__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,521,466
`
`Case No. IPR2018-00072
`__________________________________________________________________
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Mandatory Notices........................................................................................... 1
`
`Grounds for Standing ....................................................................................... 2
`
`III.
`
`Identification of Challenge and Relief Requested ........................................... 2
`
`A.
`
`B.
`
`C.
`
`D.
`
`The ’466 Patent ..................................................................................... 2
`
`Patents and Printed Publications Relied On .......................................... 6
`
`Statutory Grounds for Challenge........................................................... 6
`
`Claim Construction................................................................................ 6
`
`IV. How the Challenged Claims are Unpatentable ................................................ 7
`
`A.
`
`Claims 1-17 of the ’466 Patent are not Entitled to a Filing Date Earlier
`than October 6, 2014 and are Therefore Anticipated by Meier-’299
`under AIA 35 U.S.C. § 102(a)(1) .......................................................... 7
`
`i.
`
`ii.
`
`Claim 1 ......................................................................................19
`
`Claim 2 ......................................................................................21
`
`iii. Claim 3 ......................................................................................21
`
`iv.
`
`v.
`
`vi.
`
`Claim 4 ......................................................................................22
`
`Claim 5 ......................................................................................22
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`Claim 6 ......................................................................................23
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`vii. Claim 7 ......................................................................................24
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`viii. Claim 8 ......................................................................................26
`
`ix.
`
`x.
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`xi.
`
`Claim 9 ......................................................................................27
`
`Claim 10 ....................................................................................27
`
`Claim 11 ....................................................................................27
`
`xii. Claim 12 ....................................................................................28
`
`i
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`

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`xiii. Claim 13 ....................................................................................28
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`xiv. Claim 14 ....................................................................................29
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`xv. Claim 15 ....................................................................................29
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`xvi. Claim 16 ....................................................................................31
`
`xvii. Claim 17 ....................................................................................31
`
`B.
`
`Any Claim of the ’466 Patent that the PTAB may Determine is
`Entitled to the Filing Date of the ’015-Application, the ’754-
`Application, or the ’844-Provisional, Which it Should Not, is
`Anticipated by Meier-’299 under pre-AIA 35 U.S.C. § 102(e) ..........34
`
`i.
`
`Meier-’299 Constitutes Prior Art Under Pre-AIA 35 U.S.C. §
`102(e) as of the November 17, 2004 Filing Date of Meier-’577
`and Meier-’625 ..........................................................................34
`
`ii. Meier-’299 Discloses, and Therefore Anticipates, Claims 1-17
`of the ’466 Patent Under Pre-AIA 35 U.S.C. § 102(e) .............63
`
`C.
`
`Claims 6, 7, and 17 are Obvious in View of Meier-’299 Under AIA 35
`U.S.C. § 103 ........................................................................................72
`
`i.
`
`ii.
`
`Claim 6 ......................................................................................72
`
`Claim 7 ......................................................................................74
`
`iii. Claim 17 ....................................................................................76
`
`V.
`
`The Proposed Grounds of Unpatentability are not Redundant......................78
`
`VI. Conclusion .....................................................................................................79
`
`
`
`
`ii
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`

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`I. Mandatory Notices
`Real-Party-in Interest:
`
`
`
`
`Sony Corporation; Sony Corporation of America; Sony Electronics Inc.;
`
`Sony Interactive Entertainment, Inc.; Sony Mobile Communications (USA), Inc.;
`
`Sony Interactive Entertainment LLC; Sony Visual Products Inc.; Sony Video &
`
`Sound Products Inc.; and Sony Interactive Entertainment America LLC.
`
`Related Matters:
`
`The following judicial matter may affect, or be affected by, a decision in this
`
`inter partes review: ARRIS Enters. LLC v. Sony Corp. et al., Case No. 3:17-cv-
`
`02669-NC (N.D. Cal., filed May 9, 2017).
`
`The following administrative matter may affect, or be affected by, a decision
`
`in this inter partes review: In re Certain Consumer Electronic Devices, Inv. No.
`
`337-TA-1060; and IPR2018-00075.
`
`Lead Counsel:
`
`Clifford A. Ulrich (Reg. No. 42,194)
`
`Backup Counsel:
`
`James V. Mahon (Reg. No. 41,966)
`
`Service:
`
`Petitioner agrees to electronic service at the following email addresses:
`
`culrich@andrewskurthkenyon.com
`jamesmahon@andrewskurthkenyon.com
`
`
`
`

`

`Service may be made at the following address:
`
`Andrews Kurth Kenyon LLP
`One Broadway
`New York, NY 10004
`Telephone: 212-425-7200
`Facsimile: 212-425-5288
`
`
`
`Grounds for Standing
`
`II.
`Petitioner certifies that U.S. Patent No. 9,521,466 (“’466 patent,” Ex.-1001)
`
`is available for inter partes review and that Petitioner is not barred or estopped
`
`from requesting inter partes review challenging the claims on the grounds
`
`identified in this petition.
`
`Identification of Challenge and Relief Requested
`
`III.
`Petitioner challenges claims 1-17 of the ’466 patent under AIA 35 U.S.C. §
`
`
`
`102(a)(1), challenges any claim of the ’466 patent that may have an effective filing
`
`date before March 16, 2013 under pre-AIA 35 U.S.C. § 102(e), challenges claims
`
`6, 7, and 17 under AIA 35 U.S.C. § 103, and requests cancelation of claims 1-17.
`
`A. The ’466 Patent
`The ’466 patent issued on December 13, 2016, from Application No.
`
`
`
`14/507,329 (“’329-application,” Ex.-1002), filed October 6, 2014. The ’466 patent
`
`states that it is a continuation of Application No. 13/591,015 (“’015-application,”
`
`Ex.-1003), filed August 21, 2012, which is stated to be a continuation of
`
`Application No. 11/200,754 (“’754-application,” Ex.-1004), filed August 9, 2005,
`
`2
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`

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`which is stated to “claim[] priority as a non-provisional of U.S. Provisional Patent
`
`Application Ser. No. 60/600,473 [“’473-provisional,” Ex.-1005] filed on Aug. 10,
`
`2004” and which is also stated to “claim[] priority as a non-provisional of U.S.
`
`Provisional Patent Application Ser. No. 60/662,844 [“’844-provisional,” Ex.-
`
`1006], filed on Mar. 18, 2005.”1
`
`
`
`The ’329-application was filed with a “Preliminary Amendment” (Ex.-
`
`1007), which states that “the claims for this continuation have been copied from
`
`United States Patent No. 8,464,299 [“Meier-’299,” Ex.-1008].” Ex.-1007, 3. While
`
`the Preliminary Amendment contends that “these copied claims provide the basis
`
`for declaration of an interference between the current application and the ‘299
`
`Patent,” no interference was declared. Notably, the Applicant did not cite Meier-
`
`’299 during prosecution of the ’466 patent, the ’015-application, or the ’754-
`
`application.
`
`
`
`1 As set forth in more detail below, no claim of the ’466 patent is entitled to a filing
`
`date earlier than the October 6, 2014 filing date of the ’329-application; nothing in
`
`this Petition should be considered to be a conclusion by Petitioner that the ’466
`
`patent provides an adequate written description or an enabling disclosure of any of
`
`its claims under 35 U.S.C. § 112.
`
`3
`
`

`

`
`
`The ’466 patent describes communication systems and methods for
`
`providing and receiving “programs” that, generally speaking, are media streams.
`
`Ex.-1001, 2:17, 5:14, Fig. 3. Declaration of Kevin Jeffay (Ex.-1013), ¶13.
`
`
`
`The ’466 patent describes a user device that includes a transceiver unit
`
`connected to a controller that is adapted to: (i) receive a “program multiplex;” (ii)
`
`receive an indication that at least one program is to be removed from the multiplex;
`
`and (iii) selectively transmit a program removal response. Ex.-1001, 1:66-2:4. Also
`
`disclosed is a device to provide a program multiplex. The device includes, e.g., a
`
`management unit adapted to consider a removal of at least one program from the
`
`multiplex in response to program viewing parameters, and determine the removal
`
`in response to at least one received user program removal response. Ex.-1001, 2:5-
`
`12. The ’466 patent further describes a corresponding method for receiving
`
`programs that includes (i) receiving a “program multiplex,” and a program removal
`
`indication; and (ii) selectively transmitting a program removal response. Ex.-1001,
`
`2:13-16. Also disclosed is a method for providing programs, which includes (i)
`
`providing a program multiplex to multiple user devices; (ii) considering removal of
`
`at least one program from the multiplex in response to program viewing
`
`parameters; (iii) allowing at least one user to respond to a possible removal of the
`
`at least one program; and (iv) determining whether to remove the at least one
`
`4
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`

`

`program in response to received user removal responses. Ex.-1001, 2:17-24. Ex.-
`
`1013, ¶14.
`
`
`
`The claims of the ’466 patent describe methods and apparatuses for
`
`conserving “resources” associated with a packet television service comprising,
`
`determining if a resource conserving process should be activated and initiating an
`
`action to conserve resources comprising sending instructions to the content
`
`provider to halt the delivery of a video portion of the television content. Ex.-1001,
`
`11:30-55, 12:39-65. Ex.-1013, ¶15.
`
`
`
`Notably, regarding the “conservation of resources,” the specification of the
`
`’466 patent discloses only the removal of a program from a program multiplex. A
`
`person of ordinary skill in the art2 at the time of the filing of the ’329-application
`
`would understand that a “program” constituted both audio and video data (see, e.g.,
`
`Ex.-1001, 1:27-28, equating “television channels” and “programs”). In contrast,
`
`the claims of the ’466 patent recite halting delivery of only a video portion of
`
`television content. Such a removal or halting of delivery is not described in the
`
`specification of the ’466 patent. Ex.-1013, ¶16.
`
`
`
`2 The level of ordinary skill in the art is reflected by the prior art cited on the face
`
`of the ’466 patent as well as by the prior art cited herein.
`
`5
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`

`

`Patents and Printed Publications Relied On
`
`B.
`U.S. Patent No. 8,464,299 (“Meier-’299,” Ex.-1008), issued June 11, 2013
`
`from Application No. 11/280,615, filed November 16, 2005, which claims the
`
`benefit of Provisional Application Nos. 60/628,577 (“Meier-’577,” Ex.-1009) and
`
`60/628,625 (“Meier-’625,” Ex.-1010), both filed November 17, 2004, constitutes
`
`prior art against the ’466 patent under at least AIA 35 U.S.C. § 102(a)(1) and pre-
`
`AIA 35 U.S.C. § 102(e).3
`
`Statutory Grounds for Challenge
`
`C.
`1. Meier-’299 anticipates claims 1-17 under AIA 35 U.S.C. § 102(a)(1).
`
`2. Meier-’299 anticipates any claim of the ’466 patent that may have an
`
`effective filing date before March 16, 2013 under pre-AIA 35 U.S.C.
`
`§ 102(e).
`
`3.
`
`Claims 6, 7, and 17 are obvious in view of Meier-’299 under AIA 35
`
`U.S.C. § 103.
`
`D. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given their
`
`broadest reasonable construction in light of the specification of the patent in which
`
`
`
`3 Nothing in this petition should be considered to be a conclusion by Petitioner that
`
`pre-AIA 35 U.S.C. §§ 102(e) or 112 are applicable to any claim of the ’466 patent.
`
`6
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`

`

`they appear. 37 C.F.R. § 42.100(b). Under the broadest reasonable interpretation
`
`standard, and absent any special definitions, claim terms generally are given their
`
`ordinary and customary meaning, as would be understood by one of ordinary skill
`
`in the art, in view of the specification. The specification of the ’466 patent does not
`
`present any special definition for any claim term, and the prosecution history does
`
`not include any claim construction arguments, such that all claim terms of the ’466
`
`patent should be given their ordinary and customary meaning, in accordance with
`
`their broadest reasonable construction.
`
`How the Challenged Claims are Unpatentable
`IV.
`A. Claims 1-17 of the ’466 Patent are not Entitled to a Filing Date
`Earlier than October 6, 2014 and are Therefore Anticipated by
`Meier-’299 under AIA 35 U.S.C. § 102(a)(1)
`
`
`
`The effective filing date, as defined in 35 U.S.C. § 100(i)(1), of claims 1-17
`
`of the ’466 patent is the October 6, 2014 filing date of the ’329-application. As
`
`stated in the Preliminary Amendment, these claims were copied from Meier-’299,
`
`which issued on June 11, 2013, before the effective filing date of claims 1-17 of
`
`the ’466 patent. As a result, Meier-’299 constitutes prior art against, and
`
`anticipates, claims 1-17 of the ’466 patent under AIA 35 U.S.C. § 102(a)(1).
`
`Although the ’466 patent is stated to be a continuation of the ’015-
`
`application, which is stated to be a continuation of the ’754-application, which is
`
`stated to “claim[] priority” to the ’473-provisional and ’844-provisional, none of
`
`7
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`

`

`the ’015-application, ’754-application, ’473-provisional, and ’844-provisional
`
`provides, for example, an adequate written description of any claim of the ’466
`
`patent, such that no claim of the ’466 patent is entitled to an earlier filing date than
`
`the October 6, 2014 filing date of the ’329-application. The claims of the ’466
`
`patent do not have an effective filing date before March 16, 2013, such that the
`
`AIA’s “first inventor to file” provisions are applicable. Meier-’299, which issued
`
`on June 11, 2013, therefore constitutes prior art against the ’466 patent under AIA
`
`35 U.S.C. § 102(a)(1).
`
`
`
`In order for claims of a later-filed application to be entitled to the filing date
`
`of an earlier-filed application under 35 U.S.C. § 120, the earlier-filed application
`
`must, for example, disclose the subject matter claimed in the later-filed application
`
`in a manner that satisfies the written description requirement of 35 U.S.C. § 112.
`
`And, for claims of a non-provisional application to be entitled to the filing date of
`
`an earlier-filed provisional application under 35 U.S.C. § 119(e), the provisional
`
`application must also, for example, disclose the subject matter claimed in the later-
`
`filed application in a manner that satisfies the written description requirement of 35
`
`U.S.C. § 112.
`
`
`
`The mere presence of a benefit claim under 35 U.S.C. §§ 119(e) or 120 does
`
`not establish entitlement to an earlier claimed filing date. Instead, the patent owner
`
`has the burden of proving that it is entitled to an earlier claimed filing date by
`
`8
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`

`

`establishing that the earlier-filed application satisfies, for example, the written
`
`description requirement of 35 U.S.C. § 112. See, Technology Licensing Corp. v.
`
`Videotek, Inc., 545 F.3d 1316, 1328-29 (Fed. Cir. 2008); PowerOasis, Inc. v. T-
`
`Mobile USA, Inc., 522 F.3d 1299, 1303 (Fed. Cir. 2008).
`
`
`
`The test for a patent’s sufficiency under the written description requirement
`
`“is whether the disclosure of the application relied upon reasonably conveys to
`
`those skilled in the art that the inventor had possession of the claimed subject
`
`matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
`
`1351 (Fed. Cir. 2010). This test “requires an objective inquiry into the four corners
`
`of the specification from the perspective of a person of ordinary skill in the art.
`
`Based on that inquiry, the specification must describe an invention understandable
`
`to that skilled artisan and show that the inventor actually invented the invention
`
`claimed.” Id.
`
`
`
`Among the limitations recited in independent claims 1 and 15 of the ’466
`
`patent that are not adequately described in the ’015-application, ’754-application,
`
`’473-provisional, and ’844-provisional are:
`
`wherein initiating the action to conserve resources comprises sending
`instructions to the content provider to halt delivery of a video portion
`of the television content;
`
`and
`
`9
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`

`

`wherein the television content delivered after sending the instructions
`does not comprise the video portion.
`
`
`
`
`
`The ’015-application and ’754-application describe methods and devices for
`
`providing and receiving “programs” and “media streams.” A management unit is
`
`adapted to consider a removal of “at least one program from [a] multiplex” and to
`
`determine whether “to remove the program in response to at least one user
`
`program removal response or in response to an absence of such response.” Ex.-
`
`1003, ¶[00027] (emphasis added); Ex.-1004, ¶[00027]. There is no discussion in
`
`the ’015-application or the ’754-application for sending instructions to a content
`
`provider to halt delivery of a video portion of television content. There is also no
`
`discussion in the ’015-application or the ’754-application for halting delivery of
`
`the video portion of television content, after sending the instructions to halt
`
`delivery of the video portion, while continuing to deliver other portion(s) of that
`
`television content. That other portion(s) of television content are delivered after
`
`sending instructions to halt the video portion is apparent from claims 1 and 15,
`
`which recite that “the television content delivered after sending the instructions
`
`does not comprise the video portion.” Ex.-1013, ¶17.
`
`
`
`Additionally, the ’015-application and ’754-application mention MPEG and
`
`MPEG-2 compliant “programs” and the removal of such programs from a
`
`multiplex. Ex.-1003, ¶¶[00026]-[00027]; Ex.-1004, ¶¶[00026]-[00027]. A person
`10
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`

`

`of ordinary skill in the art at the time of filing the ’015- and ’754-applications
`
`would have understood that MPEG and MPEG-2 files or transport streams contain
`
`video, audio, and other information, such that removal of an MPEG or MPEG-2
`
`“program” from a multiplex entails removal of the entire program, including the
`
`video, audio, and other information. The ’015-application and ’754-application do
`
`not describe sending instructions to remove just a video portion from an MPEG or
`
`MPEG-2 program and continuing to deliver other portion(s) of that MPEG or
`
`MPEG-2 program from which a video portion is removed, after sending
`
`instructions to halt delivery of the video portion. Further, the ’015-application and
`
`’754-application do not describe removal of a video portion from an MPEG or
`
`MPEG-2 program but continuing to deliver other portion(s) of that MPEG or
`
`MPEG-2 program from which a video portion was removed. Ex.-1013, ¶18.
`
`
`
`The ’473-provisional and ’844-provisional describe a switched broadcast
`
`system that “offers broadcast programs on demand only.” Ex.-1005, ¶[0001]; Ex.-
`
`1006, ¶[0001]. According to the ’473-provisional and ’844-provisional, “the
`
`system can decide that it is highly likely that a program being broadcast is actually
`
`not viewed by anyone” and that “[i]t can remove this program and free bandwidth
`
`for other programs.” Ex.-1005, ¶[0005] (emphasis added); Ex.-1006, ¶[0005]. The
`
`’473-provisional and ’844-provisional also mention that “the program will be
`
`removed” if no viewer responds within a certain period to a warning prior to the
`
`11
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`

`

`removal of the program. Ex.-1005, ¶[0005] (emphasis added); Ex.-1006, ¶[0005].
`
`There is no discussion in the ’473-provisional or the ’844-provisional of sending
`
`instructions to halt delivery of only a video portion of a program and to continue
`
`delivery of other portion(s) of that program from which a video portion is
`
`removed. There is also no discussion in the ’473-provisional or the ’844-
`
`provisional of halting delivery of a video portion of a program but continuing to
`
`deliver other portion(s) of that program from which a video portion was removed,
`
`after sending instructions to halt delivery of the video portion.4 Ex.-1013, ¶19.
`
`
`4 In contrast, Meier-’299, Meier-’577, and Meier-’625 describe sending
`
`instructions to the content provider to halt delivery of a video portion of the
`
`television content and that the television content delivered after sending the
`
`instructions does not comprise the video portion. See Meier-’299, 6:12-16
`
`(“[S]ince most of the bandwidth associated with the television content is allocated
`
`to the video content, the television gateway 16 could instruct the content server 12
`
`to continue delivery of the audio content and halt the video content.”); Meier-’577,
`
`p. 7 (“NMG sends message to network to stop transmission of network picture and
`
`sound”), 9 (“Since most of the bandwidth is in the picture information, the NMG
`
`could optionally continue to receive the sound information from the network”; “A
`
`message would be flashed on the screen prior to bandwidth saver activation to
`
`
`
`12
`
`

`

`
`
`Claims 1 and 9 of the ’466 patent distinguish between halting delivery of the
`
`video portion of the television content and stopping delivery of the television
`
`content. In this regard, claim 1 recites that “initiating the action to conserve
`
`resources comprises sending instructions to the content provider to halt delivery of
`
`a video portion of the television content” and that “the television content delivered
`
`after sending the instructions does not comprise the video portion,” whereas
`
`dependent claim 9, which depends from claim 1, recites that “initiating the action
`
`to conserve resources comprises sending instructions to the content provider to
`
`stop delivery of the television content” and that “delivery of the television content
`
`is stopped.” (Emphasis added). There is no disclosure in the ’015-application,
`
`’754-application, ’473-provisional, and ’844-provisional for sending two different
`
`instructions to a content provider: one to halt delivery of a video portion of
`
`
`warn of the coming picture shutdown.”); Meier-’625, p. 3 (“If the current is lower
`
`than a particular threshold, the NMG sends a message to the network to stop
`
`sending the picture and sound information for that TV”), p. 10 (“Since most of the
`
`bandwidth is in the picture information, the NMG could optionally continue to
`
`receive the sound information from the network”; “A message would be flashed on
`
`the screen prior to bandwidth saver activation to warn of the coming picture
`
`shutdown.”).
`
`13
`
`

`

`television content, the other to stop delivery of television content. And, there is no
`
`disclosure in the ’015-application, ’754-application, ’473-provisional, and ’844-
`
`provisional of halting delivery of a video portion of television content, on the one
`
`hand, and stopping delivery of television content, on the other hand. Ex.-1013, ¶20.
`
`
`
`Moreover, the original independent claims presented in the ’329-application
`
`did not include the two “wherein” clauses described above (“wherein initiating the
`
`action to conserve resources comprises sending instructions to the content provider
`
`to halt delivery of a video portion of the television” and “wherein the television
`
`content delivered after sending the instructions does not comprise the video
`
`portion”). Instead, those limitations were included in application claim 11, which
`
`depended from claim 1, and the limitations relating to stopping delivery of the
`
`television content were included in application claim 9, which also depended from
`
`claim 1. Application claims 9 and 11 as presented in the ’329-application are
`
`reproduced below:
`
`9. The method of claim 1 wherein initiating the action to
`
`conserve resources comprises sending instructions to the content
`provider to stop delivery of the television content, wherein delivery of
`the television content is stopped.
`
`11. The method of claim 1 wherein initiating the action to
`
`conserve resources comprises sending instructions to the content
`provider to halt delivery of a video portion of the television content,
`
`14
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`

`

`wherein the television content delivered after sending the instructions
`does not comprise the video portion.
`
`
`
`
`
`In an Office Action dated April 5, 2016 (Ex.-1014), the Examiner rejected
`
`application claim 9 as obvious in view of U.S. Patent No. 6,259,486 and U.S.
`
`Publication No. 2005/0229226 but stated that application claim 11 included
`
`allowable subject matter.5 The foregoing confirms that a method that includes
`
`sending instructions to a content provider to halt delivery of a video portion of
`
`television content and delivery of television content after sending such instructions
`
`that does not comprise the video portion is different, in terms of patentability, than
`
`a method that includes sending instructions to a content provider to stop delivery of
`
`television content and stopping delivery of television content. Therefore, the
`
`disclosure of removal of a program, such as that included in the ’015-application,
`
`’754-application, ’473-provisional, and ’844-provisional, cannot be considered to
`
`
`
`5 In response to the April 5, 2016 Office Action, the Applicant canceled application
`
`claim 11, amended application claim 1 “to include the feature of previously
`
`presented claim 11,” and amended application claim 16, which corresponds to
`
`claim 15 of the ’466 patent, “to include the features of objected to claim 11.” Ex.-
`
`1015, p. 6.
`
`15
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`

`

`constitute a disclosure, in the manner set forth in 35 U.S.C. § 112, for the two
`
`“wherein” clauses of claims 1 and 15: “wherein initiating the action to conserve
`
`resources comprises sending instructions to the content provider to halt delivery of
`
`a video portion of the television content” and “wherein the television content
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`delivered after sending the instructions does not comprise the video portion.”
`
`
`
`Therefore, the ’015-application, ’754-application, ’473-provisional, and
`
`’844-provisional do not describe the subject matter claimed in the ’466 patent in
`
`sufficient detail that one skilled in the art could reasonably conclude that the
`
`inventors named on the face of the ’466 patent had possession of the claimed
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`subject matter as of the August 21, 2012 filing date of the ’015-application, the
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`August 9, 2005 filing date of the ’754-application, the March 16, 2005 filing date
`
`of the ’844-provisional, or the August 10, 2004 filing date of the ’473-provisional.
`
`Accordingly, the ’015-application, ’754-application, ’473-provisional, and ’844-
`
`provisional do not satisfy the written description requirement for the subject matter
`
`claimed in the ’466 patent. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325
`
`F.3d 1306, 1320-21 (Fed. Cir. 2003). Consequently, no claim of the ’466 patent is
`
`entitled to the August 21, 2012 filing date of the ’015-application or the August 9,
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`2005 filing date of the ’754-application, and no claim of the ’466 patent is entitled
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`to the March 16, 2005 filing date of the ’844-provisional or the August 10, 2004
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`filing date of the ’473-provisional.
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`16
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`

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`
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`Additionally, to be entitled to the filing date of a provisional application
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`under 35 U.S.C. § 119(e), there must be at least one common inventor between the
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`provisional application and the non-provisional application. The ’473-provisional
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`names a single inventor: Zeev Vax. As of the filing date of this Petition, Zeev Vax
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`is not named as an inventor of the ’466 patent, ’015-application, or ’754-
`
`application. While requests have been filed to add Zeev Vax as an inventor to the
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`’466 patent, ’015-application, and ’754-application, as of the filing date of this
`
`Petition, the Office has not granted these requests, such that none of the ’466
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`patent, ’015-application, and ’754-application currently has at least one common
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`inventor as the ’473-provisional. Unless, and until, the Office grants these requests,
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`none of the claims of the ’466 patent can be entitled to the August 10, 2004 filing
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`date of the ’473-provisional.
`
`
`
`It should also be noted that there is no indication in the prosecution history
`
`of the ’466 patent that the Examiner conducted any analysis under 35 U.S.C. §§
`
`119(e) or 120 as to any claim,6 and the Applicant did not make any showing as to
`
`
`6 While the April 5, 2016 Office Action states that “[t]he [’329] application is
`
`being examined under the pre-AIA first to invent provisions,” Ex.-1014, 3, this
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`“boilerplate statement … does not imply that the Examiner determined the
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`effective filing date” of any claim of the ’329-application or that the PTAB is
`
`
`
`17
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`its benefit claims under 35 U.S.C. §§ 119(e) and 120, other than the conclusory
`
`assertion in the Preliminary Amendment that “Assignee respectfully asserts that
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`the subject matter of the claims that issued on the ‘299 Patent are disclosed by U.S.
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`Provisional Patent Application Serial No. 60/600,473, filed August 10, 2004, to
`
`which the present application claims priority,” (Ex.-1007, 3).
`
`
`
`In view of all of the foregoing, no claim of the ’466 patent is entitled to a
`
`filing date earlier than the October 6, 2014 filing date of the ’329-application, such
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`that Meier-’299, which issued on June 11, 2013, constitutes prior art against all of
`
`the claims of the ’466 patent under AIA 35 U.S.C. § 102(a)(1).
`
`
`
`A patent claim is anticipated by a prior art document that describes every
`
`element claimed. See Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d
`
`1272, 1282 (Fed. Cir. 2000). As noted above, the Preliminary Amendment
`
`admitted that the claims of the ’329-application were copied from Meier-’299,
`
`which makes self-evident the fact that Meier-’299 identically discloses the subject
`
`
`“somehow precluded from making such a determination.” See, e.g., PGR2016-
`
`00041, Paper 9 (Feb. 22, 2017), pp. 11-12 (citing PowerOasis, 522 F.3d at 1305).
`
`As noted in PowerOasis, “[i]n the absence of an interference or rejection which
`
`would require the PTO to make a determination of priority, the PTO does not make
`
`such findings as a matter of course in prosecution.” 522 F.3d at 1305.
`
`18
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`matter claimed in the ’466 patent and therefore anticipates all of the claims of the
`
`’466 patent.
`
`
`
`Meier-’299 states that “[u]pon determining that the viewer is not viewing the
`
`television content, various actions can be taken to conserve network resources.”
`
`Meier-’299, 2:4-6. Meier-’299 also states that “[t]hese actions may include
`
`providing instructions to the content provider to halt delivery of all or a portion of
`
`the television content or provide the television content at a reduced quality level to
`
`reduce the bandwidth needed for transporting the television content.” Meier-’299,
`
`2:7-11. Therefore, Meier-’299 discloses that any one of the described resource
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`conserving actions can be combined with the preceding steps or functions of the
`
`Meier-’299 invention that result in the determination that the viewer is not
`
`watching the television monitor. By adding the two wherein clauses to the claims
`
`copied from Meier-’299, the Applicant of the ’466 patent merely made a
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`combination that Meier-’299 explicitly says can be made—they combined one of
`
`those resource conserving actions with the preceding steps and functions disclosed
`
`by Meier-’299.
`
`i.
`The claim chart below demonstrates that Meier-’299 discloses claim 1. Ex.-
`
`Claim 1
`
`
`
`1013, ¶¶22-23.
`
`19
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`

`’466 Patent
`
`Meier-’299
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`[l-la] A method for conserving
`resources associated with packet
`television services comprising:
`
`[l-lb] receiving television content from
`a content