UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`TWITTER, INC.,
`Petitioner,
`
`v.
`
`VIDSTREAM LLC,
`Patent Owner.
`
`_________________
`
`Case IPR2017-01131
`Patent 8,464,304
`
`_________________
`
`PETITIONER TWITTER, INC.’S
`ORAL HEARING DEMONSTRATIVE EXHIBITS
`
`
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`TWITTER, INC.,
`Petitioner,
`
`v.
`
`VIDSTREAM LLC,
`Patent Owner.
`
`_________________
`
`Case IPR2017-01131
`Patent 8,464,304
`
`_________________
`
`PETITIONER TWITTER, INC.’S
`ORAL HEARING DEMONSTRATIVE EXHIBITS
`
`
`
`
`
`
`
`In accordance with the Order – Oral Hearing (Paper 62), Petitioner Twitter,
`
`Inc. hereby submits its oral hearing demonstrative exhibits.
`
`IPR2017-01131
`Patent 8,464,304
`
`Respectfully submitted,
`
`
`By: /Todd M. Siegel/
`Todd M. Siegel (Registration No. 73,232)
`todd.siegel@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`Dated: October 17, 2018
`
`
`
`
`
`Petitioner Twitter, Inc.’s Oral Hearing Demonstrative Exhibits
`
`Page 1
`
`
`
`IPR2017-01131
`Patent 8,464,304
`
`CERTIFICATE OF SERVICE
`IN COMPLIANCE WITH 37 C.F.R. § 42.6(e)(4)
`
`The undersigned certifies that on October 17, 2018, a complete copy of
`
`Petitioner Twitter, Inc.’s Oral Hearing Demonstrative Exhibits was served on
`
`counsel for VidStream LLC via electronic mail as follows:
`
`Eagle Robinson – Lead Counsel
`eagle.robinson@nortonrosefulbright.com
`Eric Green – Back-Up Counsel
`eric.green@nortonrosefulbright.com
`Norton Rose Fulbright US LLP
`98 San Jacinto Blvd., Suite 1100
`Austin, TX 78701
`
`Eric Hall – Back-Up Counsel
`Norton Rose Fulbright US LLP
`1301 McKinney St., Ste. 5100
`Houston, TX 77010
`eric.hall@nortonrosefulbright.com
`
`
`
`
`
`
`By: /Todd M. Siegel/
`Todd M. Siegel (Registration No. 73,232)
`todd.siegel@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`
`
`CERTIFICATE OF SERVICE
`
`Page 1
`
`
`
`Petitioner
`Twitter, Inc.
`
`U.S. Patent No. 8,464,304 - IPR2017-01131
`(claims 1, 4, 5, 8, 9, 11-17, 19-26, 28, 29, and 30)
`
`U.S. Patent No. 8,601,506 - IPR2017-01133
`(claims 1, 4-8, 11, 13-15, 23-26, 29, and 30)
`
`Robert T. Cruzen
`Todd M. Siegel
`Klarquist Sparkman, LLP
`October 19, 2018
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`1
`
`
`
`Summary
`
`1
`
`IPR2017-01131
`• The ’304 Patent
`• Server-specified constraint
`
`2
`
`IPR2017-001133
`• The ’506 Patent
`• Time slot TV programming
`• Video length
`• Motivation to Combine
`• The prior art does not teach away
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`
`
`IPR2017-01131 (’304 Patent): Instituted Grounds
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`3
`
`’304 IPR2017-01131, Inst. Dec. (Paper 8) at 5
`
`
`
`’304 Patent: Summary
`
`• Claim limitations and other secondary references that are not at issue
`
`• Linear television programming
`
`• Transcoding
`
`• Distribution server
`
`• Dependent claim limitations
`
`• Combinations as a whole
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`4
`
`
`
`’304 Patent: Overview
`
`’304 Patent (Ex. 1001), Fig. 18
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`5
`
`
`
`’304 Patent: Overview
`
`’304 Patent (Ex. 1001) at claim 1
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`6
`
`
`
`’304 Patent: Overview of Lahti
`
`• Lahti discloses a video capture application that is
`downloaded from a server to mobile devices: MobiCon
`
`• Lahti’s description of MobiCon discloses that the application
`constitutes server-provided instructions that specify a frame
`rate
`
`Lahti (Ex. 1006) at 3, 6; Petition (Paper 1) at 21-23
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`7
`
`
`
`’304 Patent: Lahti Teaches Server-Specified Constraints
`
`Lahti’s Description of MobiCon
`
`Lahti (Ex. 1006) at 6; Petition (Paper 1) at 19-21
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`8
`
`
`
`’304 Patent: Lahti Teaches Server-Provided Constraints
`
`Lahti (Ex. 1006) at 6; Petition (Paper 1) at 19-21
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`9
`
`
`
`’304 Patent: Single Dispute
`
`Dispute: Would POSITA understand Lahti to teach
`device-specified parameters only vs. MobiCon-
`specified parameters?
`
`PO Response (Paper 50) at 9-12; Reply (Paper 53) at 8-14
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`10
`
`
`
`’304 Patent: PO’s Reading of Lahti
`
`• PO Relies on 3 Nokia Devices to Argue Lahti Discloses Device-
`specified Parameters Only
`
`• PO Ignores All Other Devices
`
`• PO Contends Separate Complex “Code Modules” Would Be
`Required and Would Dissuade POSITA From Specifying Parameters
`in an App
`
`PO Response (Paper 50) at 18-21
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`11
`
`
`
`’304 Patent: PO’s Reading of Lahti
`
`PO’s Expert (Olivier) Testimony:
`
`• “Exs. 2003 and 2004 indicate the camera phones available in 2006 captured video
`data with the parameters listed in Lahti (e.g., a resolution of 176x144 pixels and a
`frame rate of 15 frames per second). This alone strongly suggests that the
`parameters listed in Lahti were not governed or otherwise impacted by Lahti’s
`MobiCon application.”
`
`Olivier Decl. (Ex. 2002), ¶ 70; PO Response (Paper 50 ) at 17
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`12
`
`
`
`’304 Patent: Phone Parameters
`
`• But the Underlying Assumption Causing PO Expert’s
`Interpretation of Lahti is Incorrect as a Matter of Fact
`
`• Mobile Phones Did Have A Range of Parameters In 2006,
`Including a Variety of Selectable Frame Rates
`
`• Exs. 1033, 1036, 1037, 1049, 1050
`
`Reply (Paper No. 53) at 13-14; Ex. 1052 (Supp. Houh Decl.) ¶¶ 5-16.Exs. 1033, 1036, 1037, 1049, 1050
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`13
`
`
`
`’304 Patent: PO’s Reading of Lahti
`
`PO’s Expert (Olivier) Declaration:
`
`• “[A]ll digital video data captured by camera phones (or by
`standalone digital cameras for that matter) inherently has a format
`(e.g., H.263), a resolution (e.g., 176x144), and a frame rate (e.g., 15
`frames per second)….For this reason, Lahti’s listing of the 3GPP
`specification, H.263 coding, a 176x144 pixel resolution, and 15
`frames per second is equally consistent with natively capturing
`video.”
`
`Olivier Decl. (Ex. 2002), ¶58; PO Response (Paper 50) at 10
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`14
`
`
`
`’304 Patent: Lahti Teaches Server-Provided Constraints
`
`Lahti Discloses Using Vendor Provided SDKs for Video Capture
`
`Lahti (Ex. 1006) at 3; Reply (Paper 53) at 3, 6-8
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`15
`
`
`
`’304 Patent: PO’s Reading of Lahti
`
`PO’s Expert (Olivier) Declaration:
`
`“Attempting to govern or not govern the video-capture parameters on
`an ad-hoc basis depending on the model of camera phone would have
`required additional complexity and entire code modules not only to
`govern the video capture parameters, but also additional code
`modules to govern whether or not the video-capture-parameter code
`modules would be activated depending on the model of camera
`phone.”
`
`Olivier Decl. (Ex. 2002), ¶72; PO Response (Paper 50) at 18
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`16
`
`
`
`’304 Patent: PO’s Reading of Lahti
`
`PO’s Expert’s (Olivier) Testimony:
`
`Q. You don't believe that a person skilled in the art would be familiar with
`the Symbian operating system as of 2010?
`
`A. Yes, I don't agree that they would know that.
`
`(objection omitted)
`
`Q.· But you agree that the Nokia that you relied on, the Nokia devices, used
`the Symbian operating system?
`
`A.· ·Absolutely, I agree that some of them used -- yeah, used the Symbian
`operating system.
`
`Olivier Deposition (Ex. 1051) at 115:9-14, 19-23; Reply (Paper 53) at 13-14
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`17
`
`
`
`’304 Patent: Specifying Parameters
`
`Specifying parameters including frame rate using Symbian OS employed
`by Nokia phones was straightforward:
`
`“[T]o create an application which records video, the developer uses the
`EnumerateVideoFrameRates() and EnumerateVideoFrameSizes() API
`functions to read the capabilities of the underlying camera. Prior to
`starting to record video, the developer must use the
`PrepareVideoCaptureL() API function to specify both a frame size and a
`frame rate at which to record. There are no default values for the frame
`rate or the frame size.”
`
`Reply (Paper 53) at 13-14; Supp. Houh Decl. (Ex. 1052), ¶14
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`18
`
`
`
`’304 Patent: Specifying Parameters
`
`“Dr. Olivier’s statements are contrary to what the Symbian operating
`system allowed at the time specifying frame rates, frame sizes, etc.,
`which would have been easily implemented by a POSITA independently
`of any specific camera model without any of the complex code modules
`Dr. Olivier claims is necessary.”
`
`Reply (Paper 53) at 10-14; Supp. Houh Decl. (Ex. 1052), ¶16
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`19
`
`
`
`’304 Patent: Lahti’s Disclosure Comparable to ’304 Patent’s
`
`• Application of Fox, 471 F.2d 1405, 1407 (CCPA 1973) (the specification
`“assumes anyone desiring to carry out the process would know of the
`equipment and techniques being used, none being specifically
`described.”)
`
`• In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994) (that “appellant did
`not provide the type of detail in his specification that he now argues is
`necessary in prior art references supports the Board’s finding that one
`skilled in the art would have known how to implement the features of
`the references.”)
`
`Reply (Paper 53) at 16
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`20
`
`
`
`’304 Patent: Lahti’s Disclosure Comparable to ’304 Patent’s
`
`Sur-reply pp. 22-23 quoted language
`
`• ’304 patent at 10:57-11:8: “the application can enforce
`predetermined constraints on the captured video … ensure
`that the video is in condition to be rapidly transcoded …
`ensuring that the crowd-sourced video or other user-
`generated content complies with predetermined parameters”
`
`• Claim 1: “… the video data to be captured in accordance with
`predetermined constraints …”
`
`Sur-reply (Paper 60) at 22-23, ’304 Patent (Ex. 1001) at 10:57-11:8
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`21
`
`
`
`’304 Patent: Lahti’s Disclosure Comparable to ’304 Patent’s
`
`Patent Owner relies on specification at Sur-reply pp. 23-24:
`
`• Cites ’304 patent at 11:20-35 discussing specifying a video length
`
`• Cites ’304 patent at 21:58-66: “the website receives video and audio from the
`selected input devices through a communication interface on the user
`computer, and scripts provided in the retrieved web page encode in FLV format
`in accordance with quality parameters”
`
`Sur-reply (Paper 60) at 23-24, ’304 Patent (Ex. 1001) at 11:20-35 & 21:58-66
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`22
`
`
`
`’304 Patent: ’304’s Methodology Same As Lahti’s
`
`’304 Patent (Ex. 1001), Fig. 18
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`23
`
`
`
`’304 Patent: Lahti Teaches Server-specified Constraints
`
`MobiCon’s UIManager: controller component for
`coordinating video capture
`
`Lahti (Ex. 1006) at 5; Petition (Paper 1) at 19-21
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`24
`
`
`
`’304 Patent: The ’304 Patent Description of Using APIs
`
`Patent Describes Using APIs To Access Native
`Video Recording Capabilities:
`
`’304 Patent (Ex. 1001) at 12:25-27
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`25
`
`
`
`’304 Patent: Lahti Teaches Server-specified Constraints
`
`Lahti (Ex. 1006) at 6Lahti (Ex. 1006) at 5; Petition (Paper 1) at 19-23
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`26
`
`
`
`’304 Patent: Lahti Teaches Server-Specified Constraints
`
`Lahti (Ex. 1006) at 6; Lahti (Ex. 1006) at 5; Petition (Paper 1) at 19-21
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`27
`
`
`
`Summary
`
`1
`
`IPR2017-01131
`• The ’304 Patent
`• Server-specified constraints
`
`2
`
`IPR2017-001133
`• The ’506 Patent
`• Time slot TV programming
`• Video length
`• Motivation to Combine
`• The prior art does not teach away
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`28
`
`
`
`Summary
`
`• Claim limitations and other secondary references not at issue
`
`• Linear television programming
`
`• Transcoding
`
`• Distribution server
`
`• Dependent claim limitations
`
`• No secondary considerations (other than PO’s “ teaching away” argument )
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`29
`
`
`
`IPR2017-01133: Instituted Grounds
`
`’506 IPR2017-01133, Inst. Dec. (Paper 8) at 5
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`30
`
`
`
`’506 Patent Challenged Claims
`
`’506 Patent (Ex. 1001) at claim 1
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`31
`
`
`
`’506 Patent (Time Slot)
`
`Novak: time slot in TV program
`
`Petition (Paper 1) at 29-31; Houh Decl. (Ex. 1003), ¶¶ 82, 112-118; Novak (Ex. 1008), Fig. 7
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`
`
`’506 Patent (Video Length)
`
`Ground 1: Conway discloses max clip length stored in clip rules database
`
`Petition (Paper 1) at 28-29; Houh Decl. (Ex. 1003), ¶¶ 107-111; Conway (Ex. 1007), Fig. 1, ¶ 0032
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`33
`
`
`
`’506 Patent (Video Length)
`
`Ground 2: Current TV teaches short videos
`
`Petition (Paper 1) at 65; Houh Decl. (Ex. 1003), ¶¶ 349-364; Current TV - FAQ (Ex. 1011) at 3, 6-7
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`34
`
`
`
`’506 Patent (Video Length)
`
`Patent specification suggests obviousness
`
`‘506 Patent (Ex. 1001) at 19:32-64; Fig. 7; Reply (Paper 50) at 14-15;
`Houh Decl. (Ex. 1003), ¶ 77; Suppl. Houh Decl. (Ex. 1052), ¶ 24
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`35
`
`
`
`Summary
`
`1
`
`IPR2017-01131
`• The ’304 Patent
`• Server-specified constraints
`
`2
`
`IPR2017-001133
`• The ’506 Patent
`• Time slot TV programming
`• Video length
`• Motivation to Combine
`• The prior art does not teach away
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`36
`
`
`
`’506 Patent (Motivation to Combine)
`
`Technical Field
`
`•
`
`’506 Patent (Olivier): “video recording and publishing across a communication
`network”
`
`• Lahti: “We present a video management system comprising a video server and a
`mobile camera-phone application called MobiCon …”
`
`• Novak: “The present invention relates generally to transmission of information,
`and in particular but not exclusively, relates to the transmission of audio and/or
`video information over communication channels that simulate television
`broadcast channels.”
`
`Petition (Paper 1) at 14-19; Olivier Decl. (Ex. 2002), ¶ 36;
`Houh Decl. (Ex. 1003), ¶¶ 74-85; Lahti (Ex. 1006) at 1; Novak (Ex. 1008), ¶ 0003
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`37
`
`
`
`’506 Patent (Motivation to Combine)
`
`Technical Field
`
`• Conway: “The following discussion generally relates to creating media clips from a media
`stream.”
`
`• Current TV: “Don’t just watch content on your mobile phone, make content and let the
`world see it – on Current’s national TV network – now available in 28 million homes.”
`
`Petition (Paper 1) at 14-19, 62-64; Conway (Ex. 1007), ¶¶ 0003;
`Current TV –Mobile-Create-Upload (Ex. 1009) at 2
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`38
`
`
`
`’506 Patent (Motivation to Combine)
`
`Complementary Teachings
`
`• Lahti: video capture
`
`• Novak: user-created videos for time slot TV programming
`
`• Conway: rules for video clips
`
`• Current TV: short, user-created videos for time slot TV programming
`
`Petition (Paper 1) at 14-19, 62-64; Houh Decl. (Ex. 1003), ¶¶ 74-85, 349-360
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`39
`
`
`
`’506 Patent (Motivation to Combine)
`
`Ordinary Skill And Predictable Results
`
`• Incorporating video length constraint requires ordinary skill
`
`• Lahti discloses environment to support modification (e.g. HTTP
`server system)
`
`• Simple, straightforward reprogramming of MobiCon client
`application
`
`• No undue experimentation; predictable results
`
`Petition (Paper 1) at 14-19, 62-64; Houh Decl. (Ex. 1003), ¶¶ 77, 349-360
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`40
`
`
`
`’506 Patent (Motivation to Combine)
`
`Preserve Resources; Improve Performance
`
`Petition (Paper 1) at 16-17; Reply (Paper 50) at 23-24; Houh Decl. (Ex. 1003), ¶ 78, citing Lahti (Ex. 1006) at 1, 3
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`
`
`’506 Patent (Motivation to Combine)
`
`Preserve Resources; Improve Performance
`
`Petition (Paper 1) at 18; Houh Decl. (Ex. 1003), ¶ 83; Novak (Ex. 1008), ¶ 0050
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`
`
`Summary
`
`1
`
`IPR2017-01131
`• The ’304 Patent
`• Server-specified constraints
`
`2
`
`IPR2017-001133
`• The ’506 Patent
`• Time slot TV programming
`• Video length
`• Motivation to Combine
`• The prior art does not teach away
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`
`
`’506 Patent (No “Teaching Away”)
`
`Law of “Teaching Away”
`
`• “A reference that merely expresses a general preference for an
`alternative invention but does not criticize, discredit, or otherwise
`discourage investigation into’ the claimed invention does not
`teach away.” Meiresonnee v. Google, Inc., 849 F.3d 1379, 1382
`(Fed. Cir. 2017) (internal citations omitted)
`• Nidec Motor Corp. v. Zhongshan Borad Ocean Motor Co. Ltd., 868
`F.3d 1013, 1017-1018 (Fed. Cir. 2017) (aff’g Board’s finding of
`unpatentability where combination reference did not teach away
`from primary reference’s stated object of the invention)
`
`Reply (Paper 50) at 16-17; Suppl. Houh Decl. (Ex. 1052), ¶¶ 21-25
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`
`
`’506 Patent (No “Teaching Away”)
`
`Lahti Does Not Teach Away From Constraining Video Length
`
`• Lahti not limited to home videos
`• Lahti does not state users must dictate all aspects of capture and
`management
`• POR at 36 relies on two partial quotes from two different
`sections of Lahti (pp. 3, 9) to try to limit Lahti’s “goal”
`• Does not criticize, discredit, discourage constraining video length
`
`Reply (Paper 50) at 16-18; Suppl. Houh Decl. (Ex. 1052), ¶¶ 21-25
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`45
`
`
`
`’506 Patent (No “Teaching Away”)
`
`Lahti Does Not Teach Away From Constraining Video Length
`
`• Lahti alternative storage solutions do not teach away
`• Mobile phone
`• Candela server
`
`• Does not criticize, discredit, discourage constraining video length
`
`Reply (Paper 50) at 16-17; Ex. 1006; Suppl. Houh Decl. (Ex. 1052), ¶¶ 21-25
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`46
`
`
`
`’506 Patent (No “Teaching Away”)
`
`Conway Does Not Teach Away From Constraining Video Length
`
`• Conway teaches constraining video length
`• Conway’s clip rules server not incompatible with Lahti
`• Conway’s media player not relevant
`
`Reply (Paper 50) at 18-20
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`47
`
`
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