UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`U.S. Patent No. 9,934,408 B2
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`: Attorney Docket No. 081841.0119
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`In Re:
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`Inventors: Moskowitz, Scott A.;
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`Berry, Mike W.
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`Filed:
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`May 30, 2017
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`Issued:
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`Apr. 3, 2018
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`Assignee: Wistaria Trading Ltd.
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`Title:
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`: IPR No.: Unassigned
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`Secure personal content server :
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`Submitted Electronically via the Patent Trial and Appeal Board End to End System
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`DECLARATION OF SANDEEP CHATTERJEE., Ph.D.
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0001
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`U.S. Patent No. 9,934,408 B2
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`: Attorney Docket No. 081841.0119
`
`In Re:
`
`Inventors: Moskowitz, Scott A.;
`
`Berry, Mike W.
`
`Filed:
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`May 30, 2017
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`Issued:
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`Apr. 3, 2018
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`Assignee: Wistaria Trading Ltd.
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`Title:
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`:
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`:
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`:
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`: IPR No.: Unassigned
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`:
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`Secure personal content server :
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Trial and Appeal Board End to End System
`
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`DECLARATION OF SANDEEP CHATTERJEE., Ph.D.
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0001
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`TABLE OF CONTENTS
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`I. BACKGROUND AND QUALIFICATIONS ......................................... 1
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`II. MATERIALS CONSIDERED ................................................................ 6
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`III. LEGAL UNDERSTANDING ................................................................. 8
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`A. Anticipation ........................................................................................ 9
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`B. Obviousness ....................................................................................... 9
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`IV. BACKGROUND ON THE RELEVANT TECHNOLOGY ................. 13
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`V. THE PATENT AT ISSUE ..................................................................... 26
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`A. The ’408 Patent ................................................................................ 26
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`B. The ’408 Patent Prosecution History ............................................... 29
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`C. Asserted Claims and Priority Date................................................... 31
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`D. Prior Art Considered ........................................................................ 32
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`VI. CONSTRUCTION OF CLAIMS .......................................................... 51
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`A. Level of Ordinary Skill in the Art .................................................... 52
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`B. Claim Terms ..................................................................................... 54
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`VII. INVALIDITY ........................................................................................ 67
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`i
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0002
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`I, Sandeep Chatterjee, Ph.D., declare as follows:
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`1.
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`I make this declaration based upon my own personal knowledge
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`and, if called upon to testify, would testify competently to the matters
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`contained herein.
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`2.
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`I have been asked to provide technical assistance in the inter
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`partes review of U.S. Patent No. 9,934,408 (“the ’408 Patent”).1
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`3.
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`This declaration is a statement of my opinions on issues related
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`to the patentability of claims 1, 6, 8, and 17 of the ’408 Patent.
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`I.
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`Background and Qualifications
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`1. My background and qualifications are stated more fully in my
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`Curriculum Vitae.2 As reflected in my Curriculum Vitae (and as explained
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`below), I have significant professional experience related to the technology
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`described in the ’408 Patent, including architecting, developing, optimizing,
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`deploying and managing complex computing systems (including hardware
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`and software for these systems) for the secure distribution of digitized
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`information, such as mobile and wireless computing systems, distributed
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`computing systems and software-as-a-service (SaaS) systems using different
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`technologies and platforms. Many of these systems included specific security
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`
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`1 Ex[1001].
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`2 Ex[1007].
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`1
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0003
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`and policy requirements for different content and data sets. For example, one
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`of the systems I architected and developed securely distributed and managed
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`still image and audio content to different wireless and wireline devices.
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`Policies associated with the content determined which users and devices could
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`access and view the image and audio content. Another one of the systems I
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`architected and developed limited access to certain audio and image content
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`to certain users. User access was based upon specific triggers, e.g., time-of-
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`day, content type, user restrictions, etc. I provide a brief summary of my
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`experience and qualifications here.
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`2.
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`I am the Chief Executive Officer of Experantis LLC, a
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`technology consulting company. I am also the Dean of the Mobility Center
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`of Excellence at the International Institute of Digital Technologies.
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`Previously, I was the Executive Vice President and Chief Technology Officer
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`of SourceTrace Systems, Inc., a technology and services company enabling
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`the delivery of secure remote electronic services over landline and wireless
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`telecommunications networks.
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`3.
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`I received my bachelor’s degree in Electrical Engineering and
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`Computer Science from the University of California, Berkeley in 1995. I
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`received my master’s degree in Computer Science from the Massachusetts
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`Institute of Technology (MIT) in 1997, and my doctorate in Computer Science
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`2
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0004
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`from MIT in 2001. I received a certificate of completion for an executive
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`education program on global leadership from Harvard University in 2011. My
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`doctoral dissertation at MIT, entitled “Composable System Resources for
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`Networked Systems,” which involved networked client architectures and
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`systems, was selected as one of the top inventions in the history of MIT’s
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`Laboratory for Computer Science. This invention is showcased in a time
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`capsule at the Museum of Science in Boston, Massachusetts.
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`4.
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`In 2011, I was named a Young Global Leader. This honor,
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`bestowed each year by the World Economic Forum, recognizes and
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`acknowledges the top leaders—all below the age of 40—from around the
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`world for their professional accomplishments, commitment to society, and
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`potential to contribute to shaping the future of the world. In 2016, I was
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`appointed to the World Economic Forum’s expert network as an expert in
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`technology and innovation, and I advise world leaders on issues related to
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`technology and innovation.
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`5.
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`I have extensive experience
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`in architecting, developing,
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`optimizing, deploying, and managing complex computing systems, including
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`mobile and wireless computing systems, throughout the world. I have
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`developed mobile and distributed computing systems, including hardware and
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`software for these systems. I have invented, architected, and led the
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`3
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0005
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`development (product, QA, documentation) as well as the initial sales &
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`marketing efforts for key eBusiness, mobile, Web services, and J2EE
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`middleware products and solutions at SourceTrace Systems, Cyndeo, Satora
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`Networks, Bluestone Software, and Hewlett-Packard.
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`6.
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`I also have extensive experience in architecting and developing
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`software-as-a-service (SaaS) systems using different technologies and
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`platforms, including with Web services. Web services using the Simple
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`Object Access Protocol (SOAP) or Representational State Transfer (REST)
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`allow applications that run on different operating systems and using different
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`programming languages to send messages to each other and communicate
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`using the Hypertext Transfer Protocol (HTTP). This exchange of messages
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`enables a form of remote procedure calls where one application or system can
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`invoke the procedures or functionality offered by another application or
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`system thereby utilizing the software as a service. In some systems, Web
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`services, and specifically REST Web services, are used to locate, manage, and
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`control the secure playing of content.
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`7.
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`I was part of the Expert Group that developed the JSR-02952
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`J2ME (Java 2 Platform, Micro Edition) Web Services Specification, the
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`worldwide standard for mobile Web services. I am the co-author, with James
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`Webber, of the book “Developing Enterprise Web Services: An Architect’s
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`4
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0006
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`Guide” (published by Prentice-Hall in 2004). This book has been adopted by
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`over 100 universities and colleges around the world and has been translated
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`or reprinted in numerous countries around the world. I also have served as a
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`columnist on mobile and enterprise software systems for a number of IT
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`magazines, including Java Boutique and Dataquest.
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`8.
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`In 2001, I joined Bluestone Software’s Mobile Middleware Labs
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`as a Senior Engineer developing applications and systems infrastructure for
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`enterprise Java/J2EE, Web services, and enterprise mobile solutions. After
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`the completion of Hewlett-Packard’s (“HP”) acquisition of Bluestone, I
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`became a Senior Member of the Technical Staff at HP’s Middleware Division.
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`I was responsible for architecting and developing the company’s next-
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`generation Web services platform for enterprise as well as mobile
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`environments, known as the Web Services Mediator.
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`9.
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`From 1997–1999, I was the Entrepreneur-in-Residence at
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`FidelityCAPITAL, the venture capital arm of Fidelity Investments. In 1999, I
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`founded and served as President and Chief Technology Officer (CTO) of
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`Satora Networks, which developed tools and technologies for building
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`appliances and services for the Internet using wireless and other technologies
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`to extend it beyond the desktop.
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`5
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0007
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`10. Experantis is being compensated for my time working on this
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`matter at my standard hourly rate plus expenses. Neither Experantis nor I
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`have any personal or financial stake or interest in the outcome of the present
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`proceeding, and the compensation is not dependent on the outcome of this IPR
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`and in no way affects the substance of my statements in this Declaration.
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`II. Materials Considered
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`11.
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`I have considered information from various sources in forming
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`my opinions. Besides drawing from over two decades of research and
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`development work and experience, including in the areas of content
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`distribution and security, I also have reviewed the ’408 Patent, the prosecution
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`file history of the ’408 Patent, DISH’s Petition for Inter Partes Review of
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`the ’408 Patent (the “Petition”) to which this Declaration is being submitted
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`as Exhibit No. 1004, and the other documents and references as cited herein,
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`including those identified in the following table:
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`Exhibit No.
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`Description of Document
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`1001
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`U.S. Patent No. 9,934,408 by Scott A. Moskowitz and Mike W. Berry,
`entitled “Secure personal content server”
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`1002
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`[RESERVED]
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`1003
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`[RESERVED]
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`1004
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`Declaration of Dr. Sandeep Chatterjee
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`1005
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`[RESERVED]
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`6
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0008
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`Exhibit No.
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`Description of Document
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`1006
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`[RESERVED]
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`1007
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`Curriculum Vitae of Dr. Sandeep Chatterjee
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`1008
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`File History for U.S. Patent Application No. 15/607,820
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`1009
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`[RESERVED]
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`1010
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`File History for U.S. Patent Application No. 10/049,101
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`1011
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`[RESERVED]
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`1012
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`[RESERVED]
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`1013
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`[RESERVED]
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`1014
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`1015
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`1016
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`U.S. Patent No. 6,668,246 by Minerva Ming-Yee Yeung et al., entitled
`“Multimedia data delivery and playback system with multi-level
`content and privacy protection” (“Yeung”)
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`U.S. Patent No. 6,345,100 by Earl Levine, entitled “Robust watermark
`method and apparatus for digital signals” (“Levine”)
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`U.S. Patent No. 6,311,214 by Geoffrey B. Rhoads, entitled “Linking of
`computers based on optical sensing of digital data” (“Rhoads”)
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`1017
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`[RESERVED]
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`1018
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`1019
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`First Amended Complaint, Blue Spike LLC et al. v. DISH Network
`Corporation et al., No. 1:19-CV-00160-LPS-CJB
`(D. Del.)
`(“District Court Litigation”)
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`First Amended Complaint, Blue Spike LLC v. DISH Network
`Corporation et al., Nos. 6:18-CV-00333-RWS-KNM (E.D. Tex.),
`1:18-CV-01512-LPS-CJB (D. Del.) (the “Prior Litigation”)
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`1020
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`Affidavit of Service of Complaint on DISH Network Corporation
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`1021
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`Affidavit of Service of Complaint on DISH Network L.L.C.
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`1022
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`Affidavit of Service of Complaint on Dish Network Service L.L.C.
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`
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`7
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0009
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`Exhibit No.
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`1023
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`Description of Document
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`Order Granting Joint Motion to Transfer to the District of Delaware and
`Stay All Deadlines, 6:18-CV-00333-RWS-KNM, ECF No. 19, entered
`in Prior District Court Litigation
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`1024
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`Notice of Voluntary Dismissal Without Prejudice, served in Prior
`District Court Litigation
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`1025
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`[RESERVED]
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`1026
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`[RESERVED]
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`1027
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`1028
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`U.S. Patent No. 5,841,991 by William C. Russell, entitled “In an
`interactive network board, a method and apparatus for storing a media
`access control address in a remotely alterable memory” (“Russell”)
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`U.S. Patent No. 6,128,148 by Hans-Joachim Platte et al., entitled
`“Memory Device Having Multiple Memory Regions for a Recording
`device” (“Platte”)
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`1029
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`[RESERVED]
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`1030
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`[RESERVED]
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`12.
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`I have reviewed the Petition in detail and agree with both its
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`analysis and conclusions.
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`III. Legal Understanding
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`13. My opinions are also informed by my understanding of the
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`relevant law. I understand that the patentability analysis is conducted on a
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`claim-by-claim basis and that there are several possible reasons that a patent
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`claim may be found to be unpatentable.
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`8
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0010
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`14.
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`I understand that earlier publications and patents may act to
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`render a patent unpatentable for one of two reasons: (1) anticipation and
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`(2) obviousness.
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`A. Anticipation
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`15. First, I understand that a single prior art reference, article, patent,
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`or publication “anticipates” a claim if each and every element of the claim is
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`disclosed in that prior art. I further understand that, where a claim element is
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`not explicitly disclosed in a prior art reference, the reference may nonetheless
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`anticipate a claim if the missing claim element is necessarily present in the
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`apparatus or a natural result of the method disclosed, i.e., the missing element
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`is “inherent.”
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`B. Obviousness
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`16. Second, I understand that the prior art may render a patent claim
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`"obvious." I understand that two or more prior art references, articles, patents,
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`or publications that each disclose fewer than all elements of a patent claim
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`may nevertheless be combined to render a patent claim obvious if the
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`combination of the prior art collectively discloses all elements of the claim
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`and one of ordinary skill in the art at the time would have been motivated to
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`combine the prior art. I understand that this motivation to combine need not
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`be explicit in any of the prior art but may be inferred from the knowledge of
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`9
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0011
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`one of ordinary skill in the art at the time the patent was filed. I also
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`understand that one of ordinary skill in the art is not an automaton, but is a
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`person having ordinary creativity. I further understand that one or more prior
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`art references, articles, patents, or publications that disclose fewer than all of
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`the elements of a patent claim may render a patent claim obvious if including
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`the missing element would have been obvious to one of skill in the art (e.g.,
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`the missing element represents only an insubstantial difference over the prior
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`art or a reconfiguration of a known system).
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`17. Under the doctrine of obviousness, a claim may be invalid if the
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`differences between the invention and the prior art are such that the subject
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`matter as a whole would have been obvious at the time the invention was made
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`to a person having ordinary skill in the art to which the subject matter pertains.
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`18.
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`I understand that obviousness is based on the scope and content
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`of the prior art, the differences between the prior art and the claim, the level
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`of ordinary skill in the art, and secondary indicia of obviousness and
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`non-obviousness to the extent they exist.
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`19.
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`I understand that secondary indicia of both obviousness and
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`non-obviousness should be considered when evaluating whether a claimed
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`invention would have been obvious to one of ordinary skill at the time of
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`10
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0012
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`invention. These secondary indicia of non-obviousness may include, for
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`example:
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`• A long felt but unmet need in the prior art that was satisfied by the
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`claimed invention;
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`• Commercial success of processes claimed by the patent;
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`• Unexpected results achieved by the invention;
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`• Praise of the invention by others skilled in the art;
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`• The taking of licenses under the patent by others; and
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`• Deliberate copying of the invention.
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`20.
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`I understand that there must be a relationship between any such
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`secondary indicia and the claimed invention. I further understand that if the
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`claimed invention produced expected results that this is also a secondary
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`consideration supporting an obviousness determination.
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`21.
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`It
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`is also my understanding
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`that
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`there are additional
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`considerations that may be used as further guidance as to when the above
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`factors will result in a finding that a claim is obvious, including the following:
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`• The claimed invention is simply a combination of prior art elements
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`according to known methods to yield predictable results;
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`• The claimed invention is a simple substitution of one known element
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`for another to obtain predictable results;
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`11
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0013
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`• The claimed invention uses known techniques to improve similar
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`devices or methods in the same way;
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`• The claimed invention applies a known technique to a known device or
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`method that is ready for improvement to yield predictable results;
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`• The claimed invention would have been "obvious to try" choosing from
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`a finite number of identified, predictable solutions, with a reasonable
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`expectation of success;
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`• There is known work in one field of endeavor that may prompt
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`variations of it for use in either the same field or a different one based
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`on design incentives or other market forces if the variations would have
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`been predictable to one of ordinary skill in the art;
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`• There existed at the time of invention a known problem for which there
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`was an obvious solution encompassed by the patent's claims; and
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`• There is some teaching, suggestion, or motivation in the prior art that
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`would have led one of ordinary skill to modify the prior art reference
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`or to combine prior art reference teachings to arrive at the claimed
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`invention.
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`22. Finally, I understand that a claim may be deemed invalid for
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`obviousness in light of a single prior art reference, without the need to
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`combine references, if the elements of the claim that are not found in the
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`12
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0014
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`reference can be supplied by the knowledge or common sense of one of
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`ordinary skill in the relevant art.
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`IV. Background on the Relevant Technology
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`23. The ’408 Patent’s “Field of the Invention” discloses (emphasis
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`added):
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`The present invention relates to the secure distribution of
`digitized value-added information, or media content, while
`preserving the ability of publishers to make available unsecured
`versions of the same value-added information, or media content,
`without adverse effect to the systems security.
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`Authentication, verification and authorization are all handled
`with a combination of cryptographic and steganographic
`protocols to achieve efficient, trusted, secure exchange of digital
`information.3
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`24. The ’408 Patent’s “Summary of the Invention” discloses
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`additional detail (emphasis added):
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`A method for creating a secure environment for digital content
`for a consumer is also disclosed. As part of the method, a LCS
`requests and receives a digital data set that may be encrypted
`or scrambled. The digital data set may be embedded with at
`least one robust open watermark, which permits the content to
`be authenticated. The digital data set is preferably be embedded
`with additional watermarks which are generated using
`information about the LCS requesting the copy and/or the SECD
`which provides the copy. Once received by the LCS, the LCS
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`
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`3 ’408 Patent, Ex[1001], 1:36-41.
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`13
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0015
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`exercises control over the content and only releases the data to
`authorized users.4
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`25. The ’408 Patent discusses a variety of known and related
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`information security techniques applied to digital content, including: public
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`key encryption, scrambling, hashing, and watermarking. The ’408 Patent
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`refers to encryption as “data scrambling using keys.”5 It refers to scrambling
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`as “manipulations of the value-added or information rich data at the inherent
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`granularity of the file format”6 and refers to hash functions as “a function
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`which converts an input into an output.”7 Public key encryption, scrambling,
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`and hashing are all cryptographic techniques. And as previously discussed,
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`the ’408 Patent explains, “The digital data set may be embedded with at least
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`one robust open watermark, which permits the content to be authenticated.”8
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`26. Cryptography and watermarking techniques were established
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`long before the advent of electronics and digital content. People have been
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`communicating via encrypted and hidden messages for centuries as protection
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`
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`4 ’408 Patent, Ex[1001], 3:16-27.
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`5 ’408 Patent, Ex[1001], 10:24-25.
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`6 ’408 Patent, Ex[1001], 10:29-31.
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`7 ’408 Patent, Ex[1001], 10:4-6.
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`8 ’408 Patent, Ex[1001], 3:19-21.
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`14
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0016
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`against intercepting parties9 and people have been watermarking paper goods
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`as a sign of authenticity, quality, and as an anti-counterfeiting measure for
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`over 700 years.10 In addition, the application of these security concepts to
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`digital information was widely known prior to the filing of the patent
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`application that resulted in the ’408 Patent. Digital cryptography rapidly
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`developed after Dr. Martin Hellman and Whitfield Diffie introduced
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`public-key cryptography to the public in the 1970’s in a seminal paper, “New
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`Directions in Cryptography.”11 Public-key cryptography relies on a pair of
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`keys, one public and the other private. The public-key is used to encrypt a
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`message and may be known by everyone. The private key for decrypting the
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`content is kept secret and notably, the private key cannot be reverse
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`engineered from the public key. Thus, only those with the private key can
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`decrypt and access the unencrypted message. The use of asymmetric keys to
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`
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`9 See, e.g., Auguste Kerckhoffs, Cryptographie Militaire, J. SCI. MILITAIRES,
`Jan. 1883, at 5–38; P. GASPARIS SCHOTTI, SCHOLA STEGANOGRAPHICA (2d ed.
`1680).
`
`10 Martin Kutter & Frank Hartung, Introduction to Watermarking Techniques,
`in INFORMATION HIDING TECHNIQUES FOR STEGANOGRAPHY AND DIGITAL
`WATERMARKING 97, 98 (Stefan Katzenbeisser & Fabien A.P. Petitcolas eds.,
`2000).
`
`11 Whitfield Diffie & Martin E. Hellman, New Directions in Cryptography,
`22 IEEE TRANSACTIONS INFO. THEORY 644 (1976).
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`
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`15
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0017
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`
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`encrypt and decrypt messages continues to be one of the most successful
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`developments in secure electronic communications.
`
`27.
`
`In 1954, Emil Hembrooke of the Muzac Corporation filed a
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`patent entitled “Identification of sound and like signals” which describes a
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`method for imperceptibly embedding an identification code into music for the
`
`purpose of proving ownership.12 Since that time, a number of watermarking
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`technologies have been developed and deployed for a variety of applications.
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`Interest in embedded signaling continued throughout the next 35 years. By
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`the 1990’s there was significant interest in electronic watermarking
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`(particularly digital watermarking).13
`
`28.
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`“This increase in interest was motivated by copyright concerns
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`that became acute with advances in computer technology and the development
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`of the Web. These technologies enable the perfect copying and distribution
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`of copyrighted material to almost anywhere in the world at almost no cost. To
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`address these concerns, a number of industry technology groups were
`
`established, perhaps the best known being the Copy Protection Technical
`
`
`
`12 Ingemar J. Cox & Matt L. Miller, The First 50 Years of Electronic
`Watermarking, 2 EURASIP J. APPLIED SIGNAL PROCESSING 126, 126 (2002).
`
`13 See id.; see also K. Tanaka et al., Embedding Secret Information into a
`Dithered Multilevel Image, PROC. IEEE MIL. COMM CONF., Sept. 1990,
`at 216–220; A. Tirkel et al., Electronic Water Mark, PROC. DICTA, Dec.
`1993, at 666–672.
`
`
`
`16
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0018
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`
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`Working Group (CPTWG) and the Strategic Digital Music Initiative (SDMI).
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`The former is concerned with digital video content stored on DVD discs and
`
`the latter with digital music. These industry groups recognized that
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`cryptography can only protect the distribution of content and that once a
`
`customer decrypts it, all protection is lost. Watermarking can complement
`
`cryptography, providing protection after decryption, even after the content has
`
`entered the analog world.”14
`
`29.
`
`“The applications of watermarking have been well known and
`
`can be broadly classified as copyright control (owner identification, proof of
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`ownership, transaction tracking, and copy control) broadcast monitoring and
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`device control. Watermarks have been deployed for some of these
`
`applications for several decades.”15
`
`30. For example, “[i]n transaction tracking, or fingerprinting, a
`
`unique watermark is embedded into each copy of a Work. Typically, the
`
`watermark identifies the legal recipient of the copy, and can be used to trace
`
`
`
`14 Ingemar J. Cox & Matt L. Miller, The First 50 Years of Electronic
`Watermarking, 2 EURASIP J. APPLIED SIGNAL PROCESSING 126, 126 (2002);
`see also Frank Hartung et al., Multimedia Watermarking Techniques, 87
`PROC. IEEE 1079, 1080 (July 1999).
`
`15 Ingemar J. Cox & Matt L. Miller, The First 50 Years of Electronic
`Watermarking, 2 EURASIP J. APPLIED SIGNAL PROCESSING 126, 127 (2002).
`
`
`
`17
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0019
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`the source of illegally redistributed content.” 16 An example of an
`
`implementation of transaction tracking was deployed by the DiVX
`
`Corporation in the late 1990’s. “Each DiVX-enabled DVD player embedded
`
`a unique watermark into video that it played. If the video was subsequently
`
`pirated and redistributed, the DiVX Corporation could use the watermark to
`
`identify the exact player used, and, thereby identify the source of the pirated
`
`Work.”17
`
`31. As another example, by at least May 8, 1998, the Digimarc
`
`Corporation had “emerged as the digital industry's de-facto copyright
`
`communication standard worldwide for individuals and corporations alike.”18
`
`Digimarc embeds a digital watermark that is invisible to the naked eye. It
`
`hides in the naturally occurring variations throughout an image. Using
`
`Digimarc’s tools, users could embed a digital watermark into their images and
`
`create “a copyright communication device.” Anyone who views the
`
`watermarked image containing the unique identifier will know who the
`
`
`
`16 See id. at 128.
`
`17 See id. at 128 n.3.
`
`18 See, e.g., DIGIMARC, https://web.archive.org/web/19980508125136/http://
`digimarc.com/.
`
`
`
`18
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0020
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`
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`copyright owner is and how to contact him or her.19 Digimarc explained that
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`“[o]ver a million people can already ‘read’ a Digimarc® watermark since our
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`‘reader’ is available for free on our website and our embedding and reading
`
`software is bundled in approximately 90% of all image editing software.”20
`
`Digimarc further provided technology to identify people who use images
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`legally or illegally. Digimarc’s MarcSpider product crawled the Web looking
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`for watermarked images and reported its findings to the copyright owner. This
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`report gave the copyright owner a thumbnail picture of the found images,
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`other image file data, and a hyperlink to the locations.21 On April 6, 1998,
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`Digimarc had announced it had been issued a key patent on visual image
`
`watermarking. U.S. Patent No. 5,721,788 entitled, “Method and System for
`
`Digital Image Signatures,” was filed in 1992 and issued on February 24,
`
`1998.22
`
`
`
`19 See, e.g., DIGIMARC, https://web.archive.org/web/19980508125227/http://
`digimarc.com/about_wm.html.
`
`20 Id.
`
`21 See DIGIMARC, https://web.archive.org/web/19980508125227/http://digim
`arc.com/about_wm.html.
`
`22 See DIGIMARC, https://web.archive.org/web/19980508125444/http://digi
`marc.com/pr026.html; see also U.S. Patent No. 5,721,788 (filed July 31, 1992)
`(issued Feb. 24, 1998).
`
`
`
`19
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0021
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`32. Cryptography and watermarking are both means of secure
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`content distribution, copy protection, and content management. However,
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`cryptography is the practice of securing a message through encryption while
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`watermarking involves the practice of embedding information into a message.
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`Essentially, cryptography secures a message by hiding the contents of a
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`message, while watermarking secures a message by embedding information
`
`(either visible or invisible to the human eye) into the message.
`
`33. By 1999, I had significant experience with encryption and
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`watermarking. For example, as part of my doctoral research, I developed
`
`hardware and software systems for intelligent environments, including for the
`
`encrypted distribution of digital information between various home and office
`
`devices, such as televisions, video cassette recorders (VCRs), digital picture
`
`frames, refrigerators and children’s toys. Additionally, I used watermarking
`
`tools, such as that offered by Digimarc, to add digital watermarks to digital
`
`images prior to encrypting and distributing those images to specialized digital
`
`picture frames.
`
`34. The development of electronic cryptography and watermarking
`
`techniques naturally accompanied the rise of computers and the internet.
`
`Generally, users held concerns over information privacy and security.
`
`Publishing businesses in particular were worried over the ease with which
`
`
`
`20
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0022
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`
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`people could now make and redistribute perfect copies of their protected
`
`information without authorization.
`
`35. During the 1990s, technology for the electronic distribution of
`
`digital content over the internet became widespread, enabling anyone with a
`
`computer to make unauthorized copies of copyright protected information and
`
`share it with others for free. Starting in 1996, numerous electronics companies
`
`had developed systems capable of making perfect copies of music and other
`
`media for storage on computers and portable music players.23
`
`36. The ’408 Patent background describes the rise of the digitization
`
`of media and its unprotected distribution over the web: “Internet technology
`
`enables anyone to distribute [copies of musical recordings] to their friends, or
`
`the entire world.”24 The ’408 Patent continues, “Hence, a need exists for a
`
`
`
`23 See, e.g., Nick Wingfield, Liquid Audio IPO a Big Success; Stock Price
`More Than Doubles, WSJ
`(July 12, 1999), https://www.wsj.com/
`articles/SB931524332574467915; VP Dream Job: Liquid Audio, WIRED (Jan.
`20,
`1997),
`https://www.wired.com/1997/01/vp-dream-job-liquid-audio/
`(“With the Liquid Audio products, users will be able to download music, listen,
`purchase, and eventually burn their own CDs at their desktops. The company
`also plans to enable musicians anywhere to record, copyright, protect, and
`distribute over the Net.”).
`
`24 ’408 Patent, Ex[1001], 2:27-29.
`
`21
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`
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`DISH-Blue Spike-408
`Exhibit 1004, Page 0023
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`new and improved system for protecting digital content against unauthorized
`
`copying and distribution.”25
`
`37. However, by the time of the earliest related filing cited in
`
`the ’408 Patent, numerous electronic companies had also developed systems
`
`that protected against unauthorized copying and distribution in order to
`
`alleviate the media industry’s concern over unauthorized re-distribut
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