`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`U.S. Patent No. 7,475,246
`: Attorney Docket No. 081841.0119
`In Re:
`Inventor: Moskowitz, Scott A.;
`
`:
`Berry, Mike W.
`:
`Aug. 4, 2000
`:
`Filed:
`Jan. 6, 2009
`: IPR No.: Unassigned
`Issued:
`Assignee: Wistaria Trading Ltd.
`Title:
`Secure personal content server
`
`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
`
`DECLARATION OF SANDEEP CHATTERJEE, Ph.D.
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`DISH-Blue Spike-246
`Exhibit 1006, Page 0001
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`TABLE OF CONTENTS
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`I. Background and Qualifications ............................................................... 1
`II. Materials Considered ............................................................................... 6
`III. Legal Understanding ................................................................................ 9
`A. Anticipation ........................................................................................ 9
`B. Obviousness ..................................................................................... 10
`IV. Background on the Relevant Technology .............................................. 13
`V. The Patent at Issue ................................................................................. 26
`A. The ’246 Patent ................................................................................ 26
`B. The ’246 Patent Prosecution History ............................................... 29
`C. Asserted Claims and Priority Date................................................... 30
`D. Prior Art Considered ........................................................................ 32
`VI. Construction of Claims .......................................................................... 62
`A. Level of Ordinary Skill in the Art .................................................... 64
`B. Claim Terms ..................................................................................... 65
`VII.Invalidity ................................................................................................ 86
`A. Ground 1: Obviousness of Claims 1, 20, 21, 24, and 25 by Yeung in
`view of Lee....................................................................................... 87
`B. Ground 2: Obviousness of Claims 1, 20, 21, 24, and 25 by Yeung in
`view of Lee and Downs ................................................................. 150
`C. Ground 3: Obviousness of Claim 17 over Yeung .......................... 159
`D. Ground 4: Obviousness of Claim 17 over Yeung in view of Levine
` ........................................................................................................ 185
`E. Ground 5: Obviousness of Claim 31 over Yeung in view of Lee,
`Levine, and Rhoads ........................................................................ 197
`
`i
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`DISH-Blue Spike-246
`Exhibit 1006, 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
`
`partes review of U.S. Patent No. 7,475,246 (“the ’246 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, 17, 20, 21, 24, 25, and 31 of the ’246 Patent.
`
`I.
`
`Background and Qualifications
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`4.
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`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 ’246 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
`
`1 Ex[1003].
`2 Ex[1007].
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`1
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`DISH-Blue Spike-246
`Exhibit 1006, 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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`5.
`
`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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`6.
`
`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-246
`Exhibit 1006, 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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`7.
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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.
`
`8.
`
`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
`
`3
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`DISH-Blue Spike-246
`Exhibit 1006, 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.
`
`9.
`
`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.
`
`10.
`
`I was part of the Expert Group that developed the JSR-02952
`
`J2ME (Java 2 Platform, Micro Edition) Web Services Specification, the
`
`worldwide standard for mobile Web services. I am the co-author, with James
`
`Webber, of the book “Developing Enterprise Web Services: An Architect’s
`
`4
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`DISH-Blue Spike-246
`Exhibit 1006, 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
`
`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
`
`magazines, including Java Boutique and Dataquest.
`
`11.
`
`In 2001, I joined Bluestone Software’s Mobile Middleware Labs
`
`as a Senior Engineer developing applications and systems infrastructure for
`
`enterprise Java/J2EE, Web services, and enterprise mobile solutions. After
`
`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.
`
`I was responsible for architecting and developing the company’s next-
`
`generation Web services platform for enterprise as well as mobile
`
`environments, known as the Web Services Mediator.
`
`12.
`
`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-246
`Exhibit 1006, Page 0007
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`13.
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`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
`
`proceedings, and the compensation is not dependent on the outcome of these
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`IPRs and in no way affects the substance of my statements in this Declaration.
`
`II. Materials Considered
`
`14.
`
`I have considered information from various sources in forming
`
`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
`
`distribution and security, I also have reviewed the ’246 Patent, the prosecution
`
`file history of the ’246 Patent, DISH’s two Petitions for Inter Partes Review
`
`of the ’246 Patent (the “Petitions”) to which this Declaration is being
`
`submitted as Exhibit No. 1006, and the other documents and references as
`
`cited herein, including those identified in the following table:
`
`Description
`
`Exhibit
`No.
`10013
`
`[RESERVED]
`
`1002
`
`[RESERVED]
`
`3 Exhibits marked “RESERVED” are reserved for additional Inter Partes
`Review Petitions challenging related patents owned by the same entity.
`6
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`DISH-Blue Spike-246
`Exhibit 1006, Page 0008
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`1003
`
`1004
`
`U.S. Patent No. 7,475,246 by Scott A.
`Moskowitz and Mike W. Berry, entitled “Secure
`personal content server”
`[RESERVED]
`
`1005
`[RESERVED]
`1006 Declaration of Dr. Sandeep Chatterjee for U.S.
`Patent No. 7,475,246
`
`1007
`
`1008
`1009
`
`1010
`
`Curriculum Vitae of Dr. Sandeep Chatterjee
`
`[RESERVED]
`
`[RESERVED]
`File History for U.S. Patent Application No.
`10/049,101
`
`1011
`
`[RESERVED]
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`U.S. Provisional Application No. 60/213,489 by
`Scott A. Moskowitz and Mike W. Berry, entitled
`“A Secure Personal Content Server”
`U.S. Provisional Application No. 60/147,134 by
`Scott A. Moskowitz and Mike W. Berry, entitled
`“A Secure Personal Content Server”
`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”)
`U.S. Patent No. 6,345,100 by Earl Levine, entitled
`“Robust watermark method and apparatus for
`digital signals” (“Levine”)
`U.S. Patent No. 6,311,214 by Rhoads, entitled
`“Linking of computers based on optical sensing
`of digital data” (“Rhoads”)
`
`7
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`DISH-Blue Spike-246
`Exhibit 1006, Page 0009
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`1018
`
`1019
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`1023
`
`1017
`
`U.S. Patent No. 6,950,941 by Chang-hyi Lee et
`al., entitled “Copy protection system for portable
`storage media” (“Lee”)
`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”)
`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”)
`1020 Affidavit of Service of Complaint on DISH
`Network Corporation
`1021 Affidavit of Service of Complaint on DISH
`Network L.L.C.
`1022 Affidavit of Service of Complaint on Dish
`Network Service L.L.C.
`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
`1024 Notice of Voluntary Dismissal Without Prejudice,
`served in Prior District Court Litigation
`Red-line view
`showing changes between
`disclosure filed in U.S. Patent Application No.
`10/049,101 and disclosure
`filed
`in U.S.
`Provisional Application No. 60/213,489
`Red-line view
`showing changes between
`disclosure filed in U.S. Patent Application No.
`10/049,101 and disclosure
`filed
`in U.S.
`Provisional Application No. 60/147,134
`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”
`
`1025
`
`1026
`
`1027
`
`8
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`DISH-Blue Spike-246
`Exhibit 1006, Page 0010
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`1028
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`1029
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`1030
`
`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”)
`Blue Spike's Opening Claim Construction Brief,
`Blue Spike LLC et al. v. Vizio et al., No. 8:17-
`CV-1172-DOC-KES (C.D. Cal.)
`U.S. Patent No. 6,226,618 by Edgar Downs et
`al., entitled “Electronic Content Delivery
`System” (“Downs”)
`
`15.
`
`I have reviewed the Petitions in detail and agree with both the
`
`analysis and conclusions set forth therein.
`
`III. Legal Understanding
`
`16. My opinions are also informed by my understanding of the
`
`relevant law. I understand that the patentability analysis is conducted on a
`
`claim-by-claim basis and that there are several possible reasons that a patent
`
`claim may be found to be unpatentable.
`
`17.
`
`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.
`
`A.
`18.
`
`Anticipation
`First, I understand that a single prior art reference, article, patent,
`
`or publication “anticipates” a claim if each and every element of the claim is
`
`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
`9
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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.”
`
`B.
`19.
`
`Obviousness
`Second, I understand that the prior art may render a patent claim
`
`“obvious.” I understand that two or more prior art references, articles, patents,
`
`or publications that each disclose fewer than all elements of a patent claim
`
`may nevertheless be combined to render a patent claim obvious if the
`
`combination of the prior art collectively discloses all elements of the claim
`
`and one of ordinary skill in the art at the time would have been motivated to
`
`combine the prior art. I understand that this motivation to combine need not
`
`be explicit in any of the prior art but may be inferred from the knowledge of
`
`one of ordinary skill in the art at the time the patent was filed. I also
`
`understand that one of ordinary skill in the art is not an automaton, but is a
`
`person having ordinary creativity. I further understand that one or more prior
`
`art references, articles, patents, or publications that disclose fewer than all of
`
`the elements of a patent claim may render a patent claim obvious if including
`
`the missing element would have been obvious to one of skill in the art (e.g.,
`
`the missing element represents only an insubstantial difference over the prior
`
`art or a reconfiguration of a known system).
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`10
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`20. 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
`
`matter as a whole would have been obvious at the time the invention was made
`
`to a person having ordinary skill in the art to which the subject matter pertains.
`
`21.
`
`I understand that obviousness is based on the scope and content
`
`of the prior art, the differences between the prior art and the claim, the level
`
`of ordinary skill in the art, and secondary indicia of obviousness and
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`non-obviousness to the extent they exist.
`
`22.
`
`I understand that secondary indicia of both obviousness and
`
`non-obviousness should be considered when evaluating whether a claimed
`
`invention would have been obvious to one of ordinary skill at the time of
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`invention. These secondary indicia of non-obviousness may include, for
`
`example:
`
` A long-felt but unmet need in the prior art that was satisfied by the
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`claimed invention;
`
` Commercial success of processes claimed by the patent;
`
` 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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`11
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`23.
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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.
`
`24.
`
`It
`
`is also my understanding
`
`that
`
`there are additional
`
`considerations that may be used as further guidance as to when the above
`
`factors will result in a finding that a claim is obvious, including the following:
`
` The claimed invention is simply a combination of prior art elements
`
`according to known methods to yield predictable results;
`
` The claimed invention is a simple substitution of one known element
`
`for another to obtain predictable results;
`
` The claimed invention uses known techniques to improve similar
`
`devices or methods in the same way;
`
` 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;
`
` 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
`
`expectation of success;
`
` 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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`12
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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
`
`or to combine prior art reference teachings to arrive at the claimed
`
`invention.
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`25.
`
`Finally, I understand that a claim may be deemed invalid for
`
`obviousness in light of a single prior art reference, without the need to
`
`combine references, if the elements of the claim that are not found in the
`
`reference can be supplied by the knowledge or common sense of one of
`
`ordinary skill in the relevant art.
`
`IV. Background on the Relevant Technology
`
`26.
`
`The ’246 Patent’s “Field of the Invention” discloses (emphasis
`
`added):
`
`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.
`Authentication, verification and authorization are all handled
`with a combination of cryptographic and steganographic
`13
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`DISH-Blue Spike-246
`Exhibit 1006, Page 0015
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`protocols to achieve efficient, trusted, secure exchange of digital
`information.4
`27.
`The ’246 Patent’s “Summary of the Invention” discloses
`
`additional detail (emphasis added):
`
`A method for creating a secure environment for digital content
`for a consumer is also disclosed. As part of the method, a [sic]
`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
`exercises control over the content and only releases the data to
`authorized users.5
`28.
`The ’246 Patent discusses a variety of known and related
`
`information security techniques applied to digital content, including: public
`
`key encryption, scrambling, hashing, and watermarking. The ’246 Patent
`
`refers to encryption as “data scrambling using keys.”6 It refers to scrambling
`
`as “manipulations of the value-added or information rich data at the inherent
`
`granularity of the file format”7 and refers to hash functions as “a function
`
`4 ’246 Patent, Ex[1003] at 1:48-52 (emphasis added).
`5 ’246 Patent, Ex[1003] at 2:51-61 (emphasis added).
`6 ’246 Patent, Ex[1003] at 9:48-49.
`7 ’246 Patent, Ex[1003] at 10:29-31.
`14
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`DISH-Blue Spike-246
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`which converts an input into an output.”8 Public key encryption, scrambling,
`
`and hashing are all cryptographic techniques. And as previously discussed,
`
`the ’246 Patent explains, “The digital data set may be embedded with at least
`
`one robust open watermark, which permits the content to be authenticated.”9
`
`29. Cryptography and watermarking techniques were established
`
`long before the advent of electronics and digital content. People have been
`
`communicating via encrypted and hidden messages for centuries as protection
`
`against intercepting parties10 and people have been watermarking paper goods
`
`as a sign of authenticity, quality, and as an anti-counterfeiting measure for
`
`over 700 years.11 In addition, the application of these security concepts to
`
`digital information was widely known prior to the filing of the patent
`
`application that resulted in the ’246 Patent. Digital cryptography rapidly
`
`developed after Dr. Martin Hellman and Whitfield Diffie introduced
`
`public-key cryptography to the public in the 1970’s in a seminal paper, “New
`
`8 ’246 Patent, Ex[1003] at 10:4-6.
`9 ’246 Patent, Ex[1003] at 3:19-21.
`10 See, e.g., Auguste Kerckhoffs, Cryptographie Militaire, J. SCI. MILITAIRES,
`Jan. 1883, at 5–38; P. GASPARIS SCHOTTI, SCHOLA STEGANOGRAPHICA (2d ed.
`1680).
`11 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).
`
`15
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`DISH-Blue Spike-246
`Exhibit 1006, Page 0017
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`Directions in Cryptography.”12 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
`
`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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`encrypt and decrypt messages continues to be one of the most successful
`
`developments in secure electronic communications.
`
`30.
`
`In 1954, Emil Hembrooke of the Muzac Corporation filed a
`
`patent entitled “Identification of sound and like signals” which describes a
`
`method for imperceptibly embedding an identification code into music for the
`
`purpose of proving ownership.13 Since that time, a number of watermarking
`
`technologies have been developed and deployed for a variety of applications.
`
`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
`
`(particularly digital watermarking).14
`
`12 Whitfield Diffie & Martin E. Hellman, New Directions in Cryptography,
`22 IEEE TRANSACTIONS INFO. THEORY 644 (1976).
`13 Ingemar J. Cox & Matt L. Miller, The First 50 Years of Electronic
`Watermarking, 2 EURASIP J. APPLIED SIGNAL PROCESSING 126, 126 (2002).
`14 See id.; see also K. Tanaka et al., Embedding Secret Information into a
`Dithered Multilevel Image, PROC. IEEE MIL. COMM CONF., Sept. 1990,
`16
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`DISH-Blue Spike-246
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`
`
`31.
`
`“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
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`established, perhaps the best known being the Copy Protection Technical
`
`Working Group (CPTWG) and the Strategic Digital Music Initiative (SDMI).
`
`The former is concerned with digital video content stored on DVD discs and
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`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
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`customer decrypts it, all protection is lost. Watermarking can complement
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`cryptography, providing protection after decryption, even after the content has
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`entered the analog world.”15
`
`32.
`
`“The applications of watermarking have been well known and
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`can be broadly classified as copyright control (owner identification, proof of
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`ownership, transaction tracking, and copy control) broadcast monitoring and
`
`at 216–220; A. Tirkel et al., Electronic Water Mark, PROC. DICTA, Dec.
`1993, at 666–672.
`15 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).
`17
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`DISH-Blue Spike-246
`Exhibit 1006, Page 0019
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`device control. Watermarks have been deployed for some of these
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`applications for several decades.”16
`
`33.
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`For example, “[i]n transaction tracking, or fingerprinting, a
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`unique watermark is embedded into each copy of a Work. Typically, the
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`watermark identifies the legal recipient of the copy, and can be used to trace
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`the source of illegally redistributed content.” 17 An example of an
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`implementation of transaction tracking was deployed by the DiVX
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`Corporation in the late 1990’s. “Each DiVX-enabled DVD player embedded
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`a unique watermark into video that it played. If the video was subsequently
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`pirated and redistributed, the DiVX Corporation could use the watermark to
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`identify the exact player used, and, thereby identify the source of the pirated
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`Work.”18
`
`34. 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.”19
`
`16 Ingemar J. Cox & Matt L. Miller, The First 50 Years of Electronic
`Watermarking, 2 EURASIP J. APPLIED SIGNAL PROCESSING 126, 127 (2002).
`17 See id. at 128.
`18 See id. at 128 n.3.
`19 See, e.g., DIGIMARC, https://web.archive.org/web/19980508125136/http://
`digimarc.com/.
`
`18
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`DISH-Blue Spike-246
`Exhibit 1006, Page 0020
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`Digimarc embeds a digital watermark that is invisible to the naked eye. It
`
`hides in the naturally occurring variations throughout an image. Using
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`Digimarc’s tools, users could embed a digital watermark into their images and
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`create “a copyright communication device.” Anyone who views the
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`watermarked image containing the unique identifier will know who the
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`copyright owner is and how to contact him or her.20 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
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`software is bundled in approximately 90% of all image editing software.”21
`
`Digimarc further provided technology to identify people who use images
`
`legally or illegally. Digimarc’s MarcSpider product crawled the Web looking
`
`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,
`
`other image file data, and a hyperlink to the locations.22 On April 6, 1998,
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`Digimarc had announced it had been issued a key patent on visual image
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`watermarking. U.S. Patent No. 5,721,788 entitled, “Method and System for
`
`20 See, e.g., DIGIMARC, https://web.archive.org/web/19980508125227/http://
`digimarc.com/about_wm.html.
`21 Id.
`22 See DIGIMARC, https://web.archive.org/web/19980508125227/http://digim
`arc.com/about_wm.html.
`
`19
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`DISH-Blue Spike-246
`Exhibit 1006, Page 0021
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`Digital Image Signatures,” was filed in 1992 and issued on February 24,
`
`1998.23
`
`35. Cryptography and watermarking are both means of secure
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`content distribution, copy protection, and content management. However,
`
`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.
`
`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.
`
`36. 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
`
`23 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).
`
`20
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`DISH-Blue Spike-246
`Exhibit 1006, Page 0022
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`images prior to encrypting and distributing those images to specialized digital
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`picture frames.
`
`37.
`
`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
`
`people could now make and redistribute perfect copies of their protected
`
`information without authorization.
`
`38. 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
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`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.24
`
`24 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: Liqu