`
`
`CustomPlay
`CustomPlay
`Exhibit 2021
`
`Exhibit 2021
`
`
`
`

`

`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________________
`
`AMAZON.COM, INC.
`Petitioner
`
`v.
`
`CUSTOMPLAY, LLC.
`Patent Owner
`
`______________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,124,950
`DECLARATION OF DR. CLIFFORD READER IN SUPPORT OF PATENT
`OWNER RESPONSE OF CUSTOMPLAY, LLC
`
`Declaration
`I declare that all statements made herein on my own knowledge are true and
`that all statements made on information and belief are believed to be true, and
`further, that these statements were made with the knowledge that willful false
`statements and the like so made are punishable by fine or imprisonment, or both,
`under Section 1001 of Title 18 of the United States Code. Executed this 14th day of
`June, 2019.
`
`By: ___________________________
`Clifford Reader, Ph.D.
`
`

`

`
`
`I.
`
`II.
`
`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`Contents
`
`Professional Background ................................................................................. 5
`
`Realtime Video and Ancillary Data Technologies ........................................10
`
`A. Analog Video ...................................................................................... 10
`
`B. Digital Video ....................................................................................... 11
`
`C. Digital Video Transmission ................................................................ 13
`
`D. Digital Video Streaming ...................................................................... 14
`
`III. Relevant Legal Standards ..............................................................................15
`
`IV. Person of Ordinary Skill in the Art ................................................................20
`
`V. Overview of the ’950 Patent ..........................................................................21
`
`VI. Prosecution History of the ’950 Patent ..........................................................26
`
`VII. Summary of Prior Art ....................................................................................26
`
`A.
`
`B.
`
`Rangan et al., U.S. Patent No. 6,154,771 (“Rangan”) ........................ 26
`
`Rakib et al., U.S. Publication No. 2009/0327894 A1 (“Rakib”) ........ 26
`
`C. Abecassis, U.S. Patent No. 6,038,367 (“Abecassis”) ......................... 26
`
`D. Armstrong, U.S. Publication No. 2007/0003223 (“Armstrong”) ....... 27
`
`E.
`
`Livesey, U.S. Publication No. 2008/0253739 A1 (“Livesey”) ........... 27
`
`VIII. Claim Construction ........................................................................................27
`
`IX. Overview of the Petition ................................................................................27
`
`X. Ground 1a - §103 (Rangan & POSITA) ........................................................29
`
`A.
`
`Claim 6 ................................................................................................ 29
`
`2
`
`

`

`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`
`
`1.
`
`2.
`
`3.
`
`4.
`
`retrieving, from a plurality of video frame identifiers, a video
`frame identifier that is responsive to a play location within a
`playing of a video; ............................................................................... 29
`
`displaying, responsive to the video frame identifier, an initial
`indication that information is available that is responsive to the
`play location; ....................................................................................... 33
`
`retrieving a subsequent video frame identifier that is responsive to
`a subsequent play location; ................................................................. 33
`
`displaying, responsive to the subsequent video frame identifier
`and contemporaneously with the displaying of the initial
`indication, a subsequent indication that information is available
`that is responsive to the subsequent play location; ............................. 33
`
`B.
`
`Claim 19 .............................................................................................. 34
`
`XI. Ground 1b - §103 (Rangan and Rakib) .........................................................34
`
`A.
`
`1.
`
`Claim 2 ................................................................................................ 34
`
`receiving a request for additional information relating to a
`displayed information; ......................................................................... 34
`
`B.
`
`Claims 14 and 16 ................................................................................. 35
`
`XII. Ground 1c – § 103 (Rangan, Rakib & Abecassis) – Claim 4 ........................36
`
`XIII. Ground 2a - §103 (Armstrong & Livesey) ....................................................37
`
`A.
`
`B.
`
`C.
`
`D.
`
`retrieving, from a plurality of video frame identifiers, a video
`frame identifier that is responsive to a play location within a
`playing of a video; ............................................................................... 37
`
`displaying, … an initial indication that information is available
`that is responsive to the play location… ............................................. 39
`
`retrieving a subsequent video frame identifier that is responsive to
`a subsequent play location; ................................................................. 39
`
`displaying, responsive to the subsequent video frame identifier
`and contemporaneously with the displaying of the initial
`
`3
`
`

`

`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`
`
`indication, a subsequent indication that information is available
`that is responsive to the subsequent play location; ............................. 39
`
`E.
`
`receiving, following the displaying of the subsequent indication, a
`request responsive to the initial indication, for information; and Error!
`Bookmark not defined.
`
`XIV. Ground 2b - § Claims 4 (Armstrong, Livesey and Abecassis) ......................40
`
`XV. Ground 3 - §103 (Rakib & Livesey) ..............................................................40
`
`A.
`
`B.
`
`Claim 6 ................................................................................................ 40
`
`Claims 14, 16, and 19 .......................................................................... 41
`
`XVI. Conclusion .....................................................................................................42
`
`
`
`
`
`
`4
`
`

`

`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`
`I, Dr. Clifford Reader, do hereby declare:
`
`1.
`
`I am making this declaration at the request of CUSTOMPLAY, INC.
`
`(“Custom Play”) in the matter of AMAZON.COM, INC., V. CUSTOMPLAY, LLC,
`
`IPR2018-01497 which is an inter partes review of U.S. Patent No. 9,124,950 (“the
`
`’950 patent”).
`
`2.
`
`I am being compensated for my work in this matter and I am being
`
`reimbursed at cost for my expenses. My compensation in no way depends on the
`
`outcome of this proceeding or the content of my testimony.
`
`3.
`
`In preparing this Declaration, I considered information regarding the
`
`’950 patent, the prosecution history of the ’950 patent, Petitioner’s Petition for Inter
`
`Partes Review (“Petition”), Declaration of Alan C. Bovik (“Bovik Declaration”),
`
`including the references cited therein, Patent Owner’s Preliminary Response to the
`
`Petition, and the Decision Instituting Inter Partes Review.
`
`4.
`
`I have additionally considered my applicable experience and personal
`
`knowledge.
`
`I.
`
`
`
`Professional Background
`
`5.
`
`Information concerning my professional qualifications, experience, and
`
`publications, and the matters in which I have served as an expert, are set forth in my
`
`current curriculum vitae, attached as Exhibit 2022.
`
`5
`
`

`

`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`
`
`6.
`
`I received my Bachelors of Engineering degree with Honors in 1970
`
`from the University of Liverpool, England. I received my Doctoral degree in 1974
`
`from University of Sussex, England. My Ph.D. thesis was on “Orthogonal
`
`Transform Coding of Still and Moving Pictures.” The research for my thesis was
`
`performed in residence at the Image Processing Institute, University of Southern
`
`California, Los Angeles. From 1970 to 1973, I performed my graduate research in
`
`video compression. I was one of the first to perform a type of image coding (adaptive
`
`block transform coding) and the first to apply this type of coding to video. This is
`
`described in my thesis and summarized in a Society of Photo Optical Instrumentation
`
`Engineers (“SPIE”) paper. (Ex. 2022: Reader C., Intraframe and Interframe
`
`Adaptive Transform Coding, SPIE Vol. 66, 1975). These techniques underlie the
`
`audiovisual coding standards known as “MPEG” (Motion Picture Experts Group),
`
`and virtually all other video compression schemes today.
`
`7.
`
`For the first eight years of my career, I worked in the field of digital
`
`imaging in the aerospace industry. For example, at Ford Aerospace and ESL/TRW
`
`I worked on reconnaissance imaging systems, battlefield management systems and
`
`video guidance systems for autonomous flight vehicles.
`
`8.
`
` During the 1980s, I worked on digital imaging and video systems for
`
`military, medical and earth resources management systems. I led teams of engineers
`
`6
`
`

`

`
`designing and building realtime processing and display systems at startup
`
`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`companies, and Sun Microsystems.
`
`9.
`
`In 1990, Cypress Semiconductor hired me to define and lead a new
`
`project in the nascent consumer digital video market. I began developing a
`
`semiconductor chip to implement a decoder for the emerging MPEG-1 standard.
`
`This work included writing a software implementation of a complete MPEG-1
`
`encoder and decoder. Subsequently, I worked on a similar project for the MPEG-2
`
`standard at Samsung Semiconductor.
`
`10. Beginning in 1990, I participated in and contributed to the ISO MPEG
`
`standards development. I was Editor in Chief of the MPEG-1 standard and
`
`personally reviewed and edited all three parts of the standard in detail including
`
`writing much of the informative annex for the MPEG-1 video standard.
`
`11.
`
`I also chaired the implementation subcommittee that analyzed MPEG-
`
`1 Audio (aka MUSICAM), Dolby AC3, and other proposed algorithms for potential
`
`implementation.
`
`12.
`
`I was a co-founder of the MPEG-4 standard and chaired the
`
`subcommittee from inception for 2½ years. I led a group that established many of
`
`the fundamental principles of the MPEG-4 standard, including object-based coding,
`
`software-based implementation, and development of the bitstream as a syntactic
`
`language.
`
`7
`
`

`

`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`
`
`13.
`
`In 1992 to 1993, I was hired by CableLabs to be the technical expert
`
`for establishing the MPEG Patent Pool (now MPEG-LA). In the course of creating
`
`a list of essential intellectual property to practice the standard, I reviewed
`
`approximately ten thousand abstracts and one thousand patents. This is documented
`
`in a chapter of the book on MPEG2, “MPEG Video Compression Standard” edited
`
`by Mitchell, et al. (Ex. 2022).
`
`14.
`
`In the mid-late 1990s, I worked for Samsung Semiconductor, on the
`
`development of MPEG2 chips and a DVD authoring system employing realtime
`
`MPEG2 encoding and decoding. At the end of the 1990s, I joined a start-up company
`
`that developed a chip for deinterlacing standard video for display on a progressive
`
`scan monitor or TV.
`
`15.
`
`In 1998-1999 I assembled and sold a low-cost DVD authoring system
`
`product. It was the world’s first DVD authoring system on the PC, and comprised a
`
`plug-in card with an MPEG2 video encoder and a Dolby AC3 audio encoder, which
`
`I integrated with a Daikin’s Scenarist DVD authoring software package. The plug-
`
`in card comprised a single-chip MPEG2 video encoder from IBM, DRAM frame
`
`buffer storage and ancillary parts.
`
`16. My work on standards continued in the 2000s in the development of the
`
`H.264 standard, also known as MPEG4 Part 10. I participate in the standards
`
`8
`
`

`

`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`
`meetings as an invited expert, and was hired by ten companies1 to research and
`
`document the IPR potentially related to the emerging standard. I surveyed hundreds
`
`of patents related to video coding, surveyed all the contributions to the standards
`
`committees that led to the H.264 standard, drafted a history of the development of
`
`digital video coding technology (see JVT-E066 2) and provided reports on both
`
`technology and patents to my clients.
`
`17. My work on standards continues to this day. Since 2002 I have been an
`
`officer of the Audio Video Standards of China (AVS) working group, chairing the
`
`IPR subgroup. I led the effort to develop a sound legal foundation for the AVS IPR
`
`policy, and founded a patent pool for AVS essential patent licensing. I drafted and
`
`led the negotiations for the licensor and licensee agreements and co-chair that patent
`
`pool today. For the past five years, I have performed a set of tasks for the H.265
`
`standard similar to the surveys of technical contributions and related patents that I
`
`performed for the H.264 standard. For the past three years I have been involved in
`
`the development of the Alliance for Open Media’s AV1 standard, reviewing
`
`technical contributions and surveying related IPR.
`
`18.
`
`I am currently a video consultant providing technical and business
`
`development consulting services in the areas of imaging and video, including
`
`
`1 See my CV for Consulting History in 2002 (Ex. 2022).
`2 JVT-E066, “History of MPEG Video Compression”, Oct. 2002. (Ex. 2022).
`
`9
`
`

`

`
`consumer video, real-time processing and display, image and video compression,
`
`imaging/video systems architecture, and imaging/video chip architecture. I have
`
`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`worked in this capacity since 2001.
`
`II. Realtime Video and Ancillary Data Technologies
`
`19. Below I describe the state of realtime video and ancillary data delivery
`
`as of the ’950 patent’s filing date, and summarize the development of technologies
`
`underlying the features and methods recited in claims 2, 4, 6, 14, 16 and 19.
`
`A. Analog Video
`
`20. All-electronic television3 was invented by Philo Farnsworth in the late
`
`1920s. Farnsworth developed the technique of raster scanning images and produced
`
`cameras and CRTs (cathode ray tubes) that could synchronously acquire and
`
`reproduce moving images.
`
`21.
`
` All-electronic television service was introduced by the BBC in
`
`England in November 1936. Broadcasting of television programs continued until
`
`interrupted by the Second World War. Television service began in the U.S. in July
`
`1941. These services provided only black-and-white video until 1953, when the
`
`NTSC standard in the U.S. was revised to include color. Analog broadcasting
`
`
`3 Electro-mechanical television systems were also introduced.
`
`10
`
`

`

`
`continued in the U.S. for almost seventy years. Full-power analog television
`
`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`broadcasting ceased in 2009 under order from the FCC.
`
`22.
`
`In the analog era, the end-to-end operation of the realtime video
`
`delivery system was rigorously synchronous. This was specified in the standards for
`
`the NTSC broadcast network system, and enforced by US government law. Notably,
`
`all transmissions operated at 29.97 frames/s and all television receivers sold in the
`
`US were mandated to receive such transmission and display video at a rate of 29.97
`
`frames/s. The format of the analog signal had sync pulses embedded into it, thus all
`
`television receivers “locked onto” such sync pulses and were guaranteed to provide
`
`the mandated hard realtime display of video data.
`
`23. Audio data was carried in the same transmission as the video, thereby
`
`guaranteeing lip-sync with the corresponding video. When closed captions were
`
`introduced – and made mandatory by the government – the digital closed caption
`
`signals were also embedded
`
`into
`
`the video data,
`
`thereby guaranteeing
`
`synchronization.
`
`B. Digital Video
`
`24. Digitization of analog signals was introduced in the late 1940s with the
`
`name “pulse code modulation” (PCM). Essentially, sampling theory showed that a
`
`bandwidth-limited analog signal could be sampled at twice the rate of the highest
`
`frequency in the band, and still be perfectly reconstructed from such samples. The
`
`11
`
`

`

`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`
`sample amplitudes could be represented by the value of a number, e.g., a decimal
`
`value or a binary value. In the case of image or video data, it has been widespread
`
`practice to represent this value by an unsigned 8-bit integer. Analog TV signals that
`
`scanned a video frame were digitized into two-dimensional arrays of digital picture
`
`elements, known as “pels” or “pixels.” PCM was followed in 1952 by the invention
`
`at Bell Labs. of differential pulse code modulation, (DPCM), which was
`
`immediately applied to video. Because the correlation between pixels in typical
`
`scenes was high, it was efficient to code the pixels by successively predicting each
`
`pixel from the preceding pixel or pixels. AT&T demonstrated its Picturephone in
`
`1964 at the World’s Fair. Subsequently, commercial Picturephone service was
`
`introduced in 1970, using DPCM coding.
`
`25. Digital video was introduced in the professional television studio
`
`environment with the CCIR 601 standard that was developed in the early 1980s and
`
`published in 1982 (now known as the ITU-R BT.601 standard). The standard
`
`covered PCM data formats for the NTSC and PAL video standards and facilitated
`
`the development of modern production and post-production studios, involving non-
`
`linear editing, digital switchers, and mixers, as well as digital special effects.
`
`26.
`
`In the studios and post-production facilities it was necessary to devise
`
`a mechanism for synchronizing video (and corresponding audio) while the editing
`
`and mixing processes were being conducted. The industry developed a standard for
`
`12
`
`

`

`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`
`a timecode – called the SMPTE timecode (after the Society of Motion Picture and
`
`Television Engineers) – that was embedded in the digital data to facilitate “gen-
`
`locking” diverse pieces of studio equipment to each other. But when the finished
`
`product was distributed to consumers, the timecode was not needed because the
`
`legacy synchronous networks were still in place with guaranteed synchronization.
`
`C. Digital Video Transmission
`
`27.
`
` The international standards bodies began developing standards for
`
`digital video transmission in the 1980s. A coded video digital bitstream is not
`
`amenable to embedding fixed-period sync pulses like the legacy analog system so a
`
`new synchronization method was devised. The ISO/IEC MPEG committee
`
`developed the MPEG Systems standard in 1990 to provide a functional equivalent
`
`to the synchronous periodic analog synchronization system. In this timeframe, video
`
`was still transmitted over dedicated, fixed-bandwidth channels. Standards were also
`
`developed to provide synchronous transmission of closed caption data in the new
`
`digital video environment.
`
`28. The MPEG standards are generic standards, capable of supporting a
`
`wide range of applications and operational environments. Therefore, MPEG
`
`designed tools to facilitate application-specific deployments. For carriage of
`
`ancillary data, the MPEG Systems standard provided two facilities – the ability to
`
`carry synchronous data that would be locked to the same sync as the video and audio,
`
`13
`
`

`

`
`and the ability to carry data that was not subjected to the rigorous timing of the video
`
`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`and audio streams. See Ex.2024
`
`29.
`
`It is important to consider the nature of ancillary data that might be
`
`transmitted with video and audio data. As noted above, closed caption data must be
`
`rigorously synchronized with the video data in order to be meaningful. In fact, it
`
`must be synchronized like the audio data it supplements. The key point is it
`
`dynamically changes constantly. Another class of data includes for example program
`
`guides. Such data is dynamic in that it is updated – perhaps frequently – and it must
`
`be accurate, but it isn’t changing continuously with the video data. It is common
`
`practice to refresh this data at regular periods – such as every 400ms. The data may
`
`not change that often, but there is imperceptible lag when it does change. A third
`
`class of data is the type of data relevant to the ’950 patent. In this case, the data itself
`
`is not dynamic – Thus, what does change during a movie is the relevance of the
`
`various objects in each scene in the movie. The ’950 patent teaches how to provide
`
`an indication such data is available, then economically provide dynamic access to
`
`such static data when the user requests it.
`
`D. Digital Video Streaming
`
`30. The video delivery environment that existed for 60 years, in which
`
`dedicated channels with fixed bandwidth and rigorous synchronized operation were
`
`allocated to broadcasters began to change in the late 1990s with the arrival of Internet
`
`14
`
`

`

`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`
`video. Now the channel became shared, bandwidth was not allocated and indeed
`
`fluctuates perhaps significantly. This is the environment that the ’950 patent
`
`provides a solution for. It is also the environment in which Amazon operates.
`
`III. Relevant Legal Standards
`
`31. Counsel for Patent Owner have explained certain legal principles to me
`
`that I have relied upon in forming my opinions set forth in this Declaration.
`
`32.
`
`I have been asked to provide my opinions addressing the validity of
`
`claims 2, 4, 6, 14, 16 and 19 (the “Challenged Claims”) of the ’950 patent.
`
`33.
`
`I am an engineer by training and profession. The opinions I express in
`
`this declaration involve the application of my technical knowledge and experience
`
`to the evaluation of certain prior art with respect to the ’950 patent. In addition, I
`
`understand that the following legal principles apply.
`
`34.
`
`It is my understanding that, in determining whether claims of the ’950
`
`patent are anticipated or obvious in this proceeding, the claim terms are generally
`
`given their ordinary and customary meaning as understood by a person of ordinary
`
`skill in the relevant art. A person of ordinary skill in the art would read the claim
`
`terms in the context of the entire patent specification in which they appear, as well
`
`as the prosecution history of the patent.
`
`35.
`
`I have been informed that a reference qualifies as prior art under the
`
`applicable provisions of the patent statute if it is a patent issued or a printed
`
`15
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`

`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`
`publication published in the United States or a foreign country on a date prior to the
`
`invention by the patentees. I also understand that a reference qualifies as prior art if
`
`it is a patent issued or a printed publication published in the United States or a foreign
`
`country on a date more than one year prior to the effective date of the application for
`
`patent in the United States.
`
`36.
`
`It is my understanding that a claim is anticipated under 35 U.S.C. § 102
`
`if each and every element and limitation of the claim is found, either expressly or
`
`inherently, in a single prior art reference. I also understand that simple disclosure is
`
`not enough and that a reference must disclose all claimed elements and limitations
`
`as arranged in the claim, although identical terminology need not be used in the
`
`reference and claim elements. Absence from an allegedly anticipating prior art
`
`reference of any claimed element negates anticipation.
`
`37.
`
`It is my understanding that a claim is unpatentable under 35 U.S.C.
`
`§ 103 if the claimed subject matter as a whole would have been obvious to a person
`
`of ordinary skill in the art at the time of the alleged invention. I also understand that
`
`an obviousness analysis takes into account a number of factors, including: 1) the
`
`scope and content of the prior art, 2) the differences between the claimed subject
`
`matter and the prior art, 3) the level of ordinary skill in the art at the time of the
`
`invention, and 4) secondary considerations or objective evidence of non-
`
`16
`
`

`

`
`obviousness, including but not limited to commercial success, long-felt need for the
`
`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`invention, and failure of others.
`
`38.
`
`In determining the scope and content of the prior art, it is my
`
`understanding that a reference is considered relevant prior art if it falls within the
`
`field of the inventor’s endeavor. In addition, a reference is prior art if it is reasonably
`
`pertinent to the particular problem with which the inventor was involved. A
`
`reference is reasonably pertinent if it logically would have commended itself to an
`
`inventor’s attention in considering his problem. If a reference relates to the same
`
`problem as the claimed invention, that supports use of the reference as prior art in
`
`an obviousness analysis.
`
`39. To assess the differences between prior art and the claimed subject
`
`matter, it is my understanding that 35 U.S.C. § 103 requires the claimed invention
`
`to be considered as a whole. This “as a whole” assessment involves showing that
`
`one of ordinary skill in the art at the time of invention, confronted by the same
`
`problems as the inventor and with no knowledge of the claimed invention, would
`
`have selected the elements from the prior art and combined them in the claimed
`
`manner.
`
`40.
`
`I further understand that a claim is not proved obvious merely by
`
`demonstrating that each of the elements was independently known in the prior art.
`
`Rather, it remains important to identify a reason that would have prompted a person
`
`17
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`

`U.S. Patent No. 9,124,950
`Declaration of Clifford Reader
`
`
`of ordinary skill in the relevant field to combine the elements in the way the claimed
`
`new invention does. Obviousness cannot be based on the hindsight combination of
`
`components selectively culled from the prior art to fit the parameters of the patented
`
`invention.
`
`41.
`
`It is my further understanding that several rationales may be applied for
`
`combining references or modifying a reference to show obviousness of claimed
`
`subject matter. These rationales include: combining prior art elements according to
`
`known methods to yield predictable results; simple substitution of one known
`
`element for another to obtain predictable results; a predictable use of prior art
`
`elements according to their established functions; applying a known technique to a
`
`known device (method or product) ready for improvement to yield predictable
`
`results; choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and some teaching, suggestion, or motivation in
`
`the prior art that would have led one of ordinary skill to modify a prior art reference
`
`or to combine prior art teachings to arrive at the claimed invention.
`
`42.
`
`I understand that a claim would have been obvious if all the claimed
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`elements were known in the prior art, and one of ordinary skill in the art could have
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`combined the elements as claimed by known methods with no change in their
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`respective functions, yielding nothing more than predictable results. I further
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`understand that the mere description of all claimed limitations in the prior art is not
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`by itself sufficient to establish obviousness.
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`43.
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`I understand that if a prior art reference must be modified to support a
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`proposed combination of references, and if such modification would render the prior
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`art reference unsatisfactory for its intended purpose, or change the principle of
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`operation of the reference, this makes it more likely that a claim was not obvious.
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`Accordingly, obviousness based on a single non-anticipatory reference (i.e., a
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`reference in which elements of the claimed invention are absent) is especially
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`problematic.
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`44.
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`I have also been informed that in determining whether an invention is
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`obvious, the claimed invention must be considered as a whole; the references must
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`be considered as a whole (including portions that would lead away from the claimed
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`invention); and the references must be viewed without the benefit of impermissible
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`hindsight afforded by the patent. A finding of obviousness would not ordinarily be
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`warranted where the proposed modification of the prior art would change the
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`principle of operation of the prior art being modified.
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`45.
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`I understand that additional relevant considerations include whether the
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`prior art references disclose some suggestion or motivation to combine them;
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`whether there is a reasonable expectation of success; and objective evidence or
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`secondary considerations such as unexpected results, commercial success, long-felt
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`need, failure of others, copying by others, licensing, and skepticism of experts.
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`46.
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`I understand that disclosure of a prior art reference must be compared
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`to the properly construed patent claims. In construing the meaning of the terms of
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`the claims at issue in this case, I have used the ordinary meaning that the term would
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`have had to a person of ordinary skill in the art in view of the ’950 patent with its
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`priority filing date in mind, and in light of its specification and prosecution history.
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`47.
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`I understand that, in an Inter Partes Review proceeding, claim terms
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`are to be given the broadest reasonable construction in light of the specification and
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`teachings of the patent, as they would be understood by a person of ordinary skill in
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`the relevant art.
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`48.
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`I have also been informed that each claim of a patent stands on its own
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`and one or more claims of a patent may be valid, even if other claims of the same
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`patent are deemed to be invalid.
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`49.
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`I have been informed that in an inter partes review, the person or entity
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`attempting to prove that a claim of a patent is unpatentable must do so by a
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`preponderance of the evidence.
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`IV. Person of Ordinary Skill in the Art
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`50.
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`It is my understanding that when interpreting the claims of the ’950
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`patent I must do so based on the perspective of one of ordinary skill in the art at the
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`relevant priority date. My understanding is that the earliest claimed priority date of
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`the ’950 patent is March 26, 2012.
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`51.
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`It is my belief that the hypothetical person of ordinary skill in the
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`relevant art of the Asserted Patents at that time would have had a bachelor’s degree
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`in Electrical Engineering or Computer Science. The hypothetical person of ordinary
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`skill in the art would also have at least three years’ experience in the design of real-
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`time digital video systems for consumer applications.
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`52.
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`I am a person of at least ordinary skill in the art and was so at the time
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`of the invention of the ’950 patent.
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`V. Overview of the ’950 Patent
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`53. The ’950 patent teaches, among other things, a feature “to provide,
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`during a playing of a video, an indication that item information is available for an
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`item being currently depicted within the video.” (Ex. 1001 2:13-16.) The ’950 patent
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`refers to this as the “autoactive” systems and methodologies. (Id. 2:4-5.) Indeed, “a
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`primary element of the ‘autoactive’ systems and methodologies … is the synergistic
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`integration of a map of the content of the video with the playing of the video to
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`satisfy real-time information interests of a user and to deliver a more informed and
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`entertaining video viewing experience.” (Id. 2:3-8.)
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`54. Of the 20 total claims recited in the ’950 patent, I offer opinion on
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`claims 2, 4, 6, 14, 16 and 19 of which all but claim 4 are independent. The claims of
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`U.S. Patent No. 9,124,950
`Declaration of