UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
`GAMELOFT, S.A.,
`Petitioner,
`v.
`ROTHSCHILD DIGITAL MEDIA INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case No. IPR2016-00472
`Patent 6,101,534
` ____________
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`PETITION FOR INTER PARTES REVIEW
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`OF U.S. PATENT NO. 6,101,534
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`Table of Contents
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`I.   INTRODUCTION ............................................................................................. 1  
`II.   REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104 .............................................................................................................. 1  
`A.   GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) .............................. 1  
`B.   IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF
`REQUESTED ................................................................................................... 1  
`III.  SUMMARY OF THE ‘534 PATENT ............................................................. 3  
`A.   DESCRIPTION OF THE ALLEGED INVENTION OF THE ‘534 PATENT .................. 3  
`B.   SUMMARY OF THE PROSECUTION HISTORY OF THE ‘534 PATENT ................... 5  
`C.   LEVEL OF A PERSON HAVING ORDINARY SKILL IN THE ART ........................ 11  
`IV.  CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ................. 12  
`V.   THERE IS A REASONABLE LIKELIHOOD THAT THE
`UNPATENTABLE ......................................................................................... 16  
`1.   MAGES IN VIEW OF BATCHELOR RENDERS CLAIMS 1, 6-9, 21, AND 23-24
`OBVIOUS UNDER 35 U.S.C. § 103(A) .......................................................... 17  
`2.   MAGES IN VIEW OF BATCHELOR IN FURTHER VIEW OF HUGHES RENDERS
`CLAIM 22 OBVIOUS UNDER 35 U.S.C. § 103(A) .......................................... 35  
`VI.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ....................... 40  
`A.   REAL PARTY-IN-INTEREST AND RELATED MATTERS ................................... 40  
`B.   LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(B)(3) ................... 41  
`C.   PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ............................................ 42  
`VII.   CONCLUSION ............................................................................................ 42  
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`CHALLENGED CLAIMS OF THE ‘534 PATENT ARE
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`I.
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`INTRODUCTION
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`Petitioner Gameloft, S.A. (“Gameloft” or “Petitioner”) requests Inter Partes
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`Review (“IPR”) of claims 1, 6-9, and 21-24 (the “Challenged Claims”) of U.S.
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`Patent No. 6,101,534 (the “’534 Patent”), filed on September 3, 1997, and issued
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`on August 8, 2000 to Leigh M. Rothschild (“Applicant”). Exhibit 1001, ‘534
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`Patent.
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`II. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
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`Petitioner certifies that the ’534 Patent is available for IPR and that the
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`Petitioner is not barred or estopped from requesting IPR to challenge the claims of
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`the ’534 Patent. Specifically, Petitioner states: (1) Petitioner is not the owner of the
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`’534 Patent; (2) Petitioner has not filed a civil action challenging the validity of
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`any claim of the ’534 Patent; (3) this Petition is filed less than one year after
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`Petitioner was served with a complaint alleging infringement of the ’534 Patent;
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`and (4) this Petition is filed more than nine months after the ‘534 Patent issued and
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`the ‘534 Patent was not the subject of a post-grant review.
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`B.
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`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
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`In view of the prior art, evidence, and claims charts discussed in this
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`Petition, claims 1, 6-9, and 21-24 of the ’534 Patent are unpatentable and should be
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`cancelled. 37 C.F.R. § 42.104(b)(1). Based on the prior art references identified
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`1
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`below, IPR of
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`the Challenged Claims should be
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`instituted. 37 C.F.R.
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`§ 42.104(b)(2). The proposed statutory rejections for claims 1, 6-9, and 21-24 of
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`the ’534 Patent are as follows:
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`• Claims 1, 6-9, 21, 23, and 24 are obvious under § 103(a) by U.S. Patent No.
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`5,892,825 to Mages et al., which was filed on November 25, 1996 (“Mages”) in
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`view of U.S. Patent No. 5,724,103 to Batchelor, which was filed on November
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`13, 1995 (“Batchelor”). Batchelor qualifies as prior art with regard to the ‘534
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`Patent under § 102(e) (Exhibit No. 1004). Mages is a continuation-in-part of
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`U.S Application No. 645,022, which was filed on May 15, 1996, and Mages
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`qualifies as prior art with regard to the ‘534 Patent under § 102(e) (Exhibit No.
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`1005).
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`• Claim 22 is obvious under § 103(a) by Mages in view of Batchelor in further
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`view of U.S. Patent No. 5,736,977 to Hughes, which was filed on April 26,
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`1995 (“Hughes”), and qualifies as prior art with regard to the ‘534 Patent under
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`§ 102(e) (Exhibit No. 1008).
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`Section V identifies where each element of the Challenged Claims is found
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`in the prior art. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the supporting
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`evidence relied upon to support the challenges are provided above and the
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`relevance of the evidence to the challenges raised is provided in Section V. 37
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`C.F.R. § 42.104(b)(5). Exhibits 1001-1003 and 1009-1013 are also attached.
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`2
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`III. SUMMARY OF THE ‘534 PATENT
`A. Description of the Alleged Invention of the ‘534 Patent
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`The ‘534 Patent describes a computer interface system for real estate
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`viewing that includes a remote server, a local processor, and a data storage
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`assembly that has a compact, portable, and interchangeable computer readable
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`medium such as a CD-ROM. See Ex. 1001, ‘534 Patent at Abstract. In the
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`background of the invention, the specification describes purported problems with
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`existing real estate viewing video systems, and sets out to disclose a real estate
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`display system that would provide a highly interactive walk-through viewing
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`experience. See id. at Col. 1:4–3:50. One problem noted in the ‘534 Patent is that
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`online technology is encumbered by slow download speeds, especially when
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`continuous presentation of video and audio information is required, like with the
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`disclosed real estate display system. See id. The solution to this problem, according
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`to the description of the ‘534 Patent, is to provide for enhancement of the online
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`content by accessing auxiliary information for which downloading would not be
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`required (i.e., because the auxiliary information is locally-stored). See id. Thus, a
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`user at a local computer, having access to a CD-ROM or the like that has been
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`previously distributed and stored at a local computer, is able to go online to access
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`primary site information (e.g., through a website). See, e.g., id. at Col. 13:43-14:32.
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`When the interaction calls for interactive video, downloading is not necessary
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`because the system accesses the CD-ROM, and initiates utilization of auxiliary
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`data stored thereon. See id. The auxiliary data is stored at specific auxiliary site
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`addresses on the CD-ROM so that the data is readily accessible. See id.
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`The ‘534 Patent also specifies that, in the preferred embodiment, access to
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`auxiliary site addresses by the local processor is restricted, “unless the access is
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`directed by the remote server assembly.” See id. at Col. 14:33-15:2. In the
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`preferred embodiment, the remote server assembly initiates utilization of selected
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`auxiliary site data by a local processor, and the auxiliary site data includes
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`“operating instructions” that serve “to instruct the local processor assembly to
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`generate various display images ….” See id. at Col. 5:40-6:5. The stated purpose of
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`this restriction is to prevent the user from utilizing auxiliary site data (e.g., data
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`stored on the CD-ROM) unless the use is in conjunction with a visit to a particular
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`website or content provider that is providing the primary site data. See id. at Col.
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`14:33-15:2.
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`Though the specification of the ‘534 Patent repeatedly characterizes the
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`invention as involving the interactive real-time display of a real life three
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`dimensional space (such as a real estate display system), Patent Owner has brought
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`an infringement lawsuit against Sony Computer Entertainment America, LLC
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`(“SCEA”) on the theory that the claims also implicate online video gaming. See,
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`e.g., Ex. 1010, Infringement Contentions against SCEA (also filed as Ex. 1010 in
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`IPR2015-01364). Patent Owner has in particular alleged that PlayStation consoles,
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`PlayStation video games, and the PlayStation Network for an infringing “system.”
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`See id.
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`B.
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`Summary of the Prosecution History of the ‘534 Patent
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`The application for the ‘534 Patent was issued after a first action allowance.
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`See generally Ex. 1002, File History; see also id. at NOA dated Sept. 13, 1999.
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`During this initial prosecution, the as-filed claims 1-22 were never rejected based
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`on prior art or other grounds. See generally id. In the reasons for allowance, the
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`Examiner stated: “[t]he prior art of record does not teach or suggest the feature of
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`the local processor initiating utilization of select portions of auxiliary site data in
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`response to remotely accessible auxiliary site addresses responded by the remote
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`server in the combination as disclosed and claimed.” See id. at 2.
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`Since
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`issuance,
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`the ‘534 Patent has undergone one reexamination
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`proceeding.1 The reexamination request, submitted by a third party requester,
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`received a filing date of April 11, 2007. See Ex. 1003, Reexam File History. The
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`request for reexamination was granted on June 21, 2007, and the Examiner found
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`several substantial new questions of patentability based on the eight prior art
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`references submitted. See id. at Decision. The Applicant then submitted a
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`1 Petitioner notes that Claim 22 was not part of the earlier reexamination
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`proceeding. See Ex. 1003, Reexam File History.
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`preliminary amendment adding claims 23-25 on August 29, 2007. See id. at
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`Preliminary Amendment.
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`On August 28, 2008, the Examiner issued a Non-Final Office Action that
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`rejected claims 1-21 and 23-25. See id. at OA. For example, the Examiner found
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`that claims 1, 3-8, and 24 were anticipated by U.S. Patent No. 5,931,906 to
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`Fidelibus et al. (“Fidelibus”), which disclosed an interactive multimedia system
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`that allowed a remote computing device to communicate with a user’s local
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`computing device to access information on a CD-ROM. See id. As another
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`example, the Examiner found that claims 1-4, 6-8, 21, and 23-25 were anticipated
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`by U.S. Patent No. 5,892,825 to Mages (“Mages”), which disclosed a CD-ROM
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`that contains video imaging and/or audio data, and the remote server and local
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`computer work in conjunction to allow access to information on the CD-ROM. The
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`Examiner also rejected claims 1, 6-21 and 23 as anticipated by U.S. Patent No.
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`6,594,692 to Reisman (“Reisman”) and rejected claims 1, 4, and 6-8 as anticipated
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`by U.S. Patent No. 5,937,158 to Uranaka (“Uranaka”). See id.
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`In a response dated October 17, 2008, Applicant cancelled claims 2, 24, and
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`25, and added new claim 26, which was as-issued claim 2 rewritten in independent
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`form. In discussing the substantive rejections, Applicant emphasized the following
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`claim language, which was common to each of the independent claims:
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`said remotely accessible, auxiliary site addresses being structured to
`be remotely accessed by said remote server assembly so as to
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`initiate utilization of said select portions of said quantity of auxiliary
`site data by said local processor assembly in conjunction with said
`primary site data.
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`See id. at Applicant’s Remarks (emphasis original in remarks) at 12-13. The
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`Applicant argued that the “claimed system very clearly recites that it is the remote
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`server assembly that initiates utilization of the auxiliary site data, and that the use
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`of that data is in conjunction with the primary site data that is on said remote
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`server.” See id. According to Applicant, these two features are important, because
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`they “help to maintain the security of the local processor assembly….” See id.
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`Applicant then distinguished Mages by arguing that in that reference “it is not
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`actually the remote server that ‘initiates the utilization of’ the locally maintained
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`data, but rather it is the un-crippling key file that does so.” See id. at 14-17.
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`Applicant argued that in Mages, and in references like it, “the local processor must
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`open itself to accept, receive and run a file which could have been corrupted….”
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`See id at 14 (emphasis in original). In that circumstance, according to Applicant,
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`the downloaded file is itself what initiates the use of local data, which is distinct
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`from the invention claimed in the ‘534 Patent where the remote server initiates the
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`use of local data (such as by providing the auxiliary site address to the web
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`browser). See id. at 15. Applicant argued that similar distinctions render two other
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`references inadequate. See id. at 17-21. Applicant did not attempt to distinguish
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`Fidelibus, other
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`than
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`to note
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`that he disagreed with
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`the Examiner’s
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`characterizations. See id. at 21. Instead, Applicant swore behind Fidelibus and
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`contended that it is not a proper prior art reference. See id. at 21-23.
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`In a Final Rejection dated November 13, 2008, the Examiner maintained
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`rejections of claims 1-21 and 23-25. See id. at Final Rejection. Notably, the
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`Examiner focused on claim interpretation of the key claim phrase highlighted in
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`Applicant’s argument. See id. For instance, in discussing Mages, the Examiner
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`concluded that by sending the uncrippling key from the server to the local
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`computer, the server performs the claimed function of “initiat[ing] utilization.” See
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`id. Elsewhere, discussing Uranaka, the Examiner explained that the broadest
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`reasonable interpretation of the claims “allows for the ‘initialization’ to start with
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`the sending of the script by the server, as this is what ‘initiates utilization.’” See id.
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`at 25-26. The Examiner also concluded that Applicant’s efforts to swear behind
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`Fidelibus were unpersuasive, and the Examiner maintained his rejections based on
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`Fidelibus. See id. at 33-34. After the Final Rejection, Applicant attempted to
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`amend claims further, but entry of those amendments was denied, and appeal to the
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`Board of Patent Appeals and Interferences ensued. See id. at Response After Final.
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`In the Appeal Brief filed on March 13, 2009, claim interpretation was again
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`the focus of Applicant’s substantive arguments. See id. at Appeal Brief. There,
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`Applicant argued that the claim phrase “to initiate utilization” means “to begin the
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`act of use.” Explaining this proposed interpretation, Applicant presented a
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`hypothetical situation where a borrower intends to remove an owner’s car from the
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`driveway. According to Applicant, retrieving the key is not initializing utilization
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`and is, instead, just preparing to utilize the car. Applicant’s position was that
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`utilization is initialized when the borrower turns the key and starts the car. See id.
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`at 12-13. Then, Applicant contended that the prior art references just disclose
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`preparing to utilize data, which Applicant distinguished from initiating utilization.
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`See id. For instance, Applicant contended that sending a key as taught by Mages
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`does not anticipate the claims because there are several steps at the local computer
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`(e.g., the key is stored and then used) between when the server sends the key and
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`when utilization of the data begins. In the Answer to the Appeal Brief filed on
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`September 24, 2009, the Examiner disagreed with the Applicant’s construction and
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`application of the key claim phrase, and instead argued that “to initiate utilization”
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`should be met where “some form of use/utilization is at some time or in some form
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`initiated/started/begun.” See id. at 28 (emphasis in original).
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`The BPAI focused on the concept of access, and summed up the claim
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`interpretation dispute between the Applicant and the Examiner in the following
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`way: “[t]he Examiner finds that the claim language only requires the remote server
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`to be in some form involved in the access of auxiliary site addresses and data, and
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`does not require the remote server to read, have possession of or even directly
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`control the auxiliary site data or addresses.” See id. at Decision at 8. Under the
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`Examiner’s interpretation, “that ‘access’ could be the remote server sending some
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`information that indirectly allows access.” Id. at 8-9. Applicant “disagrees that
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`‘access’ could include sending information that indirectly allows access.” See id. at
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`9. The BPAI concluded that the Examiner’s interpretation was wrong because it
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`did not take into account other limitations within the claims. See id. The BPAI
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`found “that the addresses are directly accessed by the remote server. The scope of
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`claim 1 does not cover encoded auxiliary site addresses that are structured to be
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`accessed by a local processor or any other intermediary, ultimately resulting in the
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`addresses being indirectly accessed by the remote server.” See id. “Such a broad
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`interpretation would be unreasonable since the auxiliary site addresses are both
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`encoded and structured for the purpose of being accessed by the remote server.”
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`See id. at 9-10 (emphasis in original). Further, “broadly interpreting claim 1 to
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`include auxiliary site addresses that are structured to be accessed by a local
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`processor would not be consistent with [the] Specification.” See id. at 10. “The
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`Specification discloses that ‘the remotely accessible auxiliary site addresses are
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`specifically encoded so as to restrict access by the local processor assembly []
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`unless the access is directed by the remote server assembly [].’” See id. (emphasis
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`added) (quoting Ex. 1001, ‘534 Patent at Col. 14:33-37). Thus, “the broadest
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`reasonable interpretation of claim 1 is limited to remotely accessible auxiliary site
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`addresses encoded on a compact, portable and interchangeable computer readable
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`medium being structured to be remotely accessed by the remote server assembly
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`directly.” See id.
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`Based on this claim interpretation, the BPAI reversed the Examiner’s
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`rejections. See id. at 14. The BPAI concluded that Mages was not anticipating
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`because the CD-ROM data is “accessed by the local end-user’s computer.” Id at
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`11. Likewise, the BPAI concluded that Reisman was not anticipating because it
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`describes auxiliary site addresses that are “accessed by the local computer.” Id. at
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`12. For Uranaka, the BPAI reversed the Examiner’s findings because “the server
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`generated display script (i.e., auxiliary site addresses) is transferred from the
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`remote server to the local catalog shopping client (i.e., local processor) which uses
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`(i.e., accesses) the display script for displaying the electronic shopping DVD
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`content (i.e., primary site data).” Id. at 12-13. The BPAI concluded that Fidelibus
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`was not anticipating because “the local computer reads the CD data.” Id. at 13.
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`C. Level of a Person Having Ordinary Skill in the Art
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`A person having ordinary skill in the art at the time of the ‘534 Patent would
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`be a person with (1) an undergraduate degree in applied mathematics, computer
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`science, computer engineering, electrical engineering, physics, or similar technical
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`fields; (2) a working knowledge of computers and their processing, networking,
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`storage, hardware, and software; and (3) two to four years of experience (or, with a
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`graduate degree in the above-stated fields, one to two years of experience) in
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`software and hardware analysis, design, and/or development related to computer
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`networking,
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`including a working
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`familiarity with
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`server and client
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`communications. Ex. 1009, Madisetti Decl. at ¶21.
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`IV. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
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`A claim subject to IPR receives the “broadest reasonable construction in
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`light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b).
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`“Under a broadest reasonable interpretation, words of the claim must be given their
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`plain meaning, unless such meaning is inconsistent with the specification.” MPEP
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`2111.01. One claim construction issue is central to the analysis here.2 There are
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`2 Petitioner notes that it was not a party to the claim construction process in the
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`SCEA Litigation and is not bound by the arguments made by SCEA and does not
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`waive the right to argue differently in the district court. Petitioner further
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`emphasizes that none of the explanation and analysis here is, or should be
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`construed as, in any way inconsistent with positions advanced by SCEA in the
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`corresponding district court litigation. These positions are in full consideration of
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`the district court’s order there. See Ex. 1011, Judge Grewal’s Order from SCEA
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`Litigation. Based on the court’s order, and given the broadest reasonable
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`construction standard applied in this proceeding, the analysis here follows.
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`Petitioner also respectfully submits Patent Owner and SCEA’s joint claim
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`two possible interpretations of the concept of “access” included in the following
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`limitation from claim 1, and in corresponding limitations from claims 23 and 24:
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`[Claim 1]: 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,
`‘534 Patent at Col. 17:5-10 (emphasis added)]
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`[Claims 23 and 24]: said remotely accessible, auxiliary site addresses
`being structured to be remotely accessed by said remote server
`assembly; 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, ‘534 Patent at Reexam Certificate Col. 1:58-2:4, 2:41-47
`(emphasis added)]
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` first interpretation of “access” is narrow, and would require the remote
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` A
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`server to access auxiliary site addresses directly, without any intervention by the
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`local processor or any other intermediary. In other words, there are no intermediary
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`steps, and a process that starts with the remote server goes straight to the auxiliary
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`site addresses. This interpretation has support in the specification, which states:
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`“only the remote server assembly 50 can access the auxiliary site data at the
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`auxiliary site addresses.” Ex. 1001, ‘534 Patent at Col. 13:59-61. This
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`interpretation also has support in the BPAI’s analysis, which states: “[t]he scope of
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`claim 1 does not cover encoded auxiliary site addresses that are structured to be
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`construction statement from the corresponding litigation. See Ex. 1012, Joint
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`Claim Construction Statement.
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`accessed by a local processor or any other intermediary, ultimately resulting in the
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`address being indirectly accessed by the remote server.” Ex. 1003, Reexam File
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`History at Decision at 9-10.
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`A second interpretation of “access” is broader, and would include a situation
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`where the remote server is directing the local computer to access the auxiliary site
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`addresses and utilize the auxiliary site data. Under this interpretation, the absence
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`or presence of intermediary steps or local intervention does not matter, and the
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`dispositive inquiry instead turns on which device is directing the access. During
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`pending litigation against SCEA, Patent Owner has vigorously argued that this
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`broader interpretation has support in the specification and in the BPAI’s analysis,
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`which quotes the ‘534 Patent specification and states “that ‘the remotely
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`accessible, auxiliary site addresses are specifically encoded so as to restrict access
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`by the local processor assembly [] unless the access is directed by the remote
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`server assembly [].” Ex. 1003, Reexam File History at Decision at 9-10 (quoting
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`Ex. 1001, ‘534 Patent at Col. 14:33-37); see also Ex. 1011, Judge Grewal’s Order.
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`For purposes of this IPR proceeding only, applying a broadest reasonable
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`interpretation claim construction standard, the claims of the ‘534 Patent should be
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`construed to include the second (i.e., broader) interpretation. This second
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`interpretation is the position Patent Owner has advanced in the litigation against
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`SCEA. See Ex. 1010, Infringement Contentions. And the Court there has found
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`that this position is at least reasonable enough to require a full Markman process
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`and Philips analysis. See Ex. 1011, Judge Grewal’s Order. Thus, the broadest
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`reasonable interpretation of the claim language noted above, for purposes of this
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`IPR proceeding only, should be construed to mean: “The remotely accessible,
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`auxiliary site addresses are structured to be remotely accessed by the remote server
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`assembly. The remote server assembly accesses the auxiliary site data (either by
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`accessing the data directly or by directing the local processor assembly to access
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`the data) to initiate utilization of the auxiliary site data by the local processor
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`assembly.”
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`The term “auxiliary site addresses” is also utilized in the claims of the ‘534
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`Patent. In the pending litigation between Patent Owner and SCEA, the parties have
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`disputed the meaning of the term. Patent Owner has taken the position that the term
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`broadly encompasses “memory locations” encoded on the computer readable
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`medium, and is not limited to URLs or other website addresses. See Ex. 1012,
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`Joint Claim Construction Statement. For purposes of this IPR proceeding, the
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`claims of the ‘534 Patent should be construed to include the broader interpretation,
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`and therefore the term “auxiliary site addresses” should be construed to include
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`memory locations.
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`For purposes of this IPR proceeding only, Petitioner proposes that the
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`remaining claim terms of the ‘534 Patent are presumed to take on their ordinary
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`and customary meaning that the term would have to one of ordinary skill in the art
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`in view of the specification and the intrinsic record.3
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`V. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ‘534 PATENT ARE
`UNPATENTABLE
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`In the previous reexamination of the ‘534 Patent, the patentable distinction
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`between the prior art and the claims centered on accessibility. That is, the ability of
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`the remote server assembly to access auxiliary site data. There, the Board found
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`that the prior art failed to teach that the server accessed the data directly. This
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`Petition includes prior art that was not of record in the reexamination proceeding
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`that discloses precisely the same accessibility limitation. Specifically, the
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`Batchelor reference, explained in greater detail herein, describes a server that sends
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`“command and address information that instruct the [local computer] to retrieve
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`specific text and graphic information from the optical disk ….” Ex. 1004,
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`Batchelor at 2:51-53. In other words, the remote server directly accesses the
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`optical disk by instructing the local computer to access specific information from
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`3 Petitioner notes that certain terms of the ’534 patent were construed by a district
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`court in unrelated litigation. Petitioner does not contend that any of these
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`constructions are binding or informative to the Board as a different standard was
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`utilized in that proceeding, but submits a copy of the claim construction order
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`entered in that case as Exhibit 1013.
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`the disk. See id. The Batchelor disclosure, both alone and combined with other
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`analogous prior art, teaches the claimed invention of the ‘534 Patent. 4 The
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`Challenged Claims are unpatentable because it would have been obvious for a
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`person of skill in the art to combine Batchelor with known elements from other
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`prior art references to arrive at the claimed invention. Thus, there is a reasonable
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`likelihood that the Challenged Claims are unpatentable, as outlined in more detail
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`below.
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`1. Mages in View of Batchelor Renders Claims 1, 6-9, 21, and
`23-24 Obvious Under 35 U.S.C. § 103(a)
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`Mages, Batchelor and the ’534 patent each generally describe the use of
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`locally stored information on a CD-ROM in conjunction with data provided by a
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`remote server. See, e.g., Ex. 1005, Mages at Abstract; Ex. 1004, Batchelor at
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`Abstract; Ex. 1001, ‘534 Patent at Abstract. As noted above, Mages, which was
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`cited and considered in the Reexamination proceeding, describes a networked
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`computer system in which access to audio/video data stored on a local CD-ROM is
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`controlled by a remote server. Ex. 1005, Mages at Abstract; see also Ex. 1003,
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`4 In Petitioner’s view, Batchelor teaches each and every limitation of at least claim
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`1 in the ‘534 Patent. But for purposes of this proceeding, Petitioner respectfully
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`submits rejections based on combinations of Batchelor with other analogous prior
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`art references.
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`Reexam File History at Final Decision; Ex. 1005, Mages at 4:15-17 (“Specific
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`tracks on the CD-ROM can thereby be controlled by the remote server.”), Abstract
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`(“thereby instantly combining the trigger with the crippled data on the CD-ROM,
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`after which instantly playing the designated track from the end-user’s computer.”),
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`7:18-20 (“This encoding will create a trigger of a few bytes comprising all of the
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`necessary information to trigger the CD-ROM, and to invoke the video and/or
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`audio data.”), 7:47-8:3 (“in order to invoke the correct track of the CD-ROM…”).
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`Mages recognized that there are “considerable drawbacks and deficiencies in
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`transmitting video images and/or audio data over the Internet” including
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`“considerable time delays.” Id. at 3:28-52. Mages resolved this deficiency by
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`storing the larger video and audio files on a local CD-ROM that could then be
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`controlled by a remote server through the use of uncrippling or triggering data that
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`was associated with specific tracks on the CD-ROM. Id. at 3:62-4:17.
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`Generally, Batchelor describes combining information received from a
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`broadcaster with information from a local CD-ROM and displaying the two pieces
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`of information together. Ex. 1004, Batchelor at 4:7-17; Figs. 1-3. A broadcaster
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`that has a data source and a video source sends a signal over a packetized and
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`digital network that includes video data in addition to associated text, binary data
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`and/or commands. Id. at 2:10-25; 3:1-25; 3:27-45. The command and address
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`information in the packetized transmitted signal controls the local computer’s
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`access to information stored on a local CD-ROM by directing the local CPU to
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`display information from specific addressable locations on the CD-ROM in
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`conjunction with the video received from the broadcaster. Id. at 1:48-52, 2:49-54,
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`3:62-4:1, 4:13-17; see also infra at Section V.3 (describing Batchelor).
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`A skilled artisan would have recognized that the CD-ROM referenced in
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`Mages would be structured so that specific tracks would be contained in specific
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`memory locations that could be controlled by the remote server. Ex. 1009,
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`Madisetti Decl., at ¶43, (describing CD-ROM structures at the time) see also id. at
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`¶¶1-20 (describing personal background and education) 22-49 (describing
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`technological background and combination). Mages and Batchelor both recognize
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`the desirability of locally storing data on a CD-ROM and a remote server directing
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`access to that data. Ex. 1005, Mages at 4:15-17; Ex. 1004, Batchelor at 1:30-58.
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`Upon reading the disclosure of Batchelor, one of ordinary skill in the art would
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`have recognized and appreciated that the remote server of Mages could access and
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`control the specific tracks of the local CD-ROM as specifically provided by
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`Batchelor. Ex. 1009, Madisetti Decl., at ¶¶22-49. In other words, the uncrippling or
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`triggering data could include specific command and address information as
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`provided in Batchelor. Id. This would have been desirable b