Case IPR2019-01015
`Patent No. 8,799,468
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`DISH NETWORK L.L.C.,
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`Petitioner
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`vs.
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`MULTIMEDIA CONTENT MANAGEMENT LLC
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`Patent Owner
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`_______________
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`
`Case IPR2019-01015
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`U.S. Patent No. 8,799,468
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`_______________
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`
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`DECLARATION OF DR. EDWIN A. HERNANDEZ-MONDRAGON
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`MCM, Ex. 2001, pg. 1
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`

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`Case IPR2019-01015
`Patent No. 8,799,468
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 4 
`I. 
`QUALIFICATIONS ........................................................................................ 8 
`II. 
`III.  LEGAL UNDERSTANDING ....................................................................... 11 
`Level of Ordinary Skill in the Art ................................................................. 12 
`Anticipation ................................................................................................... 13 
`Inherency ....................................................................................................... 13 
`Obviousness ................................................................................................... 14 
`IV.  SUMMARY OF OPINION ........................................................................... 19 
`V. 
`PERSON OF ORDINARY SKILL IN THE ART ........................................ 21 
`VI.  OVERVIEW OF THE ’468 PATENT .......................................................... 21 
`VII.  CLAIM CONSTRUCTION .......................................................................... 22 
`A. 
`“to generate[ing …] controller instructions” ....................................... 23 
`B. 
`“selectively transmit[ting, by the plurality of gateway units,] the
`content requests to the service provider network in accordance with
`the controller instructions” .................................................................. 24 
`“controller node” ................................................................................. 25 
`C. 
`“service provider network” ................................................................. 25 
`D. 
`“gateway units” ................................................................................... 26 
`E. 
`“network elements” ............................................................................. 26 
`F. 
`VIII.  PATENTABILITY ANALYSIS—CHALLENGED CLAIMS .................... 26 
`1. 
`Hoang ’980 Does not Disclose or Fairly Suggest Generating
`Controller Instructions ......................................................................... 28 
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`MCM, Ex. 2001, pg. 2
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`Case IPR2019-01015
`Patent No. 8,799,468
`2. 
`Hoang ’980 Does not Disclose or Fairly Suggest the “selectively
`transmit[ting]” element and Petitioner’s Combination of
`Unidirectional and Bi-directional Disclosures is Flawed ................... 32 
`IX.  CONCLUSION .............................................................................................. 49 
`X. 
`CERTIFICATION ......................................................................................... 50 
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`MCM, Ex. 2001, pg. 3
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`

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`Case IPR2019-01015
`Patent No. 8,799,468
`I.
`INTRODUCTION
`[01] My name is Dr. Edwin A. Hernandez-Mondragon. I understand that I am
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`submitting a declaration for Multimedia Content Management LLC (“MCM”). I am
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`offering technical opinions in connection with the Inter Partes Review (“IPR”)
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`proceeding in the United States Patent and Trademark Office for U.S. Patent No.
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`8,799,468 (“the ’468 Patent”). I have reviewed the references listed in Petitioner’s
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`Exhibit List. I make this declaration based on my personal knowledge, experience,
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`and any noted research. I am over the age of 21 and am competent to make this
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`declaration.
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`[02] The statements herein include my opinions and the bases for those opinions.
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`These relate to at least the following documents and references of the pending IPR
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`Petition, which I have reviewed and considered:
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`
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`
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`U.S. Patent No. 8,799,468 (Ex. 1001)
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`U.S. Patent No. 9,465,925 (Ex. 1002)
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`Prosecution History of Application No. 13/369,174, resulting in U.S.
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`Patent No. 8,799,468 (Ex. 1003)
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`Prosecution History of Application No. 14/338,240, resulting in U.S.
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`Patent No. 9,465,925 (Ex. 1005)
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`MCM, Ex. 2001, pg. 4
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`Case IPR2019-01015
`Patent No. 8,799,468
`
`Prosecution History of Application No. 10/989,023, resulting in U.S.
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`Patent No. 8,122,128 (Ex. 1004)
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`Declaration of Anthony Wechselberger (Ex. 1006)
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`Curriculum Vitae of Anthony Wechselberger (Ex. 1007)
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`U.S. Published Application No. 2002/0049980 by Hoang (“Hoang
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`’980”) (Ex. 1008)
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`U.S. Patent No. 7,725,267 by Hoang (“Hoang ’267”) (Ex. 1009)
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`U.S. Published Application No. 2003/0208561 to Hoang (“Hoang
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`’561”) (Ex. 1010)
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`Michael Adams, OpenCableTM Architecture (2000) (“OpenCable”)
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`(Ex. 1011)
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`Canadian Patent 2,321,462 to Cameron (“Cameron”) (Ex. 1013)
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`U.S. Published Application No. 2002/0162109 to Shteyn (“Shteyn”)
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`(Ex. 1014)
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`U.S. Patent No. 5,945,503 by Venkatesh (“Venkatesh”) (Ex. 1015)
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`MCM, Ex. 2001, pg. 5
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`

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`Case IPR2019-01015
`Patent No. 8,799,468
`
`Unified Patents, Inc. v. Multimedia Content Management LLC,
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`IPR2017-01934, Paper 9, Patent Owner Preliminary Response (PTAB
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`Dec. 14, 2017) (Ex. 1016)
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`
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`
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`
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`Excerpts from Newton’s Telecom Dictionary (15th Edition 1999)
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`(Ex. 1017)
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`Unified Patents, Inc. v. Multimedia Content Management LLC,
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`IPR2017-01934, Paper 10 (Institution decision) (PTAB Mar. 5, 2018)
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`(Ex. 1018)
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`Unified Patents, Inc. v. Multimedia Content Management LLC,
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`IPR2017-01934, Paper 1 (Petition) (PTAB Aug. 11, 2017) (Ex. 2002)
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`Excerpts from Microsoft Press Computer Dictionary (3rd Edition 1997)
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`(Ex. 1019)
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`U.S. Published Application No. 2003/0172375 to Coffin III (“Coffin”)
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`(Ex. 1022)
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`Declaration of Anthony J. Wechselberger In Support of Defendant’s
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`Opening Claim Construction Brief (Ex. 1030)
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`MCM, Ex. 2001, pg. 6
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`

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`Case IPR2019-01015
`Patent No. 8,799,468
`
`Markman Order issued June 17, 2019 in Multimedia Content
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`Management LLC v. DISH Network L.L.C., Case No. 6:18-cv-00207-
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`ADA (W.D. Tx), Docket No. 81 (Ex. 2003)
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`
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`Information Technology – Generic coding of moving pictures and
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`associated audio information: Systems, ISO/IEC 13818-1:2000(E), 2nd
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`Edition, December 1, 2012 (Ex. 2004).
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`
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`Digital Video Broadcasting (DVB); DVB interaction channel for Cable
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`TV distribution systems (CATV), ETSI ES 200 800, version 1.3.1,
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`October 2001 (Ex. 2005).
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`[03] I am being compensated for my work on this matter at my normal and regular
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`hourly rate for this type of consulting activity. The opinions herein are my own, and
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`I have no stake in the outcome of the IPR or any related proceedings. My
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`compensation does not depend in any way on the outcome of the Petitioner’s petition
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`or any other proceeding.
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`[04] To the best of my knowledge, I have no financial interest in Patent Owner. To
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`the best of my knowledge, I have no financial interest in Petitioner. To the best of
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`my knowledge, I have no financial interest in the ’468 Patent. To the extent any
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`mutual funds or other investments I own have a financial interest in the Patent Owner
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`MCM, Ex. 2001, pg. 7
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`Case IPR2019-01015
`Patent No. 8,799,468
`or the ’468 Patent, I am not aware of, nor do I have control over, any financial interest
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`that would affect or bias my judgment.
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`II. QUALIFICATIONS
`[05] I received a B.S. from Costa Rica Institute of Technology in computer
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`engineering, a M.S. from the University of Florida with an emphasis in electrical
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`and computer engineering, and a Ph.D. from the University of Florida with an
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`emphasis on computer engineering. A copy of my curriculum vitae, which includes
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`a more detailed summary of my background, experience, patents, and publications,
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`is attached as Appendix A.
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`[06] I have been retained as an independent expert consultant in the fields of cable
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`television systems and broadcasting, multimedia streaming, mobile devices and
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`systems, air-interface and Long-Term Evolution (LTE), cloud storage and data
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`synchronization, wireless communications, block-chain
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`technology, power
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`management, personal area networking, and smart phones and wireless embedded
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`software development.
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`[07] I founded COMPUNET in 1997 and was its lead engineer from 1997 to 2009.
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`While at COMPUNET, I was a lead developer for authentication services, security
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`services, web services, and networking configuration services.
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`
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`MCM, Ex. 2001, pg. 8
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`Case IPR2019-01015
`Patent No. 8,799,468
`[08] I worked for Microsoft from 2001 to 2003 as a Technical Program Manager.
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`In that position, I was responsible for driving architecture, design, test automation,
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`and security analysis for Bluetooth Personal Area Networking (PAN). I also drove
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`testing over networking protocols, such as IPv4 networks and IPv6 networks.
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`[09] I worked for Motorola, Inc. from 2003 to 2010 as a Principal Staff Software
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`Engineer. In that position, I was responsible for application development for Google
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`and Android platforms. I participated in kernel-level prototyping, data support, and
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`digital rights management (DRM).
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`[10] Starting in 2010, I founded EGLA Communications. There, I created MEVIA
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`applications, such as Clout to Cable. MEVIA is a “software-as-a service” and a
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`cloud-based platform that enables “MEVIA Music,” which is currently in operation
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`in several countries including Brazil, Honduras, and the United States. Cloud to
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`Cable is a patented platform that merges cloud and cable television systems and
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`simplifies music and video distribution to different platforms. Cloud to Cable is
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`servicing operators, such as CABLE COLOR in Honduras.
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`[11] As part of my experience in EGLA, I have worked for cable TV systems in
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`multiple operators: CABLEVISION Mexico, Axtel TV, CLARO, Direct TV, SKY
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`Brazil, and many others. Hence, my technical experience and training covers cable
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`TV systems, STBs, video-on-demand (VOD) systems, and several broadcasting
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`methodologies.
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`MCM, Ex. 2001, pg. 9
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`Case IPR2019-01015
`Patent No. 8,799,468
`[12] Additionally, over my career, my research has involved aspects of network
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`security, wireless communications, network and communications reliability,
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`artificial intelligence, multimedia streaming, and software engineering.
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`[13] I am a named inventor on eleven patents issued by the United States Patent
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`and Trademark Office, including the following:
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`
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`U.S. Patent No. 7,564,810 – Method and System for Managing Power
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`Consumption of a Network Interface Module in a Wireless Computing
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`Device
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`
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`
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`
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`U.S. Patent No. 7,231,330 – Rapid Mobility Network Emulator Method
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`and System
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`U.S. Patent No. 7,697,508 – System, Apparatus, and Method for
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`Proactive Allocation of Wireless Communication Resources
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`U.S. Patent No. 8,213,417 – System, Apparatus, and Method for
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`Proactive Allocation of Wireless Communication Resources
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`U.S. Patent No. 7,269,388 – Bluetooth PAN Driver
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`U.S. Patent No. 8,788,715 – Rules-based Network Selection Across
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`Multiple Media
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`MCM, Ex. 2001, pg. 10
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`Case IPR2019-01015
`Patent No. 8,799,468
`
`U.S. Patent No. 7,996,505 – Rules-based Network Selection Across
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`Multiple Media
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`
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`
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`
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`
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`U.S. Patent No. 8,024,487 – Smart Scan for Bluetooth PAN Services
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`U.S. Patent No. 8,707,337 – Java-based Push to Talk
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`U.S. Patent No. 7,331,793 – Magnetic Connector
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`U.S. Patent No. 10,123,074 – Method, System, and Apparatus for
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`Multimedia Content Delivery to Cable TV and Satellite Operators
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`[14] I am not an attorney and offer no legal opinions, but in my work, I have had
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`experience studying and analyzing patents and patent claims from the perspective of
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`a person skilled in the art.
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`III. LEGAL UNDERSTANDING
`[15] My understanding of the law regarding patent validity is based on my prior
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`work on various patent related matters and other identified information. In
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`formulating my opinions and conclusions in this case, I have been provided with an
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`understanding of the prevailing principles of U.S. patent law that govern the issues
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`of patent claim interpretation and validity based upon obviousness and anticipation.
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`I have applied these principles in analyzing the allegations of invalidity of the claims
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`presented in the IPR Petition and in forming my opinions.
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`MCM, Ex. 2001, pg. 11
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`Case IPR2019-01015
`Patent No. 8,799,468
`[16] I understand that it is a basic principle of patent law that assessing the validity
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`of a patent claim involves a two-step analysis. In the first step, the claim language
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`must be properly construed to determine its scope and meaning. In the second step,
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`the claim as properly construed must be compared to the alleged prior art to
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`determine whether the claim is valid.
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`[17] As explained herein, my analysis of the validity of the ’468 Patent will be
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`undertaken from the perspective of what would have been known or understood by
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`one of ordinary skill in the art of that patent when the inventors thereof conceived of
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`and reduced the claimed inventions to practice. Whether any of the claims of the
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`’468 Patent is anticipated or rendered obvious by systems and/or methods alleged
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`by Petitioner to have been publicly disclosed, invented by another and/or in public
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`use prior to the invention date is thus determined based on an understanding of a
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`person of ordinary skill in the relevant art.
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`Level of Ordinary Skill in the Art
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`[18] The level of ordinary skill in the art is based on factors such as the educational
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`level of the inventor, the educational level of those who work in the industry, and
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`the sophistication of technology involved, in addition to the type of problems
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`encountered in the art, prior art solutions to those problems, and the rapidity with
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`which innovations are made in the particular technology should also be considered.
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`MCM, Ex. 2001, pg. 12
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`Case IPR2019-01015
`Patent No. 8,799,468
`Anticipation
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`[19] I understand that to anticipate a patent Claim under 35 U.S.C. § 102, a single
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`asserted prior art reference must disclose each and every element of the claimed
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`invention, either explicitly or inherently to a person of ordinary skill in the art. There
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`must be no difference between the claimed invention and the disclosure of the
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`alleged prior art reference as viewed from the perspective of the person of ordinary
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`skill in the art.
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`[20] Furthermore, it is my understanding that a reference must clearly and
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`unequivocally disclose the claimed invention or direct those skilled in the art to the
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`claimed invention without any need for picking, choosing, and combining various
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`disclosures not directly related to each other by the teachings of the cited reference.
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`[21] I understand that for a reference to be anticipating, it must describe the
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`claimed subject matter with sufficient clarity to establish that the subject matter
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`existed and that its existence was recognized by persons of ordinary skill in the field
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`of the invention.
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`Inherency
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`[22] I understand that in order to establish that an element of a claim is “inherent”
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`in the disclosure of an asserted prior art reference, the extrinsic evidence (or the
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`evidence outside the four corners of the asserted prior art reference) must make clear
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`MCM, Ex. 2001, pg. 13
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`Case IPR2019-01015
`Patent No. 8,799,468
`that the missing element is the inevitable outcome of the process and/or thing that is
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`explicitly described in the asserted prior art reference and that it would be recognized
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`as necessarily present by persons of ordinary skill in the relevant field. I understand
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`inherency may not be established by mere probabilities or possibilities. In other
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`words, the mere fact that a certain thing may result from a given set of circumstances
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`is not sufficient.
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`Obviousness
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`[23] I understand that even though a prior art reference does not fully anticipate a
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`claim of a patent, a claim may, nonetheless, be rendered obvious to one of ordinary
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`skill in the art if the differences between the subject matter set forth in the patent
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`claim and the prior art are such that the claimed subject matter as a whole would
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`have been obvious at the time the claimed invention was made. In addition, I
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`understand that obviousness is a determination of law based on various underlying
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`determinations of fact. In particular, these underlying factual determinations include:
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`(1) the scope and content of the prior art; (2) the level of ordinary skill in the art at
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`the time the claimed invention was made; (3) the differences between the claimed
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`invention and the prior art; and (4) the extent of any secondary conditions of non-
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`obviousness. I understand that if a claim element is completely missing from each
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`of reference of a combination and/or the knowledge base of the skilled artisan, the
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`claim is not obvious in view of that combination.
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`MCM, Ex. 2001, pg. 14
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`Case IPR2019-01015
`Patent No. 8,799,468
`[24] I understand that secondary consideration evidence such as the following, can
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`also be considered in assessing obviousness:
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`
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`Commercial success: An invention that is commercially successful is
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`unlikely to have been obvious because it otherwise would have been
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`invented by others earlier.
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`
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`Copying: Copying a solution, rather than inventing a different solution,
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`shows that the patented solution would not have been obvious.
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`
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`Long-standing problem or need: A persistent problem or need in the
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`art that went unresolved clearly implies that the solution could not have
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`been obvious.
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`
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`Prior failure: The failure of others to come up with a solution shows
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`that the solution could not have been obvious.
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`
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`Licensing: When industry players would rather take a license than try
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`to come up with an alternative solution, those players acknowledge that
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`the solution was not obvious.
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`
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`Praise by others: When those of ordinary skill, aficionados, and the
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`defendants themselves praise the claimed invention on the merits of the
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`invention it could not have been obvious.
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`MCM, Ex. 2001, pg. 15
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`Case IPR2019-01015
`Patent No. 8,799,468
`Teaching away: When those of ordinary skill in the art facing the same
`
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`problem as the inventor looked in different directions than the inventor,
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`and when following their lead would lead further away from the
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`patented solution, that is a significant indication of non-obviousness.
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`By the same token, when the charge in the “wrong” direction is led by
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`those who are well-resourced, well placed, or of higher-than-average
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`skill, it is an even stronger indication of non-obviousness when their
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`teachings lead away.
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`
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`Unexpected Results or Industry Skepticism: When experts,
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`aficionados, and the defendants themselves expressly or implicitly
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`acknowledge that the claimed technology was unexpected or expressed
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`skepticism in it, that is strong evidence that the improvements could not
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`have been obvious.
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`[25] To ascertain the scope and content of the prior art, it is necessary to first
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`examine the field of the inventor’s endeavor and the particular problem with which
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`the inventor was involved at the time the invention was made. Moreover, a
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`determination of obviousness cannot be based on the hindsight combination of
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`components selectively culled from the prior art to fit the parameters of the claimed
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`invention. Instead, I understand that in order to render a patent claim invalid as being
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`
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`MCM, Ex. 2001, pg. 16
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`Case IPR2019-01015
`Patent No. 8,799,468
`obvious from a combination of references, there must be some evidence within the
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`prior art as a whole to suggest the desirability, and thus the obviousness, of making
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`the combination in a way that would produce the claimed invention. In addition, I
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`understand that in order to find a patent claim invalid for obviousness, there must be
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`a finding that each element in each limitation of the patent claim is disclosed or
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`taught by the asserted combination of prior art references or elsewhere in the relevant
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`prior art. I further understand that in making a combination, the principle of
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`operation of a reference should not be changed and that the prior art cannot be
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`rendered unsuitable for its intended purpose.
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`[26] I understand that a patent claim composed of several elements is not proved
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`obvious merely by demonstrating that each of its elements was, independently,
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`known in the prior art. This is so because inventions in most, if not all, instances rely
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`upon building blocks long since discovered, and claimed discoveries almost of
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`necessity will be combinations of what, in some sense, is already known. I further
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`understand that most inventions arise from a combination of old elements and each
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`element may often be found in the prior art. Thus, to establish a case of obviousness
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`based on a combination of elements disclosed in the prior art, an articulation must
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`be made on the basis by which it would have been obvious to make the claimed
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`invention.
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`
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`MCM, Ex. 2001, pg. 17
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`Case IPR2019-01015
`Patent No. 8,799,468
`[27] I understand that in making combinations of references, it is important to
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`avoid hindsight and it can be important to find a reason to make a particular
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`combination. Care must be taken to avoid the temptation to read into the prior art the
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`teachings of the invention at issue and one must guard against slipping into the use
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`of hindsight when considering the issue of obviousness. Particularly, one must avoid
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`simply taking the inventor’s disclosure as a blueprint for piecing together the prior
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`art to defeat patentability – this is the essence of hindsight.
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`[28] I understand that when the prior art teaches away from combining certain
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`known elements, the discovery of a successful means of combining them is more
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`likely to be nonobvious, and evidence rebutting a case of obviousness can include
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`evidence that the prior art teaches away from the claimed invention in any material
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`respect. I understand a reference may be said to teach away when a person of
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`ordinary skill, upon reading the reference, would be discouraged from following the
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`path set out in the reference, or would be led in a direction divergent from the path
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`that was taken by the inventor. I understand that general skepticism of those in the
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`art – not amounting to teaching away – is also relevant and persuasive evidence of
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`nonobviousness. In effect, teaching away is a more pointed and probative form of
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`skepticism expressed in the prior art. In either case, the presence of either of these
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`indications gives insight into the question of obviousness.
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`MCM, Ex. 2001, pg. 18
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`Case IPR2019-01015
`Patent No. 8,799,468
`[29] I understand a reference qualifies as prior art for an obviousness determination
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`under §103 only when it is analogous to the claimed invention. Two separate tests
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`define the scope of analogous prior art: (1) whether the art is from the same field of
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`endeavor, regardless of the problem addressed and, (2) if the reference is not within
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`the field of the inventor’s endeavor, whether the reference still is reasonably
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`pertinent to the particular problem with which the inventor is involved.
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`IV. SUMMARY OF OPINION
`[30] The Petition sets forth seven grounds of invalidity, summarized below:
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`[31] Claims 1 and 23 are the challenged independent claims, and all the other
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`claims depend from them. Only Ground 1, which relies exclusively on Hoang ’980,
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`addresses claims 1 and 23.
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`MCM, Ex. 2001, pg. 19
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`Case IPR2019-01015
`Patent No. 8,799,468
`[32] In my opinion, Ground 1 should fail, as Hoang ’980 fails to render claims 1
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`and 23 of the ’468 Patent obvious, for at least the following reasons:
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`
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`Hoang ’980 does not disclose or fairly suggest “a first processor
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`configured to generate controller instructions,” as in claim 1, and does
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`not disclose or fairly suggest “generating . . . controller instructions,”
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`as in claim 23.
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`
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`Hoang ’980 does not disclose or fairly suggest that a second processor
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`“is configured to selectively transmit the content requests to the service
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`provider network in accordance with the controller instructions,” as in
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`claim 1, and does not disclose or fairly suggest “selectively
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`transmitting, by the plurality of gateway units, the content requests to
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`the service provider network in accordance with the controller
`
`instructions,” as in claim 23.
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`
`
`A person of ordinary skill in the art (“POSITA”) would not have
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`combined the unidirectional and bi-directional aspects of Hoang ’980
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`in the manner Petitioner suggests, meaning there can be no obviousness
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`of these claims.
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`[33] In my opinion, each of the remaining Grounds 2-7 fail because they rely on
`
`Ground 1 for the elements of independent claims 1 and 23.
`
`
`
`MCM, Ex. 2001, pg. 20
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`Case IPR2019-01015
`Patent No. 8,799,468
`V. PERSON OF ORDINARY SKILL IN THE ART
`[34] I agree with Patent Owner’s statements from a previous IPR that a POSITA
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`with respect to the ’468 Patent would have education, experience and training
`
`commensurate with a person having a bachelor’s degree in electrical engineering or
`
`computer science, and would have knowledge of access controls, network protocols,
`
`and communications,
`
`including TCP/IP-based standards, software design,
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`distributed systems and network equipment configuration. Of relevance to this IPR,
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`I have worked with networking technologies since 1995, including owning and
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`managing an “Internet Service Provider,” a venture that ended in 2009. I was also a
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`member of Microsoft’s Wireless Windows Networking group and have participated
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`as a technical reviewer for several journals and conferences, including “Journal of
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`Networks and Systems Management,” as a judge at the “Mobile World Congress
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`2019,” and “EEE Local Computer Networks 2007-2008.” Based on my experience,
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`education and training, I have an understanding and knowledge of these capabilities
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`and have been involved with these technologies myself during the relevant time
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`period.
`
`VI. OVERVIEW OF THE ’468 PATENT
`[35] The ’468 Patent describes a system and method for managing and regulating
`
`access from a local subscriber site to content available for distribution from a remote
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`service provider network. Ex. 1001, Abstract.
`
`
`
`MCM, Ex. 2001, pg. 21
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`Case IPR2019-01015
`Patent No. 8,799,468
`[36] The subscriber site includes one or more subscriber terminals and
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`communications gateways (“CGs”). Ex. 1001, 3:37-40. The described system
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`further includes Internet Control Points (“ICPs”) (located remote from the subscriber
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`site) that generate and issue instructions to the CGs. Ex. 1001, 3:46-48; 5:25-29.
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`These instructions control the operation of the CGs and the Patent identifies several
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`control operations and associated controller instructions the ICPs may send to the
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`CGs (e.g., “Active and Inactive CG Processing Control,” “Conditional Denial,” and
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`“Packet Inspection,” etc.). Ex. 1001, 7:34-8:32. The system and method of the ’468
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`Patent regulates access by the subscriber to content available from the subscriber
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`network in a secure manner.
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`VII. CLAIM CONSTRUCTION
`[37] I understand that claim construction begins with the language of the claims,
`
`and the words of a claim are generally given their ordinary and customary meaning.
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`I understand that to be the meaning the term would have to a POSITA at the time of
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`the invention. I understand that although the prosecution history often lacks the
`
`clarity of the specification and thus is less useful for claim construction purposes, it
`
`is a source of intrinsic evidence that can inform the meaning of the claim language
`
`by demonstrating how the inventor understood the invention and whether the
`
`inventor limited the invention in the course of prosecution, making the claim scope
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`narrower than it would otherwise be. I understand that while extrinsic evidence,
`
`
`
`MCM, Ex. 2001, pg. 22
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`Case IPR2019-01015
`Patent No. 8,799,468
`such as expert testimony and dictionaries, may be useful in educating regarding the
`
`field of the invention or helping determine what a POSITA would understand claim
`
`terms to mean, extrinsic evidence in general is viewed as less reliable than intrinsic
`
`evidence.
`
`A.
`“to generate[ing …] controller instructions”
`[38] I have been informed that a District Court has construed this term as “to
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`create[ing] or bring[ing] into being computer executable instructions that determine
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`whether to transmit or not transmit a content request from a user to the service
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`provider network.” I apply the District Court’s construction in this opinion.
`
`[39] I note that the District Court’s claim construction, which I apply, requires that
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`the instructions be computer executable. A POSITA would understand a computer
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`executable instruction to be encoded (likely in binary format), for each instruction
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`to fit a specified length (e.g. 16-bits), and each series of instructions to manage
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`memory and direct a “Central Processing Unit” or CPU to perform certain task.
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`Generally, an instruction-set is defined with basic memory access functions,
`
`arithmetic processes, Input/output, and others. Therefore, this construction would,
`
`by definition, exclude the generation of mere data, as such is not to a POSITA ever
`
`considered to be “computer executable.”
`
`
`
`MCM, Ex. 2001, pg. 23
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`Case IPR2019-01015
`Patent No. 8,799,468
`B.
`“selectively transmit[ting, by the plurality of gateway units,] the
`content requests to the service provider network in accordance
`with the controller instructions”
`[40] I have been informed that a District court has construed this term, which I
`
`alternatively refer to as the “selectively transmit[ting]” element, as “transmitting all
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`selected requests through the service provider network in response to the controller
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`instructions’ decisions to transmit the content requests.” I apply the District Court’s
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`construction in this opinion.
`
`[41] I note that Petitioner offers a different construction for this term than the one
`
`adopted by the District Court. In particular, the Petitioner proposes that the
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`“selectively transmit[ting]” term be construed to mean “transmitting all content
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`requests to take place within the service provider network in response to the
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`controller instructions’ decision to transmit the content requests.” Pet. at 13. In my
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`opinion, Petitioner’s construction is incorrect for at least two reasons. First,
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`construing the term as “transmitting all content requests” appears to read out the
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`term “selectively,” which
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`the District Court’s construction does not do
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`(“transmitting all selected content requests. . .”). Second, construing the term as
`
`requiring the transmission to take place within the service provider network seems
`
`to be directly opposite to what is shown in FIG. 1 of the ’468 Patent (reproduced
`
`below), where the CGs 58 and the ICP 50 are not within the service provider
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`network (SPA Network Elements 54).
`
`
`
`MCM, Ex. 2001, pg. 24
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`Case IPR2019-01015
`Patent No. 8,799,468
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`
`
`C. “controller node”
`[42] I have been informed that the District construed this term to mean “a single
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`network device that controls the operation of the gateway units.” I apply the District
`
`Court’s construction in this opinion.
`
`D. “service provider network”
`[43] I have been informed that the District Court construed this term as “a network
`
`between the controller node and the plurality of gateway units that is not the public
`
`
`
`MCM, Ex. 2001, pg. 25
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`Case IPR2019-01015
`Patent No. 8,799,468
`internet and only includes those network elements operated or controlled by the
`
`service provider.” I apply the District Court’s construction in this opinion.
`
`E. “gateway units”
`[44] I have been informed that the District Court construed this term as “computer
`
`devices that are remote from the controller node and interface with the service
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`provider network and a subscriber terminal.” I apply the District Court’s
`
`construction in this opinion.
`
`F. “network elements”
`[45] I have been informed that the District Court construed this term as “computer
`
`devices within the service provider network.” I apply the