U.S. Patent No. 8,407,609
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`Sling TV L.L.C.
`
`Uniloc 2017 LLC
`Patent
`
`Patent No. 8,407,609
`_______________
`Inter Partes Review No. __________
`____________________________________________________________
`
`DECLARATION OF DR. JAMES A. STORER
`
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`TABLE OF CONTENTS
`
`LIST OF EXHIBITS, ........................................................................................... vii
`I.
`INTRODUCTION ........................................................................................ 1
`A.
`Educational Background ....................................................................... 2
`B.
`Career History ....................................................................................... 2
`C.
`Publications and Patents ........................................................................ 3
`D.
`Other Relevant Qualifications ............................................................... 4
`II. MATERIALS AND OTHER INFORMATION CONSIDERED ............ 5
`III.
`SUMMARY OF OPINIONS........................................................................ 6
`IV. UNDERSTANDING OF THE LAW .......................................................... 6
`A.
`Legal Standard for Prior Art .................................................................. 6
`B.
`Legal Standard for Anticipation ............................................................ 7
`C.
`Legal Standard for Obviousness ........................................................... 8
`D.
`Legal Standard for Claim Construction ..............................................11
`RELEVANT TIMEFRAME ...................................................................... 14
`V.
`VI. LEVEL OF SKILL OF ONE OF ORDINARY SKILL IN THE ART . 14
`VII. TECHNOLOGY BACKGROUND ........................................................... 15
`A. Webpage and Internet Technology, Generally....................................16
`1.
`The Internet’s Client/Server Architecture .................................16
`2.
`How Web Pages Work ..............................................................17
`3.
`How Markup Languages Work .................................................18
`4.
`How URLs Work ......................................................................19
`5.
`How Web Host Servers Work...................................................20
`6.
`How Web Sites Work with Databases ......................................20
`7.
`FTP and Downloading Files .....................................................21
`Brief History of Java ...........................................................................22
`1.
`Java Applets ..............................................................................23
`2.
`Applets, Generally ....................................................................24
`VIII. THE ’609 Patent ......................................................................................... 24
`A.
`Summary of the ’609 Patent ................................................................24
`
`B.
`
`ii
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`’609 Patent Prosecution History ..........................................................28
`B.
`Patent Owner Uniloc’s Statements Concerning the ’609 Patent ........30
`C.
`The Challenged Claims .......................................................................30
`D.
`IX. CLAIM CONSTRUCTION ....................................................................... 31
`A.
`“applet” (Claim 1) ...............................................................................31
`B.
`“computer system” (Claim 1) ..............................................................33
`C.
`Timing-related limitations (Claim 1) ..................................................33
`1.
`“amount of time the digital media presentation is streamed”
`(element 1[g]) ............................................................................34
`“cumulative time the corresponding web page was displayed by
`the user’s computer” (element 1[h]) .........................................37
`OVERVIEW OF THE SCOPE AND CONTENT OF THE PRIOR ART
` ...................................................................................................................... 39
`A.
`The Knowledge of a POSA at the Time of the Invention ...................39
`B.
`U.S. Patent Application Pub. No. 2004/0254887 to Jacoby (“Jacoby”)
` .............................................................................................................40
`PCT Pub. No. WO01/89195 to Mcternan et al. (“Mcternan”) ............44
`EP Patent Application Pub. No. 939,516 to Robinson et al.
`(“Robinson”) .......................................................................................46
`U.S. Patent No. 5,732,218 to Bland et al. (“Bland”) ..........................50
`E.
`XI. Ground 1: Jacoby in view of Bland renders obvious each of the
`challenged claims 1-3 .................................................................................. 53
`A.
`Claim 1 ................................................................................................53
`1.
`Claim element 1 [pre]: “A method for tracking digital media
`presentations delivered from a first computer system to a user’s
`computer via a network.” ..........................................................53
`Claim element 1[a]: “providing a corresponding web page to
`the user’s computer for each digital media presentation to be
`delivered using the first computer system.”..............................58
`Claim element 1[b]: “providing identifier data to the user’s
`computer using the first computer system.” .............................60
`Claim element 1[c]: “providing an applet to the user’s computer
`for each digital media presentation to be delivered using the
`
`C.
`D.
`
`3.
`
`4.
`
`iii
`
`X.
`
`2.
`
`2.
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`5.
`
`6.
`
`7.
`
`B.
`
`first computer system, wherein the applet is operative by the
`user’s computer as a timer.” ......................................................62
`Claim element 1[d]: “receiving at least a portion of the
`identifier data from the user’s computer responsively to the
`timer applet each time a predetermined temporal period elapses
`using the first computer system.” .............................................71
`Claim element 1[e]: “storing data indicative of the received at
`least portion of the identifier data using the first computer
`system.” .....................................................................................73
`Claim element 1[f]: “wherein each provided webpage causes
`corresponding digital media presentation data to be streamed
`from a second computer system distinct from the first computer
`system directly to the user’s computer independent of the first
`computer system.” .....................................................................80
`Claim element 1[g]: “wherein the stored data is indicative of an
`amount of time the digital media presentation data is streamed
`from the second computer system to the user’s computer.” .....83
`Claim element 1[h]: “wherein each stored data is together
`indicative of a cumulative time the corresponding web page
`was displayed by the user’s computer.” ....................................86
`Claim 2: “[t]he method of claim 1, wherein the storing comprises
`incrementing a stored value dependently upon the receiving.” ..........87
`Claim 3: “[t]he method of claim 2, wherein the received data is
`indicative of a temporal cycle passing.” .............................................88
`XII. Ground 2: Mcternan in view of Robinson renders obvious each of the
`challenged claims 1-3 .................................................................................. 89
`A.
`Claim 1 ................................................................................................89
`1.
`Claim element 1 [pre]: “A method for tracking digital media
`presentations delivered from a first computer system to a user’s
`computer via a network.” ..........................................................89
`Claim element 1[a]: “providing a corresponding web page to
`the user’s computer for each digital media presentation to be
`delivered using the first computer system.”..............................94
`Claim element 1[b]: “providing identifier data to the user’s
`computer using the first computer system.” .............................96
`
`C.
`
`8.
`
`9.
`
`2.
`
`3.
`
`iv
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`4.
`
`5.
`
`6.
`
`7.
`
`Claim element 1[c]: “providing an applet to the user’s computer
`for each digital media presentation to be delivered using the
`first computer system, wherein the applet is operative by the
`user’s computer as a timer.” ....................................................100
`Claim element 1[d]: “receiving at least a portion of the
`identifier data from the user’s computer responsively to the
`timer applet each time a predetermined temporal period elapses
`using the first computer system.” ...........................................105
`Claim element 1[e]: “storing data indicative of the received at
`least portion of the identifier data using the first computer
`system.” ...................................................................................108
`Claim element 1[f]: “wherein each provided webpage causes
`corresponding digital media presentation data to be streamed
`from a second computer system distinct from the first computer
`system directly to the user’s computer independent of the first
`computer system.” ...................................................................110
`Claim element 1[g]: “wherein the stored data is indicative of an
`amount of time the digital media presentation data is streamed
`from the second computer system to the user’s computer.” ...113
`Claim element 1[h]: “wherein each stored data is together
`indicative of a cumulative time the corresponding web page
`was displayed by the user’s computer.” ..................................115
`Claim 2: “[t]he method of claim 1, wherein the storing comprises
`incrementing a stored value dependently upon the receiving.” ........117
`Claim 3: “[t]he method of claim 2, wherein the received data is
`indicative of a temporal cycle passing.” ...........................................118
`XIII. Motivation to Combine ............................................................................ 119
`A.
`The Jacoby-Bland combination .........................................................119
`1.
`Combining Bland’s teaching of an applet...............................119
`2.
`Combining Bland’s teaching of tracking an object and Bland’s
`timing mechanism ...................................................................121
`The Mcternan-Robinson Combination ..............................................124
`1.
`Combining Robinson’s teaching of an applet .........................124
`2.
`Combining Robinson’s teaching of tracking time on a page ..125
`XIV. RESERVATION OF RIGHTS ................................................................ 128
`
`C.
`
`8.
`
`9.
`
`B.
`
`B.
`
`v
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`XV. OATH ......................................................................................................... 129
`Appendix A (listing of challenged claims) ............................................................ 1
`
`vi
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`LIST OF EXHIBITS1, 2
`Brief Description
`
`U.S. Patent No. 8,407,609 (“the ’609 Patent”)
`Declaration of Dr. James A. Storer [this document]
`Curriculum Vitae of Dr. James A. Storer (“Storer CV”)
`File History for U.S. Patent No. 8,407,609 (“the ’609 File History”)
`First Amended Complaint, Uniloc 2017 LLC v. Sling TV L.L.C., Case
`No. 1:19-cv-00278-RBJ-MEH, Dkt. No. 37 (Apr. 10, 2019) (“FAC”)
`U.S. Patent Application Pub. No. 2004/0254887 to Jacoby (“Jacoby”)
`PCT Pub. No. WO01/89195 to Mcternan et al. (“Mcternan”)
`EP Patent Application Pub. No. 939,516 to Robinson et al.
`(“Robinson”)
`U.S. Patent No. 5,732,218 to Bland et al (“Bland”)
`Gralla, How the Internet Works, Millennium Edition, Que 1999
`(“Gralla”)
`Bruce R. Maxim et al., The Internet Encyclopedia (Hossein Bidgoli ed.,
`John Wiley & Sons Inc. 2004) (“Bidgoli”)
`U.S. Patent Application Pub. No. 2002/0198781 to Cobley (“Cobley”)
`
`Ex.
`No.
`1001
`1002
`1003
`1004
`1005
`
`1006
`1007
`1008
`
`1009
`1010
`
`1011
`
`1012
`
`1 I have been asked to refer to the various exhibits I discuss herein by numbers set
`forth in this table and understand that each such exhibit has been marked
`accordingly. I understand that this declaration is intended to be marked as Exhibit
`1002.
`2 Citations to exhibits 1001, 1007, 1009, and 1012 are made by column and line
`number; citations to exhibits 1002, 1005, 1006, and 1008 are made by paragraph
`number; citations to the other exhibits are made with reference to the Bates-
`stamped pagination.
`
`vii
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`I.
`
`INTRODUCTION
`1.
`My name is James A. Storer. I am a Professor of Computer Science at
`
`Brandeis University and a member of the Brandeis Center for Complex Systems. I
`
`have been retained Baker Botts L.L.P. (“Counsel”) on behalf of Sling TV L.L.C.
`
`(“Petitioner”) to provide technical assistance in connection with the inter partes
`
`review of U.S. Patent No. 8,407,609 (“the ’609 Patent”). This declaration sets
`
`forth my opinions on issues related to patentability of claims 1-3 of the ’609 Patent
`
`(collectively, the “challenged claims”). I provide technical bases for these
`
`opinions as appropriate.
`
`2.
`
`This declaration contains statements of my opinions formed to date
`
`and the bases and reasons for those opinions. I make this declaration based upon
`
`my own personal knowledge and, if called upon to testify, would testify
`
`competently to the matters contained herein.
`
`3.
`
`For my efforts in connection with the preparation of this declaration I
`
`have been compensated at my standard rate of $785 per hour. My compensation is
`
`in no way contingent on the results of these or any other proceedings relating to the
`
`above-captioned patent.
`
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`A.
`4.
`
`Educational Background
`I have summarized in this section my educational background, career
`
`history, publications, and other relevant qualifications. My full curriculum vitae is
`
`attached as Ex. 1003 (Storer CV).
`
`5.
`
`I am an expert in the field of computer algorithms, including data
`
`communications and network computing, data compression, data and image
`
`retrieval, storage and processing of large data sets, and image/video processing. I
`
`have studied, taught, practiced, and researched in the field of Computer Science for
`
`over thirty years. Currently, I am Professor of Computer Science at Brandeis
`
`University in Waltham, Massachusetts, where I have been on the faculty since
`
`1981.
`
`6.
`
`I received my Doctor of Philosophy (Ph.D.) degree in the field of
`
`Computer Science from Princeton University in 1979. I received my Masters of
`
`Arts (M.A.) degree in Computer Science from Princeton University and my
`
`Bachelor of Arts (B.A.) degree in Mathematics and Computer Science from
`
`Cornell University.
`
`B.
`7.
`
`Career History
`After receiving my Ph.D. degree, I worked in industry as a researcher
`
`at AT&T Bell Laboratories from 1979 to 1981 before joining the faculty of
`
`Brandeis University.
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`8.
`
`I have been involved in computer science research since 1976. My
`
`research has been funded by a variety of governmental agencies, including the
`
`National Science Foundation
`
`(NSF), National Aeronautics and Space
`
`Administration (NASA), and Defense Advanced Research Projects Agency
`
`(DARPA). In addition, I have received government Small Business Innovation
`
`Research (SBIR) funding, as well as numerous industrial grants.
`
`9.
`
`I regularly teach courses in software and hardware technology for data
`
`compression and communications (including text, images, video, and audio) at
`
`both the undergraduate and graduate level, and in my capacity as co-chair of the
`
`Annual Data Compression Conference, I regularly referee academic papers in these
`
`areas. In addition, much of my consulting activity has been in the areas of software
`
`and hardware for consumer electronic devices, including cell phones/PDAs
`
`(including cellular technology), smartphones, digital cameras, digital video and
`
`audio recorders, and personal computers (“PCs”), as well as devices for
`
`communications over the Internet.
`
`C.
`10.
`
`Publications and Patents
`I am the author of two books: An Introduction to Data Structures and
`
`Algorithms and Data Compression: Methods and Theory. Both books have been
`
`used as references for undergraduate
`
`level computer science courses in
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`universities. I am the editor or co-editor of four other books, including
`
`Hyperspectral Data Compression and Image and Text Compression.
`
`11.
`
`I have three issued U.S. patents that relate to computer software and
`
`hardware (two for which I am sole inventor and one for which I am co-inventor). I
`
`am the author or co-author of well over 100 articles and conference papers.
`
`D.
`12.
`
`Other Relevant Qualifications
`In 1991, I founded the Annual Institute of Electrical and Electronics
`
`Engineers (IEEE) Data Compression Conference (DCC),
`
`the first major
`
`international conference devoted entirely to data compression and have served as
`
`the conference chair since then. This conference continues to be the world’s
`
`premier venue devoted to data compression research and development.
`
`13.
`
`I routinely serve as referee for papers submitted to journals such as,
`
`for example, JACM, SICOMP, Theoretical CS, Computer Journal, J. Algorithms,
`
`Signal Processing, JPDC, Acta Informatica, Algorithmicia, IPL, IPM, Theoretical
`
`CS, J. Algorithms, Networks, IEEE J. Robotics & Automation, IEEE Trans.
`
`Information Theory, IEEE Trans. Computers, IEEE Trans. Image Processing,
`
`Proceedings of the IEEE, IBM J. of R&D, and J. Computer and System Sciences.
`
`14.
`
`I have served as guest editor for a number of professional journals,
`
`including Proceedings of the IEEE, Journal of Visual Communication and Image
`
`Representation, and Information Processing and Management. I have served as a
`
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`program committee member for various conferences, including IEEE Data
`
`Compression Conference, IEEE International Symposium on Information Theory,
`
`Combinatorial Pattern Matching (CPM), International Conference on String
`
`Processing and Information Retrieval (SPIRE), Conference on Information and
`
`Knowledge Management (CIKM), Conference on Information Theory and
`
`Statistical Learning (ITSL), Sequences and Combinatorial Algorithms on Words,
`
`Dartmouth Institute for Advanced Graduate Studies Symposium (DAGS),
`
`International Conference on Language and Automata Theory and Applications
`
`(LATA), DIMACS Workshop on Data Compression
`
`in Networks and
`
`Applications, and Conference on Combinatorial Algorithms on Words.
`
`II. MATERIALS AND OTHER INFORMATION CONSIDERED
`15.
`I have considered information from various sources in forming my
`
`opinions. My opinions are based on my review of documents as well as my
`
`education, training, research, knowledge, and experience. I have reviewed and
`
`considered the following documents in forming my opinions:
`
`U.S. Patent No. 8,407,609 (“the ’609 Patent”) (Ex. 1001) and its file history
`(Ex. 1004);
`
`First Amended Complaint, Uniloc 2017 LLC v. Sling TV L.L.C., Case No.
`1:19-cv-00278-RBJ-MEH, Dkt. No. 37 (Apr. 10, 2019) (“FAC”) (Ex. 1005);
`
`U.S. Patent Application Pub. No. 2004/0254887 to Jacoby (“Jacoby”) (Ex.
`1006);
`
`PCT Pub. No. WO01/89195 to Mcternan et al. (“Mcternan”) (Ex. 1007);
`
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`EP Patent Application Pub. No. 939,516 to Robinson et al. (“Robinson”)
`(Ex. 1008);
`
`U.S. Patent No. 5,732,218 to Bland et al (“Bland”) (Ex. 1009);
`
`Gralla, How the Internet Works, Millennium Edition, Que 1999 (“Gralla”)
`(Ex. 1010);
`
`Bruce R. Maxim et al., The Internet Encyclopedia (Hossein Bidgoli ed.,
`John Wiley & Sons Inc. 2004) (“Bidgoli”) (Ex. 1011);
`
`U.S. Patent Application Pub. No. 2002/0198781 to Cobley (“Cobley”) (Ex.
`1012)
`
`III.
`
`All documents cited or discussed herein.
`SUMMARY OF OPINIONS
`16.
`For the reasons set forth herein, it is my opinion that:
`
`Claims 1-3 are rendered obvious by Jacoby in view of Bland.
`
`Claims 1-3 are rendered obvious by Mcternan in view of Robinson.
`IV. UNDERSTANDING OF THE LAW
`17.
`I have applied the following legal principles provided to me by
`
`Counsel in arriving at the opinions set forth in this declaration.
`
`A.
`18.
`
`Legal Standard for Prior Art
`I understand that a patent or other publication must first qualify as
`
`prior art before it can be used to invalidate a patent claim.
`
`19.
`
`I understand that a U.S. or foreign patent qualifies as prior art to an
`
`asserted patent if the date of issuance of the patent is prior to the invention of the
`
`asserted patent. I further understand that a printed publication, such as a book or
`
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`an article published in a magazine or trade publication, qualifies as prior art to an
`
`asserted patent if the date of publication is prior to the invention of the asserted
`
`patent.
`
`20.
`
`I understand that a U.S. or foreign patent qualifies as prior art to an
`
`asserted patent if the date of issuance of the patent is more than one year before the
`
`filing date of the asserted patent. I further understand that a printed publication,
`
`such as a book or an article published in a magazine or trade publication,
`
`constitutes prior art to an asserted patent if the publication occurs more than one
`
`year before the filing date of the asserted patent.
`
`21.
`
`I understand that a U.S. patent qualifies as prior art to the asserted
`
`patent if the application for that patent was filed in the United States before the
`
`invention of the asserted patent.
`
`22.
`
`I understand that documents and materials that qualify as prior art can
`
`be used to invalidate a patent claim as anticipated or as obvious.
`
`B.
`23.
`
`Legal Standard for Anticipation
`I understand that, once the claims of a patent have been properly
`
`construed, the second step in determining anticipation of a patent claim requires a
`
`comparison of the properly construed claim language to the prior art on a
`
`limitation-by-limitation basis.
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`24.
`
`I understand that a prior art reference “anticipates” an asserted claim,
`
`and thus renders the claim invalid, if all elements of the claim are disclosed in that
`
`prior art reference, either explicitly or inherently (i.e., necessarily present or
`
`implied).
`
`25.
`
`I understand that a patent is anticipated if before such person’s
`
`invention thereof, the invention was made in this country by another inventor who
`
`had not abandoned, suppressed, or concealed it.
`
`26.
`
`I have written this report with the understanding that in an inter partes
`
`review anticipation must be shown by a preponderance of the evidence.
`
`C.
`27.
`
`Legal Standard for Obviousness
`I have been instructed by counsel on the law regarding obviousness
`
`and understand that even if a patent is not anticipated, it is still invalid if the
`
`differences between the claimed subject matter 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 of ordinary skill in the pertinent art (“POSA”).
`
`28.
`
`I understand that a POSA provides a reference point from which the
`
`prior art and claimed invention should be viewed. This reference point prevents a
`
`POSA from using one’s insight or hindsight in deciding whether a claim is
`
`obvious.
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`29.
`
`I also understand that an obviousness determination includes the
`
`consideration of various factors such as (1) the scope and content of the prior art,
`
`(2) the differences between the prior art and the challenged claims, (3) the level of
`
`ordinary skill in the pertinent art, and (4) the existence of secondary considerations
`
`such as commercial success, long-felt but unresolved needs, failure of others, etc.
`
`30.
`
`I understand that a claim can be obvious in light of a single reference,
`
`without the need to combine references, if the elements of the claim that are not
`
`found explicitly or inherently in the reference can be supplied by the common
`
`sense of one of skill in the art.
`
`31.
`
`I understand that an obviousness evaluation can be based on a
`
`combination of multiple prior art references. I understand that the prior art
`
`references themselves may provide a suggestion, motivation, or reason to combine,
`
`but other times the nexus linking two or more prior art references is simple
`
`common sense. I further understand that obviousness analysis recognizes that
`
`market demand, rather than scientific literature, often drives innovation, and that a
`
`motivation to combine references may be supplied by the direction of the
`
`marketplace.
`
`32.
`
`I understand that if a technique has been used to improve one device,
`
`and a POSA would recognize that it would improve similar devices in the same
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`way, using the technique is obvious unless its actual application is beyond his or
`
`her skill.
`
`33.
`
`I also understand that practical and common-sense considerations
`
`should guide a proper obviousness analysis, because familiar items may have
`
`obvious uses beyond their primary purposes. I further understand that a POSA
`
`looking to overcome a problem will often be able to fit the teachings of multiple
`
`publications together like pieces of a puzzle, although the prior art need not be like
`
`two puzzle pieces that must fit perfectly together. I understand that obviousness
`
`analysis therefore takes into account the inferences and creative steps that a POSA
`
`would employ under the circumstances.
`
`34.
`
`I understand that a particular combination may be proven obvious by
`
`showing that it was obvious to try the combination. For example, when there is a
`
`design need or market pressure to solve a problem and there are a finite number of
`
`identified, predictable solutions, a POSA has good reason to pursue the known
`
`options within his or her technical grasp because the result is likely the product not
`
`of innovation but of ordinary skill and common sense.
`
`35.
`
`I understand that the combination of familiar elements according to
`
`known methods may be proven obvious when it does no more than yield
`
`predictable results. When a work is available in one field of endeavor, design
`
`incentives and other market forces can prompt variations of it, either in the same
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`field or a different one. If a POSA can implement a predictable variation,
`
`obviousness likely bars its patentability.
`
`36.
`
`It is further my understanding that a proper obviousness analysis
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`focuses on what was known or obvious to a POSA not just the patentee.
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`Accordingly, I understand that any need or problem known in the field of endeavor
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`at the time of invention and addressed by the patent can provide a reason for
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`combining the elements in the manner claimed.
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`37.
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`In sum, my understanding is that prior art teachings are properly
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`combined where a POSA having the understanding and knowledge reflected in the
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`prior art, would have been led to make the combination of elements recited in the
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`claims. Under this analysis, the prior art references themselves, or any need or
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`problem known in the field of endeavor at the time of the invention, can provide a
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`reason for combining the elements of multiple prior art references in the claimed
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`manner.
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`38.
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`I have written this report with the understanding that in an inter partes
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`review obviousness must be shown by a preponderance of evidence.
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`D.
`39.
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`Legal Standard for Claim Construction
`I understand that before any invalidity analysis can be properly
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`performed, the scope and meaning of the challenged claims must be determined by
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`claim construction.
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`IPR2020-00677
`Vudu Ex. 1002, Page 18
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`

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`40.
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`I understand that a patent may include two types of claims,
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`independent claims and dependent claims. I understand that an independent claim
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`stands alone and includes only the limitations it recites. I understand that a
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`dependent claim depends from an independent claim or another dependent claim. I
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`understand that a dependent claim includes all the limitations that it recites in
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`addition to the limitations recited in the claim (or claims) from which it depends.
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`41.
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`I understand that the claims of a patent define the scope of the rights
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`conferred by the patent. I understand that because the claims point out and
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`distinctly claim the subject matter which the inventors regard as their invention,
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`claim construction analysis must begin with and is focused on the claim language
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`itself.
`
`42.
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`I understand that words or terms should be given their ordinary and
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`accepted meaning unless it appears that the inventors were using them to mean
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`something else. I understand that to determine whether a term has special
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`meaning, the claims, the patent specification, and the prosecution history are
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`particularly important, and may show that the inventor gave a term a particular
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`definition or intentionally disclaimed, disavowed, or surrendered claim scope.
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`43.
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`In comparing the challenged claims to the prior art, I have carefully
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`considered the patent and its file history in light of the understanding of a POSA at
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`the time of the alleged invention.
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`IPR2020-00677
`Vudu Ex. 1002, Page 19
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`44.
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`I understand that, in construing a claim term, one should primarily
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`rely on intrinsic patent evidence, which includes the words of the claims
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`themselves, the remainder of the patent specification, and the prosecution history.
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`I understand that extrinsic evidence, which is evidence external to the patent and
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`the prosecution history, may also be useful in interpreting patent claims when the
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`intrinsic evidence itself is insufficient. I understand that extrinsic evidence may
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`include principles, concepts, terms, and other resources available to those of skill
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`in the art at the time of the invention.
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`45.
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`I understand that a claim should be construed not only in the context
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`of the particular claim in which the disputed term appears, but in the context of the
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`entire patent, including the entire specification.
`
`46.
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`I understand that the prosecution history of the patent as well as art
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`incorporated by reference or otherwise cited during the prosecution history are also
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`highly relevant in construing claim terms. For instance, art cited by or
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`incorporated by reference may indicate how the inventor and others of skill in the
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`art at the time of the invention understood certain terms and concepts.
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`Additionally, the prosecution history may show that the inventors disclaimed or
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`disavowed claim scope or further explained the meaning of a claim term.
`
`47. With regard to extrinsic evidence, I understand that all evidence
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`external to the patent and prosecution history, including expert and inventor
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`Page | 13
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`IPR2020-00677
`Vudu Ex. 1002, Page 20
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`testimony, dictionaries, and learned treatises, can also be considered. For example,
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`technical dictionaries may indicate how one of skill in the art used or understood
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`the claim terms. However, I understand that extrinsic evidence is considered to be
`
`less reliable than intrinsic evidence, and for that reason is generally given less
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`weight than intrinsic evidence.
`
`V.
`
`RELEVANT TIMEFRAME
`48. As mentioned above, I understand that claim construction and
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`obviousness must be considered through the perspective of one of ordinary skill in
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`the art “at the time the invention as made.” In this case, I see from the front page
`
`of the ’609 Patent that the patent application leading to the ’609 Patent was filed on
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`August 21, 2009 and claimed priority to a provisional patent application filed on
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`August 21, 2008. I considered the level of ordinary skill in the art on August 21,
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`2008, the earliest claimed priority date for the ’609 Patent.3 I am not aware of any
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`claim by the Patent Owner that the ’609 Patent is entitled to an earlier priority date.
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`VI. LEVEL OF SKILL OF ONE OF ORDINARY SKILL IN THE ART
`49.
`In determining the character