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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
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`APPLE INC.
`Petitioner
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`v.
`
`MAXEL, LTD.
`Patent Owner
`____________
`
`IPR2020-00200
`Patent No. 10,084,991
` ____________
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`DECLARATION OF DR. ANDREW LIPPMAN
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`IPR2020-00200
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`TABLE OF CONTENTS
`BACKGROUND AND QUALIFICATIONS
`I.
`II. LEGAL FRAMEWORK
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`
`
`4
`9
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`10
`A. ANALOGOUS ART
`10
`B. OBVIOUSNESS
`C.
`SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS 15
`D.
`17
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`CLAIM CONSTRUCTION
`III. OPINION REGARDING LEVEL OF SKILL OF A PERSON
`HAVING ORDINARY SKILL IN THE ART
`IV. BACKGROUND OF THE TECHNOLOGY
`V. OPINIONS REGARDING THE ’991 PATENT AND
`ANALAGOUS ART
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`17
`19
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`25
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`26
`27
`30
`31
`32
`33
`35
`102
`104
`106
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`34
`35
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`102
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`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE
`B. OPINIONS REGARDING ASMUSSEN
`C. OPINIONS REGARDING BEAR
`D. OPINIONS REGARDING MARLEY
`E.
`F.
`A.
`A.
`B.
`C.
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`’991 PATENT
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`OPINIONS REGARDING DEFAZIO
`OPINIONS REGARDING LINDSTROM
`VI. OPINIONS REGARDING GROUND 1: COMBINATION OF
`ASMUSSEN AND BEAR
`VII. GROUND 1: THE COMBINATION OF ASMUSSEN AND BEAR
`CLAIM 1
`VIII. OPINIONS REGARDING GROUND 2: THE COMBINATION
`OF ASMUSSEN, BEAR, AND MARLEY
`CLAIM 1(C)
`CLAIM 2
`CLAIM 3
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`D.
`E.
`F.
`A.
`B.
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`CLAIM 4
`CLAIM 5
`CLAIM 12
`IX. OPINIONS REGARDING GROUND 3: THE COMBINATION
`OF ASMUSSEN, BEAR, MARLEY AND DEFAZIO
`CLAIM 5
`CLAIM 12
`X. OPINIONS REGARDING GROUND 4: THE COMBINATION
`OF ASMUSSEN, LINDSTROM, AND BEAR
`XI. CONCLUSION
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`
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`107
`111
`118
`121
`124
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`121
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`125
`135
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
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`I, Dr. Andrew Lippman, hereby declare the following:
`
`I.
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`BACKGROUND AND QUALIFICATIONS
`1. My name is Andrew Lippman, and I am over 21 years of age and
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`otherwise competent to make this Declaration. I make this Declaration based on facts
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`and matters within my own knowledge and on information provided to me by others,
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`and, if called as a witness, I could and would competently testify to the matters set
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`forth herein.
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`2.
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`I have been retained as a technical expert witness in this matter by
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`Counsel for the Petitioner, Apple Inc. (“Petitioner”) to provide my independent
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`opinions on certain issues requested by Counsel for Petitioner relating to the
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`accompanying Petition for Inter Partes Review of U.S. Patent No. 10,084,991 (“the
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`’991 Patent”). I am being compensated at an hourly rate of $650.00. My
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`compensation in this matter is not based on the substance of my opinions or on the
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`outcome of this matter. I have been informed that Maxell, Ltd. is the purported
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`owners of the ’991 Patent. I note that I have no financial interest in Maxell, Ltd. or
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`Petitioner, and I have no other interest in the outcome of this matter.
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`3.
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`I have summarized in this section my educational background, career
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`history, and other qualifications relevant to this matter. I have also included a current
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`version of my curriculum vitae, attached as Appendix B.
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
`I earned my undergraduate degree in Electrical Engineering from MIT
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`4.
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`in 1971. I earned a Master of Science degree in Computer Graphics from MIT in
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`1978. I earned a Ph.D. in Electrical Engineering from the École Polytechnique
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`Fédérale de Lausanne (Switzerland) in 1995. My thesis was on scalable video, a
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`technique for representing visual data in a fluid and variable networking and
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`processing environment, similar to what we call streaming today.
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`5.
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`I am currently a Senior Research Scientist at the Massachusetts Institute
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`of Technology (“MIT”) and Associate Director of the MIT Media Laboratory, an
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`approximately $80 million per year research and teaching facility at MIT, which I
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`helped establish in the early 1980s.
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`6.
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`At MIT, I have supervised over 50 Masters and Ph.D. theses in the
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`Media Arts and Sciences program and have taught courses such as Digital Video and
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`MIT’s freshman physics seminar. Through the course of my career, I have directed
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`and served as principal investigator of research projects supported by the Defense
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`Advanced Research Projects Agency (DARPA), the Office of Naval Research
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`(ONR), The National Science Foundation (NSF), and over 50 industrial
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`companies. I have never precisely calculated my net research volume, but it is in
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`excess of $50 million.
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`7.
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`I am named as an inventor on six patents in the area of video and digital
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`processing and have served on the advisory boards for technology companies in
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
`fields ranging from video conferencing to music analysis. I have authored or co-
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`authored over 65 published papers in the fields of interactivity, communications,
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`video coding, and television. I served on the editorial board of the Image
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`Communication Journal between 1989 and 2003. I have served as an expert witness
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`in patent cases since 2001, addressing diverse features of interactive television,
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`electronic program guides, and user interaction.
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`8.
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`I have worked generally on video interaction systems since the
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`1970s. In the early 1970s, I developed font representations that permitted high
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`quality display of text on standard broadcast television receivers. In 1978, I directed
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`a DARPA-funded project called the “Movie-Map” that used computing and optical
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`video and image storage to create an “experiential map” that featured “surrogate
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`travel,” the ability to recreate the visual experience of traveling through a real place,
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`a city. This is similar to Google’s Street-View and mapping systems.
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`9.
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`In the 1980s, I was principal investigator of Office of Naval Research
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`funded programs in video and graphics computer systems for interactive learning
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`dedicated
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`to maintenance and repair. I also developed networked video
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`communications systems
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`that
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`included scripting
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`languages for specifying
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`audiovisual content and representing it on various monitoring terminals.
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`10.
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`In 1991, I created the “Media Bank” program at MIT, the purpose of
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`which was to allow a diverse set of networked devices to access appropriate forms
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
`of content for which they had the bandwidth and processing power to display. This
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`entailed maintaining state information about terminal devices at a server and using
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`that to determine the best representation of the audiovisual material to deliver to
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`them. In addition, it included and developed cryptographic distribution methods that
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`ensured secure delivery of information on the network. Related to this work, I also
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`supervised Masters theses on networked distribution of video and coding specifically
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`for diverse uses on the Internet. My colleagues and I created demonstrations of
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`interactive television systems for news that combined the evening newscast with
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`additional data from print sources so the viewer could learn more about the story
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`than was available in the live broadcast.
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`11. Also in 1991, I created the Television of Tomorrow program at MIT.
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`This program addressed the digital representation and delivery of video at diverse
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`scales and through diverse networks. This program built on work on scalable
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`representations of images that were standards-independent and interactive.
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`12.
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`In 1993, I was invited to be a member of Robert Kahn’s “Cross Industry
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`Working Group” the goal of which was to develop the ideas for a National
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`Information Infrastructure. At DARPA, Kahn had initiated the research to develop
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`the Arpanet and the Internet. Throughout this period, my students and I worked on
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`distributed interactive systems for consumer use (television, electronic newspapers,
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
`learning) including the basic technology of the network and the client-server
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`interactions.
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`13.
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`I was a member of the Motion Picture Experts Groups, an ISO standards
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`committee effort that defined the standards for common distribution of “MP3” music
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`and storage and distribution of “MPEG Video.” I co-wrote the paper defining the
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`requirements for the MPEG-2 standard with Okubo and McCann in 1995. MPEG
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`standards remain the predominant encoding for distribution of digital video to this
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`day. I was also the principal investigator on industry-funded programs addressing
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`digital motion pictures — the “Movies of the Future” program at MIT, and high
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`definition television, “Television of Tomorrow.” At MIT, I created the “Digital Life”
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`consortium, the purpose of which was to explore and develop ideas relevant to an
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`Internet-connected society.
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`14. Based on my experiences described above, and as indicated in my
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`Curriculum Vitae, I am qualified to provide the following opinions with respect to
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`the patents in this case. Additionally, I was at least a person having ordinary skill in
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`the art as of the priority date of the ’991 Patent.
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`15.
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`I am being compensated for my time spent in connection with this case.
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`I have no financial interest in the outcome of this case. The opinions provided in this
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`report are my own and my compensation does not depend in any way on the
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`substance of my opinions.
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
`16. As part of my work and in forming my opinions in connection with this
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`proceeding, I have reviewed the following materials. For any prior art listed below,
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`it is my opinion persons of ordinary skill in my field would reasonably rely upon
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`such prior art in forming opinions regarding the subject matter of this proceeding:
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`• Petition for Inter Partes Review of U.S. Patent No. 10,084,991;
`• U.S. Patent No. 10,084,991 (Ex. 1001);
`• File History for U.S. Patent 10,084,991 (Ex. 1002);
`• U.S. Patent No. 7,565,680 to Asmussen (Ex. 1004);
`• U.S. Patent No. 7,548,255 to Bear (Ex. 1005);
`• U.S. Patent Application No. 2007/0139514 to Marley (Ex. 1006)
`• U.S. Patent No. 5,940,484 to DeFazio (Ex. 1007).
`• U.S. Patent Application No. 2004/0031064 to Lindstrom (Ex. 1008)
`• U.S. Patent No. 6,493,020 to Stevenson (Ex. 1012)
`• U.S. Patent No. 6,134,223 to Burke (Ex. 1013)
`• U.S. Patent No. 8,458,756 to Rodriguez (Ex. 1014)
`• U.S. Patent No. 7,373,650 to Rodriguez (Ex. 1015)
`• Explorer® Digital Video Recorder - Users Guide (Ex. 1016)
`• “So far, interactive TV is no match for the mall” - Tampa Bay Times (St.
`Petersburg, Florida) June 5, 1995 (Ex. 1017); and
`• “Comcast rolls out video on demand” - Sunday News (Lancaster,
`Pennsylvania) Nov. 3, 2002 (Ex. 1018)
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`II. LEGAL FRAMEWORK
`17.
`I am a technical expert and do not offer any legal opinions. However, I
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`have been informed about certain legal principles regarding patentability and related
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`matters under United States patent law, which I have applied in performing my
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`analysis and arriving at my technical opinions in this matter.
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
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`A. Analogous Art
`18.
`I have been informed by counsel that for prior art to be used to establish
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`the unpatentability of a patent based on obviousness, the prior art must be “analogous
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`art” to the claimed invention. I have also been informed by counsel that a prior art
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`reference is analogous art to the claimed invention if: (1) the reference is from the
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`same field of endeavor as the claimed invention, even if it addresses a different
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`problem; or (2) the reference is reasonably pertinent to the problem faced by the
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`invention, even if it is not in the same field of endeavor as the claimed invention.
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`B. Obviousness
`19.
`I have been informed that a person cannot obtain a patent on an
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`invention if the differences between the invention and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the invention was
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`made to a person having ordinary skill in the art (“POSITA”). I have been informed
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`that a conclusion of obviousness may be founded upon more than a single item of
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`prior art. I have been further informed that obviousness is determined by evaluating
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`the following factors: (1) the scope and content of the prior art, (2) the differences
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`between the prior art and the claim at issue, (3) the level of ordinary skill in the
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`pertinent art, and (4) secondary considerations of non-obviousness. In addition, the
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`obviousness inquiry should not be done in hindsight. Instead, the obviousness
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`inquiry should be done through the eyes of a POSITA at the time of the alleged
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
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`invention.
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`20.
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`In considering whether certain prior art renders a particular patent claim
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`obvious, I have been informed that I can consider the scope and content of the prior
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`art, including the fact that one of skill in the art would regularly look to the
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`disclosures in patents, trade publications, journal articles, conference papers,
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`industry standards, product
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`literature and documentation,
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`texts describing
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`competitive technologies, requests for comment published by standard setting
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`organizations, and materials from industry conferences, as examples. I have been
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`informed that for a prior art reference to be proper for use in an obviousness analysis,
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`the reference must be “analogous art” to the claimed invention. I have been informed
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`that a reference is analogous art to the claimed invention if: (1) the reference is from
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`the same field of endeavor as the claimed invention (even if it addresses a different
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`problem); or (2) the reference is reasonably pertinent to the problem faced by the
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`inventor (even if it is not in the same field of endeavor as the claimed invention). In
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`order for a reference to be “reasonably pertinent” to the problem, it must logically
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`have commended itself to an inventor's attention in considering his problem. In
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`determining whether a reference is reasonably pertinent, one should consider the
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`problem faced by the inventor, as reflected either explicitly or implicitly, in the
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`specification. I believe that all of the references I considered in forming my opinions
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`in this IPR are well within the range of references a POSITA would have consulted
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
`to address the type of problems described in the Challenged Claims.
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`21.
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`I have been informed that, in order to establish that a claimed invention
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`was obvious based on a combination of prior art elements, a clear articulation of the
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`reason(s) why a claimed invention would have been obvious must be provided.
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`Specifically, I am informed that, under the U.S. Supreme Court’s KSR decision, a
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`combination of multiple items of prior art renders a patent claim obvious when there
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`was an apparent reason for one of ordinary skill in the art, at the time of the invention,
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`to combine the prior art, which can include, but is not limited to, any of the following
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`rationales: (A) combining prior art methods according to known methods to yield
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`predictable results; (B) substituting one known element for another to obtain
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`predictable results; (C) using a known technique to improve a similar device in the
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`same way; (D) applying a known technique to a known device ready for
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`improvement to yield predictable results; (E) trying a finite number of identified,
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`predictable potential solutions, with a reasonable expectation of success; (F)
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`identifying that known work in one field of endeavor may prompt variations of it for
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`use in either the same field or a different one based on design incentives or other
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`market forces if the variations are predictable to one of ordinary skill in the art; or
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`(G) identifying an explicit 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
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`the prior art references to arrive at the claimed invention. I am also informed that
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
`where there is a motivation to combine, claims may be rejected as prima facie
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`obvious provided a POSITA would have had a reasonable expectation of success
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`regarding the proposed combination.
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`22.
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`I am informed that the existence of an explicit teaching, suggestion, or
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`motivation to combine known elements of the prior art is a sufficient, but not a
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`necessary, condition to a finding of obviousness. This so-called “teaching-
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`suggestion-motivation” test is not the exclusive test and is not to be applied rigidly
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`in an obviousness analysis. In determining whether the subject matter of a patent
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`claim is obvious, neither the particular motivation nor the avowed purpose of the
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`patentee controls. Instead, the important consideration is the objective reach of the
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`claim. In other words, if the claim extends to what is obvious, then the claim is
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`invalid. I am further informed that the obviousness analysis often necessitates
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`consideration of the interrelated teachings of multiple patents, the effects of demands
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`known to the technological community or present in the marketplace, and the
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`background knowledge possessed by a person having ordinary skill in the art. All of
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`these issues may be considered to determine whether there was an apparent reason
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`to combine the known elements in the fashion claimed by the patent.
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`23.
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`I also am informed that in conducting an obviousness analysis, a precise
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`teaching directed to the specific subject matter of the challenged claim need not be
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`sought out because it is appropriate to take account of the inferences and creative
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
`steps that a POSITA would employ. The prior art considered can be directed to any
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`need or problem known in the field of endeavor at the time of invention and can
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`provide a reason for combining the elements of the prior art in the manner claimed.
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`In other words, the prior art need not be directed towards solving the same specific
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`problem as the problem addressed by the patent. Further, the individual prior art
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`references themselves need not all be directed towards solving the same problem. I
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`am informed that, under the KSR obviousness standard, common sense is important
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`and should be considered. Common sense teaches that familiar items may have
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`obvious uses beyond their primary purposes.
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`24.
`
`I also am informed that the fact that a particular combination of prior
`
`art elements was “obvious to try” may indicate that the combination was obvious
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`even if no one attempted the combination. If the combination was obvious to try
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`(regardless of whether it was actually tried) or leads to anticipated success, then it is
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`likely the result of ordinary skill and common sense rather than innovation. I am
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`further informed that in many fields it may be that there is little discussion of obvious
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`techniques or combinations, and it often may be the case that market demand, rather
`
`than scientific literature or knowledge, will drive the design of an invention. I am
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`informed that an invention that is a combination of prior art must do more than yield
`
`predictable results to be non-obvious.
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`25.
`
`I am informed that for a patent claim to be obvious, the claim must be
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
`obvious to a POSITA at the time of the alleged invention. I am informed that the
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`factors to consider in determining the level of ordinary skill in the art include (1) the
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`educational level and experience of people working in the field at the time the
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`invention was made, (2) the types of problems faced in the art and the solutions
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`found to those problems, and (3) the sophistication of the technology in the field.
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`26.
`
`I am informed that it is improper to combine references where the
`
`references teach away from their combination. I am informed that a reference may
`
`be said to teach away when a POSITA, upon reading the reference, would be
`
`discouraged from following the path set out in the reference, or would be led in a
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`direction divergent from the path that was taken by the patent applicant. In general,
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`a reference will teach away if it suggests that the line of development flowing from
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`the reference’s disclosure is unlikely to be productive of the result sought by the
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`patentee. I am informed that a reference teaches away, for example, if (1) the
`
`combination would produce a seemingly inoperative device, or (2) the references
`
`leave the impression that the product would not have the property sought by the
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`patentee. I also am informed, however, that a reference does not teach away if it
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`merely expresses a general preference for an alternative invention but does not
`
`criticize, discredit, or otherwise discourage investigation into the invention claimed.
`
`C.
`27.
`
`Secondary Considerations of Non-Obviousness
`I am informed that even if a prima facie case of obviousness is
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
`established, the final determination of obviousness must also consider “secondary
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`considerations” if presented. In most instances, the patentee raises these secondary
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`considerations of non-obviousness. In that context, the patentee argues an invention
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`would not have been obvious in view of these considerations, which include: (a)
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`commercial success of a product due to the merits of the claimed invention; (b) a
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`long-felt, but unsatisfied need for the invention; (c) failure of others to find the
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`solution provided by the claimed invention; (d) deliberate copying of the invention
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`by others; (e) unexpected results achieved by the invention; (f) praise of the
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`invention by others skilled in the art; (g) lack of independent simultaneous invention
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`within a comparatively short space of time; (h) teaching away from the invention in
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`the prior art.
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`28.
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` I am further informed that secondary-considerations evidence is only
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`relevant if the offering party establishes a connection, or nexus, between the
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`evidence and the claimed invention. The nexus cannot be based on prior art features.
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`The establishment of a nexus is a question of fact. While I understand that the Patent
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`Owner here has not offered any secondary considerations at this time, I will
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`supplement my opinions in the event that the Patent Owner raises secondary
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`considerations during the course of this proceeding.
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
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`D. Claim Construction
`29.
`I have been informed by counsel that the first step in an unpatentability
`
`analysis involves construing the claims, as necessary, to determine their scope.
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`Second, the construed claim language is then compared to the disclosures of the prior
`
`art. I am informed that claims are generally given their ordinary and custom meaning
`
`as understood by one of ordinary skill in the art at the time of the invention, in light
`
`of the patent specification.
`
`30. For purposes of this proceeding, I have applied the claim constructions
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`set forth in the claim construction section of the Petition for Inter Partes Review of
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`U.S. Patent No. 10,084,991 (the “Petition”) that this declaration accompanies when
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`analyzing the prior art and the claims. For any claim terms not construed, I have
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`applied the meaning of the claim terms of the ’991 Patent that are generally
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`consistent with the terms’ ordinary and customary meaning, as a person of ordinary
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`skill in the art would have understood them at the time of the invention. I have been
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`instructed to assume for purposes of this proceeding that the time of the invention is
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`September 25, 2008.
`
`III. OPINION REGARDING LEVEL OF SKILL OF A PERSON HAVING
`ORDINARY SKILL IN THE ART
`31.
`I was asked to provide my opinion as to the level of skill of a person
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`having ordinary skill in the art (“POSITA”) of the ’991 Patent at the time of the
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`claimed invention, which I have been instructed to assume is September 25, 2008.
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
`In determining the characteristics of a hypothetical person of ordinary skill in the art
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`of the ’991 Patent at the time of the claimed invention, I was told to consider several
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`factors, including the type of problems encountered in the art, the solutions to those
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`problems, the rapidity with which innovations are made in the field, the
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`sophistication of the technology, and the education level of active workers in the
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`field. I also placed myself back in the time frame of the claimed invention and
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`considered the colleagues with whom I had worked at that time.
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`32.
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`In my opinion, a person having ordinary skill in the art of the ’991
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`Patent at the time of its filing would have been a person having, as of September 25,
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`2008, a Bachelor’s degree in Electrical Engineering, Computer Engineering, or
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`Computer Science, or an equivalent degree with at least two years of experience in
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`digital video systems and networking, human-computer interaction, or related
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`technologies. Additional education may substitute for lesser work experience and
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`vice-versa. Such a person of ordinary skill in the art would have been capable of
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`understanding the ’991 Patent and the prior art references discussed herein.
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`33. Based on my education, training, and professional experience in the
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`field of the claimed invention, I am familiar with the level and abilities of a person
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`of ordinary skill in the art at the time of the claimed invention. Additionally, I met
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`at least these minimum qualifications to be a person having ordinary skill in the art
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`at least as of September 25, 2008. Further, although my qualifications may exceed
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
`those of the hypothetical person having ordinary skill in the art defined above, my
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`analysis and opinions regarding the ’991 Patent have been rendered from the
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`perspective of a person having ordinary skill in the art at the time of the invention.
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`34. My opinions provided in this Declaration are made as of the priority
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`date of the ’991 Patent (which counsel has informed me is September 25, 2008),
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`unless expressly stated otherwise. To the extent that any verb tense used in this
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`Declaration or any deposition or testimony provided in this matter is a present tense,
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`e.g., “would reasonably understand,” such verb tense should be understood to be my
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`opinion as of the ’991 Patent’s priority date (again, unless expressly stated
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`otherwise). I merely use the present verb tense for ease of reading.
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`IV. BACKGROUND OF THE TECHNOLOGY
`35.
`I was asked to briefly summarize the background of the prior art from
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`the standpoint of a POSITA prior to September 25, 2008.
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`36. Performing video phone calls over existing communications networks
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`has been part of the consumer market for decades. Specifically, one of the first
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`commercial videophones to hit the public market was the PicturePhone® researched
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`and produced by AT&T Bell Labs. The PicturePhone® first debuted at the 1964
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`World’s Fair that took place in Queens, NY, and became commercially available in
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`Pittsburgh Pennsylvania with the first call taking place between the then current
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`mayor Pete Flaherty and John Harper, the chairman of a company called Alcoa
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
`(Aluminum Co. of America). However, being primarily aimed at large corporations
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`and due to the exorbitant cost of both the units and placing video calls, the service
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`did not garner the wide spread popularity envision by AT&T and eventually the
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`service was discontinued by the late 1970s. AT&T again entered the market in 1992
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`introducing the VideoPhone 2500TM aimed for use by the general public. This new
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`and improved video phone looked like a standard telephone with a built-in camera
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`and fold-up screen. This unit could call any phone in the world and perform a
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`standard voice only call, but if calling other VideoPhone 2500 units could also
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`transmit video. However, this video phone was still limited in its success due to its
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`cost (roughly $1500 per unit), and low quality. See Marley (Ex. 1006), ¶¶ [0002]-
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`[0003].
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`37. By the mid 1990s, with the ever increasing use of the Personal
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`Computer (“PC”), Internet-based videophones systems began making an
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`appearance. One of the first internet based systems was called “CU-Seeme” and was
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`developed and distributed for free over the internet by Cornell University. However,
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`even this system was not truly user friendly, due to the fact that in order to use it, the
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`user had to be in the vicinity of their PC, and most PCs were located in less
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`frequently used rooms in a home. Also placing or receiving calls to a particular
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`recipient was inconvenient because a user would have to arrange such a call in
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`advance. See Stevenson (Ex. 1012), 1:10–2:22.
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
` Additionally, PCs could only provide this functionality if they had the
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`38.
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`correct network connections and equipment such as a camera, microphone, and
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`necessary hardware and software. Burke (Ex. 1013), 1:26–2:43.
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`39. At this time PC systems were not an overly desirable product to most
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`consumers. Because of these drawbacks, other ways were being developed to
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`implement video phone systems in the home. One solution to this was to use pre-
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`existing networks and devices that were readily available in the home and familiar
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`to a consumer. Such a network was the cable system and the devices were a
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`consumer’s television and a set-top box. See Marley, ¶¶ [0003]-[0005].
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`40. One patent from the mid 2000s, such as U.S. Patent No. 8,458,756 to
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`Rodriguez et al. (“Rodriguez”) contemplates using existing cable television (CATV)
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`networks to “transport videophone signals to subscribers of the cable television
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`system in an efficient and inexpensive manner.” Rodriguez, 1:14-18, 1:67-2:4, see
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`also 2:4-9 (disclosing “[m]odern digital cable television (CATV) transmission
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`technology offers many advantages over conventional videophone and video
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`conferencing technology,” and that “much of the existing infrastructure of
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`conventional CATV systems may be reused for videophone”). Rodriguez also
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`teaches that “videophone signals are transported over a CATV network to user of
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`the CATV system.” Rodriguez, 2:56-58. Rodriguez depicts its CATV system in Fig.
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`1 shown below.
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
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`Rodriguez, Fig. 1. Here Rodriguez depicts multiple users (101-104) all connected to
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`a headend 110 via a cable 120. Rodriguez, 5:22-27. More specifically Rodriguez
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`teaches that the cable 120 “may include various media, such as, for example, fiber
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`optic, copper, or hybrid-fiber-coax- (HFC).” Id.
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`41. Rodriguez utilizes a set top terminal with an integrated videophone unit
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`that receives videophone data intended for a user and transmits the data to a display
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`device such as the television. Rodriguez 3:51-56. Rodriguez also teaches that the
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`Declaration of Dr. Andrew Lippman
`U.S. Patent No. 10,084,991
`video
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