UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DISH NETWORK L.L.C.,
`Petitioner,
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`v.
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`MULTIMEDIA CONTENT MANAGEMENT LLC,
`Patent Owner
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`IPR2019-01015
`PATENT 8,799,468
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`DISH NETWORK L.L.C.,
`Petitioner,
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`v.
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`MULTIMEDIA CONTENT MANAGEMENT LLC,
`Patent Owner
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`IPR2019-01015
`PATENT 8,799,468
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`IPR2019-01015
`U.S. Patent 8,799,468
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`Table of Contents
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`5
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`9
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`11
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`16
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`22
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`25
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`29
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`I.
`II.
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`1
`INTRODUCTION
`1
`THE ’468 PATENT
`1
`A. Overview of the ’468 Patent
`2
`B.
`Person of Ordinary Skill in the Art
`3
`C.
`Claim Construction
`1.
`“selectively transmit[ting, by the plurality of gateway units,] the
`content requests to the service provider network in accordance
`with the controller instructions”
`3
`“to generate[ing . . . ] controller instructions”
`4
`2.
`“controller node”
`4
`3.
`“service provider network”
`5
`4.
`“gateway unit”
`5
`5.
`III. THE BOARD SHOULD EXERCISE ITS DISCRETION AND DISMISS
`THE PETITION
`IV. THE PETITION SHOULD BE DISMISSED DUE TO PETITIONER’S
`RELIANCE ON A FLAWED CLAIM CONSTRUCTION
`V. GROUNDS 1–7 SHOULD BE DENIED BECAUSE PETITIONER HAS
`FAILED TO MEET ITS BURDEN
`A. Hoang ’980 Fails to Disclose or Suggest Generating Controller
`Instructions
`Hoang ’980 Fails to Disclose or Suggest the “Selectively
`19
`Transmit[ting]” Element
`1.
`Hoang ʼ980’s unidirectional system does not transmit anything
`from a gateway unit
`20
`Petitioner’s proposed combination would function only to
`transmit all content requests, in contradiction of the District
`Court’s claim construction
`A POSA would not understand Petitioner’s proposed
`combination to function in the manner Petitioner suggests
`Petitioner’s arguments that the challenged dependent claims of the
`ʼ468 Patent in Grounds 1–7 Fail
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`B.
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`C.
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`2.
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`3.
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`ii
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`2.
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`3.
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`1.
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`IPR2019-01015
`U.S. Patent 8,799,468
`Ground 2 fails because Petitioner’s combination does not
`disclose or suggest controller instructions configured to detect a
`file in a gateway unit and delete the file from the gateway unit
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`30
`Ground 3 fails because Petitioner’s arguments are unsupported
`and inconsistent with the ʼ468 Patent
`31
`Ground 4 fails because Petitioner fails to show how the
`combination of Hoang ʼ890 and Hoang ʼ561 disclose each and
`every limitation of claims 19 and 29
`34
`Ground 5 fails because Petitioner fails to show how the
`combination of Hoang ʼ890 and OpenCable disclose each and
`every limitation of claims 15 and 32
`42
`VI. CONCLUSION
`44
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`4.
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`iii
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`U.S. Patent 8,799,468
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`Table of Exhibits
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`Exhibits to Petition
`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, 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
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`
`
`
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
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`Ex. 1009
`Ex. 1010
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`Ex. 1011
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`Ex. 1012
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`Ex. 1013
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`Ex. 1014
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`Ex. 1015
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`Ex. 1016
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`Ex. 1017
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`Ex. 1018
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`Ex. 1019
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`Ex. 1020
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`Ex. 1021
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`Ex. 1022
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`Ex. 1023
`Ex. 1024
`Ex. 1025
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`Ex. 1026
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`Ex. 1027
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`Ex. 1028
`Ex. 1029
`Ex. 1030
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`Ex. 2001
`Ex. 2002
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`Ex. 2003
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`Ex. 2004
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`Ex. 2005
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`Ex. 2006
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`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
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`Exhibits to POPR
`Declaration of Dr. Edwin A. Hernandez-Mondragon
`Petition for Inter Partes Review of Claims 1-5, 9,
`11-13, 19, 23-27, and 32-34 of U.S. Patent No.
`8,799,468, Unified Patents Inc. v. Catonian IP
`Management LLC, Case IPR2017-01934
`Markman Construction Order for Multimedia
`Content Management LLC v. Dish Network
`Corporation, Case No. 6:18-cv-00207-ADA
`(W.D.Tex. June 17, 2019)
`“Information technology – Generic coding of
`moving pictures and associated audio information:
`Systems,” International Standard, ISO/EIC 13818-1,
`Second edition, 2000-12-01
`“Digital Video Broadcasting (DVB); DVB
`interaction channel for Cable TV distribution
`systems (CATV),” ETSI Standard, ETSI ES 200
`800, V1.3.1 (2001-10)
`Defendant’s Responsive Claim Construction Brief
`for Multimedia Content Management LLC v. Dish
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`Ex. 2007
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`Ex. 2008
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`Ex. 2009
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`Ex. 2010
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`Network Corporation, Case No. 6:18-cv-00207-
`ADA (W.D.Tex. April 5, 2019)
`Order Denying Motion to Stay Pending Inter Partes
`Review of U.S. Patent Numbers 8,799,468 and
`9,465,925 for Multimedia Content Management LLC
`v. Dish Network Corporation, Case No. 6:18-cv-
`00207-ADA (W.D.Tex. May 30, 2019)
`Decision Denying Institution of Inter Partes Review,
`NHK Spring Co., Ltd. v. Intri-Plex Technologies,
`Inc., Case IPR2018-00752, U.S. Patent No.
`6,183,841, September 12, 2018
`Plaintiff Multimedia Content Management LLC and
`Defendant Dish Network L.L.C.’s Scheduling Order
`for Multimedia Content Management LLC v. Dish
`Network Corporation, Case No. 6:18-cv-00207-
`ADA (W.D.Tex. June 5, 2019)
`Transcript of Markman Hearing Before the
`Honorable Alan D. Albright for Multimedia Content
`Management LLC v. Dish Network Corporation,
`Case No. 6:18-cv-00207-ADA (W.D.Tex. May 7,
`2019)
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`I.
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`INTRODUCTION
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`Patent Owner (“PO”) Multimedia Content Management submits this
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`Preliminary Response to the Petition for Inter Partes Review of United States
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`Patent No. 8,799,468 (“the ’468 Patent”) filed by Petitioner DISH Network L.L.C.
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`The Board should dismiss the Petition in its entirety at least because, as PO
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`shows below, (1) institution would be an inefficient use of the Board’s resources
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`given the timeline of the parallel litigation between PO and Petitioner in the United
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`State District Court for the Western District of Texas (“District Court”), case no.
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`6:18-cv-00207; (2) Petitioner relies on an improper claim construction that is
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`inconsistent with the claim construction ordered by the District Court; and (3)
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`dispositive claim elements are entirely missing from the combination of references
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`asserted in each of the Grounds of the Petition.
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`II. THE ’468 PATENT
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`A. Overview of the ’468 Patent
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`The ’468 Patent is titled “SYSTEM FOR REGULATING ACCESS TO
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`AND DISTRIBUTING CONTENT IN A NETWORK.” The ’468 Patent issued
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`August 5, 2014 from United States Patent Application No. 13/369,174 and is a
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`continuation of United States Patent No. 8,122,128 (“the ’128 Patent”), filed
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`November 16, 2004. The ’128 Patent claims priority from United States
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`1
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`U.S. Patent 8,799,468
`Provisional Application No. 60/563,064 filed April 16, 2004, United States
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`Provisional Application No. 60/538,370 filed January 22, 2004, and United States
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`Provisional Application No. 60/523,057 filed November 18, 2003.
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`B.
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`Person of Ordinary Skill in the Art
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`In a previous IPR involving the ’468 Patent, PO stated: “A person of
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`ordinary skill in the art with respect to the ’468 Patent would have possessed the
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`education, experience, and training commensurate with a person with a bachelor’s
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`degree in electrical engineering or computer science.” EX1016 at 3. PO further
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`stated: “A person of ordinary skill in the art with respect to the ’468 Patent would
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`have knowledge of access controls, network protocols, and communications,
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`including TCP/IP-based standards, software design, distributed systems, and
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`network equipment configuration.” Id. PO’s expert Dr. Hernandez agrees.
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`EX2001, Declaration of Dr. Edwin A Hernandez-Mondragon (“Hernandez Decl.”)
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`at ¶ 18.
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`Petitioner states that a person of ordinary skill in the art “would have a
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`bachelor’s degree in Electrical Engineering, Computer Engineering, Computer
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`Science or a similar technology degree and at least two years of relevant industry
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`experience, including Internet networking architectures, digital programming
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`delivery in broadcast, cable or satellite television networks, and associated set top
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`boxes.” Pet. at 7.
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`2
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`PO respectfully submits that, for purpose of determining whether to institute
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`the Petition, any differences between the above two definitions of a person of
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`ordinary skill in the art are not dispositive.
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`C. Claim Construction
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`In parallel litigation between PO and Petitioner, the District Court construed
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`five terms of the ʼ468 Patent: generate controller instructions, controller node,
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`service provider network, selectively transmitting, and gateway units. EX2003.
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`Contrary to Petitioner’s position, PO agrees that the District Court’s constructions
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`are appropriate for all five terms.
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`1.
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`“selectively transmit[ting, by the plurality of gateway units,]
`the content requests to the service provider network in
`accordance with the controller instructions”
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`The District Court construed the “selectively transmit” element as
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`“transmitting all selected content requests through the service provider network in
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`response to the controller instructions’ decision to transmit the content requests.”
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`EX2003 at 4–5. PO agrees with this construction, and PO’s expert applied this
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`construction throughout his opinion. EX2001 ¶ 40.
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`In contrast to the District Court’s construction, Petitioner construes the
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`selectively transmit element as “transmitting all content requests,” as opposed to
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`all selected content requests, “to take place within the service provider network in
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`response to the controller instructions’ decision to transmit the content requests,”
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`3
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`as opposed to through the service provider network. Pet. at 13 (emphasis added).
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`The District Court explicitly rejected this construction. EX2010 at 85:17–23
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`(rejecting Petitioner’s proposed construction of “transmitting all content requests”),
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`95:15 (Judge Albright stating: “Oh, I’m not going to do ‘within.’”). PO
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`respectfully submits that the Board should reject Petitioner’s proposed construction
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`and follow the District Court’s construction of the “selectively transmit” element.
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`2.
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`“to generate[ing . . . ] controller instructions”
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`The District Court construed the “generate controller instructions” element
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`as “to create or bring 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.” EX2003 at 1–2 (conjugation omitted) (emphasis added). PO
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`agrees with this construction, and PO’s expert applied this construction throughout
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`his opinion. EX2001 ¶ 38. PO’s expert also notes that a POSITA would understand
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`that computer executable instructions “would, by definition, exclude the generation
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`of mere data.” Id. ¶ 39.
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`3.
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`“controller node”
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`The District Court construed the “controller node” element as “a single
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`network device that controls the operation of the gateway units.” EX2003 at 3. PO
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`agrees with this construction, and PO’s expert applied this construction throughout
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`his opinion. EX2001 ¶ 42.
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`4
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`
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`4.
`“service provider network”
`The District Court construed the “service provider network” element as “a
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`U.S. Patent 8,799,468
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`network between the controller node and the plurality of gateway units that is not
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`the public Internet and only includes those network elements operated or controlled
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`by the service provider.” EX2003 at 4. PO agrees with this construction, and PO’s
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`expert applied this construction throughout his opinion. EX2001 ¶ 43.
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`5.
`“gateway unit”
`The District Court construed the “gateway unit” element as “computer
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`devices that are remote from the controller node and interface with the service
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`provider network and a subscriber terminal.” EX2003 at 6. PO agrees with this
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`construction, and PO’s expert applied this construction throughout his opinion.
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`EX2001 ¶ 44.
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`III. THE BOARD SHOULD EXERCISE ITS DISCRETION AND
`DISMISS THE PETITION
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`Institution of IPRs is discretionary, and the Federal Circuit has noted that “the
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`PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic
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`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1357 (Fed. Cir. 2016). “In exercising
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`discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a), we are mindful of
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`the goals of the AIA—namely, to improve patent quality and make the patent system
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`more efficient by the use of post-grant review procedures.” General Plastic
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`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB
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`5
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`IPR2019-01015
`U.S. Patent 8,799,468
`Sep. 6, 2017) (quoted text designated Precedential) (emphasis added).
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`Contrary to the purpose and intent of the inter partes review system, the
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`institution of trial in this case would serve to increase both the costs and the
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`expenses incurred by the parties as well as to duplicate the efforts of the Board and
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`the District Court. See EX2008, NHK Spring Co. v. Intri-Plex Techs., Inc.,
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`IPR2018-00752, Paper 8 (Institution Decision) (PTAB Sept. 12, 2018)
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`(precedential) (denying institution, in part, because district court proceedings
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`deciding the same issues would conclude well before the trial before the PTAB and
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`finding that institution would not be consistent with “an objective of the AIA . . . to
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`provide an effective and efficient alternative to district court litigation.”); see also
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`E-One, Inc. v. Oshkosh Corp., IPR2019-00161, Paper 16 (Institution Decision),
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`IPR2019-00162, Paper 16 (Institution Decision) (denying institution, in part,
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`because trial in concurrent district court litigation was scheduled eleven months
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`from Petition’s filing)
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`As explained below, each of the issues raised in the Petition either (i) has
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`already been decided by the District Court (e.g., claim construction), or (ii) will be
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`decided by the District Court prior to the Board’s entry of a final written decision
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`(e.g., validity). Based on the due date for Patent Owner’s Preliminary Response,
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`Patent Owner estimates that, if instituted, trial in this case would conclude on or
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`around November 2020. Trial in the district court, however, will have already
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`U.S. Patent 8,799,468
`concluded in July 2020, thus leaving no outstanding issues to be resolved. In this
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`case, institution will unnecessarily multiply the proceedings, wasting the resources
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`of both the parties and the Board. In fact, the District Court denied Petitioner’s
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`motion to stay the parallel District Court case until the conclusion of this
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`proceeding based in part on the schedule of parallel District Court case when
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`compared to the timeline of the instant proceeding. EX2007. For this reason
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`alone, the Board should exercise its discretion under 35 U.S.C. § 314(a) and deny
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`institution.
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`In the precedential NHK Spring Co., Ltd. v. Intri-Plex Technologies, Inc.
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`case, IPR2018-00752, the Board considered a petition with a parallel district court
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`proceeding that: involved the same patent, was scheduled to go to trial before a
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`final decision, involved the same claim construction standard, involved the same
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`prior art references, and involved the same arguments as in the petition. The Board
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`determined that these circumstances supported denial of the petition under 35
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`U.S.C. § 314(a), considering the AIA’s objective “to provide an effective and
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`efficient alternative to district court litigation.” EX2008 at 20 (quoting General
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`Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2019-01357, Paper 19
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`(PTAB Sept. 6 2017) (precedential in relevant part)).
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`
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`This case presents the same circumstances that supported the denial of
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`institution under § 314(a) in NHK Spring. The Scheduling Order in the parallel
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`7
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`District Court case sets jury trial for July 20, 2020. EX2009. Accordingly, trial in
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`the parallel District Court Case will conclude before a final decision would be due
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`in this proceeding, if it were to be instituted. See 35 U.S.C. § 316(a)(11)
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`(specifying that “the final determination in an inter partes review [must] be issued
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`not later than 1 year after the date on which the Director notices the institution of a
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`review” unless the Director extends the deadline for good cause shown).
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`To date, the District Court has already invested substantial resources in the
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`parallel District Court case. See EX2007, District Court Denial of Dish’s Motion to
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`Stay at 4–5 (“[I]n view of the advanced nature of the Court’s proceedings,
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`including the completion of the Markman hearing, the rendering of claim
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`constructions by the Court, and the fact that a jury trial has been set for July 2020,
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`the Court finds that [the Court’s expenditure of resources] weighs against granting
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`a stay.”) The District Court has also received briefing and heard oral argument on
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`claim construction and issued a claim construction ruling. See EXS1024–30, 2003.
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`The issues and arguments presented in the Petition on the whole duplicate what has
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`been and will continue to be litigated in the parallel District Court case.
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`The terms Petitioner has proposed for construction have also already been
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`construed by the District Court. As noted in this Response, the Petition takes
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`positions that are inapposite considering the claim construction order issued in the
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`parallel District Court case. Further, the claim construction standard in this
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`8
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`U.S. Patent 8,799,468
`proceeding is the same standard (i.e., that set out by Phillips v. AWH Corp., 415
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`F.3d 1303 (Fed. Cir. 2005) (en banc)) that the district court applied.
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`Petitioner’s final invalidity contentions are due on September 13, 2019
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`EX2009. Assuming that Petitioner has presented its best arguments for invalidity
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`in its Petition, Patent Owner expects that the District Court will rule on the same
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`grounds as the ones presented in the instant Petition long before this IPR
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`concludes. Thus, consideration of these grounds by the Board will represent a
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`duplication of the efforts of the District Court in the parallel District Court case,
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`and an unnecessary waste of the Board’s time and resources. Patent Owner
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`respectfully requests that the Board exercise its discretion under 35 U.S.C. § 314(a)
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`and deny the petition.
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`IV. THE PETITION SHOULD BE DISMISSED DUE TO PETITIONER’S
`RELIANCE ON A FLAWED CLAIM CONSTRUCTION
`Petitioner filed the instant Petition on April 23, 2019. Petitioner states that
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`its proffered constructions are fully consistent with the constructions proposed by
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`Petitioner at the District Court. Pet. at 7. However, Petitioner fails to mention that
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`it filed the Petition despite the fact that a Markman Hearing was scheduled at the
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`District Court a mere three days later on April 26, 2019 and presiding Judge Alan
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`Albright had already notified the parties that he would (and did indeed) decide the
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`constructions of the disputed claim terms during the hearing itself on April 26,
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`9
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`IPR2019-01015
`U.S. Patent 8,799,468
`2019. For reasons unknown to PO, Petitioner pressed forward with the Petition
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`instead of waiting three days, despite the chance that the District Court would
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`disagree with its proffered constructions. That is exactly what happened, and as a
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`result, the Petition relies on a least one improper claim construction that was
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`explicitly rejected by the District Court.
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`As discussed in Section II supra, Petitioner argues that the “selectively
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`transmit[ting]” claim term should be construed as “transmitting all content requests
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`to take place within the service provider network in response to the controller
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`instructions’ decision to transmit the content requests.” See also Pet. at 13.
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`However, the District Court disagreed, and ruled that the term is to be construed as
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`“transmitting all selected requests through the service provider network in
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`response to the controller instructions’ decisions to transmit the content requests.”
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`See Markman Order, EX2003 at 5–6 (emphasis added).
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`More specifically, the District Court explicitly rejected Petitioner’s attempt
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`to construe the selectively transmit[ting] element as “transmitting all content
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`requests,” as the Petition states. EX2010 at 85:17–23. Rather, it is only selected
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`(and not all) content requests that are transmitted. Further, the District Court
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`refused to limit the selectively transmit[ting] element as requiring the transmitted
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`content requests to take place wholly within the service provider network, and held
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`instead that the selected content requests only be transmitted through the service
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`10
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`U.S. Patent 8,799,468
`provider network. Id. at 95:15 (Judge Albright stating: “Oh, I’m not going to do
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`‘within.’”).
`
`Petitioner relies exclusively on Hoang ’980 to show elements of challenged
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`independent claims 1 and 23. However, as discussed below in Section V infra,
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`Hoang ’980 teaches that all content requests—rather than only all selected content
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`requests—are transmitted. Thus, Petitioner’s sole argument for invalidity of the
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`independent claims is premised on an improper claim construction. Petitioner has
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`therefore failed to meet its burden, and the Petition should be dismissed in its
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`entirety for at least this reason. “The Board is under no obligation to subject a
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`patent owner to the burden and expense of discovery and trial where a petition
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`asserts patentability challenges that are keyed to an incorrect claim construction.”
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`See United Microelectronics Corp., et. al. v. Lone Star Silicon Innovations LLC,
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`IPR2017-1513, Paper 10 at 4–5 (Decision Denying Petitioner’s Request for
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`Rehearing) (May 22, 2018).
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`V. GROUNDS 1–7 SHOULD BE DENIED BECAUSE PETITIONER HAS
`FAILED TO MEET ITS BURDEN
`Petitioner challenges claims 1, 6, 13, 15, 19, 23–25, 27–30, 32, 33, and 41
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`on seven grounds, as summarized in the following table, Pet. at 2:
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`As a threshold matter, Petitioner has failed to meet it burden in
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`demonstrating that the challenged independent claims are obvious under 35 U.S.C.
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`§ 103. As seen in the table above, Ground 1 challenges the two independent
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`claims of the ʼ468 Patent, claims 1 and 23. Ground 1 relies solely on a single-
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`reference obviousness argument based on Hoang ʼ980, EX1008.
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`Specifically, Petitioner argues: “Critically, Hoang ʼ980 explained that its
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`unidirectional invention could be implemented in bi-directional system as shown
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`below thus providing explicit motivation to combine in the prior art to this patent.”
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`Pet. at 14. Petitioner relies on the assumption, therefore, that the components of
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`Hoang ʼ980’s unidirectional and bidirectional systems are easily interchangeable
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`and interoperable. See, e.g., Pet. at 37–44 (applying the combination of
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`unidirectional and bidirectional components to the “selectively transmit” element
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`of independent claims 1 and 23). That is simply untrue.
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`Petitioner’s only stated motivation to combine these two systems is the fact
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`that they are both mentioned in Hoang ʼ980, and that combining “two
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`embodiments disclosed adjacent to each other in a prior art patent does not require
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`a leap of inventiveness.” Pet at 14–15 (citing Bos. Sci. Scimed, Inc. v. Cordis
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`Corp., 554 F.3d 982, 991 (Fed. Cir. 2009)). However, the Board has noted that,
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`given the rationale of Bos. Sci. Scimed, it is “not sufficient to demonstrate that each
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`of the components in a challenged claim is known in the prior art; Petitioner must
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`also explain why a person having ordinary skill in the art would have combined the
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`elements disclosed in the separate embodiments.” Samsung SDI Co., Ltd. et al v.
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`UBE Indus., Inc., IPR 2017-02116, Paper 8 (Decision Denying Institution) (PTAB
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`March 12, 2018). Petitioner has not done this.
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`Further, the Board also requires that, for any such reliance on multiple
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`embodiments in a single reference, the Petitioner must establish that the
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`embodiments are predictable variations of one another that do not require a leap of
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`inventiveness. Apple Inc. v. Corephotonics, Ltd., IPR2018-01348, Paper 11
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`(Decision Denying Request for Rehearing) (PTAB Aug. 5, 2019). That too is
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`missing from the Petition.
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`In the instant case, Petitioner has provided no showing that the
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`unidirectional and bidirectional communication systems of Hoang ʼ890 are
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`“predictable variations of each other.” Indeed, Petitioner would have a very
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`difficult time doing so, as Hoang ʼ980, by its very terms, disparages one system in
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`order to extoll the virtues of the other. EX1008, [0005] (“Using bi-directional
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`communications allowed for DOD programs to be sent to individual clients,
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`however this would use significant processing and bandwidth resources and will
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`not work in unidirectional systems.”) (emphasis added). Petitioner attempts to
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`circumvent this requirement by pointing to the statement in Hoang ʼ980 that “those
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`skilled in the art will recognize that all aspects of the present invention can be
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`implemented within the bi-directional communication paradigm.” EX1008,
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`[0049]. However, Petitioner does nothing to address Hoang ʼ980’s prior statement
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`that limitations on processing and bandwidth resources are a significant limitation
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`on the extent to which the unidirectional and bidirectional systems may be
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`combined.
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`Limits on processing and bandwidth resources are significant constraints on
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`Petitioner’s attempt to read Hoang ʼ980 onto the challenged claims because
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`Petitioner’s arguments would require the expenditure of significant processing and
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`bandwidth resources in order to function. See EX2001, Hernandez Decl., ¶¶ 54
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`(“[A] POSITA would readily recognize that there is no need to repeatedly transmit
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`a software update routing to STBs, and doing so would occupy a very large amount
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`of available bandwidth.”), 62 (“According to Hoang ʼ980, a problem for ‘Data-on-
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`Demand’ (DOD) is controlling the access to programs (TV Series, shows, etc.)
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`accessed using [an] STB, and how those programs could be accessed without
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`proper authorization, which in turn will impose a tax on more bandwidth and
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`resources utilized by a service provider.”). Indeed, one of ordinary skill in the art
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`would recognize the teachings of Hoang ʼ980 as naturally leading “a POSITA
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`away from the combining [of] the unidirectional and bi-directional aspects of
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`Hoang ʼ980 in the manner suggested by Petitioner.” Id. at ¶ 61.
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`The express disclosure of Hoang ʼ980 and Dr. Hernandez’s testimony
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`demonstrates that the unidirectional and bidirectional systems disclosed in Hoang
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`ʼ980 are not simply “predictable variations” of one another. Accordingly,
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`Petitioner has not met its burden of establishing a motivation to combine the
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`unidirectional and bidirectional systems of Hoang ʼ980. “[A] patent composed of
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`several elements is not proved obvious merely by demonstrating that each of its
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`elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex,
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`Inc., 550 U.S. 398, 418 (2007). Because Petitioner’s argument concerning the
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`challenged independent claims (Ground 1) fails, all of Petitioners grounds fail, and
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`the Board should dismiss the Petition.
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`Further, PO respectfully submits that multiple dispositive claim elements are
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`entirely missing from the reference, or reference combinations, asserted in each of
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`the above grounds of the Petition, as follows.
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`A. Hoang ’980 Fails to Disclose or Suggest Generating Controller
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`Instructions
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`Petitioner relies exclusively on Hoang ʼ980 for the elements of independent
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`claims 1 and 23. However, Hoang ’980 fails to disclose or suggest “a first
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`processor configured to generate controller instructions,” as in claim 1 or
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`“generating . . . controller instructions,” as in claim 23.
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`As explained in Section II supra, the term “to generate[ing …] controller
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`instructions” is properly construed as “to create[ing] or bring[ing] into being
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`computer executable instructions that determine whether to transmit or not transmit
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`a content request from a user to the service provider network.” Petitioner agrees
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`that the controller instructions are computer executable. Pet. at 8. Therefore, the
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`proper claim construction for the term “controller instructions” must include
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`computer executable instructions, and by definition, excludes mere data that is not
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`computer executable. EX2001 ¶ 39.
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`Hoang ʼ980 describes a central controlling server 502 that is connected to a
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`network. EX1008, [0051]; EX2001, Hernandez Decl., ¶ 50. Petitioner states that a
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`person of skill in the art “would understand that the central controlling server 502
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`creates EPG programs and subscription data packets” for set top boxes. Pet. at 26.
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`In Hoang ʼ980, a subscription data packet 630 includes a version identifier 632, a
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`plurality of client identification codes 634, a plurality of client subscription codes
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`636, a plurality of subscription service codes 638, and a plurality of warning codes.
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`EX1008, [0061]; EX2001, Hernandez Decl., ¶ 50. When a client changes a
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`subscription service, a new subscription data packet 630 is created with codes
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`associated with the change in the subscription service. EX1008, [0061]; EX2001,
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`Hernandez Decl., ¶ 50.
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`The cited portions of Hoang ʼ980 fail to disclose or suggest that the central
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`controlling server 502 generates controller instructions. EX2001, Hernandez
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`Decl., ¶¶ 50–56. For example, the subscription data packet 630 does not include
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`any computer executable instructions. EX2001, Hernandez Decl., ¶¶ 52–54.
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`Rather, in Hoang ʼ980, the subscription data packet 630 includes non-executable
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`data (i.e., the version identifier 632, the plurality of client identification codes 634,
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`etc.). EX2001, Hernandez Decl., ¶ 51. Therefore, the cited portions of Hoang
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`ʼ980 fail to disclose or suggest a first processor configured to generate controller
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`instructions (i.e., computer executable instructions), as in claim 1 (as properly
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`construed). EX2001, Hernandez Decl., ¶ 56.
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`Petitioner argues that Hoang ’980 discloses that the subscription data packet
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`is used to update the STB, which may require updating the STB’s software. Pet. at
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`26–27, citing EX1008, [0071]. However, even if one assumes arguendo that the
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`identification codes cause a software update, this does not mean that the codes
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`themselves are computer executable. EX2001, Hernandez Decl., ¶ 53. In fact, the
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`codes are not computer executable. Id. Moreover, the subscription data packets
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`are transmitted randomly on different channels. EX1008, [0068]. If the
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`subscription pack
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