UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`
`Before the Honorable MaryJoan McNamara
`Administrative Law Judge
`
`In the Matter of
`
` Investigation No. 337-TA-1103
`
`CERTAIN DIGITAL VIDEO
`RECORDERS AND RELATED
`HARDWARE AND SOFTWARE
`COMPONENTS
`
`REBUTTAL EXPERT REPORT OF ALAN BOVIK, PH.D.
`REGARDING VALIDITY OF
`U.S. PATENT NOS. 7,779,011 AND 7,937,394
`
`DATED:
`
`Alan Bovik, Ph.D.
`
`4838-7244-3245
`
`
`
`i
`
`Comcast, Exhibit-1016
`
`

`

`I.
`
`INTRODUCTION
`
`1.
`
`Rovi Guides, Inc., Rovi Technologies, Corp., and Veveo, Inc. (“Rovi”) and its
`
`counsel have retained me as an expert in this case. In this report, I provide rebuttal to the Expert
`
`Report of Dr. John P. Kelly Regarding Invalidity of United States Patent Nos. 7,779,011;
`
`7,937,394; and 9,668,014. My rebuttal is only with respect to the ’011 and ’394 patents; another
`
`expert, Dr. Medisetti, shall provide separate rebuttal with respect to the ’014 patent in a separate
`
`rebuttal report.
`
`2.
`
`If called to testify at trial or a hearing in this case, I may use documents and/or
`
`other demonstrative materials to help me explain my opinions. I also may prepare and use
`
`graphics, photographs, video recordings, and other presentation aids to help me explain my
`
`opinions.
`
`3.
`
`I am being compensated at a rate of $500 per hour for my work on this matter.
`
`No part of my compensation is contingent on the outcome of this litigation. I have no financial
`
`interest in Rovi.
`
`4.
`
`This is the second report I have submitted in this investigation. My qualifications,
`
`background, and experience are described in my first report and attached Exhibits. I have been
`
`asked to review Dr. Kelly’s Report concerning the ’011 and ’394 patents. I have reviewed Dr.
`
`Kelly’s report and provide this report in rebuttal. Below I provide a summary of my opinions.
`
`Other opinions may be included as I address other aspects of Dr. Kelly’s Report. While Comcast
`
`has alleged that the certain asserted claims of the ’011 and ’394 patents are not drawn to
`
`patentable subject matter, I note that Dr. Kelly has not provided any opinions concerning 35
`
`U.S.C. §101.
`
`4838-7244-3245
`
`1
`
`
`
`

`

`King’s vocabulary module tree. They could not be combined, because King requires input of
`
`overloaded keys (both ambiguous and unambiguous), whereas after conversion to “potential”
`
`words in Verbeck, there are only alphabetic words, which are then searched against other
`
`alphabetic words in the database.
`
`2.
`
`Verbeck in combination with King and Payne
`
`229.
`
`Dr. Kelly provides his opinion at Paragraphs 211-216 and in Exhibit I at pages 1-
`
`28 that the combination of Verbeck in view of King and Payne render obvious claims 1-3, 9, and
`
`11 of the ’011 patent obvious under 35 U.S.C. § 103. I disagree.
`
`230.
`
`Dr. Kelly’s contentions with respect to the combination of Verbeck in view of
`
`King and Payne are identical to his contentions, discussed above, regarding Verbeck in view of
`
`King and Belfiore. The only difference is that Dr. Kelly relies on the Payne reference for the
`
`highlighting limitation rather than Belfiore. The substitution of Payne for Belfiore does not
`
`change my opinion, discussed above, that Dr. Kelly has not met his burden of proving by clear
`
`and convincing evidence that the combination of Verbeck with King and Payne renders the
`
`asserted claims obvious.
`
`IX.
`
`DR. KELLY HAS NOT MET HIS BURDEN OF PROVING THAT THE
`ASSERTED CLAIMS OF THE ’011 AND ’394 PATENTS LACK WRITTEN
`DESCRIPTION SUPPORT
`
`231.
`
`Dr. Kelly opines at Paras. 248-253 of his report that the asserted claims of the
`
`’011 and ’394 patents are invalid for violating the written description requirement of 35 U.S.C. §
`
`112 with respect to what he refers to as the “determining” limitations of the claims and the
`
`“highlighting” limitations, which refer to the “determining” limitations.
`
`232.
`
`The “determining” limitation in claims 1 and 9 of the ’011 patent is:
`
`for at least one subset of items, determine[ing] which letters and numbers
`present in the information associated with and describing the indexed items
`
`4838-7244-3245
`
`76
`
`
`
`

`

`of said subset caused said items to be associated with the strings of one or
`more unresolved keystrokes that are directly mapped to said subset
`
`233.
`
`The “determining” limitation in claim 1 of the ’394 patent is:
`
`for at least one subset of items, determining which letters and numbers
`present in the information associated with and describing the indexed items
`of the subset caused the items to be associated with the strings of one or
`more unresolved keystrokes that directly mapped to the subset;
`
`234.
`
`Dr. Kelly contends in Para. 250 that, what he refers to as the “one paragraph
`
`discussing indexing” in the ’011 patent, “does not suggest making a determination of which
`
`specific characters in the information describing an item caused the item to be associated with a
`
`specific ambiguous query string.” He further contends in Para. 251 that “[t]he purpose of the
`
`‘determining’ step is ‘highlighting the letters and numbers present in the one or more words in
`
`said information describing the identified items that were determined to have caused the
`
`displayed items to be associated with the strings of unresolved keystrokes’ as recited later in
`
`claims 1 and 9.” He then concludes in Para. 251 that none of the portions of the specification of
`
`the ’011 patent that he quotes “mention highlighting the specific characters in the search results
`
`that caused the item to be associated with the ambiguous query string.”
`
`235.
`
`Dr. Kelly further discusses the two provisional applications. As to the ’101
`
`provisional application, Dr. Kelly states in Para. 252 that the ’101 application “discusses a trie
`
`data structure as an index to search using ambiguous query strings” and that “Fig. 4 of this
`
`provisional illustrates a many-to-many mapping of terms to the numeric equivalents, which is
`
`done during the indexing phase for all terms that can be used to discover a result. Fig. 6 of this
`
`provisional illustrates the trie data structure which associates the ambiguous query strings with
`
`the search results.” According to Dr. Kelly, however, “there is no indication of determining
`
`which characters in the information describing the items that caused the search results to be
`
`associated with an ambiguous query string.” Further, according to Dr. Kelly, “[s]ince the ’101
`77
`
`
`
`4838-7244-3245
`
`

`

`provisional does not discuss highlighting, the provisional provides no motivation for such a
`
`determination.”
`
`236.
`
`At Para. 253, Dr. Kelly describes the ’866 provisional application as not
`
`discussing indexing items and therefore it “does not disclose a determination of the specific
`
`characters in the information describing the items that caused the search results to be associated
`
`with the ambiguous query string in the index.” Further, according to Dr. Kelly, although the
`
`’866 provisional discusses highlighting, “it merely states that the system highlights the prefix
`
`strings in the search results that match the search query.”
`
`237.
`
`Dr. Kelly states at Para. 248 that “[a]s also discussed in ¶ 83, the inventors did not
`
`identify any portions of the specification that allegedly support these amendments.” As I
`
`discussed above in Para. 45, Dr. Kelly is not correct—the patentees did in fact identify Fig. 6B
`
`and Paras. 35-38 of the specification as support for the “determining” and “highlighting” steps.
`
`Regardless, whether the patentees identified support for these steps in the specification during
`
`prosecution is not determinative of whether they met the written description requirement.
`
`238.
`
`The patentees added the “determining” limitation during prosecution to overcome
`
`a rejection based on the combination of Verbeck with Belfiore as discussed in the March 26,
`
`2010 Amendment and Remarks at 10-12.
`
`239.
`
`In making this amendment, the patentees explained that the determination is of
`
`the letters in the information which caused the items to be grouped in a particular subset that is
`
`directly mapped to a particular string of unresolved keystrokes:
`
`Claim 35 requires the determination of what letters and numbers in
`information describing particular items caused the items to be grouped in a
`particular subset that is directly mapped to a particular string of unresolved
`keystrokes. It is these letters and numbers that are later highlighted upon
`identification and display of the subset of items, not simply any letters and
`numbers that correspond to the unresolved keystrokes.
`
`4838-7244-3245
`
`78
`
`
`
`

`

`March 26, 2010 Amendment and Remarks, at 11.
`
`240.
`
`The patentees then used an example from the specification to explain the meaning
`
`of the “determining” step. In the example from the specification, if the user entered the
`
`unresolved overloaded keystrokes “866,” the system could return the item “Twelve Monkeys
`
`(1995),” meaning that, in the index, the name “Twelve Monkeys” was directly mapped to the
`
`keys “866.” As the patentees explained, “[t]he item ‘Twelve Monkeys (1995)’ was included in
`
`the subset mapped to ‘866’ because the first word ‘Twelve’ begins with a ‘T’, which corresponds
`
`to the ‘8’ entered by the user, and the second word ‘Monkeys” starts with ‘Mo’, which
`
`corresponds to the ‘66’ entered by the user. Thus, it is these specific letters that are highlighted
`
`in the item’s title in the subset of items.” (March 26, 2010 Amendment and Remarks, at 11).
`
`241.
`
`Therefore, as explained by the patentees, the fact that “Twelve Monkeys” is
`
`grouped with the subset of items associated with the string of unresolved overloaded keystrokes
`
`“866” because of the “T” in the word “Twelve” and the “Mo” in the word “Monkeys” is the
`
`determination that such letters caused “Twelve Monkeys” to be associated with the string of
`
`unresolved overloaded keys “866” and that determination is always present in the index.
`
`According to the patentees, this requirement, not disclosed in the prior art, “allows for great
`
`flexibility in what forms of input are accepted from a user (e.g., a single-word term, a multi-word
`
`term, an abbreviation, etc.) while maintaining the ability to illustrate to the user how the
`
`unresolved keystrokes entered match the information associated with the displayed items,”
`
`because “none of the cited references teach a determination of what letters and numbers in an
`
`item’s information correspond to the symbols associated with unresolved keystroke strings
`
`mapped to the subset, the combination set forth in the Office Action (Verbeck and Belfiore)
`
`would not achieve this result.”
`
`4838-7244-3245
`
`79
`
`
`
`

`

`242.
`
`The grouping of subsets of items in the index is described in the specification of
`
`the ’011 and ’394 patents in the context of the search. In the example of the specification, a user
`
`has initially input the unresolved overloaded key “8” which “matches all items in the search
`
`database containing any word which begins with any of the alphanumeric characters ‘8’, ‘T’, ‘U’
`
`or ‘V’.” (’011 patent, at 7:17-19). In other words, there are items in the index that are grouped
`
`together, because they contain any word which begins with any of the characters “8”, “T”, “U”
`
`or “V,” i.e., the system determined that there is a group or subset of items that are grouped
`
`together because they have a word which begins with any of the characters “8”, “T”, “U” or “V”.
`
`243.
`
`The specification further describes the determination of another group of items
`
`that are grouped together because they contain “words that begin with the alphanumeric
`
`characters ‘8’, ‘T’, ‘U’ or ‘V’ and whose second character is one of the alphanumeric characters
`
`‘6’, ‘M’, ‘N’ or ‘0’ or to items containing words that begin with the alphanumeric characters ‘8’,
`
`‘T’, ‘U’ or ‘V’ and that also contain subsequent words that begin with the alphanumeric
`
`characters ‘6’, ‘M’, ‘N’ or ‘0’.” (’011 patent, 17:24-30).
`
`244.
`
`The specification describes the determination of yet another group of items that
`
`are grouped together because they “contain the alphanumeric characters ‘6’, ‘M’, ‘N’ or ‘O’
`
`immediately following one of the matched characters for the first ‘6’ previously entered (“86”)
`
`or that contain subsequent words that begin with the alphanumeric characters ‘6’, ‘M’, ‘N’ or
`
`‘O’.” (’011 patent, 17:24-30).
`
`245.
`
`The patentees further described the highlighting in the context of the input search
`
`terms “8”, “86”, and “866” such that the characters in the search result that match the overloaded
`
`search query (which matched the overloaded keys from the index which determined the cause for
`
`the items to be grouped) are highlighted:
`
`4838-7244-3245
`
`80
`
`
`
`

`

`This relationship between the overloaded characters entered by the user and
`the match results is complicated and not necessarily intuitive to the user. In
`various embodiments of the invention, the characters in the search result
`that match the overloaded single-word search prefix characters are
`highlighted, providing the user with a visual indication of the relationship
`between the key pressed and the incremental match results. This facilitates
`identification by the user of the item of interest from the group of items
`displayed.
`
`(’011 patent, at 7:41-50).
`
`246.
`
`The above-described description of the determination of the groups of items in the
`
`index was included in the original specification in Paras. 36-37, which the patentees identified
`
`during prosecution in the March 26, 2010 Amendment and Remarks, at 11.
`
`247.
`
`Additional support for the “determining” step is found in the ’101 provisional
`
`application filed on September 12, 2005. Figure 6 shows a trie data structure. A trie structure is
`
`an ordered tree data structure that is used to store a dynamic set or associative array where the
`
`keys are usually strings. Sets of items are associated in nodes and the position of each node in the
`
`tree defines the key with which it is associated. All the descendants of a node have a common
`
`prefix of the string associated with that node.
`
`248.
`
`The patentees described the trie structure as having nodes, where “each node
`
`having numerical values form [sic] 0-9 are used (601, 604, 605). Each node has the top M
`
`records 602 in ‘in-memory’ storage.” ’101 provisional application at 18. The numerical values
`
`in each node are unresolved overloaded keystrokes and each numerical values and its associated
`
`letter(s) caused each object to be placed in the trie structure at that location.
`
`249.
`
`Accordingly, it is my opinion that the specification of the ’011 patent, including
`
`the ’101 provisional application provide adequate support for the “determining” and
`
`“highlighting” steps.
`
`4838-7244-3245
`
`81
`
`
`
`