UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`CISCO SYSTEMS, INC.
`Petitioner
`
`v.
`
`CONSTELLATION TECHNOLOGIES LLC.
`Patent Owner
`_________________
`Case IPR2014-00914
`Patent 8,464,299
`__________________
`
`CONSTELLATION TECHNOLOGIES LLC'S
`PATENT OWNER PRELIMINARY RESPONSE
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`3084293
`
`SONY - Ex.-1011
`Sony Corporation - Petitioner
`
`1
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`

`

`IPR2014-00914
`Patent No. 8,464,299
`
`I.
`
`II.
`
`III.
`
`IV.
`
`TABLE OF CONTENTS
`
`Introduction ................................................................................................... 1
`
`Claim Construction ....................................................................................... 2
`
`A.
`
`"Action To Conserve Resources Associated With Transporting
`The Television Content Over The Packet Network" ......................... 2
`
`1.
`
`2.
`
`3.
`
`The Claims ............................................................................... 4
`
`The Specification ..................................................................... 6
`
`The Prosecution History ........................................................ 10
`
`B.
`
`"Resource Conserving Process" ....................................................... 12
`
`Institution On Ground 1 Should Be Denied Because The Petition
`Omits Essential Arguments, Which The Petitioner Attempts To
`Incorporate By Reference To A Declaration To Circumvent The Page
`Limit ............................................................................................................ 13
`
`Institution On Ground 1 Should Also Be Denied Because The
`Petitioner Fails To Establish That Minnick Anticipates The
`Challenged Claims ...................................................................................... 15
`
`A.
`
`Legal Standards For Anticipation .................................................... 15
`
`B. Minnick Does Not Disclose "An Action To Conserve
`Resources Associated With Transporting . . . Content Over The
`Packet Network" As Required By All Challenged Claims .............. 16
`
`C.
`
`D.
`
`Petitioner Relies On Disclosure Regarding Non-Television
`Content In Arguing That The Claimed "Action To Conserve
`Resources Associated With Transporting Television Content"
`Required By All Claims Is Disclosed .............................................. 25
`
`Petitioner Also Fails To Show That Minnick Discloses
`"Determining If A Resource Conserving Process Should Be
`Activated" As Required By All Challenged Claims ........................ 26
`
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`IPR2014-00914
`Patent No. 8,464,299
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`E.
`
`Petitioner Additionally Fails To Establish That Minnick
`Discloses Limitations Recited In Dependent Claims ....................... 27
`
`V.
`
`Institution On Ground 2 Should Be Denied Because The Petition
`Omits Essential Arguments, Which The Petitioner Attempts To
`Incorporate By Reference To A Declaration To Circumvent The Page
`Limit ............................................................................................................ 29
`
`VI.
`
`Institution On Ground 2 Should Also Be Denied Because The Petition
`Fails To Establish That Riley Is Prior Art .................................................. 30
`
`A.
`
`B.
`
`The '299 Patent's Priority Date Is November 17, 2004 Or
`Earlier ............................................................................................... 30
`
`Riley Is Not Entitled To A Reference Date Before January 24,
`2005 .................................................................................................. 42
`
`VII.
`
`Institution On Ground 2 Should Also Be Denied Because The Petition
`Fails To Establish Riley In View Of Minnick Renders Obvious
`Claims 1-3, 6-11, 14, 15 And 18-22 ........................................................... 48
`
`A.
`
`B.
`
`Petitioner Fails To Establish That Riley Teaches "If The
`Resource Conserving Process Should Be Activated:
`Determining Whether The Viewer Is Watching The Television
`Monitor" As Required By All Challenged Claims .......................... 48
`
`Petitioner Fails To Establish That Riley And Minnick Disclose
`Limitations Recited In Dependent Claims ....................................... 50
`
`1.
`
`2.
`
`Limitations Allegedly Only Disclosed By Minnick .............. 50
`
`Limitations Allegedly Only Disclosed By Riley ................... 50
`
`C.
`
`Petitioner Fails To Show That A Person Of Ordinary Skill
`Would Have Had Reason To Combine Minnick With Riley........... 51
`
`VIII. Institution On Ground 3 Should Be Denied Because The Petition Fails
`To Establish That Riley, In Combination With Minnick And Harrell,
`Renders Obvious Claims 12 And 13 .......................................................... 59
`
`IX. Conclusion .................................................................................................. 60
`
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`3
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`IPR2014-00914
`Patent No. 8,464,299
`
`TABLE OF AUTHORITIES
`
`Cases
`Atofina v. Great Lakes Chem. Corp.,
`441 F.3d 991 (Fed. Cir. 2006) .......................................................... 15, 26
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................... 58
`
`In re Cortright,
`165 F.3d 1353 (Fed. Cir. 1999) ................................................................ 3
`
`In re Hyatta,
`211 F.3d 1367 (Fed. Cir. 2000) ................................................................ 3
`
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)................................................................................ 51
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2013-00003, Paper No. 8 (P.T.A.B, March 15, 2013) .................. 52
`
`Lindemann Maschinenfabrik GmbH v. Am. Hoist & Derrick Co.,
`730 F.2d 1452 (Fed. Cir. 1984) .............................................................. 58
`
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .............................................................. 47
`
`Moses Lake Industries, Inc. v. Enthone,
`Case IPR2014-00246, Paper 6 (P.T.A.B June 18, 2014) ....................... 52
`
`Superguide Corp. v. DirecTV Enterprises, Inc.,
`358 F.3d 870 (Fed. Cir. 2004) ................................................................ 31
`
`Tech. Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316 (Fed. Cir. 2008) ........................................................ 32, 39
`
`Therasense, Inc. v. Becton, Dickinson & Co.,
`593 F.3d 1325 (Fed. Cir. 2010) .............................................................. 15
`
`iii
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`4
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`IPR2014-00914
`Patent No. 8,464,299
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`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628 (Fed. Cir. 1987) ................................................................ 15
`
`Whitserve, LLC v. Computer Packages, Inc.,
`694 F.3d 10 (2012) ................................................................................. 51
`
`Statutes
`
`35 U.S.C. § 119(e) ............................................................................................ 47
`
`37 C.F.R. § 42.65(a) .......................................................................................... 51
`
`Other Authorities
`
`MPEP § 2143, Section I .............................................................................. 52, 56
`
`iv
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`5
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`IPR2014-00914
`Patent No. 8,464,299
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`I.
`
`Introduction
`The Petitioner seeks inter partes review of claims 1-3, 6-15 and 18-22 of
`
`U.S. Patent No. 8,464,299 (the "'299 Patent") based primarily on two
`
`references. Petitioner has failed to show that the first reference, Minnick, discloses
`
`any resource conserving process whatsoever, let alone an action to conserve
`
`resources associated with transporting television content over a packet network as
`
`required by all challenged claims. Petitioner acknowledges as much. See Pet. 42
`
`("In the event that the PTAB disagrees that Minnick discloses conserving resources
`
`associated with transporting television content over the packet network . . . .").
`
`Petitioner, trying to make up for Minnick's substantial deficiencies, resorts to
`
`obviousness arguments that require combining Minnick with a second reference,
`
`Riley. Riley, however, does not even qualify as prior art to the challenged claims,
`
`nor does Petitioner identify any specific proposed combinations of the two
`
`references or any actual reasons why a POSITA would have combined the
`
`references in any manner. The Petition is also fatally defective because in an
`
`attempt to circumvent the page limit the Petitioner put many of its foundational
`
`arguments in a separate expert declaration rather than in the Petition, and purports
`
`to incorporate them by reference into the petition. The arguments set forth in the
`
`Petition do not make even a prima facie case of invalidity. These and other
`
`6
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`IPR2014-00914
`Patent No. 8,464,299
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`reasons why the Board should not institute the requested IPR are set forth in detail
`
`below.
`
`II.
`
`Claim Construction
`
`A.
`
`"Action To Conserve Resources Associated With Transporting
`The Television Content Over The Packet Network"
`
`The '299 Patent "relates to delivery of television content, and in particular to
`
`controlling delivery of television content to conserve network resources based on
`
`whether the television content is being viewed." Ex. 1001 at 1:12-15.1 The claims
`
`require (1) an action that conserves resources (e.g., reducing network bandwidth
`
`usage); (2) that the resources to be conserved are packet network resources (e.g.,
`
`packet network bandwidth, not data processing activities performed off of the
`
`packet network); and (3) that the resources to be conserved are "associated with
`
`transporting the television content" (e.g., network bandwidth used for transporting
`
`television programming, not resources associated with housekeeping activities).
`
`See, e.g., Ex. 1001 at claims 1 and 19; 1:46-55, 2:4-15, 2:61-67, 3:18-32, 3:47-54,
`
`
`1 The '299 Patent protects advances developed by Nortel Networks at a time
`
`when it was a global leader in the manufacture of telecommunications and data
`
`networking equipment. Nortel invested more than thirty billion dollars in research
`
`and development, resulting in an extraordinary set of innovations safeguarded by
`
`its patents.
`
`2
`
`7
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`IPR2014-00914
`Patent No. 8,464,299
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`4:60-65, 5:26-38, 5:48-49, 7:57-8:3.
`
`Petitioner fails to engage any of the pertinent claim construction questions in
`
`the single page it devotes to the subject. Pet. 11. Petitioner nevertheless assumes,
`
`for purposes of its arguments, that the claims have unreasonably expansive
`
`meanings that do not accord with their plain language, the specification, or the
`
`prosecution history. Petitioner, for instance, does not explain how or why it
`
`contends that Minnick's reallocation of "resources" results in resource conservation.
`
`Petitioner also appears to treat the claim term "television content" as including
`
`information used exclusively for housekeeping and maintenance operations
`
`performed locally at a receiver, such as updating the firmware in a set-top box.
`
`Petitioner additionally treats the claim term "resources associated with . . .
`
`transporting . . . content over the packet network" as encompassing activities
`
`associated exclusively with processing data already delivered to a local set-top box
`
`(see Pet. 23-24), even though those local activities do not draw on resources (such
`
`as network bandwidth) used for transport of content over the packet network.
`
`Unreasonably broad claim interpretations, such as those assumed by the
`
`Petitioner in its arguments, cannot be used in examining the challenged claims.
`
`The claims must be examined under interpretations that are consistent with their
`
`plain meaning, with the specification of which they are a part, and with their
`
`prosecution history. See, e.g., In re Hyatta, 211 F.3d 1367, 1372 (Fed. Cir. 2000).
`
`3
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`IPR2014-00914
`Patent No. 8,464,299
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`The proper interpretation of the above-identified terms, in view of the intrinsic
`
`record, is addressed in the following subsections.
`
`1.
`
`The Claims
`
`Independent claim 1 contains the following limitations:
`
`(cid:120) "determining if a resource conserving process should be activated, wherein
`
`the resource conserving process determines if an action to conserve
`
`resources associated with transporting the television content over the
`
`packet network should be performed"; and
`
`(cid:120) "initiating the action to conserve resources associated with transporting the
`
`television content over the packet network upon determining that the viewer
`
`is not watching the television monitor."
`
`The same limitations are also present in claim 19, the only other independent claim
`
`of the '299 Patent. See Ex. 1001 at 10:5-9, 10:13-16. Among these limitations are
`
`several terms that are particularly pertinent here: (1) "an action to conserve
`
`resources"; (2) "transporting . . . content over the packet network"; and
`
`(3) "television content." A proper construction should give meaning to each of
`
`them.
`
`First, the claims require an action to conserve resources, such as an action
`
`undertaken to reduce bandwidth usage. Contextual language in the claims sets
`
`forth further requirements associated with that action, as described below.
`
`4
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`IPR2014-00914
`Patent No. 8,464,299
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`Second, the claims require that the resources to be conserved are associated
`
`with transportation of content over a packet network, not within local equipment
`
`and not data processing activities performed off of the packet network. See Pet. 24
`
`(agreeing that an action "which focuses on output of the television content from the
`
`STB to the display device" is not associated with transporting content over a packet
`
`network).2 A POSITA would understand the phrase "transporting … content over
`
`packet network" to mean transferring content from one node to another on a packet
`
`network, and not merely within local equipment or a single node without
`
`consuming packet network resources.
`
`Third, the resources to be conserved must be associated with transporting
`
`"television content," not other types of data such as control messages, software and
`
`firmware updates, billing information, and so on. These other types of data are not
`
`
`2 By analogy, a letter is considered to have been delivered by the U.S. Postal
`
`Service when it is dropped off at a recipient's mail box. The letter remains
`
`delivered even if the recipient never retrieves the letter from the mail box or never
`
`opens the letter (just as the set-top box chooses not to process the delivered signal).
`
`A recipient's decision not to retrieve or open a letter that has been delivered has no
`
`effect on the resources the U.S. Postal Service had to expend in the first instance to
`
`transport the letter across its delivery network.
`
`5
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`IPR2014-00914
`Patent No. 8,464,299
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`"television content." A POSITA would understand the phrase "television content"
`
`to mean television programming such as movies or television shows, and not other
`
`types of data such as program guides, control messages or software.
`
`2.
`
`The Specification
`
`The teachings of the specification accord with the plain meanings described
`
`above. As described in the "Background of the Invention," a primary objective of
`
`the '299 Patent is to conserve resources associated with the delivery of television
`
`content over a packet network to a set top box:
`
`A significant waste of network resources occurs when television
`content is delivered to a television monitor that is not being viewed.
`Many subscribers leave their televisions on for long periods of time
`when no one is home or watching the television. It is also
`commonplace for subscribers to leave their set top boxes on, even
`when the television monitor is off. In either case, the television
`content is being delivered over the packet network to the set top box,
`thus wasting network resources. Ex. 1001 at 1:40-48.
`
`The inventors explained that the waste, when replicated by "thousands of
`
`subscribers" could lead to expensive capital investment for "over built" packet
`
`networks "to accommodate the waste" and "preclude or diminish the performance
`
`of other services vying for the network bandwidth." Id. at 1:48-55. Thus, the
`
`inventors were principally concerned with conserving resources (such as network
`
`6
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`IPR2014-00914
`Patent No. 8,464,299
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`bandwidth) associated with transporting television content from a remote content
`
`server to a local set top box, as opposed to efficient local transport of content from
`
`a set top box to a nearby television through an A/V cable or within the set-top box
`
`itself. Cf. Ex. 1006-0005 ("Problem: If television has been turned off using its
`
`remote control, how can we ensure that the network does not waste resources by
`
`continuing to send picture and sound to the NMG [e.g., set top box]? That
`
`problem is solved with this invention.").
`
`The "Summary of the Invention" and "Detailed Description of the Preferred
`
`Embodiments" contain similar teachings. For example, to conserve resources
`
`associated with transporting television content over a packet network, the inventors
`
`proposed "various actions" that "can be taken," which "may include providing
`
`instructions to a content provider to halt delivery of the television content or
`
`provide the television content at a reduced quality level to reduce the bandwidth
`
`needed for transporting the television content." Ex. 1001 at 2:4-6, 2:7-11, 2:61-67.
`
`Some implementations of the system described can thereafter provide locally
`
`stored content from a set-top box to a television monitor: "[i]f delivery of the
`
`television content is halted," the inventors contemplate that "the television gateway
`
`[e.g., a set top box] may provide . . . locally stored television content to the
`
`television monitor for display." Id. at 2:11-14, 2:67-3:3. However, even if the
`
`local transfer of this information between the set-top box and television was
`
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`IPR2014-00914
`Patent No. 8,464,299
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`performed in a highly efficient manner, that would generally not conserve packet
`
`network resources. Indeed, the provision of locally stored content, as opposed to
`
`content delivered through the packet network from the content provider, is itself
`
`considered to be one of the "resource saving actions." Id. at 4:60-65 ("In the
`
`illustrated example, the television gateway 16 can initiate one of three resource
`
`saving actions: halting delivery of the television content, reducing the quality of
`
`the television content, and providing local content, which is locally stored on the
`
`television gateway 16 or associated device, for display instead of the television
`
`content from the content server 12.").
`
`As a corollary, merely halting content delivery from television gateway 16
`
`to television monitor 14 via an A/V cable would generally not conserve resources
`
`associated with transporting television content over a packet network. Id. For
`
`example, the specification differentiates between "delivery of the television content
`
`from the content servers 12 to the television gateway 16" and "process[ing] the
`
`received television content as necessary [by the gateway] and then deliver[ing] the
`
`television content to the television monitor 14 in an appropriate format for
`
`display." Id. at 3:18-24; see also, e.g., 5:33-36 (describing delivering "local
`
`content . . . recorded at the television gateway" instead of television content from
`
`content servers as a resource saving action even though delivery of local content
`
`stored at the television gateway would still require the television gateway to
`
`8
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`13
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`IPR2014-00914
`Patent No. 8,464,299
`
`process the content as necessary for proper display on television), 5:48-49 ("there
`
`is a desire to minimize wasted network resources").
`
`The Petitioner appears to agree. See Pet. 19 (distinguishing Riley, a
`
`reference the Petitioner asserts as prior art, with Goldman, which the Board already
`
`found patentably distinguishable from the challenged claims on the ground that
`
`"whereas Goldman was concerned with pausing delivery of content from a STB to
`
`the television, Riley communicates with the content server to stop content delivery
`
`to the STB, thereby conserving resources associated with transporting content
`
`across the network"); see also id. at 24 (again emphasizing that Goldman differs
`
`from Petitioner's purported prior art references because Goldman "focuses on
`
`output of the television content from the STB to the display device" as opposed to
`
`transporting television content over the packet network).
`
`The specification also differentiates "television content" from other types of
`
`information that may be transmitted to a set top box. For example, it discloses:
`
`In operation, the television gateway 16 and the content servers 12 are
`able to exchange control messages to effectively control the delivery
`of television content from the content servers 12 to the television
`gateway 16 . . . The television gateway 16 and content servers 12 can
`cooperate to allow the television gateway 16 to receive software and
`firmware updates, exchange billing information for various services,
`report viewer activity, and the like. Middleware may be provided on
`
`9
`
`14
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`IPR2014-00914
`Patent No. 8,464,299
`
`the content servers 12, a standalone network element, or a
`combination thereof to assist in providing an electronic programming
`guide and user profiles. Ex. 1001 at 3:18-31.
`
`While acknowledging that non-television content may also be transported
`
`between content servers and television gateway (e.g., a set-top box), the
`
`specification never discusses conserving resources associated with transporting any
`
`non-television content. The specific "resource saving actions" it teaches are
`
`associated with halting delivery of television content or reducing its quality by e.g.,
`
`reducing the associated data rate in order "to reduce the bandwidth needed." Id. at
`
`2:63-66, 4:60-65, 5:7-11.
`
`3.
`
`The Prosecution History
`
`The prosecution history accords with both the plain claim language and the
`
`specification's teachings. During prosecution, the examiner initially rejected the
`
`now-issued claims over U.S. Patent Publication 2003/0097659 ("Goldman," Ex.
`
`2001). Goldman involves a computing device 112 that "detects the occurrence of
`
`an event in client system 110 or in another portion of the network environment of
`
`FIG. 1 [sic] that indicates that the output of the media content is to be modified."
`
`Ex. 2001 at ¶ 20; Ex. 1005 at 00041-42. Goldman's Figure 2 (misidentified as
`
`Figure 1 in Goldman's text) is reproduced on the next page with annotations in
`
`color.
`
`10
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`IPR2014-00914
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`Patent No. 8,464,299
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`In Goldman, "the output of the media content is modified by interrupting the
`
`display of the television program on display device 114," (see above), such as
`
`"pausing the display of television programming." Ex. 2001 at W 20, 32; Ex. 1005
`
`at 00041-42- Goldman further describes that "[W]hen computing device 112
`
`detects an event as described [in Goldman], the pause operation is initiated by
`
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`16
`
`16
`
`

`

`IPR2014-00914
`Patent No. 8,464,299
`
`Thus, in Goldman, even when delivery of television content from the local
`
`computing device 112 (such as a set top box) to a display device 114 (such as a
`
`television monitor) is halted or paused, the television content is still being
`
`delivered to the local computing device 112, e.g., for recording.
`
`The Board already addressed the relevance of such a system to the
`
`challenged claims during the original prosecution. The Board held that Goldman's
`
`pausing of the television program does not constitute the claimed resource
`
`conservation action:
`
`Goldman's pausing of the television program occurs at the user's
`equipment, i.e., at computing device 112 in client system 110, and
`thus is not an action to conserve resources associated with
`transporting content over a packet network on which the content was
`received from a content provider. Ex. 1005 at 00042.
`
`The Petitioner does not appear to dispute this holding, agreeing that
`
`"Goldman's pausing [] focuses on output of the television content from the STB to
`
`the display device" and therefore does not constitute conserving resources
`
`associated with transporting content over a packet network. Pet. 24.
`
`B.
`
`"Resource Conserving Process"
`
`For the reasons recounted above, a POSITA would understand "a resource
`
`conserving process" to be a process that determines whether to undertake an action
`
`to conserve resources. The contextual claim language, for instance, describes that
`
`12
`
`17
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`IPR2014-00914
`Patent No. 8,464,299
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`the claimed "resource conserving process" as a process that "determines if an
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`action to conserve resources associated with transporting the television content
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`over the packet network should be performed." See Ex. 1001 at Claims 1 and 19.
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`The specification, in accord with the claim language, teaches: "Notably, activation
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`of the resource saving process does not trigger a resource saving action, but simply
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`activates a process to determine whether a resource saving action should be taken."
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`Ex. 1001 at 4:20-23; see also id. at 3:67-4:2 ("a resource saving process, which is a
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`process used to determine if and when a resource saving action should be taken").
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`Petitioner, having failed to engage any of the pertinent claim construction
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`questions, unreasonably applies each of the above-discussed claim terms in a
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`manner inconsistent with both their plain language and the corresponding intrinsic
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`evidence. These errors are discussed in sections III through VII below.
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`III.
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`Institution On Ground 1 Should Be Denied Because The Petition Omits
`Essential Arguments, Which The Petitioner Attempts To Incorporate
`By Reference To A Declaration To Circumvent The Page Limit
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`One central issue for Ground 1 is whether Minnick discloses "an action to
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`conserve resources associated with transporting the television content over [a]
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`packet network," a limitation that appears in all challenged claims. See Ex. 1001 at
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`Claims 1, 19. Petitioner claims that "Minnick conserves resources by determining
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`when a resource is not being used by a viewer and then using that resource to
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`perform certain tasks." Pet. 14. Petitioner, however, does not point to a single
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`IPR2014-00914
`Patent No. 8,464,299
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`instance in which Minnick actually discloses that its methods "for allocating
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`resources for a television converter" (see Ex. 1002 at Claims 1-16) would result in
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`conserving resources. Petitioner acknowledges this deficiency of Minnick,
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`prefacing its arguments with "[i]n the event that the PTAB disagrees that Minnick
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`discloses conserving resources associated with transporting television content over
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`the packet network." Pet. 42.
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`Attempting to bridge this evidentiary chasm, Petitioner asserts that
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`"reallocating the channel selecting resource to receive a forced download is a
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`conservation of a resource associated with transporting television content over the
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`packet network." Pet. 23. The Petitioner, however, does not explain that assertion
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`in the Petition. Instead, it points the Board to an extraneous expert declaration that
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`Petitioner attempts to incorporate by reference into the Petition.3 Petitioner, for
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`instance, refers the Board to more than three pages of material from paragraphs 40-
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`45 of the expert declaration. Of course, if even one of those additional pages was
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`actually incorporated, the Petition would exceed the page limit.
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`The Board has repeatedly instructed that it is impermissible to incorporate
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`contents of expert declarations into a petition. See, e.g., Cisco v. C-Cation, IPR
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`3 As explained in Section IV.B, the expert assertions are in any event
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`incorrect.
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`19
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`IPR2014-00914
`Patent No. 8,464,299
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`2014-00454, Paper 12 at 10 ("It is improper to incorporate by reference arguments
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`from one document into another document."). The Board should therefore "not
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`consider arguments that are not made in the Petition, but are instead incorporated
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`by reference to the cited paragraphs . . . of [the Koperda] Declaration." Id.
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`Because the Petition does not show that Minnick discloses "an action to
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`conserve resources associated with transporting television content over the packet
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`network," Petitioner has failed to sustain its burden of proof on Ground 1 and the
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`Board should decline to institute the requested IPR on that Ground.
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`IV.
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`Institution On Ground 1 Should Also Be Denied Because The Petitioner
`Fails To Establish That Minnick Anticipates The Challenged Claims
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`A.
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`Legal Standards For Anticipation
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`"A claim is anticipated only if each and every element as set forth in the
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`claim is found, either expressly or inherently described, in a single prior art
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`reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631
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`(Fed. Cir. 1987). Inherent disclosure requires that the reference "necessarily
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`include the unstated limitation." Atofina v. Great Lakes Chem. Corp., 441 F.3d
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`991, 1000 (Fed. Cir. 2006). Additionally, for a reference to anticipate, "all
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`elements must be disclosed in [the] anticipatory reference in the same way as they
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`are arranged or combined in the claim." Therasense, Inc. v. Becton, Dickinson &
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`Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010).
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`IPR2014-00914
`Patent No. 8,464,299
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`B. Minnick Does Not Disclose "An Action To Conserve Resources
`Associated With Transporting . . . Content Over The Packet
`Network" As Required By All Challenged Claims
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`The Petitioner's first reference, Minnick, relates to a set top box for use in
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`delivering channels of television programming. Ex.1002 at [0001]. Minnick
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`recognized the need to perform "housekeeping functions" in set top boxes, such as
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`"defragmentation of hard drives, disk scanning for errors, memory testing, … and
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`performing various other system maintenance operations." Id. at [0003]. Minnick
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`further observed that "[a]s set-top-boxes have become more complicated, the need
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`for performing such housekeeping functions has drastically increased. Id. The
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`problem, according to Minnick, was that "set top boxes typically do not perform
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`housekeeping functions requiring a channel selecting resource while the set-top-
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`box is on, because of the risk of interfering with a user's viewing of television
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`programming." Id. Minnick therefore proposed an approach to determining
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`whether a user was viewing television programming, so that his system could
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`perform housekeeping functions when television programming was not being
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`viewed. Minnick's purpose was to prevent interference with a user's viewing of
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`television programming, not to increase the efficiency of television content transfer
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`over a packet network. See id. at [0038] ("[I]n this context, an 'inactive' channel
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`selecting resource means a channel selecting resource that is available for
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`IPRZO 14—009 14
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`Patent No. 8,464,299
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`performing functions, such as housekeeping, that do not interfere with a user's use
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`of the satellite set-top-box 100.").
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`Although Petitioner relies heavily on Minnick's use of the phrase "channel
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`selecting resource" to argue that resources are conserved, the specification and the
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`provisional application make clear that this element of Minnick is nothing more
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`than a "channel selector" or a "tuner" (singly or in combination with other
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`components).4 See