Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 11
`Entered: January 2, 2015
`
`
`
`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 B1
`____________
`
`
`
`
`
`Before MICHAEL R. ZECHER, TREVOR M. JEFFERSON, and
`PETER P. CHEN, Administrative Patent Judges.
`
`
`ZECHER, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`SONY - Ex.-1012
`Sony Corporation - Petitioner
`
`1
`
`
`571-272-7822
`
`
`
`
`
` Paper 11
`Entered: January 2, 2015
`
`
`
`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 B1
`____________
`
`
`
`
`
`Before MICHAEL R. ZECHER, TREVOR M. JEFFERSON, and
`PETER P. CHEN, Administrative Patent Judges.
`
`
`ZECHER, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`SONY - Ex.-1012
`Sony Corporation - Petitioner
`
`1
`
`
`
`IPR2014-00914
`Patent 8,464,299 B1
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`
`I. INTRODUCTION
`
`Petitioner, Cisco Systems, Inc. (“Cisco”), filed a corrected Petition
`
`(“Pet.”) requesting an inter partes review of claims 1–3, 6–15, and 18–22 of
`
`U.S. Patent No. 8,464,299 B1 (“the ’299 patent,” Ex. 1001). Paper 4. Patent
`
`Owner, Constellation Technologies LLC (“Constellation”), timely filed a
`
`Preliminary Response (“Prelim. Resp.”). Paper 9. We have jurisdiction
`
`under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in
`
`35 U.S.C. § 314(a), which provides:
`
`THRESHOLD.—The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Taking into account the arguments presented in Constellation’s
`
`Preliminary Response, we conclude that the information presented in the
`
`Petition does not establish that there is a reasonable likelihood that Cisco
`
`will prevail in challenging claims 1–3, 6–15, and 18–22 of the ’299 patent as
`
`unpatentable under 35 U.S.C. §§ 102(e) and 103(a). We, therefore, do not
`
`authorize an inter partes review to be instituted for the ’299 patent.
`
`A. Related Matters
`
`
`
`The parties indicate that the ’299 patent was asserted in the following
`
`proceedings: (1) ARRIS Group, Inc. v. Constellation Techs. LLC, No. 1-14-
`
`cv-00114 (D. Del.); (2) Charter Commc’ns., Inc. v. Rockstar Consortium US
`
`LP, No. 1-14-cv-00055 (D. Del.); (3) Constellation Techs. LLC v. Time
`2
`
`2
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`IPR2014-00914
`Patent 8,464,299 B1
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`Warner Cable Inc., No. 2-13-cv-01079 (E.D. Tex.); (4) Bockstar Techs. LLC
`
`v. Cisco Systems, Inc., No. 1-13-cv-02020 (D. Del.); and (5) In Re:
`
`Constellation Techs. LLC Patent Litig., MDL No. 2558, United States
`
`Judicial Panel On Multidistrict Litigation. Pet. 2–3; Paper 8, 2. In addition
`
`to this Petition, Cisco filed five other Petitions challenging the patentability
`
`of a certain subset of claims in the following patents owned by
`
`Constellation: (1) U.S. Patent No. 6,845,389 B1 (IPR2014-00871 and
`
`IPR2014-01085); (2) U.S. Patent No. 8,134,917 B2 (IPR2014-00911); (3)
`
`U.S. Patent No. 6,901,048 B1 (IPR2014-01179); and (4) U.S. Patent No.
`
`7,154,879 B1 (IPR2014-01180).
`
`B. The ’299 Patent
`
`The ’299 patent generally relates to controlling delivery of television
`
`content to conserve network resources based on whether the television
`
`content is being viewed. Ex. 1001, 1:12–15. According to the ’299 patent, a
`
`significant waste of network resources occurs when television content is
`
`delivered to a television that is not being viewed. Id. at 1:40–42. For
`
`instance, it is commonplace for subscribers to leave their televisions on for
`
`long periods of time “when no one is home or watching the television.” Id.
`
`at 1:42–44. Subscribers also tend to leave their set top boxes on even when
`
`the television is off. Id. at 1:44–45.
`
`The ’299 patent purportedly solves this problem by using a television
`
`gateway to monitor a viewer’s interactions to determine whether television
`
`content is being viewed at the associated television or to detect whether the
`
`television is on or off. Ex. 1001, 1:67–2:4. Upon determining that the
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`3
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`3
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`IPR2014-00914
`Patent 8,464,299 B1
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`viewer is not viewing the television content, various actions can be taken to
`
`conserve network resources. Id. at 2:4–6. These conservation actions
`
`include, for example, providing instructions to the content provider to halt
`
`delivery of all or a portion of the television content, or providing the
`
`television content at a reduced quality level so as to reduce the bandwidth
`
`required to transport the television content through the packet network. Id.
`
`at 2:7–11. When a conservation action is taken, an alert may be provided for
`
`display on the television before, during, or after initiating the action so as to
`
`alert the viewer of the action. Id. at 2:14–17.
`
`C. Illustrative Claim
`
`
`
`Of the challenged claims, claims 1 and 19 are independent claims.
`
`Claims 2, 3, 6–15, and 18 directly or indirectly depend from independent
`
`claim 1. Claims 20–22 directly depend from independent claim 19.
`
`Independent claim 1 is illustrative of the challenged claims and is
`
`reproduced below:
`
`A method for conserving resources associated with
`1.
`
`packet television services comprising:
`
`receiving television content from a content provider over
`a packet network;
`
`providing the television content to a television monitor
`for display to a viewer;
`
`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;
`
`if the resource conserving process should be activated:
`
`4
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`4
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`IPR2014-00914
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`Patent 8,464,299 B 1
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`determining whether the viewer is watching the
`television monitor; and
`resources
`conserve
`to
`action
`initiating
`the
`associated with transporting the television content over
`the packet network upon determining that the viewer is
`not watching the television monitor;
`if the resource conserving process
`activated:
`
`should not be
`
`continue providing the television content-
`
`EX. 1001, 829—30.
`
`D. Prior Art Relied Upon
`
`Cisco relies upon the following prior art references:
`
`Minnick US 2005/0157215 A1
`
`Riley
`
`US 2005/0188415 A1
`
`Harrell US 2003/0067872 A1
`
`Ex. 1002
`
`July 21, 2005
`(filed Sept. 13, 2004)
`Ex. 1003
`Aug. 25, 2005
`(effectively filed Jan. 24, 2005)1
`Apr. 10, 2003
`EX. 1004
`
`E. Asserted Grounds of Unpatentability
`
`Cisco challenges claims 1—3, 6—15, and 18—22 of the ’299 patent
`
`based on the asserted grounds of unpatentability set forth in the table below.
`
`Pet. 4, 21—60.
`
`Reference s
`Basis
`Challen_ed Claims
`§—02<e> (F
`Riley and Mlnmck
`§ 103(a)
`1—3, 6—1 1, 14, 15, and 18—22
`
`§ Riley, Minnick, and Harrell
`
`103(a)
`
`12 and 13
`
`1 We provide a more detailed discussion of Riley’s earliest effectively filing
`date below. See infra Section II (D)(l).
`5
`
`5
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`IPR2014-00914
`Patent 8,464,299 B1
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`II. ANALYSIS
`
`A. Claim Construction
`
`
`
`In an inter partes review, we construe claims by applying the broadest
`
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`
`see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug.
`
`14, 2012). Under the broadest reasonable interpretation standard, and absent
`
`any special definitions, claims terms are given their ordinary and customary
`
`meaning as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007).
`
`1. “transporting the television content over the packet network”
`(Claims 1 and 19)
`
`Cisco contends that the broadest reasonable interpretation of the claim
`
`phrase “transporting the television content over the packet network” is
`
`“conveying television content from one place to another over the packet
`
`network.” Pet. 12 (citing Declaration of Frank Koperda, Ex. 1008 ¶¶ 26–
`
`29). To support its proposed claim construction, Cisco argues that the
`
`specification of the ’299 patent does not define explicitly the aforementioned
`
`claim phrase. Id. at 11–12 (citing Ex. 1001, 2:10–11, 2:66–67, 7:66–8:3).
`
`Cisco then asserts that, at the time the ’299 patent was filed, the term
`
`“transport” was defined as “to convey from one place to another.” Id.
`
`(quoting WEBSTER’S II NEW COLLEGE DICTIONARY 1172 (1999)). Cisco
`
`implies that its proposed claim construction is consistent with the ordinary
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`6
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`IPR2014-00914
`Patent 8,464,299 B1
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`and customary meaning of “transport” as would be understood by one with
`
`ordinary skill in the art in light of the ’299 patent. Id.
`
`In response, Constellation divides the claim phrase “transporting the
`
`television content over the packet network” into two claim phrases—
`
`namely, “transporting . . . content over the packet network” and “television
`
`content”—and argues that a proper claim construction should be accorded to
`
`each claim phrase. Prelim. Resp. 4. Constellation argues that the claim
`
`phrase “transporting . . . content over the packet network” should be
`
`construed as “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.” Id. at 5. Constellation also argues
`
`that the claim phrase “television content” should be construed as “television
`
`programming such as movies or television shows, and not other types of data
`
`such as program guides, control messages or software.” Id. at 5–6. To
`
`support its proposed claim constructions, Constellation directs us to various
`
`disclosures in the specification of the ’299 patent. Id. at 6–10 (citing
`
`Ex. 1001, 1:48–55, 2:4–14, 2:61–3:3, 3:18–31, 4:60–65, 5:7–11, 5:33–36).
`
`
`
`Upon reviewing the specification of the ’299 patent, we agree with
`
`Cisco that it does not define explicitly the claim phrase “transporting the
`
`television content over the packet network,” much less provide separate
`
`definitions for the claim phrases “transporting . . . content over the packet
`
`network” and “television content.” Because there is no special definition in
`
`the specification for the claim phrase “transporting the television content
`
`over the packet network,” we refer to its ordinary and customary meaning as
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`7
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`would be understood by one of ordinary skill in the art in the context of the
`
`entire disclosure. Translogic, 504 F.3d at 1257. We note, however, that if a
`
`feature is not necessary to give meaning to what the inventor means by a
`
`claim term, it would be “extraneous” and should not be read into the claim.
`
`Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed.
`
`Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849
`
`F.2d 1430, 1433 (Fed. Cir. 1988).
`
`
`
`If we were to adopt Constellation’s approach and divide the claim
`
`phrase “transporting the television content over the packet network” into two
`
`claim phrases—namely, “transporting . . . content over the packet network”
`
`and “television content”— we are not persuaded that either construction
`
`offered by Constellation constitutes the broadest reasonable interpretation.
`
`With respect to the claim phrase “transporting . . . content over the packet
`
`network,” we decline to adopt Constellation’s claim construction as the
`
`broadest reasonable interpretation because it would import extraneous
`
`limitations into the claims. Constellation’s attempt to describe the claim
`
`phrase “transporting . . . content over the packet network” by what it does
`
`not encompass is not necessary to give meaning to this claim phrase, and
`
`should not be read into the claims that recite this feature.
`
`
`
`With respect the claim phrase “television content,” Constellation’s
`
`overly narrow claim construction is unwarranted because the specification of
`
`the ’299 patent does not preclude a broader construction. Contrary to
`
`Constellation’s assertion (Prelim. Resp. 9–10), the specification does not
`
`differentiate clearly between movies or television shows on the one hand,
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`8
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`Patent 8,464,299 B1
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`and program guide control messages or software on the other. See, e.g.,
`
`Ex. 1001, 3:18–31.
`
`
`
`Instead, we agree with Cisco that its proposed claim construction for
`
`the claim phrase “transporting the television content over the packet
`
`network” constitutes the broadest reasonable interpretation. As Cisco
`
`implied in its Petition, its proposed claim construction is consistent with the
`
`ordinary and customary meaning of “transport” as would be understood by
`
`one with ordinary skill in the art in light of the specification of the ’299
`
`patent. Pet. 12 (quoting a dictionary definition for “transport). Therefore,
`
`for purposes of this decision, we adopt Cisco’s claim construction of the
`
`claim phrase “transporting the television content over the packet network” as
`
`“conveying television content from one place to another over the packet
`
`network.”
`
`2. “resource conserving process” (Claims 1 and 19)
`
`
`
`In its Petition, Cisco does not offer a construction for the claim phrase
`
`“resource conserving process.” In its Preliminary Response, Constellation
`
`contends that the claim phrase “resource conserving process” should be
`
`construed as “a process that determines whether to undertake an action to
`
`conserve resources.” Prelim. Resp. 12. To support its claim construction,
`
`Constellation refers to how this claim phrase is used in the context of
`
`independent claims 1 and 19, and directs us to two disclosures in the
`
`specification of the ’299 patent. Id. at 13 (citing Ex. 1001, 3:67–4:2, 4:20–
`
`23).
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`Upon reviewing the specification of the ’299 patent, we do not find an
`
`explicit definition for the claim phrase “resource conserving process.” We,
`
`therefore, refer to its ordinary and customary meaning as would be
`
`understood by one of ordinary skill in the art in the context of the entire
`
`disclosure. Translogic, 504 F.3d at 1257. For purposes of this decision, we
`
`adopt Constellation’s claim construction because it is consistent with its
`
`ordinary and customary meaning as would be understood by one with
`
`ordinary skill in the art in light of the specification of the ’299 patent.
`
`B. Priority Date for the Challenged Claims of the ’299 Patent
`
`
`
`The ’299 patent issued from U.S. Patent Application No. 11/280,615
`
`(“the ’615 application”), filed on November 16, 2005. Ex. 1001, at [21],
`
`[22]. The ’615 application claims the benefit of the following two
`
`provisional applications: (1) U.S. Provisional Application No. 60/628,577
`
`(Ex. 1006, “the ’577 provisional application”), filed on November 17, 2004;
`
`and (2) U.S. Provisional Application No. 60/628,625 (Ex. 1007, “the ’625
`
`provisional application), also filed on November 17, 2004. Ex. 1001 at [60].
`
`
`
`Cisco contends that the ’577 provisional application and the ’625
`
`provisional application do not provide sufficient written description support
`
`for the challenged claims of the ’299 patent. Pet. 9–10. In particular, Cisco
`
`argues that neither the ’577 provisional application nor the ’625 provisional
`
`application disclose the step of “determining if a resource conserving
`
`process should be activated, prior to monitoring actions of the viewer,” as
`
`recited in independent claims 1 and 19. Id. at 10. (citing Ex. 1006, 6;
`
`Ex. 1007, 9). Cisco asserts that, because these provisional applications do
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`IPR2014-00914
`Patent 8,464,299 B1
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`not disclose the aforementioned limitation, the ’299 patent is entitled only to
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`a priority date of November 16, 2005—the filing date of the ’615 application
`
`that led to the ’299 patent. Id. at 10–11.
`
`
`
`In response, Constellation contends that Cisco’s argument in this
`
`regard is mistaken because independent claims 1 and 19 do not recite “prior
`
`to monitoring actions of the viewer.” Prelim. Resp. 30. Instead,
`
`Constellation argues that the relevant portions of independent claims 1 and
`
`19 recite “if the resource conserving process should be activated:
`
`determining whether the viewer is watching the television monitor.” Id. at
`
`30–31 (quoting Ex. 1001, 8:22–24, 10:10–12). Notwithstanding this
`
`argument, Constellation provides a table that includes all the limitations of
`
`independent claim 1 and the corresponding written description support for
`
`these limitations in the ’577 provisional application. Id. at 37–39. For the
`
`sake of completeness, Constellation also provides exemplary citations to the
`
`’577 provisional application and the ’625 provisional application that
`
`purportedly provide written description support for the other features of the
`
`challenged claims. Id. at 40–41.
`
`
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`Claims are entitled to the benefit of the filing date of an earlier filed
`
`application only if the disclosure of the earlier application provides
`
`sufficient written description support for those claims, as required by
`
`35 U.S.C. § 112. In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). To satisfy
`
`the written description requirement, the prior application must convey with
`
`reasonable clarity to those skilled in the art that, as of the earlier filing date,
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`the inventor was in possession of the invention. Vas-Cath Inc. v. Mahurkar,
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`935 F.2d 1555, 1563–64 (Fed. Cir. 1991).
`
`
`
` We are not persuaded by Cisco’s argument that the ’577 provisional
`
`application and the ’625 provisional application do not provide sufficient
`
`written description support for the purported step of “determining if a
`
`resource conserving process should be activated, prior to monitoring actions
`
`of the viewer.” Cisco’s argument in this regard is not commensurate in
`
`scope with the limitations recited in independent claims 1 and 19. These
`
`independent claims do not require determining if a resource conserving
`
`process should be activated “prior to monitoring actions of the viewer.”
`
`Instead, both independent claims simply recite “if the resource conserving
`
`process should be activated: determining whether the viewer is watching the
`
`television monitor.” Ex. 1001, 8:22–24, 10:10–12. Cisco does not offer an
`
`adequate explanation as to how, or why, the step of “determining whether
`
`the viewer is watching the television monitor” is essentially the same as
`
`monitoring actions of the viewer.
`
`
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`In any event, we are satisfied that Constellation has made a sufficient
`
`showing that the ’577 provisional application and the ’625 provisional
`
`application provide written description support for all the challenged claims.
`
`See Prelim. Resp. 37–41. For instance, with respect to the step of
`
`“determining if a resource conserving process should be activated” as recited
`
`in independent claims 1 and 19, Constellation directs us to the following
`
`disclosures in the ’577 provisional application: (1) checking a timer against
`
`a user’s preference (Ex. 1006, 6); (2) an action algorithm showing
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`bandwidth saving actions taken after determining a resource conserving
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`processing should be activated (id. at 7); and (3) automatically disabling a
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`specific feature based on certain types of actions (id. at 9). Prelim. Resp.
`
`37–38. In our view, these disclosures in the ’577 provisional application
`
`convey sufficient detail such that one of ordinary skill in the art would have
`
`appreciated that the inventors of the ’299 patent possessed the idea of
`
`“determining if a resource conserving process should be activated” as of the
`
`filing date of the ’577 provisional application.
`
`
`
`For purposes of this decision, Constellation has made a sufficient
`
`showing that all the challenged claims of the ’299 patent are entitled to claim
`
`the benefit of the filing date of the ’577 provisional application and the ’625
`
`provisional application—namely, November 17, 2004.
`
`C. Anticipation by Minnick
`
`Cisco contends that claims 1–3, 6–9, 11, 15, and 19–22 are anticipated
`
`under 35 U.S.C. § 102(e) by Minnick. Pet. 21–40. Cisco uses claim charts
`
`to explain how Minnick describes the claimed subject matter and relies upon
`
`the Declaration of Mr. Koperda (Ex. 1008 ¶¶ 37–56) to support its positions.
`
`Id. We have considered Cisco’s explanations and supporting evidence, but
`
`we are not persuaded that Minnick expressly or inherently describes “an
`
`action to conserve resources associated with transporting the television
`
`content over the packet network,” as recited in independent claims 1 and 19.
`
`
`
`We begin our analysis with the principles of law that generally apply
`
`to a ground of unpatentability based on anticipation, followed by a general
`
`discussion of Minnick, and then we turn to the parties’ contentions with
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`respect to whether Minnick expressly or inherently describes “an action to
`
`conserve resources associated with transporting the television content over
`
`the packet network,” as recited in independent claims 1 and 19.
`
`1. Principles of Law
`
`To establish anticipation under § 102(e), “all of the elements and
`
`limitations of the claim must be shown in a single prior reference, arranged
`
`as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
`
`1383 (Fed. Cir. 2001). “A claim is anticipated only if each and every
`
`element as set forth in the claim is found, either expressly or inherently
`
`described, in a single prior art reference.” Verdegaal Bros. Inc. v. Union Oil
`
`Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). “Inherency, however,
`
`may not be established by probabilities or possibilities. The mere fact that a
`
`certain thing may result from a given set of circumstances is not sufficient.”
`
`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). We
`
`analyze this ground of unpatentability based on anticipation by Minnick with
`
`the principles stated above in mind.
`
`2. Minnick
`
`
`
`Minnick relates to television converters for receiving and delivering
`
`channels of television programming and, in particular, to determining when
`
`a channel selecting resource in a television converter is inactive. Ex. 1002
`
`¶ 1. Minnick discloses that, in order to maintain the efficient operation of a
`
`modern set top box, various “housekeeping” functions should be performed
`
`from time to time. Id. ¶ 3. These “housekeeping” functions include
`
`activities such as defragmentation of hard drives, disk scanning for errors,
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`memory testing, downloading software updates, spinning down hard drives
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`when not in use, etc. Id. According to Minnick, a set top box typically does
`
`not perform housekeeping functions that require a channel selecting resource
`
`while the set top box is on because doing so would run the risk of interfering
`
`with a user viewing a television program. Id. Minnick purportedly solves
`
`this problem by first determining when the channel selecting resource in the
`
`set top box is inactive, and then using the inactive channel selecting resource
`
`as necessary for housekeeping and maintenance functions. Ex. 1002 ¶ 4.
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`
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`Figure 5 of Minnick, reproduced below, illustrates method 500 for
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`determining an inactive channel selecting resource. Ex. 1002 ¶¶ 9, 46.
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`
`
`As shown in Figure 5 of Minnick, delivering operation 501 delivers
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`television programming to a set top box via a channel selecting resource.
`
`Ex. 1002 ¶ 46. First determination operation 502 identifies when the
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`
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`15
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`15
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`
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`IPR2014-00914
`Patent 8,464,299 B1
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`channel selecting resource is needed by the set top box for purposes not
`
`related directly to user commands, which includes, but is not limited to,
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`housekeeping and maintenance duties, receiving forced downloads, or
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`remotely executing set recording timers. Id. This is accomplished by
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`allowing the set top box to monitor one or more parameters during
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`monitoring operation 504. Id. ¶ 47. For example, the set top box may
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`monitor parameters such as the time since a last command was issued from
`
`the remote controller. Id. Determining operation 506 proceeds to analyze
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`one or more monitored parameters, and determines whether the channel
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`selecting resource is inactive or otherwise available for allocation by the set
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`top box. Id. ¶ 49.
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`
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`Minnick further discloses that, after determining whether the channel
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`selecting resource is inactive, the set top box may attempt to verify this
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`inactivity by displaying a message to a user alerting him/her 508 that the set
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`top box may cease delivering television content. Ex. 1002 ¶ 52. If no such
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`input from the user is detected within a specified time period, third
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`determination step 510 may confirm that the channel selecting resource is
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`inactive. Id. ¶ 53. Stop delivery operation 512 then may stop delivery of the
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`television programming from the set top box to the television. Id. Once
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`delivery of the television programming has stopped, background use
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`operation 514 may allocate the channel selecting resource for a necessary
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`purpose, such as to receive a forced download of content or computer
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`control instructions, to perform housekeeping functions, or to perform other
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`maintenance type duties. Id.
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`16
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`16
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`IPR2014-00914
`Patent 8,464,299 B1
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`3. Claims 1 and 19
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`
`
`Independent claims 1 and 19 recite, in relevant part, “determining if a
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`resource conserving process should be activated, wherein the resource
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`conserving process determines if an action to conserve resources associated
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`with transporting the television content over the packet network should be
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`performed.” Ex. 1001, 8:17–21, 10:5–9.
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`
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`Cisco contends that Minnick’s system may need to conserve resources
`
`associated with transporting television content over the packet network.
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`Pet. 22–23. According to Cisco, Minnick accomplishes this by identifying
`
`when the channel selecting resource is needed by the set top box for
`
`purposes not related directly to user commands, such as receiving a forced
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`download. Id. at 23, 27 (citing Ex. 1002 ¶ 46; see also id. ¶¶ 37–39
`
`(disclosing a process that uses an inactivity detector to monitor the channel
`
`selecting resource to determine when it may be reallocated for housekeeping
`
`functions)). Cisco asserts that, at the very least, reallocating the channel
`
`selecting resource to receive a forced download is a conservation of a
`
`resource associated with transporting television content over the packet
`
`network. Id. at 23. To support this assertion, Cisco directs us to the
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`testimony of its expert witness, Mr. Koperda. Ex. 1008 ¶¶ 40–45.
`
`
`
`In response, Constellation contends that Minnick does not disclose
`
`“an action to conserve resources associated with transporting the television
`
`content over the packet network,” as recited in independent claims 1 and 19.
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`Prelim. Resp. 16–25. In particular, Constellation argues that, according to
`
`Figure 5 of Minnick, when first determination operation 501 identifies that
`
`17
`
`17
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`
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`IPR2014-00914
`Patent 8,464,299 B1
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`the channel selecting resource is needed by the set top box for purposes not
`
`related directly to user commands, stop delivery operation 512 stops the
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`delivery of the television content from the set top box to the television. Id.
`
`at 18 (citing Ex. 1002 ¶¶ 46, 53, Fig. 5). Constellation asserts that
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`Minnick’s disclosure focuses on output of the television content from the set
`
`top box to the television and, therefore, does not describe a resource
`
`conserving process associated with transporting the television content over
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`the packet network, as claimed. Id. at 18–20. Constellation also asserts that
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`Cisco has not pointed to a single disclosure in Minnick that expressly
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`describes stopping the transmission of the television content from the
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`content server(s) to the set top box over the packet network. Id. at 20.
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`
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`We are not persuaded that Cisco has presented sufficient evidence to
`
`support a finding that Minnick expressly or inherently describes “an action
`
`to conserve resources associated with transporting the television content
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`over the packet network,” as recited in independent claims 1 and 19. Cisco’s
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`position with respect to this limitation is predicated on the notion that
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`Minnick’s reallocation of the channel selecting resource to receive a forced
`
`download somehow stops or minimizes the transmission of television
`
`content from the content server(s) to the set top box over the packet network.
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`Cisco does not direct us to, nor can we find, an express disclosure in
`
`Minnick that contemplates this type of conservation action. Instead,
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`Minnick discloses stopping the transmission of the television content from
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`the set top box to the television, thereby freeing the channel selecting
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`resource to receive a forced download, presumably from the content
`
`18
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`18
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`
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`IPR2014-00914
`Patent 8,464,299 B1
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`server(s). See Ex. 1002 ¶¶ 53, 54, Fig. 5 (stop delivery operation 512,
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`background use operation 514). In other words, there is no indication in
`
`Minnick that, while the channel selecting resource is inactive and, as a
`
`result, capable of receiving a forced download from the content server(s),
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`transmission of television content from the content server(s) to the set top
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`box over the packet network is either stopped or minimized.
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`
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`We also are not persuaded by Mr. Koperda’s application of the
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`doctrine of inherency. Mr. Koperda testifies that “[r]eallocating the ‘channel
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`selecting resource’ by stopping delivery of the television content in order to
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`receive a ‘forced download’ necessarily conserves resources associated with
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`transporting the television content over the packet network.” Ex. 1008 ¶ 40
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`(emphasis added). Mr. Koperda further testifies that:
`
`The bandwidth typically required for delivering television
`content over a packet network is around 3.3 megabits per
`second (or approximately 0.4 megabytes per second). Thus, for
`a minute of television content delivery, approximately 25
`megabytes of data is transferred to the STB [set top box] and as
`much as 750 megabytes for a thirty minute television program.
`On the other hand, typical downloads that tend to be “forced”
`upon a STB like in Minnick are usually 10 to 20 megabytes of
`computer program data, which is much less than the amount of
`television data delivered to the STB for a single television
`program. Therefore, when the channel selecting resource stops
`television content delivery, and instead receives a forced
`download, Minnick has conserved resources associated with
`transporting the television content over the packet network by
`reducing the amount of network bandwidth used.
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`Id. ¶ 44.
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`19
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`19
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`
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`IPR2014-00914
`Patent 8,464,299 B1
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`This testimony from Mr. Koperda only indicates that “typical
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`downloads that tend to be ‘forced’ upon a [set top box],” such as the forced
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`downloads disclosed in Minnick, consume less bandwidth on a packet
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`network than the transmission of television content to the set top box over
`
`the packet network. Id. It leaves open the possibility that a forced download
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`may consume the same or more bandwidth on a packet network than the
`
`transmission of television content over the packet network. The
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`aforementioned testimony from Mr. Koperda does not cure the deficiency in
`
`Minnick identified above. Although Minnick’s disclosure of delivering a
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`forced download to the set top box over a packet network may require less
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`bandwidth than delivering television content to the set top box over the
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`packet network, mere probabilities and possibilities fall short of
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`demonstrating that Minnick necessarily describes “an action to conserve
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`resources associated with transporting the television content over the packet
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`network,” as required for anticipation. See Robertson, 169 F.3d at 745.
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`
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`Based on the record before us, Cisco has not demonstrated a
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`reasonable likelihood that it will prevail on its assertion that independent
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`claims 1 and 19 are anticipated by Minnick
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`4. Claims 2, 3, 6–9, 11, 15, and 20–22
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`
`
`As we explained previously, claims 2, 3, 6–9, 11, 15, and 20–22
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`directly or indirectly depend from independent claims 1 and 19, respectively.
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`By virtue of their dependency, each of claims 2, 3, 6–9, 11, 15, and 20–22
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`incorporate the same limitation
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