “a first clock recovery module … wherein the first
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`clock recovery module is to generate a clock … before the select packets are stored
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`in the storage device,” as required by claim 21.
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`Regarding, the first two features, Hatanaka’s system is structurally different
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`from claim 21. FIG.1 of Hatanaka demonstrates that Hatanaka’s storage device: (i)
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`does not have a data port coupled to the output of demultiplexer 9—the alleged
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`first transport stream demultiplexer; and (ii) does not receive the select packets
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`selected by Hatanaka’s alleged first transport stream demultiplexer. Additionally,
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`Hatanaka’s MPEG decoder 10 does not have a second input coupled to the data
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`port of the storage device to receive the select packets. LG does not and cannot
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`rely on Hoogenboom or Anderson to teach these features, because Hoogenboom
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`and Anderson, similar to Hatanaka, also disclose systems that are structurally
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`different from claim 21.
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`Regarding the third feature, on one hand, LG appears to maintain that
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`Hatanaka discloses “a first clock recovery module … wherein the first clock
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`IPR2015-01620
`U.S. Patent No. 7,095,945
`recovery module is to generate a clock … before the select packets are stored in the
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`storage device”— an argument that failed in its first Petition. And, on the other
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`hand, LG advances two new obviousness grounds, alleging that Hoogenboom and
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`Anderson cure the previously identified deficiencies of Hatanaka. But
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`Hoogenboom and Anderson fail to remedy Hatanaka’s deficiencies.
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`LG fails to address the shortcomings of Hatanaka’s disclosure. A careful
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`reading and proper analysis of Hatanaka reveals that Hatanaka is a severely limited
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`system. Hatanaka discloses a digital VCR, and its structural arrangement would
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`have presented significant challenges to anyone attempting to modify Hatanaka to
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`include different functionality, such as Hoogenboom’s video decompressor. A
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`system resulting from the combination of Hatanaka and Hoogenboom could not
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`have been arranged in the manner of claim 21 without making extensive non-
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`obvious modifications—modifications that would have only been realized by
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`looking at the teachings of the ’945 patent.
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`Moreover, Anderson does not disclose generating a clock at the output
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`before the select packets are stored in the storage device. So, in an attempt to
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`reconstruct the invention of claim 21, LG points to an irrelevant operation
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`performed by Anderson’s system—table filtering—and alleges that it would have
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`been obvious to perform clock recovery in the same manner. LG’s reasoning,
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`however, is nonsensical, because: (i) Anderson does not provide any link between
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`IPR2015-01620
`U.S. Patent No. 7,095,945
`table filtering and clock recovery, and (ii) LG’s rationale for obviousness is filled
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`with improper hindsight—relying on the ’945 patent as a guide to pick and choose
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`disparate teachings of Anderson and Hatanaka in an attempt to arrive at the
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`claimed system. Accordingly, the Board should deny institution.
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`II. BACKGROUND
`A.
`’945 patent overview
`The ’945 patent provides a novel approach to time-shifting, employing
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`multiplexed packetized data streams carrying real-time multimedia programs. ’945
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`patent at Abstract. The ’945 patent teaches a system for video program time-
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`shifting using reduced storage and CPU resource requirements as compared to the
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`prior art.
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`A problem addressed by the ’945 patent is that time-shifting a digital signal
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`typically required the capture and storage of large data files. A few minutes of a
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`stored digital signal “require[d] a large amount of storage space. . . . The digital
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`signal … [could] be compressed to reduce the amount of storage space required.
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`However, compressing a video signal require[d] additional processing power,
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`resulting in additional costs.” ’945 patent, Ex. 1001, 1:22-27. The ’945 patent
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`teaches an innovative and efficient approach for time-shifting digital video data.
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`B. Claim 21
`Claim 21 of the ’945 patent is reproduced below:
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`A system comprising:
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`IPR2015-01620
`U.S. Patent No. 7,095,945
`a first input node to receive a multiplexed packetized data
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`stream that carries real-time multimedia programs;
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`a first transport stream demultiplexer having an input coupled
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`to the first input node to select packets of data having a predefined
`packet identifier and an output to provide the select packets of data;
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`a storage device having a data port coupled to the output of the
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`first transport stream demultiplexer to receive the select packets,
`wherein the storage device is to store the select packets;
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`a first clock recovery module having an input coupled to the
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`first input node, and an output, wherein the first clock recovery
`module is to generate a clock at the output based upon received timing
`information transmitted in packets of the multiplexed packetized data
`stream before the select packets are stored in the storage device; and
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`a decoder having a first input coupled to the output of the first
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`clock recovery module to receive the clock, a second input coupled
`the data port of the storage device to receive the select packets, and an
`output to provide decoded real-time data. ’945 patent, 10:15-38.
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`Claim 21 recites a system with various components arranged in a particular
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`manner. The specific claimed arrangement between the first input node, first
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`transport steam demultiplexer, storage device, first clock recovery module, and
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`decoder allows for an efficient approach to time-shifting digital video data.
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`III. A PERSON OF ORDINARY SKILL IN THE ART (“POSA”)
`Based on the technology disclosed in the ’945 patent, one of ordinary skill in
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`the art would have an undergraduate degree in electrical or computer engineering
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`IPR2015-01620
`U.S. Patent No. 7,095,945
`or a closely related field. Furthermore, such a person would typically have two
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`years of industry experience related to the design and development of multimedia
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`computer systems.
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`IV. LG’S PETITION IS PROCEDURALLY BARRED
`A. LG’s second Petition is time barred and LG does not deserve a
`second bite at the apple.
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`The Board should deny institution of LG’s second Petition, because LG
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`seeks nothing more than “a second bite at the apple”—a second chance to
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`challenge the same claim that was previously challenged and denied by the Board.
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`As previously stated in Patent Owner’s Opposition Motion for Joinder, LG is not
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`entitled to use the prior Institution Decision as a roadmap for its second Petition. In
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`arguing that joinder should be granted, LG relies on cases where follow up
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`Petitions were either filed by another party challenging the same claims, or filed by
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`the same party challenging different claims but using the same art advanced in the
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`first proceeding. Neither situation is applicable here. LG is not a different party,
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`and this second Petition advances new art against a claim challenged but not
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`instituted in the IPR2015-00321 trial. Paper 7, at 4-6. Moreover, unlike the cases
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`cited by LG in its Joinder Motion, LG fails to provide a good reason to warrant a
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`“second bite at the apple.” Paper 7, at 6-8. Lastly, LG also fails to provide any
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`explanation why it could not have presented Hoogenboom and Anderson in its first
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`Petition. Paper 7, at 8-10. Granting LG’s second Petition will therefore run
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`IPR2015-01620
`U.S. Patent No. 7,095,945
`contrary to 37 C.F.R. § 42.1(b), because it does not promote the “just, speedy, and
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`inexpensive resolution of every proceeding.” So institution should be denied.
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`Further, LG’s Response to Patent Owner’s Opposition misconstrues the law
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`and fails to address Patent Owner’s “second bite at the apple” argument. Contrary
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`to LG’s assertions, the cases cited by Patent Owner are not on the “opposite sides
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`of the split regarding joinder of issues under § 315(c).” Paper 8, at 2. Rather, the
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`cases relied upon by LG in support of joinder are misplaced—not one Board
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`decision cited by LG allowed joinder of issues where the petitioner relied on
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`additional references absent good cause.
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`For example, in Samsung v. Virginia, Samsung did not rely on any
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`additional references; all of the references were previously cited in the original
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`petition. See IPR2014-00557, Paper 10, at 17-18 (P.T.A.B. Jun. 13, 2014).
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`Moreover, in that proceeding, the additional challenged dependent claims only
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`added one new limitation that was already addressed in a corresponding IPR
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`proceeding. See Samsung, Paper 10, at 17-18. Similarly, in Oxford Nanopore Tech.
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`Ltd. v. Univ. of Washington, the two proceedings involved the same claim and the
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`same reference, not a different claim and different references as in this proceeding
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`(claim 18 is the only claim left in IPR2015-00321). See IPR2015-00057, Paper 10,
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`p. 23 (P.T.A.B. Apr. 27, 2015). Thus, in Samsung and Oxford, petitioners either
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`relied on the same references or challenged the same claims in their subsequent
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`IPR2015-01620
`U.S. Patent No. 7,095,945
`petitions, unlike LG’s second Petition here, which relies on two new references to
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`challenge a claim not currently in the IPR2015-00321 trial.
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`Further, good cause was provided in Sony Corp. v. Yissum, where Sony filed
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`its second petition challenging newly asserted claims (prior to the first institution
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`decision) when patent owner asserted these claims in a concurrent district court
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`litigation after the first petition was filed. See IPR2013-00327, Paper 4, at 1-2, 5
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`(P.T.A.B. Jul. 3, 2013). “Good cause” was also present in Microsoft Corp. v.
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`Proxyconn, where the Board granted joinder when the petitioner “proceeded
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`expeditiously in filing a second Petition after learning that additional claims were
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`being asserted” in a corresponding litigation. See IPR2013-00109, Paper 15, at 3
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`(P.T.A.B. Feb. 25, 2013).
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`No similar good cause was provided by LG to allow a do-over or “second
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`bite at the apple” despite the § 315(b) bar. Nor does any good cause exist. Here,
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`no new claims were asserted against LG after the first Petition, nor was a new
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`threat of infringement present. Accordingly, the Board should deny the second
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`Petition, because LG fails to apprise the Board of any justifiable “reason that
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`merits a second chance.” See Samsung v. Rembrandt, IPR2015-00555, Paper 20, p.
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`8 (P.T.A.B. Jun. 19, 2015).
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`B.
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`The second Petition and LG’s first Petition are entirely
`redundant.
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`The trial rules are construed “to secure the just, speedy, and inexpensive
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`IPR2015-01620
`U.S. Patent No. 7,095,945
`resolution of every proceeding.” 37 C.F.R. § 42.1(b). LG has an affirmative burden
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`to demonstrate that it is entitled to the relief requested. 37 C.F.R. § 42.20(c). LG
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`has failed to meet its burden here.
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`The Board has discretion to deny one or more grounds as being redundant
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`with grounds already presented. Liberty Mut. Ins. Co. v. Progressive Cas. Inc. Co.,
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`CBM2012-00003, Paper No. 7, p. 2 (P.T.A.B., Oct. 25, 2012). To show that trial
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`should be instituted as to a claim on more than one ground of unpatentability, LG’s
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`petition must “articulate [] a meaningful distinction in terms of relative strengths
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`and weaknesses with respect to the application of the prior art disclosures to one or
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`more claim limitations.” Ultratec, Inc. v. Sorenson Commc’ns, Inc., IPR2013-
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`00288, Paper No. 23, p. 4 (P.T.A.B., Jan. 10, 2014).
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`As an expanded panel of nine judges explained, “multiple grounds, which
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`are presented in a redundant manner by a petitioner who makes no meaningful
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`distinction between them, are contrary to the regulatory and statutory mandates,
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`and therefore are not all entitled to consideration.” Liberty Mut. Ins. Co. v.
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`Progressive Cas. Inc. Co., CBM2012-00003, Paper No. 7, p. 2 (P.T.A.B. Oct. 25,
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`2012). This is so because considering multiple redundant grounds “unnecessarily
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`consume[s] the time and resources of all parties involved” and subverts the
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`Board’s ability to conduct proceedings in a timely manner. Illumina, Inc. v. Trs. of
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`Columbia Univ. in the City of New York, IPR2012-00006, Paper No. 43, p. 12
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`IPR2015-01620
`U.S. Patent No. 7,095,945
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`(P.T.A.B. May 10, 2013).
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`Indeed, the Board has noted that “35 U.S.C. § 316(b) . . . recognizes, among
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`other things, that inter partes review proceedings must be conducted to ensure the
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`ability of the Office to complete timely the proceedings.” Schrader-Bridgeport
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`Int’l, Inc. v. Cont’l Auto. Sys. US, Inc., IPR2013-00014, Paper No. 15, p. 4
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`(P.T.A.B. Apr. 10, 2013). Ultimately, it is LG’s burden to explain why its new
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`proposed grounds are not redundant to those presented in LG’s first IPR Petition.
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`This burden includes LG demonstrating why it is entitled to file two
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`petitions challenging the same claim. LG has not met its burden here. The instant
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`Petition is LG’s second Petition against the ’945 patent. Both petitions challenged
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`claim 21—the first challenge to claim 21 proving to be unsuccessful. And LG has
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`failed to provide a sufficient reason as to why it is now entitled to a second
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`Petition.
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`LG also fails to identify a single appreciable difference among the references
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`presented in the second Petition versus its first Petition. LG only alleges that the
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`Board did not previously consider the Hoogenboom and Anderson references.
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`However, LG glosses over the fact that its first Petition presented three grounds of
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`rejection against claim 21—based on both anticipation and obvious. Now, LG
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`relies on the Board’s decision for the first Petition as a guide, and asks the Board to
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`review two more grounds of rejection based on its first failed attempt—nothing
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`IPR2015-01620
`U.S. Patent No. 7,095,945
`else. Indeed, LG’s second Petition is nothing more than a veiled attempt to
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`circumvent the time-bar, circumvent strict page-limit requirements for IPR
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`proceedings, and also get a second-bite at the apple. Accordingly, for at least these
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`reasons, the Board should find this second Petition redundant with the first Petition
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`and deny institution.
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`V. LG STILL FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT IT WILL PREVAIL
`A. Overview of Hatanaka.
`Claim 21 was distinguished over Hatanaka in LG’s first Petition. LG now
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`attempts to rely on the Board’s non-institution decision for claim 21 as a guide to
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`cure Hatanaka’s identified deficiencies with Hoogenboom and Anderson. In order
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`to understand Hatanaka’s deficiencies, it is important to delineate the differences
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`between Hatanaka’s different modes of operation and recognize how each
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`component plays a role in each mode of operation. An explanation of Hatanaka’s
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`different modes of operation and its components is provided below.
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`Hatanaka describes a digital signal recording and playback device that
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`includes three sub-systems: a digital broadcasting receiving device (Integrated
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`Receiver & Decoder: IRD), a recording and playback device, and an encoder.
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`Hatanaka, Ex. 1006, 2:32-35. Hatanaka’s digital signal recording and playback
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`device is illustrated at FIG. 1, reproduced and annotated below:
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`IPPR2015-011620
`UU.S. Patent
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`No. 7,0955,945
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`denoted byy the red-
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`a’s IRD—dn: Hatanakaoperationand play Hatanaaka’s IRD
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`dashed box in FIGG. 1 above——performs Hatanakaa’s play opperation. DDuring
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`Hatanakka’s play ooperation, HHatanaka’ss IRD rece
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`ives a digiital broadcaast stream
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`displayss it without storing thhe stream. Specificallly, Hatanakka’s IRD rreceives a
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`broadcaasting signaal at tuner 4 and passses the signnal to an MMPEG decooder 10 (affter
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`being prrocessed bby QPSK DDemodulatoor 6, FEC 77, Switch 88, and Demmultiplexerr 9).
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`Hatanakka, 3:7-22.
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`DDemultiplexxer 9 “deteermines a ttype of a reespective ppacket…, sseparates oonly
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`packets of a videoo, audio, et
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`c., relatingg to a speciified progrram, and thhen outputss
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`these paackets to thhe MPEG ddecoder 100.” Hatanakka, 3:19-222. Once MMPEG decooder
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`o, etc., MPideo, audioackets of vi10 receiives the pa
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`IPPR2015-011620
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`UU.S. Patent
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`No. 7,0955,945
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`EG decodeer 10 “exp
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`respectiive video aand audio ssignals … bby using thhe receivedd separatinng signal annd
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`the dataa clock 45 rreproducedd by the cloock reprodducing unitt 13, and p
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`decodedd video/auddio signalss.” Hatanakka, 3:22-411. Next, thee video an
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`signals are output by Hatanaaka’s devicce from resspective auudio and viideo terminnals.
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`Hatanakka, 3:37-411.
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`Inn Hatanakaa’s FIG. 1,, while inteerface 12 iss part of HHatanaka’s
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`IRD, it hass no
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`along thhe processiing path beetween tuner 5 and thhe outputs
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`of NTSC eencoder 111
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`and D/AA 14 is not
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`ay by interrface 12. TThe processsing path uused
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`by Hataanaka’s IRDD during thhe play op
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`eration is hhighlightedd below.
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`- 114 -
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`

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`IPR2015-01620
`U.S. Patent No. 7,095,945
`Hatanaka’s Recording and Playback device and record operation: Hatanaka’s
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`Recording and Playback device—denoted by the green box in FIG. 1 above—
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`performs Hatanaka’s record operation (i.e. storing a program). During Hatanaka’s
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`record operation, a digital broadcast signal is received at tuner 5 and the signal is
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`passed to interface 12. Hatanaka, 3:42-54. The information to be recorded is then
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`passed through switch 17, processed by packet controller 18, processed by
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`recording playback data processing circuit 19, and stored in a magnetic tape 22.
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`Hatanaka, 3:42-4:16.
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`During Hatanaka’s record operation, clock changeover switch 25 is set to
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`contact “e”, so that decoder clock 45 is passed to the packet control circuit 18.
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`Hatanaka, 4:48-50. Packet controller 18 uses the decoder clock 45 to produce a
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`time stamp for each data packet. Hatanaka, 4:37-49. The time stamp corresponds
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`to the time when the packet is received by Hatanaka’s system. Hatanaka, 3:61-63.
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`The processing path used during Hatanaka’s record operation is shown highlighted
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`below:
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`- 15 -
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`IPPR2015-011620
`UU.S. Patent
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`No. 7,0955,945
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`nd playbaack operattion:
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`k device ad Playbackording andHatanaaka’s Reco
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`Hatanakka’s recordding and pllayback device is alsoo responsibble for playyback of aa
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`digital bbroadcastinng signal. HHatanaka, 4:16-64. HHatanaka’ss playbackk is the proccess
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`of retrieeving a preeviously stoored prograam from thhe magnetiic tape andd decoding
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`retrieved programm for displaay. Hatanakka uses thee terms playyback and
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`interchaangeably. See generaally Hatanaaka, 4:16-664. Hatannaka’s playyback
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`operatioon is differrent from HHatanaka’s play operaation, discuussed abovve. While,,
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`Hatanakka’s play ooperation ddoes not reqquire storinng programms from a ttransport
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`stream, Hatanaka’’s playbackk operationn requires pprior storagge of a proogram. It ffirst
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`- 116 -
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`

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`IPR2015-01620
`U.S. Patent No. 7,095,945
`requires storing a program and then retrieving the stored program for subsequent
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`decoding and displaying.
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`Hatanaka’s playback operation operates as follows: “a signal 153 reproduced
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`by the rotary head 23 is inputted via the playback amplifier 21 to the
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`recording/playback data processing circuit 19” which extracts packets of data and
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`“sends those data to the packet control circuit 18.” Hatanaka, 4:16-22. Once the
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`retrieved packets of data are received by packet control circuit 18, “[t]he packet
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`control circuit 18 outputs the respective packets at the same intervals of time as in
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`the recording in accordance with the time stamp 102 added when the data was
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`recorded, and then sends those packets via the interface 12 to the playback
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`changeover switch 8.” Hatanaka, 4:22-35. Thereafter, the packets are sent to
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`MPEG decoder 10 for decoding and display. Hatanaka, 4:30-36.
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`Hatanaka explains that, during playback, its packet controller circuit 18
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`cannot use the decoder clock produced by the clock recovery circuit 13. Hatanaka,
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`4:51-64. Instead, packet controller 18 uses a fixed clock generated by clock
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`generator 24. Hatanaka, 4:51-64. Specifically, during Hatanaka’s playback
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`operation, switch 25 is set to contact “f”, so that a fixed clock 46 is passed to the
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`packet control circuit 18. Hatanaka, 4:51-64. This is in contrast to Hatanaka’s
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`record operation, where switch 25 is set to contact “e” and decoder clock 45 is
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`passed to packet controller 18. Hatanaka, 4:48-50.
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`- 17 -
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`IPPR2015-011620
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`UU.S. Patent
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`No. 7,0955,945
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`TThe processsing path uused duringg Hatanakaa’s playbacck operatioon is shownn
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`highlighhted beloww:
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`Hatanaaka disclosses a digitaal VCR: AA POSA reeading the ddisclosure
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`of Hatanakka
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`would hhave underrstood that Hatanaka discloses aa digital viideocassettte recorderr
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`and (VCR). Hatanakaa’s figures and disclosure continnually refeer to a maggnetic tape
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`a rotaryy head, whiich are stanndard compponents ussed in a VCCR. See Haatanaka, FIIG.
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`Hatanakka patent’ss named invventors duuring the timme period
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`ublicationss from the
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`of 1993 too 1998,
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`1, FIG. 6, 4:1-11. This undeerstanding is corroboorated by p
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`showingg the progrression of ttheir digitaal VCR (cooinciding wwith timefrrame whenn the
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`Hatanakka patent wwas filed). Ex. 2004-22006. For
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`authored by the HHatanaka paatent’s inveentors—H
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`- 118 -
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`example,
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`a 1998 pubblication coo-
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`atanaka annd Okamotto—is
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`IPR2015-01620
`U.S. Patent No. 7,095,945
`substantially similar to the disclosure in the Hatanaka patent. See Hatanaka 1998,
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`Ex. 2004 generally.
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`The publications by the inventors of the Hatanaka patent are helpful in
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`understanding why LG’s interpretation of Hatanka is incorrect, including three
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`important aspects that affect any obviousness analysis with respect to Hatanaka
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`and claim 21: (i) the state of the art at the time of filing of the ’945 patent; (ii) what
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`the Hatanaka patent discloses, as would have been understood by a POSA; and (iii)
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`what a POSA would have found obvious in view of the Hatanaka patent.
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`The digital VCR produced by Hatanaka and Okamoto used magnetic tapes
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`for storage, such as VCR cassette tape. The use of magnetic tapes allows a user to
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`record a program, stop the recording, and then playback the recorded program, but
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`a POSA at the time of the ’945 patent would have recognized that such storage
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`mechanisms had limited capabilities. A POSA at the time of the ’945 patent would
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`have understood that only a single portion of the magnetic tape can reside in the
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`region of the read and write heads at one time and the process of positioning the
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`tape is too slow to allow simultaneous reading and writing to different portions of a
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`tape. This delay due to physical positioning makes tape systems unsuitable for
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`many data storage applications where information is spread over the storage media
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`and any possible location is equally likely to be desired to be available in the near
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`future. In other words, simultaneous storing and retrieval (as described in the ’945
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`- 19 -
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`

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`IPR2015-01620
`U.S. Patent No. 7,095,945
`patent) to/from a magnetic tape would not have been possible with Hatanaka’s
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`system. Thus, Hatanaka’s inventors could not have described a system which was
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`capable of simultaneous playback and recording since the main disclosed recording
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`medium (i.e., magnetic tape) was incapable of supporting such functionality.
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`Hatanaka discloses that its system can use other storage mechanisms (e.g., a
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`magnetic disk, optical disk, semiconductor memory). Hatanaka, 9:6-8. But,
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`Hatanaka’s disclosure of alternative storage mechanisms was nothing more than a
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`recognition that other technologies were known for storing digital data, as would
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`have been understood by a POSA. Even with the use of other storage mechanisms,
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`a POSA would have understood that Hatanaka’s system still suffers from
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`deficiencies that prevent the arrangement and features of claim 21, as will be
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`demonstrated below.
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`B. All of LG’s obviousness grounds against claim 21 are deficient.
`LG argues that claim 21 is obvious over: (i) Hatanaka in view of
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`Hoogenboom; and (ii) Hatanaka in view of Anderson. See Petition, Paper 2, p. 8.
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`However, for at least the reasons set forth below, there is no basis to conclude that
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`claim 21 of the ’945 patent is obvious under any of these theories.
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`- 20 -
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`

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`IPR2015-01620
`U.S. Patent No. 7,095,945
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`1.
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`Deficiencies of Hatanaka.
`(a) Hatanaka does not teach “a storage device having a
`data port coupled to the output of the first transport
`stream demultiplexer to receive the select packets,
`wherein the storage device is to store the select
`packets.”
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`Claim 21 requires “a storage device having a data port coupled to the output
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`of the first transport stream demultiplexer to receive the select packets, wherein the
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`storage device is to store the select packets”— a feature not disclosed by Hatanaka,
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`because Hatanaka’s storage device: (i) does not have a data port coupled to the
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`output of a first t