`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`BROADBAND iTV, INC.,
`
`Plaintiff,
`
`v.
`
`DISH NETWORK L.L.C.,
`
`Defendant.
`
`
`
`NO. 6:19-cv-716-ADA
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`DISH NETWORK L.L.C.’S FINAL INVALIDITY CONTENTIONS
`
`Pursuant to the Order Governing Proceedings – Patent Case, entered on Feb. 26, 2020
`
`(Dkt. No. 23), Defendant DISH Network L.L.C. (“DISH”) hereby serves its Amended Invalidity
`
`Contentions for U.S. Patent No. 10,028,026 (the “’026 Patent”), U.S. Patent No. 10,506,269 (the
`
`“’269 Patent”), U.S. Patent No. 9,998,791 (the “’791 Patent”) and U.S. Patent No. 9,648,388 (the
`
`“’388 Patent”) (collectively “Patents-in-Suit” or “Asserted Patents”).
`
`Plaintiff Broadband iTV, Inc. (“BBiTV”) has asserted the following 65 claims of the
`
`Asserted Patents, which are collectively called the “Asserted Claims”:
`
`
`
`
`
`
`
`
`
`’026 Patent claims 1-9, 11-16;
`
`’269 Patent claims 1-6, 8-12, 14-17;
`
`’791 Patent claims 1-3, 5-12, 14-18; and
`
`’388 Patent claims 1-17, 19.
`
`I.
`
`INTRODUCTORY STATEMENT
`
`DISH has not completed its investigation of the facts and documents relating to this
`
`action and has not completed its preparation for trial. DISH has not taken any depositions in this
`
`action, including, without limitation, any depositions of the named inventor of the Patents-in-Suit
`
`
`
`0001
`
`BBiTV EX2031
`Dish Network v. Broadband iTV
`IPR2020-01267
`
`

`

`
`
`and/or other persons having potentially relevant information. As discovery in this action
`
`provides DISH with additional information, it is possible that DISH will discovery additional
`
`prior art pertinent to the invalidity of the Asserted Claims of the Patents-in-Suit, and DISH
`
`reserves the right to supplement these contentions after becoming aware of additional prior art or
`
`information. In particular, DISH reserves the right to rely on any invalidity position and any
`
`prior art reference included in the invalidity contentions of any defendant in a case brought by
`
`Plaintiff alleging any of the Asserted Patents, or any patents in the same family. DISH further
`
`reserves the right to introduce and use such supplemental materials at trial.
`
`The Court issued a Claim Construction order on Dec. 3, 2020. Dkt. No. 74. DISH’s
`
`Final Invalidity Contentions apply the Court’s claim constructions for terms that were construed,
`
`and reflect the presumed readings of the claims advanced by BBiTV in its Preliminary
`
`Infringement Contentions (“Infringement Contentions”) (to the extent they can be understood)
`
`for terms that were not. DISH makes no contention herein as to the proper meaning of the
`
`claims. These Invalidity Contentions are not admissions or adoptions as to any particular claim
`
`scope or construction, nor an admission that any particular element is met in any particular way
`
`in DISH’s accused instrumentalities. Nothing herein should be treated as an admission that
`
`DISH agrees with BBiTV’s express or implied claim constructions or that BBiTV has proposed
`
`any discernable constructions for claims and/or claim terms in its Infringement Contentions. To
`
`the extent DISH understands BBiTV’s allegations of infringement, BBiTV attempts to stretch
`
`the language of the Asserted Claims beyond the scope to which the claims could reasonably be
`
`entitled in light of the disclosures in the Patents-in-Suit and their prosecution histories.
`
`Moreover, to the extent that the Asserted Patents include means-plus-function terms, those terms
`
`lack corresponding structure. DISH has not attempted to map the term to corresponding
`
`-2-
`
`0002
`
`

`

`
`
`structure. However, insofar as the Court decides that they are means-plus-function terms but
`
`disagrees that they lack corresponding structure, DISH will amend these contentions to point to
`
`the disclosure of whatever the Court identifies as corresponding structure within the reference.
`
`In addition, DISH contends that certain Asserted Claims do not satisfy one or more
`
`requirements of 35 U.S.C. §§ 101 and/or 112. In order to fulfill its obligations pursuant to the
`
`Order Governing Proceedings – Patent Cases, however, DISH has applied the prior art based on
`
`the assumption that BBiTV contends all Asserted Claims satisfy all of the applicable
`
`requirements of 35 U.S.C. §§ 101 and 112. The application of prior art in these Invalidity
`
`Contentions should not be construed as an admission that DISH agrees that any of the Asserted
`
`Claims satisfies all the requirements of 35 U.S.C. §§ 101 and/or 112.
`
`These Final Invalidity Contentions, including the attached exhibits, are subject to
`
`modification, amendment, and/or supplementation in accordance with the Order Governing
`
`Proceedings – Patent Case, including in light of BBiTV’s Final Infringement Contentions, any
`
`findings as to the priority or invention date of the Asserted Claims, additional prior art, and/or
`
`positions that BBiTV or its expert witness(es) may take concerning claim construction,
`
`infringement, and/or invalidity issues.
`
`The Invalidity Contentions herein are based on DISH’s present knowledge, and pursuant
`
`to the Order Governing Proceedings – Patent Case, DISH reserves the right to amend these
`
`contentions if it identifies new material despite DISH’s reasonable efforts to prepare these
`
`contentions. DISH’s investigation regarding invalidity of the Asserted Patents over prior art and
`
`regarding other grounds of invalidity, including those based on the public use and on-sale bars
`
`under 35 U.S.C. § 102, obviousness under 35 U.S.C. § 103, failure to comply with 35 U.S.C. §
`
`112, derivation under 35 U.S.C. § 102(f), and prior invention under 35 U.S.C. § 102(g), is
`
`-3-
`
`0003
`
`

`

`
`
`ongoing. There may be products that were known or in public use prior to the filing dates of the
`
`applications leading to the Asserted Patents, but DISH must first obtain additional information
`
`regarding these products using available discovery tools. For example, DISH has not yet
`
`received discovery from third parties concerning prior art uses, and BBiTV has not yet produced
`
`all prior art known to it, including prior art and invalidity contentions provided by other
`
`defendants. In particular, DISH understands that BBiTV has not produced a complete set of
`
`invalidity contentions provided by AT&T in its co-pending litigation, nor the prior art cited in
`
`those contentions.
`
`Moreover, prior art not included in this disclosure, whether known or unknown to DISH,
`
`may become relevant. In particular, DISH is currently unaware of the extent, if any, to which
`
`BBiTV will contend that limitations of the Asserted Claims are not disclosed in the prior art
`
`identified by DISH, or will contend that any of the identified references does not qualify as prior
`
`art under § 102. In particular, BBiTV has not disclosed its reasoning in support of its claim that
`
`certain of the Asserted Patents are entitled to an earlier priority date, nor has BBiTV proved
`
`entitlement to an earlier invention date.
`
`Because DISH’s investigation, prior art search, and analysis are still ongoing, it is likely
`
`that DISH will identify additional prior art or contentions that will add meaning to already
`
`known prior art or contentions or possibly lead to additions or changes to these Invalidity
`
`Contentions. Without obligating itself to do so, DISH reserves all rights to amend, modify, or
`
`supplement these Invalidity Contentions. DISH further reserves the right to rely on any facts,
`
`documents, or other evidence that are: (i) subsequently discovered; (ii) subsequently determined
`
`to be relevant for any purpose; or (iii) subsequently determined to have been omitted from a
`
`production, whether inadvertently or otherwise. DISH further reserve the right to rely on expert
`
`-4-
`
`0004
`
`

`

`
`
`testimony. Documents related to expert testimony, if any, will be produced when expert
`
`discovery is exchanged pursuant to the Court’s Order.
`
`The identification of any patents as prior art shall be deemed to include identification of
`
`any foreign counterpart patents. To the extent that such issues arise, DISH reserves the right to
`
`identify additional teachings in the same references or in other references that anticipate or
`
`would have made the addition of the allegedly missing limitation to the apparatus or method
`
`obvious.
`
`The foregoing statements and reservations of rights are hereby expressly incorporated by
`
`reference in their entirety into each of the disclosures below, into the invalidity charts served
`
`herewith, and into each disclosure corresponding to each element of every claim.
`
`II.
`
`PRIORITY DATES
`
`For each of the Asserted Claims, BBiTV has failed to demonstrate any basis upon which
`
`the claims are entitled to a priority date earlier than the filing date of the continuation
`
`applications within their family history. The priority dates of the Asserted Claims are no earlier
`
`than the filing dates of the respective parent patent applications (excluding any continuations-in-
`
`part) at least because: there is insufficient disclosure in the earlier priority documents; and any
`
`claim to an earlier date of conception is not sufficiently supported by evidence and was not
`
`adequately coupled with sufficient reduction to practice and diligence.
`
`III.
`
`INVALIDITY OF THE ASSERTED PATENTS
`A.
`
`Invalidity Based on 35 U.S.C. § 101
`
`Each Asserted Claim is invalid for failing to recite patentable subject matter under 35
`
`U.S.C. § 101. With regard to the subset of the Asserted Claims that are identified in BBiTV’s
`
`Complaint, DISH’s contentions regarding subject matter eligibility are set forth in DISH’s briefs
`
`and accompanying exhibits in support of DISH’s Motion to Dismiss, which are hereby
`
`-5-
`
`0005
`
`

`

`
`
`incorporated by reference. Dkt. No. 17. Regarding the Asserted Claims that BBiTV first
`
`identified in its Infringement Contentions, they are invalid under 35 U.S.C. § 101 for the same
`
`reasons set forth in said materials at least because the claims expressly disclosed in DISH’s
`
`Motion to Dismiss are representative of the additional claims BBiTV asserted in its Infringement
`
`Contentions.
`
`As explained in DISH’s Motion to Dismiss, each of the Asserted Patents, like the
`
`confirmed ineligible ’336 Patent to which they are related, is directed to the abstract idea of
`
`“using the same hierarchical ordering based on metadata to facilitate the display and locating of
`
`video content.” Each of the asserted claims merely recites a process for using software to
`
`generate conventional menus, and comprises nothing more than conventional and generic
`
`hardware components performing basic and abstract data manipulation and presentation steps.
`
`Moreover, as the Asserted Patents admit, these software functions simply automate the menu-
`
`generation process that might have otherwise been performed manually by a human worker at a
`
`cable company.
`
`Further, none of the asserted claims recite an inventive concept because none of the
`
`claims provides any improvements to the functionality of VOD systems as whole. Rather, the
`
`claims simply use known generic components for their known use and benefits to, at most,
`
`automate a task or implement abstract data manipulation and presentation functions. Moreover,
`
`many of the claimed functionalities, such as using the internet to upload data, “drill down
`
`navigation,” and use of templates to automate the creation of pages are themselves abstract ideas
`
`and thus likewise provide no inventive concept. Indeed, the Cablevision Io system that won an
`
`Emmy in 2003 appears to have applied these same concepts, confirming they were well known
`
`and conventional.
`
`-6-
`
`0006
`
`

`

`
`
`Furthermore, to the extent any of the claims recite improvements to VOD technology,
`
`those improvements are due to the incorporation of tried-and-true abstract solutions in the VOD
`
`context, which is precisely what the Supreme Court’s Alice/Mayo jurisprudence forbids. The
`
`fact that BBiTV elected to focus on these clearly abstract concepts as the allegedly inventive
`
`concepts contained within the Asserted Patents in its briefing opposing DISH’s Motion to
`
`Dismiss further confirms that the claims are directed to ineligible subject matter.
`
`Further none of the limitations in the asserted dependent claims provides any basis for
`
`concluding that those claims are not directed to the same abstract idea, or that those claims
`
`include an inventive concept. In general, many dependent claims either add further details
`
`describing the conventional hierarchical category-based arrangement of the menu, or specify
`
`further types of information that can be included in the metadata and/or the menu, neither of
`
`which constitutes a patentable improvement. Other dependent claims merely specify the generic
`
`devices required by the claims with more particularity, but do not add anything apart from
`
`routine, conventional, and well-known components. In sum, none of the Asserted Claims recites
`
`any technological solution to any technological challenge, but instead claim applying abstract
`
`and known solutions in the VOD context.
`
`B.
`
`Invalidity Based on 35 U.S.C. §§ 102 and 103
`
`In the following subsections, DISH identifies each item of prior art that DISH presently
`
`alleges anticipates one or more of the Asserted Claims or renders them obvious. These prior art
`
`patents, publications, systems, and products disclose the elements of the Asserted Claims either
`
`explicitly, implicitly, inherently, or via an obvious combination. They, along with other
`
`references produced herewith, may also be relied upon to show the state of the art in the relevant
`
`timeframes. DISH further reserves the right to rely upon the following to show the state of the
`
`art in the relevant timeframes: all prior art cited on the face of the Patents-in-Suit and Related
`
`-7-
`
`0007
`
`

`

`
`
`Patents, the admitted prior art references1 in the specifications of the Patents-in-Suit and Related
`
`Patents, all prior art cited in the prosecution histories of the Patents-in-Suit and Related Patents,
`
`including any reexaminations, reissue, or other post grant review proceedings, and the references
`
`cited in any invalidity contentions submitted in any action or proceeding involving the Patents-
`
`in-Suit or Related Patents.
`
`To the extent BBiTV challenges a prior art patent’s qualification as prior art, DISH
`
`reserves the right to rely upon: (i) foreign counterparts of U.S. patents identified in these
`
`Invalidity Contentions; and (ii) U.S. counterparts of foreign patents and foreign patent
`
`applications identified in these Invalidity Contentions, to the extent such references qualify as
`
`prior art and contain the same substantive disclosure.
`
`DISH reserves all rights to identify, use, discuss and/or reference other prior art
`
`references to, for example, demonstrate the general knowledge held by own of ordinary skill in
`
`the art as of the relevant date.
`
`1.
`
`Prior Art Patents and Applications, Non-Patent Publications, and
`Prior Art Apparatuses and Systems
`
`DISH has identified each prior art patent or application by its number, country of origin,
`
`and date of issue or, if an application, date of publication. Unless otherwise noted, the country of
`
`origin for prior art patents or patent applications is the U.S. To the extent feasible, DISH has
`
`identified each prior art publication by its title, date of publication, and publisher.
`
`a.
`
`The ’791 Patent
`
` U.S. Patent Publication 2005/0160458 A1 (“Baumgartner I”)
` U.S. Patent Publication 2010/0153997 A1 (“Baumgartner II”)
` CableLabs Video-On-Demand Content Specification Version 1.1, published
`September 27, 2002 (“CableLabs”)
`
`
`1 The admitted prior art of the Patents-in-Suit including the systems and methods described in the
`“Background of Invention” sections of the Patents-in-Suit.
`
`-8-
`
`0008
`
`

`

`
`
` CableLabs Asset Distribution Interface Version 1.1, published April 5, 2003
`(“CableLabs ADI”)
` Scheffler, “Ingest & Metadata Partitioning: Requirements for Television on
`Demand” (2003) (“Scheffler”)
` U.S. Patent No. 7,159,233 (“Son”)
` U.S. Patent Publication 2001/0030667 (“Kelts”)
` U.S. Patent No. 5,752,160 (“Dunn”)
` U.S. Patent Publication No. 2004/0136698 (“Mock”)
` U.S. Patent No. 8,352,983 (“Chane”)
` U.S. Patent No. 6,314,572 (“LaRocca”)
` U.S. Patent Application Publication No. 2004/0046801 (“Lin”)
` U.S. Patent 7,174,512 (“Martin”)
` U.S. Patent No. 8,434,118 (“Gonder”)
` PCT Application No. WO 2004/0264296 (“Cuttner”)
`
`International PCT Publication No. WO200055794 (“Proehl”)
` EP 0944254 (“Nishi”)
` U.S. Patent No. 7,716,703 (“Sheldon”)
` U.S. Patent No. 6,208,335 (“Gordon”)
` U.S. Patent No. 7,089,309 (“Ramaley”)
` U.S. Patent Publication No. 2002/0049971 (“Augenbraun”)
` U.S. Patent No. 7,882,516 (“Jerding”)
` The Cablevision IO VOD system (“Cablevision Io”)
` The TV Guide Interactive VOD system (“TV Guide Interactive”)
` The Time Warner iControl VOD system (“iControl”)
` The Microsoft TV VOD system (“Microsoft TV”)
` The Motorola DCT1000 (“DCT1000”)
` The Motorola DCT1800 (“DCT1800”)
` The Motorola DCT2000 (“DCT2000”)
` The Motorola DCT2500 (“DCT2500”)
` The Motorola DCT5100 (“DCT5100”)
` The Motorola DCT6200 (“DCT6200”)
` The Motorola DCT700 (“DCT700”)
` The Pace DC510
` The Pioneer V1000
` The Pioneer V3500
` The Scientific Atlanta Explorer 2100 (“SA E2100”)
` The Scientific Atlanta Explorer 3000 (“SA E3000”)
` The Scientific Atlanta Explorer 3250 (“SA E3250”)
` The Scientific Atlanta Explorer 8000 (“SA E8000”)
` The Sony/Cablevision set-top box (“SonyCablevison STB”)
` The SeaChange VOD system (“SeaChange”)
` The Concurrent VOD System (“Concurrent”)
` The LodgeNet in-room hotel VOD system (“LodgeNet”)
` The On Command in-room hotel VOD system (“On Command”)
`
`-9-
`
`0009
`
`

`

`
`
` The Digeo Moxi interface (“Digeo Moxi”) (See BBiTV157101-157427,
`incorporated herein by reference except insofar as it concerns the unasserted ’101
`Patent).
`
`
`b.
`
`The ’388 Patent
`
` Baumgartner I
` Baumgartner II
` CableLabs
` CableLabs ADI
` Scheffler
` Son
` Kelts
` Dunn
` Mock
` Chane
` LaRocca
` Lin
` Martin
` Gonder
` Cuttner
` Proehl
` Nishi
` Sheldon
` Gordon
` Ramaley
` Augenbraun
` Jerding
` Cablevision Io
` TV Guide Interactive
`
`iControl
` Microsoft TV
` DCT1000
` DCT1800
` DCT2000
` DCT2500
` DCT5100
` DCT6200
` DCT700
` Pace DC510
` Pioneer V1000
` Pioneer V3500
` SA E2100
` SA E3000
`
`-10-
`
`0010
`
`

`

`
`
`
`
` SA E3250
` SA E8000
` SonyCablevison STB
` SeaChange
` Concurrent
` LodgeNet
` On Command
` Digeo Moxi (See BBiTV157101-157427, incorporated herein by reference except
`insofar as it concerns the unasserted ’101 Patent).
`
`c.
`
`The ’026 Patent
`
` Baumgartner I
` Baumgartner II
` CableLabs
` CableLabs ADI
` Scheffler
` Son
` Kelts
` U.S. Patent Publication 2003/0113100 (“Hecht”)
` U.S. Patent Application Pub. No. 2002/0151327 (“Levitt”)
` Dunn
` Mock
` U.S. Patent No. 9,565,387 (“Brodersen”)
` Chane
` U.S. Patent No. 7,703,041 (“Ito”)
` U.S. Patent No. 9,396,212 (“Haberman”)
` LaRocca
` Lin
` Martin
` Gonder
` U.S. Patent Publication 2006/0026655 (“Perez”)
` Cuttner
` Proehl
` Nishi
` Sheldon
` Gordon
` Ramaley
` Augenbraun
` Jerding
` Cablevision Io
` TV Guide Interactive
` The Comcast i-Guide VOD system (“i-Guide”)
`
`iControl
`
`-11-
`
`0011
`
`

`

`
`
`
`
` Microsoft TV
` DCT1000
` DCT1800
` DCT2000
` DCT2500
` DCT5100
` DCT6200
` DCT700
` Pace DC510
` Pioneer V1000
` Pioneer V3500
` SA E2100
` SA E3000
` SA E3250
` SA E8000
` SonyCablevison STB
` SeaChange
` Concurrent
` LodgeNet
` On Command
` Digeo Moxi (See BBiTV157101-157427, incorporated herein by reference except
`insofar as it concerns the unasserted ’101 Patent).
`
`d.
`
`The ’269 Patent
`
` Baumgartner I
` Baumgartner II
` CableLabs
` CableLabs ADI
` Scheffler
` Son
` Kelts
` Hecht
` Dunn
` Mock
` Levitt
` Brodersen
` Chane
`
`Ito
` Haberman
` LaRocca
` Lin
` Martin
` Gonder
`
`-12-
`
`0012
`
`

`

`
`
`
`
` Perez
` Cuttner
` Proehl
` Nishi
` Sheldon
` Gordon
` Ramaley
` Augenbraun
` Jerding
` Cablevision Io
` TV Guide Interactive
`
`i-Guide
`
`iControl
` Microsoft TV
` SeaChange
` Concurrent
` LodgeNet
` On Command
` Digeo Moxi (See BBiTV157101-157427, incorporated herein by reference except
`insofar as it concerns the unasserted ’101 Patent).
`
`In addition to these references, DISH also incorporates all references, contentions, and
`
`claim charts provided by AT&T and DirecTV (“AT&T”) in AT&T’s invalidity contentions by
`
`reference (including Exhibits A-1 through A-16 and B-1 through B-9).
`
`Several pieces of prior art identified above are products or systems that were in use
`
`before the priority date of the Asserted Patents. DISH’s investigation into these products and
`
`systems is continuing, and DISH anticipates obtaining additional evidence concerning the
`
`functionality, capabilities and use of these products and systems through third-party discovery.
`
`In particular, DISH has identified several set-top box products that were sold, offered for
`
`sale, and in public use prior to the March 2004, including the set top boxes identified above
`
`produced by Motorola, Scientific Atlanta, Pace, Pioneer Electronics, and Sony. As set-forth in
`
`more detail in the accompanying charts, DISH understands that these products were capable of
`
`being used to navigate hierarchically arranged VOD menus as claimed because they had
`
`-13-
`
`0013
`
`

`

`
`
`adequate processing and graphical capability and included return path functionality that allowed
`
`users to send requests to the cable headend. DISH further understands, as set forth in the
`
`respective charts, that many of these set-top boxes were in fact used in conjunction with existing
`
`VOD services prior to the priority date of the Asserted Patents. Upon information and belief,
`
`Motorola set-top boxes were primarily deployed by Comcast to provide cable service to
`
`customers, and Scientific Atlanta set-top boxes were primarily deployed by Time Warner Cable
`
`to provide cable service to customers. Set-top boxes developed by Pace and Pioneer Electronics
`
`and were also available to be deployed to access the service of these companies.
`
`As of the priority date of the Asserted Patents, several companies were providing VOD
`
`service to their subscribers. Comcast and many other cable companies were utilizing the TV
`
`Guide Interactive IPG developed by Gemstar TV Guide, which allowed subscribers to browse
`
`and select VOD offerings. Comcast and Gemstar later formed a joint venture, Guideworks LLC,
`
`to develop the i-Guide. Upon information and belief, the i-Guide was provided to Comcast
`
`subscribers and similarly allowed them to browse categorically and hierarchically arranged VOD
`
`content menus. Time Warner Cable provided its subscribers with access to at least its
`
`proprietary iControl VOD system. Microsoft tested and deployed a VOD system referred to as
`
`Microsoft TV. And Cablevision won an award at the 2003 Emmy Awards for its Interactive
`
`Optimum menu, which likewise allowed users to access VOD titles. These VOD services were
`
`accessible to subscribers using existing conventional set-top boxes, such as those described
`
`above. Digeo Moxi provided a VOD service offering at least a similar menu structure as is
`
`recited in the asserted claims.
`
`In addition, to these VOD services, DISH understands that Scientific Atlanta also
`
`developed its own proprietary VOD application that could be adapted to use a provider’s
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`-14-
`
`0014
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`

`

`
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`branding and likewise provided users with the ability to navigate categorically arranged
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`hierarchal menus of VOD titles. DISH understands this application was referred to as the
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`Scientific Atlanta Resident Application, or SARA. These VOD applications were hosted on
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`backend server hardware provided by SeaChange and Concurrent, including the Concurrent
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`MediaHawk. DISH understands that both SeaChange and Concurrent offered VOD application
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`products as well.
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`Separately, DISH understands that prior art systems offering similar VOD-like
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`functionality were available and offered by hotels for in-room use prior to the priority date of the
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`Asserted Patents. In particular, hotel entertainment systems were produced by On Command and
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`LodgeNet and, upon information and belief, provided hotel guests with the ability to navigate
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`categorically arranged hierarchical menus of on-demand video content using their in-room TV
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`and remote.
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`There were also several know systems that allowed for web-based upload of video
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`content. For example, in the late 90s, the website Shareyourworld.com allowed for users to
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`upload video content to a website. On information and belief, a user of Shareyourworld.com was
`
`also able to provide metadata regarding the uploaded video content. Later, in 2005,
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`Youtube.com was launched, which likewise provided for web-based upload of video content and
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`metadata.
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`At present, DISH’s contentions are based only upon publicly available documents
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`concerning these systems and products. DISH believes additional evidence of prior art and prior
`
`uses will be revealed through discovery from third parties. DISH is seeking additional evidence
`
`through third-party discovery and will supplement its charts in due course based on any obtained
`
`evidence.
`
`-15-
`
`0015
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`Further, DISH expects that BBiTV has additional, unproduced evidence that is relevant to
`
`these contentions. In particular, BBiTV has not yet produced all prior art identified to it in other
`
`litigations, including its patent infringement suits against AT&T. AT&T has identified prior art,
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`including AT&T’s own confidential prior art uses and systems to which DISH has no access.
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`Specifically, BBiTV has not yet produced the claim charts provided by AT&T as exhibits A-17
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`and A-18 concerning the “Microsoft TV Solution” and “AT&T U-verse Solution respectively.
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`Nor has BBiTV produced underlying references and documentation produced by AT&T. DISH
`
`reserves all rights to amend its invalidity contentions to identify additional prior art references or
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`supplement its charts with additional evidence based on the production of new information
`
`during discovery.
`
`2.
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`Prior Art Under 35 U.S.C. § 102(f)
`
`Because discovery has not yet begun, DISH has been unable to explore the potential
`
`defense that Milton Diaz Perez did not himself invent the subject matter sought to be patented in
`
`the Asserted Patents. DISH specifically reserves the right to raise such a defense once it has had
`
`an opportunity to conduct its investigation.
`
`3.
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`Prior Art Under 35 U.S.C. § 102(g)
`
`To the extent the inventions identified in the patents, publications, systems, and other
`
`prior art to the Patents-in-Suit identified in these contentions were conceived by another and
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`diligently reduced to practice before the alleged conception and reduction to practice of the
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`Asserted Claims of the Patents-in-Suit by the named inventors of those patents, DISH alleges
`
`that such prior art inventions invalidate those claims under 35 U.S.C. § 102(g).
`
`4.
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`Claim Charts
`
`Pursuant to Paragraph 6 of the Court’s Order Governing Proceedings – Patent Case (Dkt.
`
`No. 23), DISH provides herewith as Exhibits A-D claim charts setting forth where in the prior art
`
`-16-
`
`0016
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`

`

`
`
`references each element of the Asserted Claims are found. Prior art claim charts for the ’388
`
`Patent are attached hereto as Exhibit A; charts for the ’791 Patent are attached hereto as Exhibit
`
`B; charts for the ’026 Patent are attached hereto as Exhibit C; charts for the ’269 Patent are
`
`attached hereto as Exhibit D. Where DISH cites to a particular figure in a prior art reference, the
`
`citation should be understood to encompass, in addition to the figure itself, the caption and
`
`description of the figure as well as any text relating to a figure. Conversely, where a cited portion
`
`of text refers to a figure, the citation should be understood to include the figure as well.
`
`The attached exhibits map the prior art references to each element of each Asserted
`
`Claim. In so doing, DISH does not admit that every element is limiting, nor does DISH waive its
`
`right to argue that certain elements are non-limiting.
`
`DISH has endeavored to identify portions of the charted prior art that disclose each
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`element of the Asserted Claims of the Patents-in-Suit. However, the prior art may contain
`
`additional disclosure for a particular claim element. To avoid excessive, cumulative citations,
`
`DISH identifies portions of prior art references sufficient to show where the reference discloses
`
`the claimed feature. DISH may point to additional evidence from the reference to support its
`
`contention that the cited passage discloses the claimed limitation. Persons of ordinary skill in the
`
`art of the Patents-in-Suit would determine what is described, disclosed, suggested, and taught by
`
`these items of prior art based on the prior art reference as a whole and in the context of relevant
`
`publications and literature in the art. Moreover, to understand and interpret any specific
`
`description, disclosure, or teaching of an item of prior art, such persons would rely on other
`
`information within the prior art item along with other prior art publications and their general
`
`scientific or engineering knowledge.
`
`-17-
`
`0017
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`

`

`
`
`5.
`
`Exemplary § 103 Obviousness Combinations
`
`DISH contends that the Asserted Claims are invalid under 35 U.S.C. § 102 and/or §103
`
`as being anticipated by or rendered obvious by prior art disclosed herein and/or in view of the
`
`knowledge of one of ordinary skill in the art. The Order Governing Proceedings – Patent Case
`
`does not require that DISH include in these Invalidity Contentions any disclosures relating to its
`
`potential § 103 arguments. Nevertheless, and without in any way limiting its ability to make
`
`additional arguments later, DISH provides the following non-limiting examples of potential
`
`obviousness combinations and motivations to combine.
`
`Any obviousness combinations of references provided herein pursuant to 35 U.S.C. § 103
`
`are not intended to be exhaustive. Additional obviousness combinations of the references
`
`identified above, or other prior art references or systems not yet identified, are possible, and
`
`DISH reserves the right to use any such combination in this litigation.
`
`DISH contends that one of skill in the art, at the time the alleged inventions were made,
`
`would have been motivated to combine the references disclosed herein in such a way as to reach
`
`the alleged inventions, as described in further detail below. DISH presently believes a
`
`reasonable basis exists that each of the claims asserted against it would have been obvious to one
`
`of ordinary skill in the art at the time of the alleged invention.
`
`a.
`
`’791 Patent
`
`It would have been obvious to one of ordinary skill in the art to combine various prior art
`
`references listed in Section III.B.1 to arrive at the subject matter of the Asserted Claims. Such
`
`combinations would have involved nothing more than combining prior elements according to
`
`known methods to yield predicable results, using a known technique to improve a similar device
`
`in the same way, and/or applying a known technique to a device ready for improvement to yield
`
`a predictable result.
`
`-18-
`
`0018
`
`

`

`
`
`DISH provides three exemplary § 103 obviousness combinations and the motivations that
`
`one of ordinary skill in the art would have to combine those references here. Similar motivations
`
`as those described below would apply to different combinations of prior art not explicitly called
`
`out here. By providing these examples, DISH is in no way precluding itself from introducing
`
`and relying on different combinations and different and/or additional motivations to combine.
`
`DISH expressly reserves the right to do so.
`
`Baumgartner I, Son, Scheffler, and CableLabs: One of ordinary skill in the art as of the
`
`effective filing date of the ’791 Patent would have considered it obvious and would have been
`
`motivated to combine the teachings of Baumgartner I, Son, Scheffler, and CableLabs to arrive at
`
`the subject matter of the Asserted Claims.
`
`As an initial matter, Baumgartner I provides a natural starting place for combination.
`
`Baumgartner I discloses a complete “interactive television system 10” with the vario