claim construction standards in the proceedings, Petitioner identifying any feature
`
`Attorney Docket No. 39521-0016IP2
`IPR of U.S. Patent No. 8,090,309
`
`
`in the cited references as teaching a claim term of the ’309 Patent is not an
`
`admission by Petitioner that claim term is met by any feature for infringement
`
`purposes, or that the claim term is enabled or meets the requirements for written
`
`description.
`
`IV. MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM
`FOR WHICH AN IPR IS REQUESTED
`
`As detailed below, this request shows a reasonable likelihood that the
`
`Requester will prevail with respect to the Challenged Claims of the ’309 Patent.
`
`A.
`[GROUND 1] - Claims 1-14 are obvious over AbiEzzi in view of
`Baumgartner
`Claim 1 - [1.0]: “A method of using a media device operable in first and
`second modes,”
`Mercer Decl. Para. 30–31
`The combination of AbiEzzi and Baumgartner teaches a method of using a
`
`media device operable in first and second modes. AbiEzzi describes a “media
`
`client” (media device) that allows a user to “navigate . . . titles” loaded in a DVD
`
`jukebox accessible by the media client over a “home network.” AbiEzzi, Abstract.
`
`The media client provides a user interface through which “the user can select a title
`
`from the DVD jukebox for viewing on” a display device connected to the media
`
`client. AbiEzzi, Abstract, ¶ 0024. AbiEzzi teaches that a “media server controls
`
`the jukebox and functions as its proxy to allow discovery and control of the
`
`jukebox by other devices on the home network,” such as the media client. Id.
`
`8
`
`Page 1 of 9
`
`CHS Ex. 2005
`Apple v. CHS
`IPR2016-00794
`
`
`
`Attorney Docket No. 39521-0016IP2
`IPR of U.S. Patent No. 8,090,309
`
`
`in the cited references as teaching a claim term of the ’309 Patent is not an
`
`admission by Petitioner that claim term is met by any feature for infringement
`
`purposes, or that the claim term is enabled or meets the requirements for written
`
`description.
`
`IV. MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM
`FOR WHICH AN IPR IS REQUESTED
`
`As detailed below, this request shows a reasonable likelihood that the
`
`Requester will prevail with respect to the Challenged Claims of the ’309 Patent.
`
`A.
`[GROUND 1] - Claims 1-14 are obvious over AbiEzzi in view of
`Baumgartner
`Claim 1 - [1.0]: “A method of using a media device operable in first and
`second modes,”
`Mercer Decl. Para. 30–31
`The combination of AbiEzzi and Baumgartner teaches a method of using a
`
`media device operable in first and second modes. AbiEzzi describes a “media
`
`client” (media device) that allows a user to “navigate . . . titles” loaded in a DVD
`
`jukebox accessible by the media client over a “home network.” AbiEzzi, Abstract.
`
`The media client provides a user interface through which “the user can select a title
`
`from the DVD jukebox for viewing on” a display device connected to the media
`
`client. AbiEzzi, Abstract, ¶ 0024. AbiEzzi teaches that a “media server controls
`
`the jukebox and functions as its proxy to allow discovery and control of the
`
`jukebox by other devices on the home network,” such as the media client. Id.
`
`8
`
`Page 1 of 9
`
`CHS Ex. 2005
`Apple v. CHS
`IPR2016-00794
`
`
`
`Mercer Decl. Para. 32
`Baumgartner teaches a “recording device” (media device) that includes a
`
`Attorney Docket No. 39521-0016IP2
`IPR of U.S. Patent No. 8,090,309
`
`
`“personal video recorder (PVR),” which it defines as a device that can “record
`
`programs on hard-disk drives” and “play back the recorded programs at a later
`
`time.” Baumgartner, 1:24-27, 6:1-3. Baumgartner teaches that the recording
`
`device includes a graphical user interface that displays “a list of recorded programs
`
`2704 that the user may select.” Id. at 22:50-51, FIG. 27. “The user may view a
`
`previously recorded program by selecting the program from” the list of recorded
`
`programs. Id. at 22:59-60. As discussed in greater detail below, it would have
`
`been obvious to one of skill in the art to combine the devices of AbiEzzi and
`
`Baumgartner to produce a unified device that is i) operable in a first mode allowing
`
`a user to select locally-stored video content for playback on a connected display
`Mercer Decl. Para. 30–31
`device (as described in Baumgartner); and ii) operable in a second mode to allow
`
`the user to select video content stored on a remote DVD jukebox for playback on
`
`the connected display device (as described in AbiEzzi). Mercer, ¶ 25;
`
`Baumgartner, 1:24-27, 6:1-3, 22:50-60; AbiEzzi, Abstract, ¶ 0024. Accordingly,
`
`the combination of AbiEzzi and Baumgartner renders obvious “a method of using
`
`a media device operable in first and second modes” as recited in claim 1.
`
`Reasons to combine AbiEzzi and Baumgartner
`Mercer Decl. Para. 26
`One of skill in the art would have modified the device of AbiEzzi operable
`
`to access a DVD jukebox over a network to include the PVR functionality of
`
`9
`
`Page 2 of 9
`
`
`
`Mercer Decl. Para. 26
`
`Baumgartner because such a modification amounts to simply combining prior art
`
`Attorney Docket No. 39521-0016IP2
`IPR of U.S. Patent No. 8,090,309
`
`
`elements from the same field, according to known methods to yield predictable
`
`results. See KSR v. Teleflex, 550 U.S. 398, 417 (2007); MPEP § 2143 I(A). The
`Mercer Decl. Para. 26
`skilled artisan would have been motivated to make such a modification in order to
`
`eliminate the need to have two separate devices to perform the functions of
`
`AbiEzzi and Baumgartner, thereby reducing the amount of equipment a user needs
`
`to configure and maintain, reducing the space the equipment consumes in/on the
`
`user’s television furniture, facilitating using the devices with a common remote
`
`control, and enabling one set of connections to the television. Mercer, ¶ 26; see,
`Mercer Decl. Para. 26
`e.g. Barton, 2:21-36, The artisan would also have been motivated to consolidate
`
`the similar video playback functionality of AbiEzzi and Baumgartner in a single
`
`device to allow the user to navigate a single interface to access both local recorded
`
`programs and remote DVDs from the jukebox, thereby producing a more unified
`
`and user-friendly viewing experience. Mercer, ¶ 26.
`Mercer Decl. Para. 27
`
`The results of such a combination would have been predictable, because
`
`media devices allowing for playback of media from both local and remote sources
`
`were known in the art as of the effective filing date of the ’309 patent. Mercer, ¶
`
`27; see, e.g., Klemets, Abstract (describing a device operable to stream content
`
`from a remote server and play stored recordings from local storage). Moreover,
`
`combination devices with players for more than one type of media were also well
`
`10
`
`Page 3 of 9
`
`
`
`known. See, e.g., Barton, Abstract (describing a “digital video recorder (DVR)
`
`Attorney Docket No. 39521-0016IP2
`IPR of U.S. Patent No. 8,090,309
`
`
`system,” i.e., essentially the same as a PVR, with an “integrated DVD
`
`player/recorder”); Baumgartner, 6:1-3 and 20-22 and FIG. 19 (describing a set-top
`Not in Mercer Decl.
`box with an integrated PVR and VCR). In fact, since AbiEzzi’s media client
`
`provides, at the user’s television, the functionality of its networked DVD jukebox
`
`player, combining it with Baumgartner’s PVR produces an analogue to
`
`combination DVD/PVR device, a device well known in the art. Mercer, ¶ 27; see,
`
`e.g., Barton, Abstract (“digital video recorder (DVR) system” with an “integrated
`
`DVD player/recorder”).
`
`[1.1]: “the first mode comprising operation as a system for accessing a media
`source co-housed with or directly connected to said media device,”
`Mercer Decl. Para. 32
`As described above, Baumgartner teaches a media device that can “record
`
`programs on hard-disk drives” and “play back the recorded programs at a later
`
`time.” Baumgartner, 1:24-27, 6:1-3. Baumgartner describes that the media device
`
`includes “storage devices 814 (e.g., hard-drives or any other suitable magnetic
`
`storage devices, optical storage devices, or any other suitable storage devices).”
`
`Id. at 13:19-38. FIG. 8 shows the storage devices 814 (referred to as “disk storage
`
`814”) is co-housed with the PVR 802 of Baumgartner’s media device.
`
`[1.2]: “the source configured to stream media files or media streams for
`output by said media device”`
`
`11
`
`Page 4 of 9
`
`
`
`Mercer Decl. Para. 54
`
`VDM describes methods for implementing and using a “collection
`
`Attorney Docket No. 39521-0016IP2
`IPR of U.S. Patent No. 8,090,309
`
`
`management system” that “resides on a consumer electronic (CE) device, or a
`
`personal or home computer (PC)” (a media device). VDM, Abstract; see also
`
`VDM, 2:15-25, 3:9-25, 4:6-8; Mercer, ¶ 54. The media device includes a
`
`“collection manager 150 that contains a user interface that provides a controlled
`
`access to . . . one or more” media sources storing recordings (media content).
`
`VDM, 3:9-12. The collection management system of VDM also includes
`
`“rendering devices” (media output units) connected to the network for playing the
`
`recordings. VDM, 3:7-9.
`Mercer Decl. Para. 55
`VDM’s media device is operable in multiple modes, including a first mode
`
`in which media files and/or streams are accessed from a co-housed and/or directly
`
`connected media source (e.g., from local storage), and a second mode in which
`
`recordings are played on rendering devices (media output units) from media
`
`sources over a network at the direction of the media device. See VDM, 2:59-64,
`
`3:22-25, 4:6-8; see also VDM, 2:15-20, 2:61-3:1, 3:25-55, 5:3-14, FIGS. 1, 2;
`
`Mercer, ¶ 55.
`Mercer Decl. Para. 56
`In more detail, VDM describes “an example embodiment of an integrated
`
`system 200 that includes both storage and playback capabilities,” i.e., a media
`
`device. The integrated system 200 can be used “in a dedicated system, a
`
`distributed system, or a combination of both.” VDM, 3:22-25 (emphases added),
`
`31
`
`Page 5 of 9
`
`
`
`Mercer Decl. Para. 56
`
`FIG. 2. VDM states that “[t]he components of the system 200 could be distributed
`
`Attorney Docket No. 39521-0016IP2
`IPR of U.S. Patent No. 8,090,309
`
`
`throughout a network, located in a computing device, and so on.” VDM, 4:6-8.
`
`The system “includes an LCD touch display device 250 for interacting with the
`
`collection manager 150 (not shown) within the system 200[.]” VDM, 3:65-67
`
`(emphasis added). The integrated system 200 also “includes at least one playback
`Mercer Decl. Para. 56
`device 130, at least one hard disc drive 110, and interconnection means 220 for
`
`accessing other items, or appliances, on a network.” VDM, 3:52-55 (emphasis
`
`added); see also VDM, 2:15-20, 4:6-8, FIGS. 1 and 2; Mercer, ¶ 56. FIG. 2 of
`
`VDM shows the integrated system 200 (see also VDM, 10:42-48).
`Mercer Decl. Para. 57
`Regarding the first mode, VDM describes that “the collection manager 150
`
`stores recordings at directly addressable storage locations on a hard disk drive
`
`110.” VDM, 4:10-12 (emphasis added). The “inter connection means 220 may . . .
`
`connect to an amplifier, a television, a set of speakers, and so on, for rendering the
`
`recorded information.” VDM, 3:59-62 (emphasis added), Mercer, ¶ 57. VDM also
`
`teaches that “the integrated system 200 may optionally include an integral
`
`amplifier and speaker system[.]” VDM, 3:62-64. The first mode is discussed in
`
`greater detail in the sections below addressing claim limitations [1.1]-[1.2], and
`
`[1.4].
`Mercer Decl. Para. 58
`Regarding the second mode, VDM teaches that the “interconnection means
`
`220 for accessing other items, or appliances, on a network” may also enable
`
`32
`
`Page 6 of 9
`
`
`
`Mercer Decl. Para. 58
`
`collection manager 150 to interact with and control “one or more storage devices
`
`Attorney Docket No. 39521-0016IP2
`IPR of U.S. Patent No. 8,090,309
`
`
`that contain recordings of material, such as music or video recordings,” that are
`
`distributed throughout a network (e.g., network 100), as VDM’s FIG. 1 depicts.
`
`See VDM, 3:52-55 and 2:59-64. The collection manager includes a “receiver”
`
`module that “receives content data . . . compris[ing] audio information” from
`
`“content source[s]” including “playback device[s]” (e.g., 130 from FIG. 1),
`
`“storage device[s]” (e.g., 120 from FIG. 1) and “Internet site[s].” VDM, claims 1,
`
`6; Mercer, ¶ 58. VDM further describes that the receiver 320 provides the content
`Mercer Decl. Para. 58
`data to a “rendering device 380” (e.g., “an amplifier and speaker system,” “A/V
`
`system” or “a television”) to “render the original content 322[.]” VDM, 7:59-67.
`
`The second mode is discussed in greater detail below at [1.3]-[1.5]. FIG. 4 of
`
`VDM shows an example configuration including the receiver 320, the rendering
`Mercer Decl. Para. 58
`
`device 380, and the content source 310:
`
`Media
`source
`
`Receiver 320 on
`media device
`
`Media device
`sends content
`to separate
`media output
`unit
`
`Media device downloads
`media content from
`media source
`
`Rendering device 380 (media
`
`output unit) plays content
`VDM, Detail of FIG. 4 (annotated).
`
`33
`
`Page 7 of 9
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`
`
`interface, for media metadata from the media device to the media source” as
`
`Attorney Docket No. 39521-0016IP2
`IPR of U.S. Patent No. 8,090,309
`
`
`recited in the claim.
`
`Reasons to combine VDM and Jawa
`Mercer Decl. Para. 23
`One of skill in the art would have modified the media client of VDM to
`
`obtain media metadata from a content source by transmitting a request for the
`
`media metadata, as taught by Jawa, because such a modification amounts to simply
`
`combining prior art elements from the same field, according to known methods to
`
`yield predictable results. See KSR v. Teleflex, 550 U.S. 398, 417 (2007); MPEP §
`Mercer Decl. Para. 23
`2143 I(A). The skilled artisan would have been motivated to make such a
`
`modification to conform the interactions of the media device and content source to
`
`the typical “client-server” model used in modern networks. Mercer, ¶ 23; see, e.g.,
`
`Jawa, 4:23-25; Wilks, Abstract, ¶¶ 0042, 0045 (describing a media device using
`
`the HTTP protocol to request media metadata from a server). Such a client-server
`
`model would be appropriate for many of the network capable content sources
`
`described in VDM, e.g., networked CD/DVD device, storage device (e.g., a hard
`
`disk drive 110), and an internet site. VDM, 5:9-14, 3:52-55, claim 6 (“the content
`
`source is the integral CD/DVD device 130, or via an external connection 220,”
`
`where connection 220 is a type of connection used “for accessing [] items, or
`
`appliances, on a network,” and “wherein the content source is at least one of: a
`
`playback device, a storage device, and an Internet site.”) The artisan would have
`
`46
`
`Page 8 of 9
`
`
`
`Mercer Decl. Para. 23
`been further motivated to improve the network efficiency of the VDM system.
`
`Attorney Docket No. 39521-0016IP2
`IPR of U.S. Patent No. 8,090,309
`
`
`Mercer, ¶ 23. If the media device does not send such a request, the content source
`
`has no information regarding what metadata is needed by the media device. The
`
`content source may thus provide metadata the media device does not need, which
`
`consumes network resources and reduces network efficiency. Mercer, ¶ 23.
`
`Moreover, the content source of VDM must be prompted in some manner to send
`
`the metadata. Mercer, ¶ 23. The skilled artisan would seek the operational
`
`efficiency of having the receiving media device, a device that is already configured
`
`to communicate with the content source and already on the network, prompt the
`
`content source by requesting the data, rather than resorting to having an outside
`
`input, e.g., by the user or some other device, or some other prompt initiate sending
`
`the metadata. Mercer, ¶ 23. Such a configuration avoids the complexity of having
`
`additional outside input or other prompt. Mercer, ¶ 23.
`Mercer Decl. Para. 24
`The results of such a combination would have been predictable, because
`
`media devices requesting metadata from servers over a network was known in the
`
`art as of the effective filing date of the ’309 patent. Mercer, ¶ 24; see, e.g., Jawa,
`
`4:10-17, 7:26-57; Wilks, Abstract, ¶¶ 0042, 0045.
`
`[1.5.3]: “receiving at the media device, using the network interface, media
`metadata from the remote media source,”
`
`47
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`Page 9 of 9
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`
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