UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_
`
`DISH NETWORK L.L.C.,
`Petitioner
`
`v.
`
`BROADBAND ITV, INC.,
`Patent Owner
`
`_
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`_
`
`DECLARATION OF MILTON DIAZ PEREZ
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`BBiTV EX2036 (REVISED PUBLIC)
`DISH v. BBiTV
`IPR2020-01267
`
`
`
`_
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_
`
`DISH NETWORK L.L.C.,
`Petitioner
`
`v.
`
`BROADBAND ITV, INC.,
`Patent Owner
`
`_
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`_
`
`DECLARATION OF MILTON DIAZ PEREZ
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`BBiTV EX2036 (REVISED PUBLIC)
`DISH v. BBiTV
`IPR2020-01267
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`PATENT OWNER’S UPDATED EXHIBIT LIST
`
`Exhibit
`No.
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`Complaint for Patent Infringement, Broadband iTV, Inc. v. DISH
`Network, LLC, Case No. 6:19-cv-00716-ADA (W.D. Tex.),
`December 19, 2019.
`Transcript of Telephonic Discovery Hearing Before the Honorable
`Alan D. Albright, Broadband iTV, Inc. v. DISH Network, LLC,
`Case No. 6:19-cv-00716-ADA (W.D. Tex.), August 31, 2020.
`“The last thing anyone should think about WDTX is that it is patent
`plaintiff friendly, says Albright,” (IAM, Apr. 7, 2020),
`https://www.iam-media.com/law-policy/albright-the-last-thing-
`anyone-should-think-about-venue-it-plaintiff-friendly (accessed
`Sept. 14, 2020).
`Order Denying Motion to Stay Case, Continental Intermodal
`Group-Trucking, LLC v. Sand Revolution, LLC, Case No. 7:18-cv-
`00147 (W.D. Tex.), July 22, 2020.
`Order Denying Motion to Stay Case, Kerr Machine Co. v. Vulcan
`Indus. Holdings, LLC., Case No. 6:20-cv-00200 (W.D. Tex.),
`August 18, 2020.
`Divisional Standing Order Regarding Trials in Waco, U.S. District
`Court for the Western District of Texas, August 18, 2020.
`Divisional Standing Order Regarding Trials in Waco, U.S. District
`Court for the Western District of Texas, September 23, 2020.
`Divisional Standing Order Regarding Trials in Waco, U.S. District
`Court for the Western District of Texas, March 24, 2020.
`Order Granting Motion to Consolidate Cases, Broadband iTV, Inc.
`v. DISH Network, LLC, Case No. 6:19-cv-00712 (W.D. Tex.), April
`15, 2020.
`Minute Entry for Proceedings held before Judge Alan D. Albright,
`Broadband iTV, Inc. v. DISH Network, LLC, Case No. 6:19-cv-
`00716 (W.D. Tex.), August 31, 2020.
`“Roku Tells WDTX Patent Jury Its Tech's Web Access Is Key”
`Law360, October 5, 2020,
`https://www.law360.com/articles/1302893/print?section=ip
`(accessed October 20, 2020).
`
`- i -
`
`
`
`Exhibit
`No.
`
`Description
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`2017
`
`2018
`
`Order Denying Motion to Dismiss, Broadband iTV, Inc. v. DISH
`Network, LLC, Case No. 6:19-cv-00716-ADA (W.D. Tex.), July
`25, 2020.
`Dish Network LLC’s Preliminary Invalidity Contentions,
`Broadband iTV, Inc. v. DISH Network, LLC, Case No. 6:19-cv-
`00716-ADA (W.D. Tex.), June 25, 2020.
`Intentionally Left Blank
`Defendants’ Opening Claim Construction Brief, Broadband iTV,
`Inc. v. DISH Network, LLC, Case No. 6:19-cv-716, U.S. District
`Court for the Western District of Texas, dated September 10, 2020.
`Intentionally Left Blank
`U.S. Patent Appl. Publ. No. 2002/00104099 to Novak (“Novak”)
`“Roku Beats $41M Infringement Claim In Texas Trial” Law360,
`October 14, 2020,
`https://www.law360.com/articles/1319005/print?section=ip
`(accessed October 21, 2020).
`“3 Things To Know After Busy WDTX Patent Judge's 1st Trial”
`Law360, October 16, 2020,
`https://www.law360.com/articles/1320360/print?section=ip
`(accessed October 21, 2020).
`Transcript of Telephonic Discovery Hearing Before the Honorable
`Alan D. Albright, Broadband iTV, Inc. v. DISH Network, LLC,
`Case No. 6:19-cv-00716-ADA (W.D. Tex.), March 26, 2020.
`2021-2025 Intentionally Left Blank
`BBiTV Court’s Claim Constructions Final At Hearing 11/13/20,
`Broadband iTV, Inc. v. DISH Network, LLC, Case No. 6:19-cv-716,
`U.S. District Court for the Western District of Texas, dated
`November 13, 2020.
`2027-2029 Intentionally Left Blank
`Teleconference Transcript, November 25, 2020.
`2030
`DISH Final Invalidity Contentions and Example Claim Charts
`2031
`AT&T Final Invalidity Contentions and Example Claim Charts
`2032
`Civil Docket for Broadband iTV, Inc. v. DISH Network, LLC, Case
`2033
`No. 6:16-cv-00716-ADA (W.D. Tex.), February 2, 2021.
`Teleconference Transcript, February 2, 2021.
`2034
`
`2019
`
`2020
`
`2026
`
`
`
`- ii -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`
`Description
`
`Michael Shamos Declaration (PARTIALLY CONFIDENTIAL)
`Milton Diaz Perez Declaration (PARTIALLY CONFIDENTIAL)
`Leighton Chong Declaration (PARTIALLY CONFIDENTIAL)
`Clif Kagawa Declaration (PARTIALLY CONFIDENTIAL)
`Deposition Transcript of Dr. Samuel Russ, April 30, 2021
`“Why Comcast Leads the Pack,” Bloomberg, May 31, 2001
`Comcast Fact Sheet
`"HOW IT WORKS: Video on Demand Is Ready, but the Market Is
`Not,” New York Times, Oct. 10, 2002
`“Behind Comcast's video-on-demand growth” dated Oct. 4, 2004,
`available at
`https://money.cnn.com/2004/10/04/technology/techinvestor/hellwe
`g/index.htm
` Comcast press release dated Jan. 8, 2008, available at
`https://corporate.comcast.com/news-information/news-
`feed/comcast-ceo-brian-l-roberts-announces-project-infinity-
`strategy-to-deliver-exponentially-more-content-choice-on-tv
`“Comcast’s Road to 20 Billion VOD Views” dated Aug. 10, 2011,
`available at https://www.multichannel.com/news/comcast-s-road-
`20-billion-vod-views-327466
`Comcast press release dated Mar. 31, 2009, available at
`https://www.prlog.org/10880181-comcast-media-center-to-
`introduce-express-lane-service-for-video-on-demand-content-
`providers-at.html
`Navic meeting 07/03 (CONFIDENTIAL)
`Intentionally Left Blank
`Intentionally Left Blank
`Specs / Flowcharts late 2003-early 2004 (CONFIDENTIAL)
`Specs / Flowcharts late 2003-early 2004 (CONFIDENTIAL)
`Specs / Flowcharts late 2003-early 2004 (CONFIDENTIAL)
`Specs / Flowcharts late 2003-early 2004 (CONFIDENTIAL)
`Specs / Flowcharts late 2003-early 2004 (CONFIDENTIAL)
`
`Exhibit
`No.
`2035
`2036
`2037
`2038
`2039
`2040
`2041
`2042
`
`2043
`
`2044
`
`2045
`
`2046
`
`2047
`2048
`2049
`2050
`2051
`2052
`2053
`2054
`
`
`
`- iii -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`
`Exhibit
`No.
`
`Description
`
`2055
`
`2056
`
`2057
`
`2058
`
`2059
`
`2060
`
`2061
`2062
`2063
`
`2064
`
`2065
`2066
`
`2067
`
`2068
`2069
`2070
`
`2071
`2072
`2073
`
`Email from Nestel to Diaz, dated January 12, 2004
`(CONFIDENTIAL)
`Email from Wall to Diaz (Perez) dated Jan. 25, 2004
`(CONFIDENTIAL)
`Email from Kagawa to Hoctor dated Dec. 7, 2003
`(CONFIDENTIAL)
`Email from Wall to Diaz (Perez) dated Jan. 27, 2004
`(CONFIDENTIAL)
`Email from Kagawa to Diaz (Perez) dated Jan. 27, 2004
`(CONFIDENTIAL)
`Email from Chong to Kagawa dated Mar. 31, 2004
`(CONFIDENTIAL)
`March draft application (attached to 3/31 March draft email)
`(CONFIDENTIAL)
`U.S. Patent Application No. 10/909,192
`Hand drawn BBiTV road map diagram, dated 3/3/04
`(CONFIDENTIAL)
`Email from Chong to Diaz (Perez) dated Mar. 18, 2004
`(CONFIDENTIAL)
`Email from Chong to Diaz (Perez) dated Mar. 19, 2004
`(CONFIDENTIAL)
`Consumer Content patent outline v2.doc (CONFIDENTIAL)
`System and Method for Managing, Converting and Displaying
`Consumer-Generated Content for Interactive Television Use
`(CONFIDENTIAL)
`Email from Diaz (Perez) to Chong dated Mar. 30, 2004
`(CONFIDENTIAL)
`U.S. Patent Application Publication No. 2002/0066106
`“April Development Document” (BBiTV Community
`Classified_spec_04_26_04 mdp.doc) (CONFIDENTIAL)
`“Servlet” definition:
`https://www.oracle.com/java/technologies/servlet-technology.html
`“February Presentation” (demo-nissan-infinity-02-18-04.ppt)
`Email from Kagawa to Evard dated Mar. 23, 2004
`(CONFIDENTIAL)
`
`
`
`- iv -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`
`Exhibit
`No.
`
`Description
`
`2074
`
`2075
`
`2076
`
`2077
`
`2078
`
`2079
`
`2080
`
`2081
`
`2082
`
`2083
`
`2084
`
`2085
`
`2086
`
`2087
`
`2088
`
`2089
`
`2090
`
`2091
`
`Email from Wall to Diaz (Perez) dated Mar. 30, 2004
`(CONFIDENTIAL)
`Email from Kagawa to Evard dated Mar. 31, 2004
`(CONFIDENTIAL)
`Email from Kagawa to Evard dated Apr. 8, 2004
`(CONFIDENTIAL)
`Email from Kagawa to Kalbrener dated Apr. 2, 2004
`(CONFIDENTIAL)
`Email from Kagawa to Yamashita dated Apr. 21, 2004
`(CONFIDENTIAL)
`Email from Kagawa to Diaz (Perez) dated Apr. 27, 2004
`(CONFIDENTIAL)
`Email from Benz to Diaz (Perez) dated Apr. 27, 2004
`(CONFIDENTIAL)
`Email from Shimamura to Kagawa dated Apr. 27, 2004
`(CONFIDENTIAL)
`Email from Guinasso to Diaz (Perez) dated May 6, 2004
`(CONFIDENTIAL)
`Email from Evard to Diaz (Perez) dated May 6, 2004
`(CONFIDENTIAL)
`Email from Kagawa to Evard dated May 7, 2004
`(CONFIDENTIAL)
`Email from Moratin to Goldberg dated May 17, 2004
`(CONFIDENTIAL)
`Email from Kagawa to Diaz (Perez) dated May 21, 2004
`(CONFIDENTIAL)
`Email from Kagawa to Evard dated June 4, 2004
`(CONFIDENTIAL)
`Email from kagawa to Evard dated June 11, 2004
`(CONFIDENTIAL)
`Email from Felice to Diaz (Perez) dated June 15, 2004
`(CONFIDENTIAL)
`Email from Wall to Diaz (Perez) dated June 18, 2004
`(CONFIDENTIAL)
`Email from Yamashita to Evard dated June 25, 2004
`(CONFIDENTIAL)
`
`
`
`- v -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`
`Exhibit
`No.
`
`Description
`
`2092
`2093
`2094
`
`2095
`
`2096
`
`2097
`
`2098
`
`2099
`
`2100
`
`2101
`
`2102
`2103
`2104
`
`2105
`
`2106
`
`2107
`
`2108
`
`2109
`2110
`
`Email from Evard to Kagawa dated July 14, 2004
`(CONFIDENTIAL)
`May 04 Management Report (June 23) (CONFIDENTIAL)
`Email from Kagawa to Yamashita dated May 21, 2004
`(CONFIDENTIAL)
`Email from Evard to Wilcox dated Apr. 28, 2004
`(CONFIDENTIAL)
`Email from Keyserling to Diaz (Perez) dated Apr. 28, 2004
`(CONFIDENTIAL)
`Email from Dowling to Diaz (Perez) dated Apr. 29, 2004
`(CONFIDENTIAL)
`Email from Dakss to Diaz (Perez) dated Apr. 29, 2004
`(CONFIDENTIAL)
`Email from Daoust to Diaz (Perez) dated July 14, 2004
`(CONFIDENTIAL)
`Email from Reynolds to Diaz (Perez) dated July 12, 2004
`(CONFIDENTIAL)
`Email from Geist to Diaz (Perez) dated July 15, 2004
`(CONFIDENTIAL)
`Email from Chong to Diaz (Perez) dated June 1, 2004
`(CONFIDENTIAL)
`Declaration of Michael Kunkel
`Email from Diaz (Perez) to Chong dated June 9, 2004
`(CONFIDENTIAL)
`Email from Chong to Diaz (Perez) dated June 9, 2004
`(CONFIDENTIAL)
`Email from Chong to Diaz (Perez) dated June 1, 2004
`(CONFIDENTIAL)
`Email from Chong to Diaz (Perez) dated June 21, 2004
`(CONFIDENTIAL)
`Email from Chong to Diaz (Perez) dated June 23, 2004
`(CONFIDENTIAL)
`Email from Chong to Diaz (Perez) dated June 25, 2004
`(CONFIDENTIAL)
`Fig 1a vod content delivery system arch.doc (5/23, 6/27)
`
`
`
`- vi -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`
`Exhibit
`No.
`2111
`2112
`2113
`2114
`2115
`2116
`2117
`
`2118
`
`2119
`2120
`2121
`
`2122
`2123
`2124
`2125
`2126
`2127
`2128
`2129
`
`2130
`
`2131
`2132
`2133
`2134
`2135
`
`Description
`
`Fig 1b drill down navigation example.ppt (10/1, 6/27)
`Fig 1c template layer model.doc (6/20, 6/27)
`Fig 2a classified ad system arch.doc (6/27, 6/28)
`Fig 2b web-based cms.doc (6/27, 6/29)
`Fig 2c Content Screening System.doc (6/29)
`Fig 2d content feed and conversion system.doc (6/29)
`Email from Diaz (Perez) to Chong dated June 29, 2004
`(CONFIDENTIAL)
`Email from Chong to Diaz (Perez) dated June 30, 2004
`(CONFIDENTIAL)
`Email from Chong to Diaz (Perez) dated July 15, 2004
`(CONFIDENTIAL)
`7/15 Patent Application Draft (CONFIDENTIAL)
`Email from Chong to Diaz (Perez) dated July 21, 2004
`(CONFIDENTIAL)
`Email from Chong to Diaz (Perez) dated July 22, 2004
`(CONFIDENTIAL)
`Product Status Report 3/1 (CONFIDENTIAL)
`Product Status Report 3/8 (CONFIDENTIAL)
`Product Status Report 3/15 (CONFIDENTIAL)
`Product Status Report 3/23 (CONFIDENTIAL)
`Product Status Report 3/30 (CONFIDENTIAL)
`Intentionally Left Blank
`March Monthly Management Report (created 4/16)
`(CONFIDENTIAL)
`Emails regarding functionality requirements (4/29)
`(CONFIDENTIAL)
`Emails regarding updating specs/flowcharts (4/28)
`(CONFIDENTIAL)
`Product Status Report 4/6 (CONFIDENTIAL)
`Product Status Report 4/13 (CONFIDENTIAL)
`Product Status Report 4/20 (CONFIDENTIAL)
`Product Status Report 4/28 (CONFIDENTIAL)
`
`
`
`- vii -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`
`Exhibit
`No.
`
`Description
`
`2136
`
`2137
`
`2138
`
`2139
`
`2140
`
`2141
`2142
`2143
`
`2144
`
`2145
`
`2146
`
`2147
`
`2148
`
`2149
`
`2150
`2151
`2152
`2153
`2154
`
`Email from Kanojia to Diaz (Perez) dated Apr. 19, 2004
`(CONFIDENTIAL)
`Alternate (later) version of April Development Document
`(CONFIDENTIAL)
`Email from Nestel to Diaz (Perez) dated Apr. 20, 2004
`(CONFIDENTIAL)
`Email from Nestel to Goldberg dated Apr. 21, 2004
`(CONFIDENTIAL)
`Email from Nestel to Goldberg dated Apr. 23, 2004
`(CONFIDENTIAL)
`Email from Goldberg to Nestel dated May 6, 2004
`(CONFIDENTIAL)
`Product Status Report 5/25 (CONFIDENTIAL)
`Email from Goldberg to Diaz (Perez) dated May 11, 2004
`(CONFIDENTIAL)
`Email from Nestel to Diaz (Perez) dated May 18, 2004
`(CONFIDENTIAL)
`Email from Nestel to Goldberg dated May 25, 2004
`(CONFIDENTIAL)
`Email from Goldberg to Diaz (Perez) dated May 26, 2004
`(CONFIDENTIAL)
`Email from Wall to Diaz (Perez) dated May 1, 2004
`(CONFIDENTIAL)
`Email from Nestel to Tumilowicz dated May 20, 2004
`(CONFIDENTIAL)
`Email from Nestel to Diaz (Perez) dated May 3, 2004
`(CONFIDENTIAL)
`April 2004 Monthly Management Report (created 5/14)
`(CONFIDENTIAL)
`Product Status Report 5/4 (CONFIDENTIAL)
`Claim Construction Order, Broadband iTV v. DISH; Broadband
`iTV v. AT&T and DirecTV
`Intentionally Left Blank
`Product Status Report 6/2 (CONFIDENTIAL)
`
`- viii -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`
`Exhibit
`No.
`
`Description
`
`2155
`
`2156
`2157
`2158
`2159
`
`2160
`2161
`2162
`
`2163
`2164
`2165
`2166
`2167
`2168
`2169
`2170
`2171
`2172
`2173
`2174
`2175
`2176
`2177
`2178
`2179
`
`Email from Wall to Diaz (Perez) dated June 2, 2004
`(CONFIDENTIAL)
`Email from Nestel to Diaz (Perez) dated June 2, 2004
`(CONFIDENTIAL)
`Product Status Report 6/14 (CONFIDENTIAL)
`Product Status Report 6/29 (CONFIDENTIAL)
`Email from Hoctor to Nestel dated June 30, 2004
`(CONFIDENTIAL)
`Email from Kuniyuki to Nestel dated July 29, 2004
`(CONFIDENTIAL)
`Email from Wall to Nestel dated July 28, 2004 (CONFIDENTIAL)
`Email from Nestel to Diaz (Perez) dated July 23, 2004
`(CONFIDENTIAL)
`Email from Nestel to Diaz (Perez) dated July 14, 2004
`(CONFIDENTIAL)
`Product Status Report 7/12 (CONFIDENTIAL)
`Product Status Report 8/3/04 (CONFIDENTIAL)
`Email from Nestel to Diaz (Perez) dated July 14, 2004
`(CONFIDENTIAL)
`Ericsson R320s - cellular phone - GSM Series Specs, CNET
`Ericsson R320s User Manual, 2nd Ed., 1999
`Palm VII Series Specs, CNET
`Palm VII Series User Guide
`U.S. Patent No. 6,253,375 to Gordon et al.
`U.S. Patent Application No. 15/192,598
`U.S. Provisional Patent Application No. 60/253,350
`U.S. Provisional Patent Application No. 60/253,369
`U.S. Provisional Patent Application No. 60/253,488
`Intentionally Left Blank
`Redline of ’192 Application vs. March Draft (CONFIDENTIAL)
`Q2 2004 business plan (CONFIDENTIAL)
`Email from Chong to Diaz (Perez) dated Mar. 30, 2004
`(CONFIDENTIAL)
`
`
`
`- ix -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`
`Description
`
`Express Lane User Guide v3
`Email from Chong to Diaz (Perez) dated Apr. 22, 2004
`(CONFIDENTIAL)
`Email from Chong to Diaz (Perez) dated Apr. 24, 2004
`(CONFIDENTIAL)
`Email from Diaz (Perez) to Chong dated Apr. 24, 2004
`(CONFIDENTIAL)
`Email from Chong to Diaz (Perez) dated May 27, 2004
`(CONFIDENTIAL)
`7/30 Confirmation Of Filing (CONFIDENTIAL)
`Email from Patrick Herman Regarding Patent Owner’s Motion to
`Seal and Enter Default Protective Order, May 7th, 2021
`
`Exhibit
`No.
`2180
`2181
`
`2182
`
`2183
`
`2184
`2185
`2186
`
`
`
`- x -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`
`I, Milton Diaz Perez, declare and state as follows:
`
`I.
`
`INTRODUCTION AND BACKGROUND OF THE INVENTION
`
`1.
`
`I joined BBiTV in April or May of 2003 as a part-time consultant in
`
`order to help BBiTV’s efforts to commercialize a product to sell ads on cable
`
`networks. When I joined, BBiTV had a product called Promo!, which was a VOD-
`
`based advertising product built on the Scientific Atlanta XOD platform, and
`
`publicly accessible on Time Warner Cable Oceanic (“TWC”) channel 327.
`
`2.
`
`The processing of video content and metadata into the Promo! system
`
`involved sending TWC video tapes with information about videos (e.g., title,
`
`category, etc.) physically written on the video tape. TWC would process the tapes,
`
`which involved encoding the tapes, transcribing the descriptive information into a
`
`metadata file, and loading the encoded video files onto TWC’s video servers and
`
`the transcribed information into the XOD platform. Because of the manual nature
`
`of entering content and descriptive information into the Promo! system’s backend,
`
`content would only be available several weeks after a video tape was sent to TWC,
`
`and errors in the transcription of metadata were common. On the front-end, the
`
`XOD’s interface was difficult to navigate, slow to load and was prone to crashing.
`
`Among other technical challenges, XOD utilized a single database, which would
`
`be delivered via a “carousel” to the set top box. This meant that if there was even a
`
`small error in the database, any corrections or updates would need to replace the
`
`
`
`- 1 -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`entire database via re-delivery to the carousel. Such an update could take as long as
`
`8 hours. In part, I was tasked by BBiTV to overcome these technical challenges,
`
`some of which resulted in the patent disclosure at issue here.
`
`3.
`
`In order to improve the capabilities of the then-exiting Promo! System
`
`and overcome these and other technical challenges, I believed we had to replace
`
`the system, and I lead the development of a replacement platform. In June of 2003,
`
`BBiTV was introduced to Navic, a company that provided a technical platform on
`
`TWC head ends. Navic’s platform was both an app platform enabling the
`
`construction and running of custom applications (like the applications being
`
`developed by BBiTV) on a set-top box. The Navic platform also provided an
`
`alternative data transport system (to the poorly designed carousel that TWC was
`
`using for Promo!) inside a cable system that would communicate with an app on a
`
`set-top box. Our plan at BBiTV at the time was to transition our then existing
`
`Promo! product from the old carousel system onto the Navic platform. Thus, we
`
`contemplated that BBiTV would create custom user interfaces and video controls
`
`to replace the poorly performing implementation of the then-existing Promo!. We
`
`referred to the new version of Promo! internally as the “Version 2.0” product.
`
`BBiTV signed a letter expressing interest in working with Navic in late July of
`
`2003, and had multiple meetings with Navic to explore Navic’s capabilities (see,
`
`e.g., EX2047, reflecting a meeting with Navic in July 2003).
`
`
`
`- 2 -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`I also wanted to address the difficult, cumbersome and technically
`
`4.
`
`challenged method used by the then-existing Promo! product to deliver videos and
`
`related information to the XOD platform. My idea was to replace the backend
`
`video delivery system entirely with a more streamlined service over the Internet. I
`
`envisioned a VOD classifieds product with both an improved user interface and
`
`graphics for the end-user. One of the improvements I conceived included improved
`
`control over the process for content providers using a web-based content
`
`management system. By allowing content providers to upload videos along with
`
`the content characterizing data as “metadata,” I not only gave control over the
`
`process to the content provider, I also sped up the process and reduced potential
`
`transcription errors. The system I conceived also provided for improved and more
`
`efficient video encoding and other processes that were related to delivering to the
`
`head end a full “package.” Initially, I envisioned BBiTV would operate two
`
`separate VOD related products and/or businesses. One product was called a
`
`“Commercial Classifieds” product, where BBiTV would provide more services,
`
`such as assisting with advertisement creation and additional links inside ads. The
`
`other product was a “Consumer Classifieds” product focused on individual users.
`
`Later, I also conceived of a “Bulletin Board product.”
`
`5.
`
`In September of 2003, I became the full-time CTO of BBiTV. My job
`
`responsibilities included the development of new VOD products, acquisition of
`
`
`
`- 3 -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`patents and other intellectual property, management of the operations team
`
`supporting Promo! (as it existed and was being developed for Version 2.0) and
`
`securing of funding for the company to develop and market new VOD products. In
`
`late 2003 and early 2004, I drafted specifications and flow charts for the new
`
`products. EX2048-EX2055. EX2048 is a true and accurate copy of a draft
`
`document I authored, which has a created and last modified date of 10/22/2003.
`
`EX2049 is a true and accurate copy of a draft document I authored, which has a
`
`created and last modified date of 10/19/2003. EX2050 is a true and accurate copy
`
`of a draft document authored at my direction, which has a created and last
`
`modified date of 12/19/2003. EX2051 is a true and accurate copy of a draft
`
`document authored at my direction, which has a created and last modified date of
`
`12/19/2003. EX2052 is a true and accurate copy of a draft document authored at
`
`my direction, which has a created and last modified date of 12/19/2003. EX2053 is
`
`a true and accurate copy of a draft document authored at my direction, which has a
`
`created and last modified date of 1/15/2004. EX2054 is a true and accurate copy of
`
`a draft document authored at my direction, which has a created and last modified
`
`date of 1/5/2004. EX2055 is a true and accurate copy of an email I received on
`
`1/12/2004. I also hired Nicole Nestel as a product manager and Kim Wall as a
`
`graphic designer under my supervision to assist with the creation of the design of
`
`the products.
`
`
`
`- 4 -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`I recognized that a significant aspect of our new products was delivery
`
`6.
`
`of video content to a STB in a video-on-demand format. EX2056. EX2056 is a true
`
`and accurate copy of an email I received on 1/25/2004. On December 7, 2003,
`
`BBiTV signed a developer agreement with Navic, which enabled us to work with
`
`Navic to build out my vision of what the VOD capability for our products would
`
`be EX2057. EX2057 is a true and accurate copy of an email I received on
`
`12/7/2003. Ms. Wall, Ms. Nestel, and I met with Navic frequently, including
`
`attending a developer training event in January 2004. EX2058, 3. In addition, a
`
`web-based video uploading solution was also essential. After meeting with vendors
`
`such as InDemand, one of the biggest providers of ingestion and processing
`
`services in January of 2004 (EX2059), I realized that a significant technological
`
`challenge faced by all industry participants was that it was not possible for current
`
`market participants to provide the functionality I envisioned. EX2059 is a true and
`
`accurate copy of an email I received on 1/27/2004. I also realized BBiTV would
`
`have to design and create a web-based content management system (WBCMS)
`
`itself to overcome these and other technological challenges and implement my
`
`inventions.
`
`II. CONCEPTION OF SUBJECT MATTER OF CLAIMS 1-9 OF ’026
`
`PATENT
`
`
`
`- 5 -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`I conceived of the inventions claimed in claims 1-9 of the ’026 patent
`
`7.
`
`no later than March 31, 2004 as corroborated by an early draft of patent application
`
`(“March Draft”) (EX2060; EX2061) that was sent by Leighton Chong, BBiTV’s
`
`patent attorney, to Clif Kagawa, BBiTV’s CEO, and me and that resulted in U.S.
`
`Patent Application 10/909,192 (“’192 application”) filed on July 30, 2004
`
`(EX2062). EX2060 is a true and accurate copy of an email I received on
`
`3/31/2004. EX2061 is a true and accurate copy of the document attached to
`
`EX2060, which I received on 3/31/2004. EX2062 is a true and accurate copy of a
`
`document filed with the US Patent Office on 7/30/2004. The ’192 application
`
`issued as U.S. Patent No. 7,590,997 (“’997 patent”). EX1017.
`
`8.
`
`I discussed the subject matter of claims 1-9 of the ’026 patent with
`
`Mr. Kagawa in February 2004 and prepared a presentation showing how the
`
`system’s hierarchical EPG and layered templates would work (the “February
`
`Presentation”). EX2072, 6. EX2072 is a true and accurate copy of a draft document
`
`authored at my direction, which has a created date of 10/1/2003 and a last modified
`
`date of 2/18/2004. As the CTO, I discussed the subject matter of claims 1-9 of the
`
`’026 patent with Mr. Kagawa in the course of discussing product development of
`
`the next generation of BBiTV products and to obtain permission to pursue patent
`
`application on my inventions.
`
`
`
`- 6 -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`I also communicated the subject matter of my inventions to Mr.
`
`9.
`
`Chong, BBiTV’s patent attorney at the time, who proceeded to draft the patent
`
`application that became the ’192 application. On March 3, 2004, I met with Mr.
`
`Chong
`
`. EX2063. During this meeting,
`
`
`
`, as shown in
`
`EX2063. EX2063 is a true and accurate copy of a draft document I created on
`
`3/3/2004. Mr. Chong communicated with me further on 3/18 and 3/19 requesting
`
`updates from me on my progress in drafting the patent specification. EX2064;
`
`EX2065. EX2064 is a true and accurate copy of an email I received on 3/18/2004.
`
`EX2065 is a true and accurate copy of an email I received on 3/19/2004. I created a
`
`first draft of a patent specification, including the major features of the system in
`
`EX2066, titled “Consumer Content patent outline v2.doc” which has a document
`
`creation date of 3/24/2004 and date last modified date of 3/26/2004. EX2066 is a
`
`true and accurate copy of a draft document I created on 3/24/2004 and last
`
`modified on 3/26/2004. I slightly refined this outline as EX2067, titled “System
`
`and Method for Managing, Converting and Displaying Consumer-Generated
`
`Content for Interactive Television Use,” which has a creation date and last
`
`modified date of 3/29/2004. EX2067 is a true and accurate copy of a draft
`
`document I created on 3/29/2004. I sent Mr. Chong this first draft of the patent
`
`
`
`- 7 -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`specification on 3/29/2004. EX2068. EX2068 is a true and accurate copy of an
`
`email I sent on 3/30/2004. Mr. Chong responded on 3/30/2004, noting that the text
`
`I have drafted reflects what Mr. Chong and I mapped out during meetings, and
`
`requesting diagrams that I had drawn on a whiteboard. EX2179. EX2179 is a true
`
`and accurate copy of an email I received on 3/30/2004. On the next day, March 31,
`
`2004, Mr. Chong sent the March Draft to Clif Kagawa and me. (EX2060;
`
`EX2061).
`
`10. As we continued to work on the projects, I developed with the
`
`assistance of my team, a development document by April 29, 2004 (the “April
`
`Development Document”). EX2070. EX2070 is a true and accurate copy of a draft
`
`document authored at my direction on 4/22/2004, and last modified on 4/29/2004.
`
`The April Development Document included more examples of how my inventions
`
`were to be implemented in these early products.
`
`11. My conception of claims 1-9 of the ’026 patent by March 31, 2004, is
`
`corroborated by contemporaneous documents from 2004, including at least the
`
`March Draft (EX2060; EX2061) and February Presentation (EX2072). The April
`
`Development Document (EX2070) further corroborates my conception of claims
`
`1-9 in no event later than April 29, 2004.
`
`A. Claim 1
`
`
`
`- 8 -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`
`1. Preamble1
`
`12.
`
`I conceived of “An Internet-connected digital device for receiving, via
`
`the Internet, video content to be viewed by a subscriber of a video-on-demand
`
`system using a hierarchically arranged electronic program guide” by March 31,
`
`2004 as corroborated by the March Draft and February Presentation and EX2054,
`
`and in any event no later than April 29, 2004 as corroborated by the April
`
`Development Document. The March Draft discloses “An Internet-connected digital
`
`device” such as an internet-connected set-top box. EX2061, ¶3 (disclosing set-top
`
`boxes with “Internet browsing capabilities, e-mail, e-commerce transactions” and
`
`“videoconferencing.”). The March Draft incorporates by reference U.S. Patent
`
`Publication 2002/066,106 (“’106 Publication”) to Navic published May 30, 2002,
`
`which similarly discloses “Internet appliances such as digital set-top boxes” that
`
`can have offer “Internet browsing capabilities and e-commerce serving
`
`capabilities.” EX2069, ¶¶5-6; EX2061, ¶4. EX2069 is a true and accurate copy of a
`
`document published by the Patent Office on May 30, 2002. At the time, we were
`
`working on developing products on the Navic platform, which, as their patent
`
`application states, could support internet connected digital set-top boxes that can
`
`receive content (e.g., video advertisements, internet browsing).
`
`
`1 1.preamble and limitations 1[a]-1[f] correspond to Petitioner’s labeling of claim 1
`in the Petition.
`
`
`
`- 9 -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`13. The March Draft also discloses that the Internet-connected digital
`
`device (“ICDD”) (e.g., set-top box) is “for receiving, via the Internet, video content
`
`to be viewed by a subscriber of a video-on-demand system” as the set-top box
`
`receives video content to be viewed by a subscriber of a video-on-demand system
`
`via the Internet as the video content received is uploaded and transferred via the
`
`internet. EX2061, ¶¶8, 28, 31.
`
`14. Additionally, the April Development Document (EX2070) dated no
`
`later than April 29, 2004) was authored under my direction and reflected my
`
`conceptions. The April Development Document shows that
`
` I used this language to reflect my concept that
`
` (the “April Development
`
`Document”). EX2070, 3
`
`
`
`
`
`
`
`
`
` The April
`
`Development Document also depicts a client device (e.g., a set-top box) labeled as
`
`“ITV Product” that is coupled to the system via “Navic N-Band Components”
`
`including a “Java Servlet.” At the time, Java Servlets were components used by
`
`servers as part of the Internet to transmit information using an Internet Protocol.
`
`EX2071. EX2071 is a true and accurate copy of a website published by Oracle that
`
`I visited. Navic used these Java Servlets to communicate with ITV Products, such
`
`
`
`- 10 -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`as digital set top boxes, which Navic described as “Internet appliances” in the ’106
`
`Publication.
`
`EX2070, 6 (annotated).
`
`15. The March Draft discloses that video content was viewed “using a
`
`hierarchically arranged electronic program guide.” The March Draft also discloses
`
`that the video-on-demand system uses a “hierarchically arranged electronic
`
`
`
`- 11 -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`program guide” (EPG) by, for example, allowing users to navigate from general
`
`“mass-market” or “topical” areas to “specific,” or “subtopical” areas. EX2061, ¶¶7,
`
`8, 10, 23, 24, 31.
`
`16. Further, EX2072, the February Presentation, dated February 18, 2004,
`
`is a BBiTV development document that I authored that shows examples of
`
`hierarchically arranged EPGs and layered templates at different levels of the
`
`hierarchy. EX2072, 2-13. One example of a hierarchically arranged EPG is shown
`
`below in red wherein the user can choose categories and subcategories to select the
`
`desired video.
`
`
`
`
`
`- 12 -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`EX2072, 2 (annotated). A substantially similar diagram is reproduced in the ’026
`
`patent (EX1001) at FIG. 1B.
`
`17.
`
`In another example, in a January 4, 2004 “Core Platform
`
`Requirements” (EX2054) I provided the following illustration of a drill down
`
`menu as I conceived of it:
`
`See EX2054, 10-11.
`
`2. Limitation 1.[a]
`
`18.
`
`I conceived of limitation 1.[a], “the Internet-connected digital device
`
`being configured to obtain and present to the subscriber an electronic program
`
`guide as a templatized video-on-demand display, which uses at least one of a
`
`plurality of different display templates to which the Internet-connected digital
`
`device
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
