Petition for Inter Partes Review of U.S. Patent No. 8,799,468
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`DISH NETWORK L.L.C.
`Petitioner,
`
`v.
`
`MULTIMEDIA CONTENT MANAGEMENT LLC
`Patent Owner.
`
`
`
`IPR NO.: UNASSIGNED
`ATTORNEY DOCKET NO.: 081841.0120
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,799,468
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`
`Submitted Electronically via the Patent Trial and Appeal Board End to End
`System
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,799,468
`
`TABLE OF CONTENTS
`
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(A)(1) ....................... V
`A.
`Real Party-in-Interest under 37 C.F.R. 42.8(b)(1) ............................... v
`B.
`Related Matters under 37 C.F.R. 42.8(b)(2) ....................................... vi
`C.
`Lead and Back-Up Counsel under 37 C.F.R. 42.8(b)(3) .................... vi
`D.
`Service Information under 37 C.F.R. 42.8(b)(4) ................................. vi
`INTRODUCTION ........................................................................................ 1
`II.
`III. PAYMENT OF FEES .................................................................................. 1
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. 42.104 ................................................................................................. 1
`A. Grounds for Standing under 37 C.F.R. 42.104(a) ................................ 1
`B.
`Identification of Challenge under 37 C.F.R. 42.304(b) and
`Statement of Precise Relief Requested ................................................ 1
`BACKGROUND OF THE TECHNOLOGY ............................................. 2
`V.
`VI. SUMMARY OF THE ’468 PATENT ......................................................... 2
`A.
`Priority Date ......................................................................................... 2
`B.
`Relevant Prosecution History ............................................................... 2
`VII. SUMMARY OF THE PRIOR ART ........................................................... 4
`A. Hoang ’980 ........................................................................................... 4
`B.
`Hoang ’267 and Hoang ’561 ................................................................ 4
`C.
`Venkatesh ............................................................................................. 5
`D. OpenCable ............................................................................................ 5
`E.
`Cameron ............................................................................................... 7
`F.
`Shteyn ................................................................................................... 7
`VIII. CLAIM CONSTRUCTION UNDER 37 C.F.R. 42.104(B)(3) ................. 7
`A.
`The POSA ............................................................................................. 7
`B.
`“to generate[ing …] controller instructions” (claim 1, [claim
`23]) ....................................................................................................... 8
`“a controller node” ............................................................................... 9
`“a service provider network” .............................................................. 10
`
`C.
`D.
`
`ii
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,799,468
`
`E.
`
`B.
`
`C.
`
`“selectively transmit[ing, by the plurality of gateway units,] the
`content requests to the service provider network in accordance
`with the controller instructions” (claim 1, [claim 23]) ....................... 13
`“gateway units” .................................................................................. 13
`F.
`IX. THE ASSERTED GROUNDS RENDER ALL PETITIONED
`CLAIMS INVALID .................................................................................... 14
`A. Ground 1: Claims 1, 6, 23, 24, 25, 28, and 30 Are Obvious
`Over Hoang ’980 under 35 U.S.C. § 103 ........................................... 14
`Ground 2: Claims 6 and 28 are Obvious Over Hoang ’980 In
`View of Venkatesh ............................................................................. 51
`Ground 3: Claims 13 and 27 are Obvious Over Hoang ’980 In
`View of Hoang ’267 ........................................................................... 55
`D. Ground 4: Claims 19 and 29 are Obvious Over Hoang ’980 In
`View of Hoang ’561 ........................................................................... 60
`Ground 5: Claims 15, 32 Are Obvious Over Hoang ’980 In
`View of OpenCable ............................................................................ 66
`Ground 6: Claim 33 is Obvious Over Hoang ’980 In View of
`Cameron ............................................................................................. 69
`G. Ground 7: Claim 41 is Obvious Over Hoang ’980 in View of
`Shteyn ................................................................................................. 72
`
`E.
`
`F.
`
`
`
`
`
`
`
`iii
`
`

`

`
`EX. NO.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`1007
`1008
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`1014
`1015
`
`1016
`
`1017
`1018
`
`Petition for Inter Partes Review of U.S. Patent No. 8,799,468
`
`PETITIONER’S EXHIBIT LIST
`
`BRIEF DESCRIPTION
`
`U.S. Patent No. 8,799,468 (“’468 Patent”)
`
`U.S. Patent No. 9,465,925
`
`File History for U.S. Patent No. 8,799,468
`
`File History for U.S. Patent No. 8,122,128
`
`File History for U.S. Patent No. 9,465,925
`
`Declaration of Anthony Wechselberger
`Curriculum Vitae of Anthony Wechselberger
`U.S. Publication No. 2002/0049980 to Hoang (“Hoang ’980”)
`U.S. Patent No. 7,725,267 to Hoang (“Hoang ’267”)
`
`U.S. Publication No. 2003/0208561 to Hoang (“Hoang ’561”)
`
`Michael Adams, OpenCableTM Architecture (2000) (“OpenCable”)
`
`Complaint, Multimedia Content Management LLC v. DISH
`Network Corporation, Civil Action No.: 6:18-cv-00207-ADA
`Canadian Patent 2,321,462 to Cameron et al. (“Cameron”)
`U.S. Publication No. 2002/0162109 to Shteyn (“Shteyn”)
`U.S. Patent No. 5,974,503 to Venkatesh, et al. (“Venkatesh”)
`Unified Patents, Inc. v. Multimedia Content Management LLC,
`IPR2017-01934, Paper 9, Patent Owner Preliminary Response
`(PTAB Dec. 14, 2017)
`Newton’s Telecom Dictionary (15th Edition 1999) (excerpts)
`Unified Patents, Inc. v. Multimedia Content Management LLC,
`
`iv
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,799,468
`
`BRIEF DESCRIPTION
`IPR2017-01934, Paper 10 (Institution Decision) (PTAB Mar. 5,
`2018)
`Microsoft Press Computer Dictionary (3rd Edition 1997)
`Certification of
`the Library of Congress for Open Cable
`Architecture by Michael Adams, executed February 27, 2019.
`Declaration of Curt Williams Concerning
`the “OpenCable
`Architecture” Reference by Michael Adams, executed March 15,
`2019
`U.S. Publication No. 2003/0172376 to Coffin III (“Coffin”)
`Deposition of Joel Williams dated April 12, 2019
`Plaintiff’s Opening Claim Construction Brief (DI 51)
`Defendant’s Opening Claim Construction Brief (DI 48)
`Plaintiff’s Responsive Claim Construction Brief (DI 53)
`Defendant’s Responsive Claim Construction Brief (DI 52)
`Plaintiff’s Reply Claim Construction Brief (DI 59)
`Defendant’s Reply Claim Construction Brief (DI 58)
`Declaration of Anthony J. Wechselberger In Support of
`Defendant’s Opening Claim Construction Brief
`
`EX. NO.
`
`1019
`
`1020
`
`1021
`
`1022
`1023
`1024
`1025
`1026
`1027
`1028
`1029
`
`1030
`
`
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(1)
`A. Real Party-in-Interest under 37 C.F.R. 42.8(b)(1)
`DISH Network L.L.C. (“DISH”) is the petitioner. DISH also identifies
`
`DISH Technologies L.L.C. and DISH Network Corporation as real parties-in-
`
`interest only for this proceeding.
`
`v
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,799,468
`
`B. Related Matters under 37 C.F.R. 42.8(b)(2)
`Multimedia Content Management LLC (“MCM” or “Patent Owner”) asserts
`
`the ’468 Patent against Petitioner in the United States District Court for the
`
`Western District of Texas in Civil Action No. 6:18-cv-00207-ADA. See Ex. 1012.
`
`C. Lead and Back-Up Counsel under 37 C.F.R. 42.8(b)(3)
`Petitioner designates the following: Lead Counsel is Eliot D. Williams (Reg.
`
`No. 50,822) of Baker Botts L.L.P.; Back-up Counsel are G. Hopkins Guy (Reg.
`
`No. 35,886) and Ali Dhanani (Reg. No. 66,233) of Baker Botts L.L.P.
`
`D.
`Service Information under 37 C.F.R. 42.8(b)(4)
`A copy of this entire Petition, including all Exhibits and a power of attorney,
`
`is being served by FEDERAL EXPRESS, costs prepaid, to the address of the
`
`attorney or agent of record for MCM in the district court proceedings regarding the
`
`’468 Patent: Toler Law Group, PC, 8500 Bluffstone Cove, Suite A201, Austin, TX
`
`78759; and to the address of the attorney or agent of record at the USPTO:
`
`Schwabe, Williamson & Wyatt, P.C., 1420 Fifth Avenue, Suite 3400, Seattle, WA
`
`98101.
`
`
`
`Petitioner
`
`consents
`
`to
`
`service
`
`by
`
`electronic mail
`
`at
`
`eliot.williams@bakerbotts.com,
`
`hop.guy@bakerbotts.com,
`
`and
`
`ali.dhanani@bakerbotts.com. A Power of Attorney is filed concurrently herewith
`
`under 37 C.F.R. § 42.10(b).
`
`vi
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,799,468
`
`II.
`
`INTRODUCTION
`Petitioner DISH requests review of claims 1, 6, 13, 15, 19, 23, 24, 25, 27,
`
`28, 29, 30, 32, 33, and 41 of U.S. Patent No. 8,799,468 (Ex. 1001).
`
`The ’468 Patent concerns regulating access to a service provider network
`
`and describes a gateway unit that selectively transmits user-entered content
`
`requests over the service provider network to a server on the network, and makes
`
`the decision by executing instructions received from the server.
`
`III. PAYMENT OF FEES
`The Office is authorized to charge the fee set forth in 37 C.F.R. § 42.15(b) to
`
`Deposit Account No. 02-0384 as well as any additional fees that might be due in
`
`connection with this Petition.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. 42.104
`A. Grounds for Standing under 37 C.F.R. 42.104(a)
`Petitioner certifies the ’468 Patent is eligible for inter partes review (see Part
`
`IV.B) and certifies that Petitioner meets the eligibility requirements set forth in 37
`
`C.F.R. § 42.104. Petitioner has been sued by MCM for infringement of the ’468
`
`Patent. Petitioner is not barred or estopped from challenging the claims on the
`
`grounds identified within this petition.
`
`B.
`
`Identification of Challenge under 37 C.F.R. 42.304(b) and
`Statement of Precise Relief Requested
`Petitioner requests review under the grounds set forth in the table below.
`
`
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,799,468
`
`6, 28
`
`Ground ’468 Patent Claims Basis for Challenge
`Unpatentable under 35 U.S.C. § 103 by Hoang
`1
`1, 23, 24, 25, 30
`’980 (Ex. 1008)
`Unpatentable under 35 U.S.C. § 103 by Hoang
`’980 in view of Venkatesh (Ex. 1015)
`Unpatentable under 35 U.S.C. § 103 by Hoang
`’980 in view of Hoang ’267 (Ex. 1009)
`Unpatentable under 35 U.S.C. § 103 by Hoang
`’980 in view of Hoang ’561 (Ex. 1010)
`Unpatentable under 35 U.S.C. § 103 by Hoang
`’980 in view of OpenCable (Ex. 1011)
`Unpatentable under 35 U.S.C. § 103 by Hoang
`’980 in view of Cameron (Ex. 1013)
`Unpatentable under 35 U.S.C. § 103 by Hoang
`’980 in view of Shteyn (Ex. 1014)
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`13, 27
`
`19, 29
`
`15, 32
`
`33
`
`41
`
`This Petition establishes a reasonable likelihood that Petitioner will prevail
`
`on at least one petitioned claim.
`
`V. BACKGROUND OF THE TECHNOLOGY
`The art is “regulation of access to a network.” Ex. 1001, 1:17-18. The
`
`technology includes implementing the network access regulation for on-demand
`
`services using set-top-boxes (“STBs”) and a controlling server. Ex. 1006, ¶¶ 40-
`
`79.
`
`VI. SUMMARY OF THE ’468 PATENT
`A.
`Priority Date
`The priority date for the ’468 Patent is November 18, 2003 based on U.S.
`
`Provisional Application No. 60/523,057.
`
`B. Relevant Prosecution History
`The ’468 Patent application was filed on February 8, 2012 as a continuation
`2
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`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,799,468
`
`of Application No. 10/989,023, filed on November 16, 2004 which issued as U.S.
`
`Patent No. 8,122,128 (“’128 Patent”). See Ex. 1003, p.102.
`
`On November 4, 2013, Applicant
`
`traversed an election/restriction
`
`requirement that “[b]oth sets of claims,” referring to the system and method claim
`
`sets, “are directed towards ‘regulating access to a service provider network.’” Id.
`
`at p.157. Applicants stated that claim 1 (system) and claim 116 (method)
`
`“correspond to each other exactly, except the former is recited in system form, and
`
`the latter is recited in method form.” Id. at p.158.
`
`On January 15, 2014, the examiner issued a rejection of independent claim 1
`
`based on U.S. Patent No. 6,516,416 to Gregg that was nearly identical to the
`
`anticipation rejection of virtually the same claim during prosecution of the parent
`
`’128 Patent. Compare Ex. 1003, pp.166-67 with Ex. 1004, pp.118-19 (changing
`
`only the verbiage, i.e., changing “for generating” to “configured to generate”). The
`
`congruence between the claims of the ’468 and those of the ’128 as originally filed
`
`is relevant because the Applicants were unable to overcome the anticipation
`
`rejection during prosecution of the ’128 Patent without significantly amending the
`
`claims. Compare Ex. 1004, p.46 (showing claim 1 of ’128 Patent as originally
`
`filed and nearly identical to claim 1 of ’468 Patent) with Ex. 1004, pp.404-05
`
`(showing claim 1 of ’128 Patent as allowed). During prosecution of the parent
`
`’128 Patent, the examiner defended the rejection over Gregg three times. See Ex.
`
`
`
`3
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,799,468
`
`1004, pp.118-19, 219-21, 305-06.
`
`Despite presenting a virtually identical claim as originally filed in the parent
`
`’128 Patent, there were no amendments during prosecution of the ’468 Patent. See
`
`Ex. 1003, p.204 (“no claim has been amended”). For reasons that are not
`
`explained by the prosecution history, claim 1 was allowed after the first office
`
`action based merely on Applicants’ remarks, which mirror those that the same
`
`examiner found unpersuasive during prosecution of the ’128 Patent. Compare Ex.
`
`1003, pp.204-06 with Ex. 1004, pp.187-90, 283-85, 363.
`
`VII. SUMMARY OF THE PRIOR ART
`A. Hoang ’980
`U.S. Patent Publication No. 2002/0049980 (“Hoang ’980”) (Ex. 1008), titled
`
`“CONTROLLING DATA-ON-DEMAND CLIENT ACCESS,” was published on
`
`April 25, 2002. Hoang is prior art under 102(b) because it was published more
`
`than a year before the ’468 Patent priority date. Hoang is directed to a system for
`
`“controlling client access to DOD [Data-on-Demand] services.” Ex. 1008,
`
`Abstract.
`
`B. Hoang ’267 and Hoang ’561
`Hoang ’267 (Application No. 09/709,948) and Hoang ’561 (Application No.
`
`09/892,015) are incorporated by reference in Hoang ’980. See Ex. 1008, ¶ [0001].
`
`Hoang ’267 (Ex. 1009) was filed November 10, 2000 and issued April 20,
`
`2004. Hoang ’267 is prior art under 102(e) because it was filed before and issued
`4
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,799,468
`
`after the priority date of the ’468 Patent. Hoang ’267 is directed to features in
`
`Hoang ’980.
`
`Hoang ’561 (Ex. 1010) was filed June 25, 2001 and published November 6,
`
`2003. Hoang ’561 is prior art under 102(a) and (e) because it was filed and
`
`published before the priority date of the ’468 Patent. Hoang ’561 is also directed
`
`to features described in Hoang ’980.
`
`C. Venkatesh
`U.S. Patent No. 5,974,503 to Venkatesh, et al. (“Venkatesh”) (Ex. 1015) was
`
`filed on May 5, 1997 and issued on October 26, 1999. Venkatesh is prior art under
`
`102(b) because it published more than one year before the ‘468 Patent’s priority
`
`date.
`
`D. OpenCable
`OpenCableTM Architecture (“OpenCable”) (Ex. 1011) was published in
`
`2000. OpenCable was catalogued in the Library of Congress no later than January
`
`13, 2000 and was distributed and made available to the public having ordinary skill
`
`in the art no later than July 14, 2000. OpenCable was thereafter indexed and
`
`catalogued and publicly available in libraries in the United States. OpenCable is a
`
`publication under 102(b) because it has been “disseminated or otherwise made
`
`available to the extent that persons interested and ordinarily skilled in the subject
`
`
`
`5
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,799,468
`
`matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v.
`
`Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008).
`
`Library of Congress
`
`The Library of Congress certified that it maintains a book entitled Open
`
`Cable Architecture, written by Michael Adams, under call number TK 6679.3.A33
`
`2000, Copy 1. Ex. 1020, 1. This work is marked with a Library of Congress
`
`Copyright Office stamp dated January 13, 2000. Id. The front and back cover
`
`pages, Title page, Copyright Page, and Table of Contents pages from the Library
`
`of Congress copy of this work are identical to those of the copy relied upon in this
`
`petition. See id. at 2-20.
`
`University of Colorado Boulder Libraries
`
`OpenCable has been publicly available at the University of Colorado
`
`Boulder Libraries in Boulder, Colorado since at least July 14, 2000. Ex. 1021, ¶ 6.
`
`This libraries’ acquisition records such as the “ODATE” entry indicates that the
`
`library ordered the OpenCable on January 11, 2000 and the “RDATE” entry
`
`indicates the book was received on February 15, 2000. Id. ¶ 8. The University of
`
`Colorado Boulder Libraries maintains a catalogue of all references that are
`
`available for members of the public to search by author, title, and subject. Id. ¶ 6.
`
`The entry “CAT DATE” in the catalogue indicates that the OpenCable
`
`Architecture textbook was catalogued on July 14, 2000 and, since that time, has
`
`
`
`6
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`Petition for Inter Partes Review of U.S. Patent No. 8,799,468
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`been listed on the library’s online catalogue that is available to members of the
`
`public. Id. Thus, OpenCable was cataloged, searchable, and accessible to the
`
`interested public at University of Colorado Boulder Libraries by July 14, 2000.
`
`E. Cameron
`Canadian Patent 2,321,462 to Cameron et al. (“Cameron”) (Ex. 1013) was
`
`filed September 29, 2000 and published March 29, 2002. Therefore, Cameron is
`
`prior art under 102(b) because it was published more than one year before the ’468
`
`Patent’s priority date.
`
`F.
`Shteyn
`U.S. Patent Publication No. 2002/0162109 to Shteyn (“Shteyn”) (Ex. 1014)
`
`was published on Oct. 31, 2002. Therefore, Shteyn is prior art under 102(b)
`
`because it was published more than one year before the ’468 Patent’s priority date.
`
`VIII. CLAIM CONSTRUCTION UNDER 37 C.F.R. 42.104(B)(3)
`A. The POSA
`A POSA as of the November 2003 priority date would have a bachelor’s
`
`degree in Electrical Engineering, Computer Engineering, Computer Science or a
`
`similar technology degree and at least two years of relevant industry experience,
`
`including Internet networking architectures, digital programming delivery in
`
`broadcast, cable or satellite television networks, and associated set top boxes. Ex.
`
`1006, ¶ 38. Petitioner’s constructions are fully consistent with the constructions
`
`proposed by Petitioner at the District Court. See Ex. 1025.
`7
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,799,468
`
`B.
`“to generate[ing …] controller instructions” (claim 1, [claim 23])
`The proper construction of the term “to generate controller instructions” is
`
`“to create or bring into being computer executable instructions that determine
`
`whether to transmit or not transmit a content request from a user to the service
`
`provider network.” Ex. 1025 at 7.
`
`In its POPR for IPR2017-01934, Patent Owner explained that its
`
`construction of “generate” captured the “notion that the generated item did not
`
`exist prior to being generated. (EX2001, ¶¶78-80) (e.g., ‘bring into being’) .... [A]t
`
`the time when the processor generates controller instructions, the controller
`
`instructions did not previously exist …. Transmitting or retransmitting an existing
`
`‘controller instruction’ is not ‘generating’ as understood by a POSITA.” Id. at 12-
`
`14. The understanding that “generate” means “to create or bring into being”
`
`comports with the plain and ordinary meaning of “generate.”
`
`In the District Court action, MCM’s expert from the Unified Patents IPR
`
`(Ex. 1016), Joel Williams, confirmed this construction in a deposition provided
`
`regarding his IPR Declaration. Mr. Williams defined generate as: “Bringing – you
`
`know, create something that didn’t exist before. To – Q: And would you say it
`
`means to create or bring into existence? A: Yes.” Ex. 1013, 42:6-13.
`
`The claims recite selectively transmitting “the content requests to the service
`
`provider network in accordance with the controller instructions.” Ex. 1001, claims
`
`
`
`8
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,799,468
`
`1, 23. Thus, the claims establish that controller instructions are for “determining”
`
`whether the content requests should be transmitted or not transmitted.
`
`C.
`“a controller node”
`The proper construction of the term “controller node” is “a single network
`
`device that controls the operation of the gateway units.” Ex. 1025 at 11. Figure 3
`
`illustrates the “controller node” or “ICP” as a single device that may encompass
`
`one or more components (e.g., network interface 200, processor 202, and memory
`
`204). MCM’s expert agrees that the “controller node” is a “the single node that
`
`generated the controller instruction.” Ex. 1013, 77:17-21 (“In the context of the
`
`claim, is it your understanding that the controller node is the node, the single node
`
`that generated the controller instruction? A: Yes.”).
`
`The claims require the same “controller node” that “generates” controller
`
`instructions to also “transmit” the controller instructions. Claim 1 recites:
`
`a controller node coupled to the service provider
`network, the controller node comprising:
`a first processor configured
`to generate controller
`instructions; and
`a first network interface configured to transmit the
`controller instructions over the service provider network
`to a plurality of gateways ….
`Ex. 1001, claim 1.
`
`
`
`9
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`

`Petition for Inter Partes Review of U.S. Patent No. 8,799,468
`
`Patent Owner explained in its IPR2017-01934 POPR that a “controller
`
`node” that receives instructions from a human or another device falls outside the
`
`scope of generating the controller instructions:
`
`Petitioner’s proposed construction of “generate” is overly
`broad and would incorrectly encompass the operation of
`the controller node receiving an existing controller
`instruction
`from another source
`(e.g., a human
`administrator or another network device) and then
`transmitting the received controller instruction to the
`gateway unit.
`Ex. 1016, 13-14. Accordingly, Patent Owner distinguished a controller that
`
`includes multiple network devices operating in unison from the claimed “controller
`
`node.” Id. By arguing that receiving controller instructions from “another
`
`source”—including “another network device”—falls outside of the scope of
`
`generating controller instructions, Patent Owner limited the scope of the
`
`“controller node” to “a single device” performing the claimed functions and is now
`
`bound by its own narrowed construction. See Am. Piledriving Equip., Inc. v.
`
`Geoquip, Inc., 637 F.3d 1324, 1336 (Fed. Cir. 2011).
`
`D.
`“a service provider network”
`The proper construction of the term “service provider network” is “a
`
`network between the controller node and the plurality of gateway units that is not
`
`the public Internet and only includes those network elements operated or controlled
`
`by the service provider.” Ex. 1025 at 11. The claims show that the service
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`provider network is used to transmit and receive data between the controller node
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`and the gateway units:
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` “receive the controller instructions from the controller node through
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`the service provider network;”
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` “receive user-entered content requests for the service provider
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`network;”
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` “selectively transmit the content requests to the service provider
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`network in accordance with the controller instructions;” and
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` “transfer received content data responsive to the transmitted content
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`requests from the service provider network.”
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`Ex. 1001, claim 1 (emphasis added). The specification acknowledges “all ICP-CG
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`communications take place within the ISP side of the network.” Id. at 4:33-34.
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`Accordingly, the specification supports that “a service provider network” (e.g., the
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`ISP side of the public network 52) is separate and distinct from the remainder of
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`the public network.
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`In the IPR2017-01934 POPR, Patent Owner explained:
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`During prosecution, Patentee amended the claims to
`clarify that the “network” recited in Claim 1 is the
`“service provider network” as opposed to being any
`network, such as the subscriber’s local area network or
`the entire public Internet.
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`Ex. 1016, 7. To distinguish the claimed system of the ’468 Patent from the system
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`disclosed by the prior art, Patent Owner provided the following annotations to
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`Figure 1 of the ’468 Patent:
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`Id. at 6 (annotations in original). Patent Owner argued that the service provider
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`network did not include third-party network elements or any network elements of
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`the public Internet:
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`
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`Fig. 1 also illustrates that the “service provider network”
`54 is distinct from Non-SPA Network Elements 55.
`Collectively, the “service provider network” and Non-
`SPA Network Elements comprise the Internet/Metro
`Area Network. Thus, the “service provider network” is
`not the entire public Internet and only includes those
`network elements operated or controlled by the service
`provider.
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`Id.
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`E.
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` “selectively transmit[ing, by the plurality of gateway units,] the
`content requests to the service provider network in accordance
`with the controller instructions” (claim 1, [claim 23])
`The proper construction of this term is “transmitting all content requests to
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`take place within the service provider network in response to the controller
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`instructions’ decision to transmit the content requests.” Ex. 1025 at 21. The
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`claims require a “gateway unit” or “network element” that “selectively transmits”
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`content requests “to the service provider network.” The Summary of the Invention
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`describes the selective transmission of content requests as occurring “over the
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`[service provider] network” rather than “to the service provider network.” Ex.
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`1001, 2:24-28.
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` The
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`specification unequivocally
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`states “all
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`ICP-CG
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`communications take place within the ISP side of the network.” Ex. 1001, 4:33-34.
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`By explaining that “all” communications take place within the service provider
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`network, the specification supports that “content requests” also travel within the
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`service provider network. This term’s construction is “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 instruction’ decision to transmit the content requests.”
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`F.
`“gateway units”
`Figure 1 of the specification depicts the “Communication Gateway” between
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`the “Subscriber Terminal” and the network 52. Ex. 1001, Figure 1, 4:54-5:3.
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`Claim 1 of the ’468 Patent states that a gateway unit has “a second network
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`interface coupled to the service provider network and configured to receive the
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`controller instructions from the controller node through the service provider
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`network.” Id. at claim 1. Thus, the claims require that the gateway units “interface
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`with the service provider network.” “Gateway units” should thus be construed as
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`“computer devices that are remote from the controller node and interface with the
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`service provider network and a subscriber terminal.” Ex. 1025 at 23.
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`IX. THE ASSERTED GROUNDS RENDER ALL PETITIONED CLAIMS INVALID
`A. Ground 1: Claims 1, 6, 23, 24, 25, 28, and 30 Are Obvious Over
`Hoang ’980 under 35 U.S.C. § 103
`Generally, Hoang ’980 discloses both prior art bidirectional communication
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`systems (e.g. Figures 3, 4, 5, and 6) and uni-directional communication systems
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`(e.g., Figs. 7, 8 and 11). Authorization in the prior art systems occurred at the
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`server by way of a content request from the subscriber while in the invention of the
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`Hoang ’980, authorization occurred at the subscriber’s equipment or set-top box
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`without such a request. Critically, Hoang ’980 explained that its unidirectional
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`invention could be implemented in bi-directional systems as shown below thus
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`providing explicit motivation to combine in the prior art to this patent. Bos. Sci.
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`Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (“[O]ne of
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`ordinary skill in the art would have been motivated to combine the embodiment[s]
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`in [Wolff because] [c]ombining two embodiments disclosed adjacent to each other
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`in a prior art patent does not require a leap of inventiveness.”) While not required,
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`this explicit teaching to combine provides ample motivation to combine by the
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`POSA of two embodiments in the same reference.
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`1.
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`Claim 1
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`1[pre] A system for regulating access to a service provider network, the
`system comprising:
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`The term “service provider network” is “a network between the controller
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`node and the plurality of gateway units that is not the public Internet and only
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`includes those network elements operated or controlled by the service provider.”
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`See Section VIII.D.
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`The systems of Hoang ’980’s uni-directional preferred embodiment are
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`shown in Figs. 7 (server) and 8 (set-top box (“STB”)). Hoang ’980 discloses that
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`“all aspects of the present invention can be implemented within the bi-directional
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`communications paradigm” expressly disclosed in the prior art section of the
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`specification. Ex. 1008, ¶ [0049]. Yet, Hoang ’980 discloses the bi-directional
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`paradigm as prior-art bi-directional communications systems, including the “VOD
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`system 300” illustrated in FIG. 3. Ex. 1008, ¶ [0012], FIG. 3.
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`
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`FIG. 3 illustrates a video-on-demand (VOD) system. The “distribution
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`infrastructure” in Hoang ’980’s bi-directional VOD systems delivers on-demand
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`content such as “movies to individual homes based on the routing information
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`supplied by the video server 310.” Id. The distribution infrastructure 314 may be
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`a “cable TV (CATV) system.” Id.; see also Ex. 1001, 1:35-37. A POSA would
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`understand the CATV system distribution infrastructures to be a “service provider
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`network.”
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`Hoang ’980 states that “the VOD system 300 of FIG. 3 is a somewhat
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`specific example of the DOD system 320.” Ex. 1008, ¶ [0015]. Accordingly, the
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`VOD system and “DOD system 320 hav[e] a bi-directional client-server
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`architecture,” as illustrated in FIG. 4. Id.; id. at FIG. 4 (below).
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`
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`Similar to the bi-directional VOD system, the DOD system “includes a DOD
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`server 322 bi-directionally coupled with a plurality of DOD clients 324 via
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`communication link 326.” Ex. 1008, ¶ [0015]. Hoang ’980 explains that the DOD
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`server and clients or STBs communicate using the “data-over-cable-systems-
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`interface specification (DOCSIS) standard.” DOCSIS is a system where a cable
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`television (CATV) system is the transmission medium. Ex. 1008, ¶ [0053].
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`The preferred embodiment in Hoang ’980 may be implemented in systems
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`with uni-directional or bi-directional communication links between the server and
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`the STBs. Ex. 1008, ¶ [0049]. If the system of Hoang ’980’s preferred
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`embodiment is implemented with a uni-directional communications link between
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`the DOD server 450 and the universal STB 600, then the user would be limited