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
`
`U.S. Patent No. 10,028,026
`Issue Date: July 17, 2018
`
`Title: SYSTEM FOR ADDRESSING ON-DEMAND TV PROGRAM
`CONTENT ON TV SERVICES PLATFORM OF A DIGITAL TV
`SERVICES PROVIDER
`
`Case No. IPR2020-01267
`
`REPLY DECLARATION OF DR. SAMUEL H. RUSS, PH.D.
`
`DISH Ex. 1053, p. 1
`DISH v. BBiTV
`IPR2020-01267
`
`

`

`I.
`II.
`
`Page
`INTRODUCTION .......................................................................................... 4
`GONDER IS PRIOR ART TO CLAIMS 1-9 OF THE ’026 PATENT......... 8
`A.
`Legal Standard ...................................................................................... 9
`B.
`The ’192 Application did not constructively reduce an
`“Internet-connected digital device” to practice. ................................. 10
`No evidence Corroborates Mr. Diaz’s alleged conception of an
`“Internet-connected digital device.” ................................................... 32
`i.
`The February Presentation shows no evidence of
`conception of an “Internet-connected digital device.” ............ 35
`The March Draft shows no evidence of conception of an
`“Internet-connected digital device.” ........................................ 35
`The April Development Document shows no evidence of
`conception of an “Internet-connected digital device.” ............ 39
`No evidence corroborates Mr. Diaz’s alleged conception of
`third layer content that is “generated using the received video
`content.”.............................................................................................. 47
`i.
`The February Presentation shows no evidence of
`conception of third layer content that is “generated using
`the received video content.” ..................................................... 48
`The March Draft shows no evidence of conception of
`third layer content that is “generated using the received
`video content.” ......................................................................... 50
`The April Development Document shows no evidence of
`conception of third layer content that is “generated using
`the received video content.” ..................................................... 52
`III. Gonder incorporates CableLabs by reference. ............................................. 53
`IV. GONDER TEACHES THE CLAIMED THIRD LAYER ........................... 57
`A.
`Figures 4 and 5b show “reserved area content” generated using
`images. ................................................................................................ 64
`
`ii.
`
`iii.
`
`ii.
`
`iii.
`
`C.
`
`D.
`
`TABLE OF CONTENTS
`
`DISH Ex. 1053, p. 2
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`IPR2020-01267
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`

`

`TABLE OF CONTENTS
`(continued)
`
`V.
`
`VI.
`
`Page
`Figure 7 shows “reserved area content” generated using images. ..... 67
`B.
`A POSITA WOULD BE MOTIVATED TO COMBINE GONDER
`AND SON. .................................................................................................... 75
`The dependant Claims Are OBVIOUS. ....................................................... 77
`A.
`Claim 6 ............................................................................................... 77
`B.
`Claims 11 and 12 ................................................................................ 78
`C.
`Claim 15 ............................................................................................. 81
`VII. CONCLUSION ............................................................................................. 82
`
`DISH Ex. 1053, p. 3
`DISH v. BBiTV
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`
`

`

`I, Samuel H. Russ, Ph.D. declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by DISH Network L.L.C. (“DISH”) as an
`
`independent expert consultant in this proceeding before the United States Patent
`
`and Trademark Office (“PTO”). I am not an employee of DISH or any affiliate or
`
`subsidiary of DISH.
`
`2.
`
`I have already submitted a declaration in this proceeding concerning
`
`technical subject matter relevant to the above-captioned inter partes review
`
`(“IPR”) of U.S. Patent No. 10,028,026 (EX1001, “the ’026 patent”). My prior
`
`declaration is EX1002.
`
`3.
`
`A summary of my education, professional experience, and other
`
`qualifications is included in EX1002 ¶¶ 5-13.
`
`4.
`
`I have been asked to review Broadband iTV, Inc.’s (“BBiTV”) Patent
`
`Owner Response and the exhibits and declarations submitted therewith, and
`
`provide my opinions on some of the statements and arguments offered in those
`
`materials. My opinions and the bases for my opinions are set forth below.
`
`5.
`
`I am being compensated at my ordinary and customary consulting rate
`
`($350 per hour) for my work, plus reimbursement for any reasonable expenses.
`
`My compensation is based solely on the amount of time that I devote to activity
`
`related to this case and is in no way contingent on the nature of my findings, the
`DISH Ex. 1053, p. 4
`DISH v. BBiTV
`IPR2020-01267
`
`

`

`presentation of my findings in testimony, or the outcome of this or any other
`
`proceeding. I have no other financial interest in this proceeding.
`
`6.
`
`I note that BBiTV raised several positions in its Patent Owner
`
`Response in order to meet it various burdens. I further note that Dr. Shamos raised
`
`several arguments in his declaration that were not included in BBiTV’s Patent
`
`Owner response. In this reply declaration, I did not attempt to rebut every
`
`argument that appeared in BBiTV’s Patent Owner Response or Dr. Shamos’s
`
`declaration with which I disagreed. Instead, I focused on the arguments that are
`
`most likely to be relevant to the outcome of this proceeding. As such, the opinions
`
`expressed in this declaration are not exhaustive of my opinions regarding the
`
`unpatentability of the claims of the ’026 patent. The fact that I do not address a
`
`particular point should not be understood to indicate an agreement or concession
`
`on my part.
`
`7.
`
`I reserve the right to amend and supplement this declaration in light of
`
`additional evidence, arguments, or testimony presented during this IPR or related
`
`proceedings on the ’026 patent.
`
`8.
`
`In forming the opinions set forth in this declaration, I have considered
`
`and relied upon my education, knowledge of the relevant field, knowledge of
`
`scientific and engineering principles, and my experience. I have also reviewed and
`
`DISH Ex. 1053, p. 5
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`considered the ’026 patent (Ex. 1001), its prosecution history (Ex. 1018), the
`
`following additional materials, and the exhibits submitted by BBiTV:
`
`Exhibit
`1001
`1004
`1005
`1006
`1007
`1011
`1012
`1013
`1017
`1018
`1019
`1020
`1024
`1025
`1026
`
`1027
`
`1030
`
`1031
`
`1032
`
`1038
`
`1039
`
`Description
`U.S. Patent No. 10,028,026 (“’026 patent”)
`Curriculum Vitae for Dr. Samuel Russ
`U.S. Patent No. 8,434,118 (“Gonder”)
`U.S. Patent No. 7,159,233 (“Son”)
`U.S. Patent Application Publication No. 2001/0030667 (“Kelts”)
`CableLabs Video-On-Demand Content Specification Version 1.1
`Declaration of Christie Poland
`U.S. Patent No. 7,631,336 (“’336 patent”)
`U.S. Patent No. 7,590,997 (“’997 patent”)
`File History of U.S. Patent No. 10,028,026 (“’026 File History”)
`Claim Construction Order, Broadband iTV, Inc. v. Hawaiian Telcom,
`Inc., et al., 14-00169 ACK-RLP (D. Haw. June 24, 2015)
`U.S. Patent Application Publication No. 2002/0138619 (“Ramaley”)
`Excerpt from File History for related U.S. Patent Application No.
`12/632,745
`Family Chart for the ’997 patent
`Broadband iTV, Inc.’s Preliminary Infringement Contentions and
`Identification of Priority Dates cover pleading dated April 30, 2020
`Broadband iTV, Inc.’s Claim Chart for U.S. Patent No. 10,028,026 (Ex.
`1) dated April 30, 2020
`Comcast’s 2004 Annual Report – Excerpts
`http://www.annualreports.com/HostedData/AnnualReportArchive/c/NAS
`DAQ_CMCSA_2004.pdf
`Time Warner, Inc.’s Form 10-K for the year 2003 – Excerpts
`http://getfilings.com/o0000950144-04-002438.html
`AT&T U-Verse Wikipedia page
`https://en.wikipedia.org/wiki/AT%26T_U-verse.
`Scientific-Atlanta Launches Explorer 4200 Set-Top,
`https://www.tvtechnology.com/equipment/scientificatlanta-launches-
`explorer-4200-settop.
`Samsung gains first OpenCable Certification on two-way digital
`television, https://www.tvtechnology.com/news/samsung-gains-first-
`opencable-certification-on-twoway-digital-television
`DISH Ex. 1053, p. 6
`DISH v. BBiTV
`IPR2020-01267
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`Exhibit
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`1047
`1048
`
`1049
`
`1050
`1051
`1052
`1053
`1054
`
`1055
`
`1056
`
`1057
`
`Description
`The Razor V3 was launched 14 years ago: Here’s why it still has a place
`in our hearts, https://www.androidauthority.com/motorola-razr-v3-
`888664/
`CableLabs OpenCable - www.opencable website Way Back Machine
`capture,
`https://web.archive.org/web/20060326111508/http://www.opencable.co
`m/ocap/ocap.html
`Google pays the price to capture online video zeitgeist, Way Back
`Machine capture,
`https://web.archive.org/web/20070901031352/http://www.eurekastreet.c
`om.au/article.aspx?aeid=1837
`Mpeg-2 Wikipedia page, https://en.wikipedia.org/wiki/MPEG-2
`Sony’s PS3 makes U.S. debut to long lines, short supplies,
`https://usatoday30.usatoday.com/tech/gaming/2006-11-17-ps3-
`debut_x.htm
`The Federal Circuit Bar Association Model Patent Jury Instructions, last
`edited May 2020
`CableLabs Specifications Library,
`https://www.cablelabs.com/specifications
`Merriam-Webster’s definition of “effect”
`Document Details from CableLabs website re CableLabs Video-On-
`Demand Content Specification Version 1.1
`Declaration of Will Melehani in support of petitioner’s motion for
`admission Pro Hac Vice
`Declaration of Clement Roberts in support of petitioner’s motion for
`admission Pro Hac Vice
`Joint Claim Construction Statement. Nov. 5, 2020 (Dkt. 69)
`Deposition Transcript of Michael Shamos taken on July 19, 2021
`Reply Declaration of Dr. Samuel H. Russ, Ph.D. (CONFIDENTIAL)
`Deposition Transcript of Milton Diaz Perez, taken on Aug. 9, 2021
`(CONFIDENTIAL)
`Deposition Transcript of Leighton Chong, taken on July 14, 2021
`(CONFIDENTIAL)
`CableLabs Video-on-Demand Content Specification Ver. 1.1. MD-SP-
`VOD-CONTENT1.1-I02-030415
`CableLabs Video-on-Demand Content Specification Ver. 1.1. MD-SP-
`VOD-CONTENT1.1-I03-040107
`
`DISH Ex. 1053, p. 7
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`IPR2020-01267
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`

`

`Exhibit
`1058
`1059
`1060
`1061
`1062
`1063
`1064
`1065
`1066
`1067
`1068
`
`Description
`
`CableLabs - Wikipedia
`Gonder Patent Application 10/856383
`Ingest & Metadata Partitioning: Requirements for Television on Demand
`by Robert G. Scheffler
`Declaration of Robert Scheffler
`Affidavit of Christopher Butler
`Statement from the TIB re Scheffler Paper
`TIB Library copy of the Scheffler Paper. The Complete Technical
`Session Proceedings From: NCTA – the National Show, June 8-11, 2003
`Declaration of Ingred Hsieh-Yee, Ph.D
`Copyright Record re Scheffler Paper
`Digital Video Recorder Powered by TV Guide
`Deposition Transcript of Milton Diaz Perez, taken on June 3, 2021
`(CONFIDENTIAL)
`
`II. GONDER IS PRIOR ART TO CLAIMS 1-9 OF THE ’026 PATENT
`9.
`My understanding is that BBiTV contends that claims 1-9 of the ’026
`
`patent are entitled to an earlier invention date of March 31, 2004 or, alternatively,
`
`April 29, 2004. I disagree for the reasons set forth below.
`
`10.
`
`I will note that I previously provided my opinions that the ’026 patent
`
`is not entitled to claim priority to the original ’192 Application in my prior
`
`declaration. EX1002 ¶¶ 18-34. My opinions below concern the different but
`
`related and sometimes overlapping issue of conception and reduction to practice.
`
`As a result, my prior opinions regarding the ’026 patents claim of priority are
`
`relevant but do not completely address the issues of conception and reduction to
`
`DISH Ex. 1053, p. 8
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`practice. Nonetheless, they are hereby incorporated by reference as if fully set
`
`forth herein.
`
`A.
`
`11.
`
`Legal Standard
`
`I understand that, to show an invention date prior to the date on which
`
`the patent application was filed for a patent claim, a patentee must show
`
`corroboration for prior conception and diligent reduction to practice for every
`
`limitation in the asserted claim in the United States. I understand that an invention
`
`is conceived when the inventor forms in his mind a definite and permanent idea of
`
`the complete and operative invention. And I understand that there are two ways
`
`that an invention can be reduced to practice: actual and constructive reduction to
`
`practice. I understand that BBiTV does not contend it actually reduced its claimed
`
`invention to practice. An invention can be constructively reduced to practice if the
`
`inventor files a patent application that provides written description support
`
`showing possession of the claimed subject matter.
`
`12. My understanding is that, to adequately disclose a genus, a patent’s
`
`specification must disclose either (1) a representative number of species falling
`
`within the scope of the genus or (2) structural features common to the members of
`
`the genus so that a POSITA can visualize or recognize the members of the genus.
`
`Amgen Inc. v. Sanofi, 872 F.3d 1367, 1375-76 (Fed. Cir. 2017). I further
`
`understand that the genus itself (rather than a species within the genus) needs to be
`DISH Ex. 1053, p. 9
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`properly supported by a prior constructive reduction to practice application for a
`
`claim containing the genus claim term to claim priority to the prior application.
`
`13.
`
`I believe that BBiTV has failed to establish conception and reduction
`
`to practice, and I discuss three non-exhaustive reasons separately below. First, I
`
`believe that BBiTV cannot show constructive reduction to practice of an “Internet-
`
`connected digital device” as recited in claim 1. Second, I believe that BBiTV
`
`failed to prove conception of an “Internet-connected digital device.” Third, I
`
`believe that BBiTV failed to prove conception of the claimed “reserved area
`
`content generated using the received video content.”
`
`B.
`
`The ’192 Application did not constructively reduce an “Internet-
`connected digital device” to practice.
`
`14.
`
`First, in my opinion, BBiTV cannot show constructive reduction to
`
`practice of an “Internet-connected digital device.” It appears that BBiTV’s
`
`position is that while the original ’192 Application patent does not disclose digital
`
`phones, PDAs, video game consoles, and media players (like those recited in
`
`claims 11-14), it does purportedly disclose a set-top box that is an “Internet-
`
`connected digital device.” I disagree because, as explained below, in my opinion
`
`there is no disclosure of an “Internet-connected digital device” in the ’192
`
`Application.
`
`DISH Ex. 1053, p. 10
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`15. Claim 1 of the ’026 patent, which is the only independent claim,
`
`recites “[a]n Internet-connected digital device for reviewing, via the Internet, video
`
`content to be viewed by a subscriber of a video-on-demand system…” EX1001,
`
`claim 1. This requirement is in the preamble, and I am aware that the Court has
`
`ruled that the only limitation in the preamble that is limiting is the limitation of the
`
`“Internet-connected digital device.” See EX2152 at 3 (Claim Construction Order).
`
`Claim 1 also recites that the hierarchical EPG is displayed on the “Internet-
`
`connected digital device” in its remaining limitations. Because all of the other
`
`claims in the ’026 patent depend from claim 1, they likewise require an “Internet-
`
`connected digital device.”
`
`16.
`
`I understand that in the co-pending litigation, the parties agreed that
`
`the term “Internet-connected digital device” should be construed as “a device
`
`configured to send or receive information via the Internet.” EX1051 (Joint Claim
`
`Construction Statement).
`
`17.
`
`In my opinion, the first disclosure of an Internet-connected digital
`
`device was on March 12, 2007 in the specification of the application that issued as
`
`the ’336 patent. The ’336 patent’s specification (which is identical to the
`
`specification of the ’026 patent) expressly discusses “Internet-connected digital
`
`devices.” Specifically, the ’336 patent explained that “TV EPGs can be exported
`
`to [sic] via the Internet to Internet-connected digital devices, including digital
`DISH Ex. 1053, p. 11
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`phones, media players, game consoles, Video iPodsTM, PDAs, etc., and conversely,
`
`TV bookmarks selected from EPGs on the Internet can be imported back into the
`
`viewer’s ‘MyEPG’ or ‘MyVideoLibrary’ for their TV through the Web-based
`
`Content Management System.” EX1013, ’336 patent, 20:27-33. This passage,
`
`which is the only discussion of the claimed “Internet-connected digital device” in
`
`the ’026 patent, is part of the new material that was not originally included in
`
`the ’192 Application’s specification.
`
`18.
`
`I will also note that during prosecution of the related U.S. Patent
`
`Application No. 12/632,745 (which is the “grandparent” of the ’026 patent and
`
`shares the same specification), BBiTV cited the very same added sections of the
`
`later-filed ’336 patent specification that I cite above – and not portions of the
`
`earlier 2004 filing – as providing written support for a limitation requiring
`
`“access[ing] of the electronic program guide … through an Internet-connected
`
`digital device.” EX1024, file history for related 12/632,745 application at 2-3.
`
`This was also contrasted with devices that are “connected to the VOD services
`
`platform through a TV services platform.” Id. Accordingly, BBiTV has itself
`
`acknowledged that the written description support for “Internet-connected digital
`
`device” is this newly added matter in the ’336 patent.
`
`19. Based on my review of the ’192 Application specification, I have not
`
`seen any disclosure that describes an “Internet-connected digital device” that meets
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`the claim limitations. The only device that receives video content and EPG content
`
`as recited in the ’026 patent’s claims that is described in the ’192 Application is a
`
`conventional set-top box connected to a cable TV network, which is not described
`
`as being connected to the Internet, is not “configured to send or receive
`
`information via the Internet,” and is not an Internet-connected digital device.
`
`EX2062 ¶¶ [0021]-[0022], [0046]. The only discussions of Internet use in the ’192
`
`Application pertain to the ability of users to upload content to a Web-based content
`
`management server, which is a separate component of the claims. EX2062
`
`¶¶ [0011], [0031]-[0032]. There is no description at all of any Internet-connected
`
`devices for receiving video content and EPG content.
`
`20.
`
`I understand that BBiTV is arguing that the set-top box disclosed in
`
`the ’192 Application is an “Internet-connected digital device,” even though the set-
`
`top box itself is not connected to the Internet and is not configured to send or
`
`receive data via the Internet, simply by virtue of the fact that it can be used to
`
`display video content and metadata that was previously uploaded via the Internet to
`
`the claimed Web-based content management system. For example, the named
`
`inventor of the ’026 patent argued that a prior draft of the ’192 Application
`
`disclosed an Internet-connected digital device because “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.”
`DISH Ex. 1053, p. 13
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`EX 2035, Diaz Decl. ¶ 13. In other words, he suggested that the set-top box was
`
`an Internet-connected digital device because it could receive content that had
`
`previously been uploaded via the Internet.
`
`21.
`
`In my opinion, BBiTV is misusing the term “Internet-connected
`
`digital device.” Although the term was not offered for construction in the IPR
`
`proceedings, I note that the parties’ agreed construction that an “Internet-connected
`
`digital device is “a device configured to send or receive information via the
`
`Internet.” See EX1051 (Joint Claim Construction Statement). In my opinion, this
`
`is the plain and ordinary meaning of the term “Internet-connected digital device”
`
`as it would be understood by a POSITA. Dr. Shamos agrees. EX1052, 11:16-21.
`
`22.
`
`In my view, BBiTV’s attempt to expand what it means to be an
`
`“Internet-connected digital device” fails for two reasons. First, as mentioned
`
`above, there is no discussion in the ’192 Application of the set-top box having any
`
`Internet-based capability or being configured to send or receive information via the
`
`Internet. For example, the ’192 Application does not discuss the set-top box as
`
`having an IP address or any knowledge of Internet protocols. Nor is there any
`
`discussion of any Internet transmission being addressed to the set-top box.
`
`Further, at the time of the ’192 Application’s filing in 2004, transfer of broadcast
`
`television and EPG data from a headend to a set-top box was conventionally
`
`carried out over a closed network in a specific, closed format. For example, video
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`was delivered natively over MPEG because it saved bandwidth relative to using IP.
`
`Thus, a person of ordinary skill in the art would not have understood the disclosed
`
`set-top box to be able to send or receive information via the Internet (much less
`
`have understood the applicant to be in possession of such a set-top box) absent
`
`some specific disclosure stating otherwise (and there is none).
`
`23. More specifically, in the ’192 Application, the device that viewers use
`
`to browse EPGs and receive video content is Set-top box 21. EX2062, ¶ [0021].
`
`The ’192 Application repeatedly confirms that Set-top box 21 is connected to the
`
`cable head end through “Digital Cable Television System.” Id., ¶ ¶ [022], [0031],
`
`Figs. 1A, 2A. The ’192 Application teaches that such cable television systems are
`
`conventional cable television delivery networks, (see, e.g., id. at [0002], and never
`
`teaches or suggests that the Set-Top Box 21 is connected to the Internet or receives
`
`video content via the Internet. Indeed, the ’192 Application makes clear that its
`
`subject matter pertains to “the provision of interactive television services through
`
`cable TV infrastructure.” EX2062 ¶ [0001].
`
`24.
`
`Further, Set-top box 21 does not receive video content via the Internet
`
`when it receives video content that was previously uploaded to the Web-based
`
`content management system. For example, the ’192 Application describes how
`
`users (as distinct from viewers) can upload classified ad content to a “Content
`
`Management Website” using their Web browser. EX2062, ¶ [0031] This upload is
`DISH Ex. 1053, p. 15
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`not addressed to any set-top box. Once uploaded, the content is processed by
`
`several related systems at the cable head end, including a “Content Screening
`
`System,” “Content Feed System,” and “Content Conversion System,” before
`
`ultimately being provided to a VOD Content Delivery System operating a
`
`Classified Ads VOD Application that provides menus of content for viewers to
`
`browse on their set-top box. Id. In other words, the uploaded content moves
`
`through systems at the cable head end and is not forwarded to any particular set-
`
`top box, let alone via the Internet. In fact, only if and when a viewer browses the
`
`menus and selects a particular classified ad (which may happen weeks later, or
`
`perhaps never at all) will the once-uploaded ad be “delivered through the Digital
`
`Cable Television System for display.” Id. ¶ [0031]. Thus, the ’192 Application
`
`expressly teaches that uploaded video content is not received by the set-top box
`
`“via the Internet,” but is in fact received via the conventional Digital Cable
`
`Television System, which was, at the time, not an IP-based network. And there is
`
`no disclosure anywhere in the ’192 application that suggests that the set-top box is
`
`has knowledge of TCP/IP protocols or otherwise has any hardware or software to
`
`enable it to send or receive Internet transmissions.
`
`25.
`
`Figure 2A from the ’192 Application is instructive:
`
`DISH Ex. 1053, p. 16
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`EX2062, Fig. 2A (annotated). As is shown in this figure, the described digital set-
`
`top box (shown in red) is connected only to a conventional digital cable television
`
`system. It is not connected to the Internet, the Web, or anything else. The claimed
`
`“Web-based content management system” (shown in blue) is described in the ’192
`
`Application’s specification as being connected to the Internet, but it is an entirely
`
`separate component of the system that does not directly communicate with the set-
`
`top box. EX2062 ¶¶ [0011], [0031]-[0032], Fig. 2A. Further, the two devices
`
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`work entirely independently and without knowledge of one another. Indeed, if the
`
`Web-based content management server’s Internet connection was down, nothing
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`would prevent the digital set-top box from continuing to request VOD content
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`from the cable head end.
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`26. BBiTV’s attempt to broadly misdefine “Internet-connected digital
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`device” in this way is also clearly at odds with how persons of ordinary skill would
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`understand the term. It is incorrect to refer to a device as “Internet-connected”
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`simply because it is capable of receiving, by non-Internet means, information that
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`previously traveled over the Internet. Under BBiTV’s approach all old over-the-air
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`1970s era broadcast televisions (which receive signals exclusively through old
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`“rabbit ear” antennas) became “Internet-connected” the moment NBC Nightly
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`News first broadcasted a clip downloaded from YouTube. No one working in the
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`field would properly describe such televisions as “Internet-connected.” But what
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`goes for broadcast televisions is equally true for conventional cable-cast set-top
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`boxes; they are not “Internet-connected” by virtue of the fact that the cable head
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`end is capable of receiving information from a server that (in turn) received that
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`information via the Internet.
`
`27.
`
`I will add that my understanding appears to be consistent with the
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`understanding that BBiTV exhibited during prosecution of a related patent. During
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`prosecution of U.S. Patent Application No. 12/632,745, discussed above, BBiTV
`DISH Ex. 1053, p. 18
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`IPR2020-01267
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`amended application claim 33. Previously, the method claimed by application
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`claim 33 included a step requiring “the updated electronic program guide being
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`accessible by subscribers of the VOD services platform via electronic devices
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`connected to the VOD services platform allowing the subscribers to navigate and
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`select hierarchically-arranged titles of video-on-demand program content….”
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`EX1024, file history for related 12/632,745 application at 8-9. The claim was
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`amended so that this step instead required “the updated electronic program guide
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`being accessible by subscribers of the VOD services platform both via electronic
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`devices connected to the VOD services platform through a TV services platform
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`and via electronic devices connected through the Internet allowing the subscribers
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`to navigate and select hierarchically-arranged titles of video-on-demand program
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`content….” Id. (underlining in original to show content added by amendment).
`
`BBiTV thus made a direct distinction between devices that receive content “via…
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`a TV services platform” and “via … the Internet.” Further, when explaining the
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`amendment, BBiTV elaborated that “[t]he amended claims thus require dual access
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`of the electronic program guide, either through a TV platform connected to the
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`VOD services platform or through an Internet-connected digital device, which can
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`connect to the VOD services platform.” Id. at 2 (emphasis added). In other words,
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`BBiTV expressly described the “Internet-connected digital device” as a device that
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`accesses the electronic program guide using the Internet, as distinct from the set-
`DISH Ex. 1053, p. 19
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`IPR2020-01267
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`top box described in the patents’ specification which accesses the electronic
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`program guide “through a TV services platform.” Id. Contrary to the position it
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`appears to be taking now with regard to the ’026 patent, BBiTV did not contend or
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`suggest that a device, like a set-top box, that received the EPG content “through a
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`TV services platform” was an “Internet-connect digital device” but in fact
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`expressly distinguished “Internet-connect digital devices” from such set-top boxes.
`
`28.
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`Further, BBiTV’s expert Dr. Shamos appears to agree with me with
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`that the term “Internet-connected digital device” cannot be defined or applied in
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`this way. EX1052, 36:15-37:14.
`
`29. Aside from its argument that the disclosed set-top box is an “Internet-
`
`connected digital device” by virtue of the fact that it receives information by non-
`
`Internet means that was previously uploaded to the Internet, BBiTV also argues
`
`that the ’192 Application and material incorporated therein discloses an actual
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`“Internet connected set-top box” and therefore provides written description support
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`for the claimed “Internet-connected digital device.” I disagree for three reasons
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`that I elaborate on below. First, the mentions of supposedly Internet-enabled set-
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`top boxes in the ’192 Application and its supposedly incorporated1 material are not
`
`1 My understanding is that, to incorporate material by reference, a patent must
`specifically identify the material that is incorporated and where it can be found. I
`DISH Ex. 1053, p. 20
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`IPR2020-01267
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`purporting to describe a then-existing device but are hypotheses about devices that
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`may exist in the future. Second, even if the ’192 Application did refer to an
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`Internet-connected set-top box, it does not describe such a box as being
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`incorporated as part of the disclosed invention of the ’192 Application. Third,
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`even if the ’192 Application did adequately disclose an Internet-connected set-top
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`box, it lacks sufficient disclosure for the claimed (and much broader) genus term
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`“Internet-connected digital device.”
`
`30. BBiTV’s expert, Dr. Shamos, has attempted to identify passages in
`
`the ’192 application that he contends provide written description support for the
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`“Internet-connected digital device” claimed in the ’026 patent. EX2036, Shamos
`
`Decl. ¶ 38. In general, Dr. Shamos contends that the set-top box described in
`
`the ’192 Application is an Internet-connected digital device. As stated, I do not
`
`believe it is, nor do I believe that any of these passages identified by Dr. Shamos
`
`discloses an Internet-connected digital device. I will address each passage in turn
`
`below.
`
`understand the ’192 patent may not meet this standard because it simply purports to
`incorporate a “detailed description” of the Navic system. Regardless, if that
`incorporation is effective, it would be effective to incorporate the description of the
`Navic system, not the musings of the background section.
`
`DISH Ex. 1053, p. 21
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`IPR2020-01267
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`31. Dr. Shamos contends that the following passage establishes that the
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`set-top box is an Internet-connected digital device:
`
`With the increasing interactive functionality and customer reach of
`interactive television services, advertisers and content providers are find it
`increasingly attractive to employ on-demand advertising, program content,
`and TV transactions for home viewers. VOD content delivery platforms are
`being designed to seamlessly and conveniently deliver a wide range of types
`of advertising, content, and transaction services on demand to home viewers.
`An example of an advanced VOD delivery platform is the N-Band (™)
`system offered by Navic Systems, Inc., d/b/a Navic Networks, of Needham,
`Mass. This is an integrated system which provides an application
`development platform for third party application developers to develop new
`VOD service applications, viewer interfaces, and ancillary interactive
`services for deployment on VOD channels of CATV operators in cable
`service areas throughout the U.S. A detailed description of the Navic N-
`Band system is contained in U.S. Patent Application 2002/066,106, filed on
`May 30, 2002, which is incorporated herein by reference.
`EX2036, Shamos Decl. ¶ 38, citing EX2062, ’1