IPR2020-01267, Petition
`U.S. Patent 10,028,026
`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 No. IPR2020-01267
`U.S. Patent No. 10,028,026
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`

`

`C.
`
`b.
`
`B.
`
`Page
`INTRODUCTION .......................................................................................... 1
`I.
`II. GONDER IS PRIOR ART TO THE ‘026 PATENT ..................................... 1
`A.
`The ’192 Application Does Not Reduce an “Internet-Connected
`Digital Device” to Practice. .................................................................. 2
`BBiTV cannot show prior conception of the claimed “Internet-
`connected digital device.” .................................................................... 9
`BBiTV cannot show prior conception of reserved area content
`that is “generated using the received video content.” ........................ 14
`III. Gonder incorporates CableLabs by reference. ............................................. 15
`IV. GONDER TEACHES THE CLAIMED THIRD LAYER. .......................... 17
`A.
`The “generated using” language is not limiting for purposes of
`obviousness. ....................................................................................... 17
`B. Gonder renders obvious displaying reserved content generated
`using images. ...................................................................................... 19
`a.
`Figures 4 and 5b shows “reserved area content”
`generated using images. ................................................. 22
`Figure 7 shows “reserved area content” generated
`using images. ................................................................. 25
`V. A POSITA WOULD BE MOTIVATED TO COMBINE GONDER
`AND SON. .................................................................................................... 31
`VI. The dependant Claims Are OBVIOUS. ....................................................... 33
`A.
`Claim 6 ............................................................................................... 33
`B.
`Claims 11 and 12 ................................................................................ 34
`C.
`Claim 15 ............................................................................................. 36
`VII. BBiTV Provides No Valid Secondary Considerations Of Non-
`Obviousness. ................................................................................................. 36
`
`TABLE OF CONTENTS
`
`-i-
`
`

`

`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Biogen MA Inc. v. EMD Serono, Inc.,
`976 F.3d 1326 (Fed. Cir. 2020) .................................................................... 18, 19
`Burroughs Wellcome Co. v. Barr Labs., Inc.,
`40 F.3d 1223 (Fed. Cir. 1994) ........................................................................... 11
`Coleman v. Dines,
`754 F.2d 353 (Fed. Cir. 1985) ............................................................................ 10
`Cook Biotech, Inc. v. Acell, Inc.,
`460 F.3d 1365 (Fed. Cir. 2006) ............................................................................ 6
`D Three Enters., LLC v. SunModo Corp.,
`890 F.3d 1042 (Fed. Cir. 2018) ............................................................................ 9
`Flash-Control, LLC v. Intel Corp.,
`No. 2020-2141, 2021 U.S. App. LEXIS 20790 (Fed. Cir. July 14,
`2021) ................................................................................................................. 7, 8
`Hyatt v. Boone,
`146 F.3d 1348 (Fed. Cir. 1998) ............................................................................ 2
`KSR Int'l Co. v. Teleflex Inc.
`550 U.S. 398 (2007) ............................................................................................ 35
`Kyrides v. Andersen,
`28 C.C.P.A. 1336, 121 F.2d 514 (C.C.P.A. 1941) ............................................... 8
`Modine Mfg. Co. v. U.S. Int'l Trade Comm’n,
`75 F.3d 1545 (Fed. Cir. 1996) .............................................................................. 7
`Singh v. Brake,
`317 F.3d 1334 (Fed. Cir. 2003) .......................................................................... 10
`
`-ii-
`
`

`

`PETITIONER’S EXHIBIT LIST
`
`Exhibit
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`1023
`1024
`1025
`1026
`
`1027
`1028
`1029
`
`Description
`U.S. Patent No. 10,028,026 (“’026 patent”)
`Declaration of Dr. Samuel Russ
`Intentionally omitted
`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”)
`Intentionally omitted
`Intentionally omitted
`Intentionally omitted
`CableLabs Video-On-Demand Content Specification Version 1.1
`Declaration of Christie Poland
`U.S. Patent No. 7,631,336 (“’336 patent”)
`Intentionally omitted
`Scheduling Order, Broadband iTV, Inc v. DISH Network, L.L.C., Case
`No. 6:19-cv-716-ADA (W.D. Tex. Apr. 10, 2020), ECF No. 34
`Civil Minutes-General, DivX, LLC v. Netflix, Inc., et al., 19-cv-1602-
`PSG (DFMx) (C.D. Cal. May 11, 2020)
`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”)
`Western District of Texas Order RE: COVID-19 dated May 8, 2020
`Unified Patent’s Q1 2020 Patent Dispute Report (March 31, 2020)
`Judge Alan D. Albright Patent Statistics
`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
`Highlighted Claim 1 for ‘026 Patent
`Intentionally omitted
`
`-iii-
`
`

`

`Exhibit
`
`1030
`
`1031
`
`1038
`
`1039
`
`1040
`
`Description
`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
`1032
`https://en.wikipedia.org/wiki/AT%26T_U-verse.
`1033
`Western District of Texas Order RE: COVID-19 dated June 18, 2020
`1034 Western District of Texas Order RE: COVID-19 dated July 2, 2020
`Minute Entry, MV3 Partners LLC v. Roku, Inc., No. 6:18-cv-00308-ADA
`1035
`(W.D. Tex., Jun. 15, 2020), ECF 293
`1036
`Intentionally omitted
`1037
`Intentionally omitted
`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
`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
`
`1042
`
`1041
`
`1043
`
`1044
`
`1045
`
`-iv-
`
`

`

`Exhibit
`
`1046
`1047
`1048
`
`1049
`
`1050
`1051
`1052
`1053
`1054
`
`1055
`
`1056
`
`1057
`1058
`1059
`1060
`1061
`1062
`1063
`1064
`1065
`1066
`1067
`1068
`
`Description
`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 9, 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
`CableLabs – Wikipedia Article
`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 Manual
`Deposition Transcript of Milton Diaz Perez, taken on June 3, 2021
`(CONFIDENTIAL)
`
`-v-
`
`

`

`I.
`
`INTRODUCTION
`Patent Owner Broadband iTV, Inc. (“BBiTV”) fails to rebut DISH’s
`
`showing that claims 1-16 (the “Challenged Claims”) are obvious. BBiTV makes
`
`three arguments. First, BBITV attempts to antedate Gonder, but cannot show prior
`
`conception and reduction to practice for the claimed “Internet-connected digital
`
`device” or “reserved area content.” Second, BBiTV attempts to distinguish
`
`Gonder by mischaracterizing its teachings and treating it as if it had only a single
`
`embodiment. Third, BBiTV claims there is no motivation to combine Gonder, Son
`
`and Kelts, but does so by ignoring the benefits of combining them and by making
`
`arguments that are predicated on bodily incorporation.
`
`II. GONDER IS PRIOR ART TO THE ‘026 PATENT
`BBiTV contends that Gonder—a § 102(e) reference dated May 27, 2004—is
`
`not prior art because the BBiTV inventor purportedly conceived of the ’026
`
`patent’s claimed invention by March 31, 2004 (or alternatively, April 29, 2004)
`
`and constructively reduced it to practice by filing BBiTV’s original application,
`
`U.S. Patent Application 10/909,192. EX2062. But (1) the ’192 Application does
`
`not disclose the claimed “Internet-connected digital device” and thus cannot be a
`
`constructive reduction to practice, (2) BBiTV fails to show conception of the
`
`claimed “Internet-connected digital device,” and (3) BBiTV fails to show
`
`-1-
`
`

`

`conception of reserved area content that is “generated using the received video
`
`content.”
`
`A.
`
`The ’192 Application Does Not Reduce an “Internet-Connected
`Digital Device” to Practice.
`BBiTV cannot show constructive reduction to practice of the claimed
`
`“Internet-connected digital device.” To establish constructive reduction to
`
`practice, BBiTV’s ’192 Application “must describe the subject matter” claimed “in
`
`terms that establish that [the inventor] was in possession of the later-claimed
`
`invention, including all of the elements and limitations presented in the [claim], at
`
`the time of the earlier filing.” Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir.
`
`1998).
`
`Although the parties did not construe “an Internet-connected digital device”
`
`in this proceeding, they agreed that it is “a device configured to send or receive
`
`information via the Internet” in the co-pending litigation. EX1051 at 1. BBiTV’s
`
`expert agrees this is a proper construction. EX1052, 11:16-21. The ’192
`
`Application, however, makes no mention of Internet-connected digital devices or
`
`any other client device that would satisfy the foregoing construction. EX1053,
`
`Russ Reply Decl. ¶¶ 16-19.
`
`Unlike the ’192 Application, the ’026 patent’s specification expressly
`
`discusses “Internet-connected digital devices.” It explains that “TV EPGs can be
`
`exported to via [sic] Internet to Internet-connected digital devices including digital
`
`-2-
`
`

`

`phones, media players, game consoles, video iPodsTM, PDAs, etc….” EX1001,
`
`21:21-24. This passage is new matter that was added when the continuation-in-
`
`part application (that resulted in U.S. Patent No. 7,361,336) was filed on March 12,
`
`2007. EX1013. This passage is the only support in the ’026 specification for the
`
`claimed “Internet-connected digital device” and the only passage BBiTV has
`
`identified as support during prosecution of related applications. See EX1024, 2-3
`
`(identifying the new matter as support for amendments reciting “access of the
`
`electronic program guide …. through an Internet-connected digital device”).
`
`Despite this, BBiTV now departs from its prosecution position in the hopes of
`
`convincing the Board that the claimed “Internet-connected digital device” is
`
`supported by the ’192 Application.
`
`BBiTV offers two types of argument that the ’192 Application discloses an
`
`Internet-connected digital device. First, BBiTV argues that the claimed “Internet-
`
`connected digital device” can be a set-top box that is not itself connected to the
`
`Internet, but is merely capable of receiving data that was previously transmitted
`
`over the Internet to a different device. For example, Mr. Milton Diaz Perez, the
`
`named inventor, suggested that a prior draft of the ’192 Application disclosed an
`
`Internet-connected digital device because it describes that “the set-top box receives
`
`video content to be viewed by a subscriber of a video-on-demand system via the
`
`-3-
`
`

`

`Internet as the video content received is uploaded and transferred via the
`
`internet.”1 EX2036 ¶ 13; EX1053 ¶ 20.
`
`Mr. Diaz’s statement is misleading, because the “upload” and “transfer” he
`
`refers to are not to the set-top box. The ’192 Application’s set-top box is not
`
`connected to the Internet. See EX2062 ¶¶ [0021], [0022], [0031], Figs. 1A, 2A.
`
`Rather, the claimed Web-based content management system receives video content
`
`via the Internet. See EX2062 ¶ [0031]. The set-top box and the Web-based
`
`content management system are distinct, as shown in the figure below:
`
`1 All emphasis is added unless indicated otherwise.
`
`-4-
`
`

`

`EX2062, Fig. 2A (annotated). As Dr. Russ explains, uploads to the Web-based
`
`content management system are not addressed to, and may never even be sent to, a
`
`set-top box. Id; EX1053 ¶¶ 21-25. And the set-top box in the ’192 Application is
`
`exclusively described as receiving information sent via a digital cable television
`
`system as shown in Figure 2A. EX2062, Fig. 2A. The set-top box is not, therefore
`
`“configured to send or receive information via the Internet” – i.e. it need not have
`
`any knowledge of TCP/IP protocols or any other hardware or software for sending
`
`or receiving information via the Internet. EX1053 ¶¶ 24-25. Instead, it need only
`
`-5-
`
`

`

`be configured to communicate with the Digital Cable System. Id. Moreover, even
`
`putting the parties’ agreed construction to one side, a POSITA would not refer to
`
`the set-top box as an “Internet-connected digital device” merely because it can
`
`receive information that previously passed through a device (i.e., the WBCMS)
`
`that is connected to the Internet. Id. ¶¶ 26-28. By that logic, any device that can
`
`receive information would be “Internet-connected.” Id. ¶ 26.
`
`Second, BBiTV relies on Dr. Shamos to identify two disclosures that it
`
`contends describe the claimed Internet-connected digital device. Neither does.
`
`Dr. Shamos’s first passage comes from the Background section of the ’192
`
`Application and provides a high-level description of Navic’s N-Band system.
`
`EX2035 ¶ 38. That passage does not discuss an Internet-connected set-top box, or
`
`otherwise suggest that Mr. Diaz had possession of the idea of using Internet-
`
`connected digital devices as the user terminal of his invention. EX1053 ¶¶ 30-32,
`
`38. Instead the passage discusses a third-party, pre-existing VOD content delivery
`
`platform that allows developers to develop their own VOD applications.
`
`Dr. Shamos’s second passage comes from the Navic ’106 Publication that he
`
`contends is incorporated by reference in the passage discussed above. EX2035,
`
`12-13. It is not. The ’192 application’s incorporation by reference is vague and, at
`
`best, is only effective as to the ’106 Publication’s “detailed description of the N-
`
`Band system.” EX2062 ¶ 4; see Cook Biotech, Inc. v. Acell, Inc., 460 F.3d 1365,
`
`-6-
`
`

`

`1376 (Fed. Cir. 2006) (explaining that “the host document must identify with
`
`detailed particularity what specific material it incorporates and clearly indicate
`
`where that material is found in the various documents”) (citations omitted). But
`
`Dr. Shamos cites to material from the Background section of the ’106 Publication
`
`(EX2069 ¶¶ 5-6) that does not purport to describe the Navic N-Band system or the
`
`invention of the ’106 Publication, let alone the ’192 Application’s. See Modine
`
`Mfg. Co. v. U.S. Int'l Trade Comm’n, 75 F.3d 1545, 1553 (Fed. Cir. 1996)
`
`(“[I]ncorporation by reference does not convert the invention of the incorporated
`
`patent into the invention of the host patent.”). Instead, the cited passage discusses
`
`possible future functions and sales for digital set-top boxes. EX1053 ¶¶ 34-35.
`
`At most, the passages Mr. Shamos points to in the ’106 Publication refer to
`
`Internet-connected set-top boxes—they do not show that Mr. Diaz possessed the
`
`idea of using such a device in the manner claimed in the ’026 patent. Flash-
`
`Control, LLC v. Intel Corp., No. 2020-2141, 2021 U.S. App. LEXIS 20790, at *7-8
`
`(Fed. Cir. July 14, 2021) (explaining that “pointing to an ‘amalgam of disclosures”
`
`does not satisfy the written description requirement and that the specification must
`
`present each claim as an “integrated whole.”) (citations omitted). Indeed, there is
`
`literally nothing in the cited passages from the ’106 Publication that would suggest
`
`that Mr. Diaz conceived of replacing the Digital Cable Television System shown in
`
`Figure 2A of the ’192 Application with an Internet connection. Nor does Dr.
`
`-7-
`
`

`

`Shamos provide reason to conclude otherwise. Indeed, when Dr. Shamos
`
`discusses the support, in the ’192 Application, for limitation 1[a], he does not
`
`identify any passage that shows “the Internet-connected digital device being
`
`configured to obtain and present to the subscriber an electronic program guide …”.
`
`EX2035, pp. 14-15. The same is true for limitation 1[e]. Id., pp. 19-20. That’s
`
`because there is no such support. EX1053 ¶ 35.
`
`Moreover, even if the Board concludes that the ’192 Application discloses
`
`an Internet-connected set-top box by virtue of incorporating the ’106 Publication, it
`
`still does not provide support for the claimed “Internet-connected digital device” –
`
`because that term as used in the ’026 patent’s claims includes an entire genus of
`
`devices. See Kyrides v. Andersen, 28 C.C.P.A. 1336, 1338-39, 121 F.2d 514
`
`(C.C.P.A. 1941) (holding that constructive reduction to practice of a species does
`
`not provide priority to a claim on its genus). Indeed, and this is critical, BBiTV
`
`has admitted that the Internet-connected digital devices recited in dependent
`
`claims 11-14 are not supported by the ’192 Application and are therefore not
`
`entitled to a 2004 priority date. See EX1026, 2-3; POR, 1. Because these claims
`
`all depend on claim 1, claim 1 must also extend to these types of “Internet-
`
`connected digital devices.”
`
`To adequately disclose a genus, the specification must disclose either (1) a
`
`representative number of species falling within the genus or (2) structural features
`
`-8-
`
`

`

`common to the members of the genus so that a POSITA can visualize or recognize
`
`the members of the genus. D Three Enters., LLC v. SunModo Corp., 890 F.3d
`
`1042, 1047 (Fed. Cir. 2018). The ’192 Application does neither. First, as noted
`
`above, even BBiTV contends only that the ’192 Application discloses a digital set-
`
`top box, and admits that the other recited devices within the category of “Internet
`
`connected digital devices” are not disclosed. See EX1026, 2-3; POR, 1; EX1053
`
`¶¶ 39-40. Second, the ’192 Application includes no disclosure of structural
`
`features common to the members of the genus – because it doesn’t discuss the
`
`characteristics of those devices at all. Id. ¶ 41. Even Dr. Shamos admitted, in
`
`deposition, that not all “Internet connected digital devices” were appropriate for
`
`the claimed invention, because, e.g. only some of them had sufficient connectivity
`
`and resolution. EX1052, 29:13-30:19. There is, of course, no discussion of these
`
`characteristics in the ’192 Application. See D Three Enters., 890 F.3d at 1047-
`
`1050 (Fed. Cir. 2018) (holding patent claims to a genus were not entitled to
`
`priority date of application disclosing only a species).
`
`B.
`
`BBiTV cannot show prior conception of the claimed “Internet-
`connected digital device.”
`Given its absence from the ’192 Application, it is unsurprising that BBiTV
`
`also fails to show that it actually conceived of an “Internet-connected digital
`
`device.” To establish conception, a party must show formation “in the mind of the
`
`inventor of a definite and permanent idea of the complete and operative invention,
`
`-9-
`
`

`

`as it is therefore to be applied in practice.’” Singh v. Brake, 317 F.3d 1334, 1340
`
`(Fed. Cir. 2003). To “establish[] conception a party must show possession of
`
`every feature recited in the [claim], and that every limitation” was “known to the
`
`inventor at the time of the alleged conception.” Coleman v. Dines, 754 F.2d 353,
`
`359 (Fed. Cir. 1985).
`
`BBiTV relies primarily on the Declaration of Mr. Diaz and his testimony
`
`concerning two documents in an effort to establish conception no later than March,
`
`2004: (1) a presentation dated February 18, 2004 (the “February Presentation,”
`
`EX2072) and (2) a draft of his original application dated March 31, 2004 (the
`
`“March Draft,” EX2061). EX2036 ¶¶ 8-9. Mr. Diaz also offers an alternative
`
`conception date of April 2004 based on a development document dated April 29,
`
`2004 (the “April Development Document,” EX2070). EX2036 ¶ 10. BBiTV also
`
`relies on testimony from the original application’s prosecuting attorney, Leighton
`
`Chong. EX2036 ¶¶ 12-14; EX2037 ¶ 4. None of this material provides the
`
`necessary evidence to support conception.
`
` First, the February Presentation shows only mock-up screens for a user
`
`interface. EX2072. None of the images provide any evidence of an “Internet-
`
`connected digital device” because the presentation’s user interface could be used
`
`on any device. EX1053 ¶ 46.
`
`-10-
`
`

`

`Second, Mr. Diaz identifies paragraph 3 of the March Draft which he
`
`contends discloses an Internet-connected set-top box. EX2036 ¶12. The
`
`passage—from the Background section—explains that “in the future, the
`
`functionality offered in CATV set-top boxes is expected to expand further to offer
`
`Internet browsing capabilities …” In other words, this paragraph recites only
`
`hypotheses about the future capabilities of set-top boxes, and does not show
`
`possession of claimed set-top box of Mr. Diaz’s alleged invention. See Burroughs
`
`Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994) (explaining
`
`that conception requires “a specific, settled idea, a particular solution to the
`
`problem at hand”). EX1053 ¶¶ 47-48. Similarly, the fact that the March Draft
`
`purports to incorporates future-looking statements in the ’106 Publication also does
`
`not show that Mr. Diaz had conceived utilizing an Internet-connected set-top box
`
`as claimed – much less using the entire category of “Internet-connected digital
`
`devices.” EX2061; Id. ¶¶ 49-52.
`
`Third, Mr. Diaz suggests that the April Development Document shows an
`
`Internet-connected set-top box because it notes that users can “create banners
`
`linking from any 30-second spot to in-depth content and long form video...
`
`uploading text and data from a web-based interface.” EX2036 ¶ 14. But this
`
`concerns users’ ability to create and upload content to the Web-based content
`
`-11-
`
`

`

`management system – it says nothing about how a set-top box receives information
`
`or to what it is connected. EX2070, 3; EX1053 ¶¶ 53-54.
`
`Mr. Diaz also points to a figure from the document:
`
`EX2070, 6 (as annotated in EX2036 ¶ 14). Mr. Diaz suggests that the mention of a
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`“Java Servlet” suggests that the product was used with an Internet-connected
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`digital device. EX2036 ¶ 14. And Dr. Shamos initially agreed, stating that the
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`Java Servlet “indicates Internet connectivity since servlets in Java are for
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`interactive web application on the Internet.” EX2035 ¶ 40.
`
`Not so. The April Development Document explains that Navic is an
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`“application packaging platform which constructs MPEG I-frames with elements
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`that can either be overlay text and images or dynamically generated text and
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`images called by a Java Servlet and housed in a database.” EX2070, 5. As Mr.
`
`Diaz explained, this Java Servlet is based at the cable company site, drawing from
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`a database based at the cable company site. EX1054, 78:3-6, 79:9-24. In other
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`words, they are local, not connected via the Internet. And nowhere does the April
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`Development Document suggest that this Java Servlet operates with any device is
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`connected to the Internet. EX1053 ¶¶ 58-63. Nor, as Dr. Shamos admitted, does
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`the mere reference to a Java Servlet necessarily demonstrate use of the Internet.
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`EX1052, 79:9-23.
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`Mr. Chong’s testimony does not help BBiTV. Mr. Chong admitted that he
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`has no specific recollection of what was actually discussed with Mr. Perez, and that
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`he was using the term “Internet-connected” to refer to a device that is not
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`connected to the Internet or configured to receive content via the Internet, but is
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`instead capable of receiving content (via a digital cable system) that was previously
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`transmitted over the Internet. EX1055, 39:10-40:3.
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`Finally, even if the Board were to credit that Mr. Perez conceived of an
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`“Internet-connected” set-top box, there is literally no evidence that he conceived of
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`the claimed genus of “Internet-connected digital devices” early enough to antedate
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`Gonder.
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`C.
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`BBiTV cannot show prior conception of reserved area content
`that is “generated using the received video content.”
`BBiTV fails to show that it had conceived of “reserved area content
`
`generated using the received video content.” BBiTV directs the Board to images
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`from the February Presentation and passages from the March Draft and April
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`Development Document, but none of them show evidence of conception. EX1053
`
`¶¶ 65-75.
`
`The February Presentation shows elements on a screen, but does not show
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`that any of them are generated using the received video content or explain how that
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`would happen. POR, 19-21. See also EX1068 at pp. 255-265 (testifying that the
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`elements of the February Presentation are from metadata and/or he does not recall
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`from what they were derived).
`
`The first cited passage of the March Draft relates to metadata input (not
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`video content). The second says that category lists can be generated by querying
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`the “video metadata database” (and therefore says nothing about using video
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`content to generate reserved-area content). And the third discusses how the
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`content of a classified advertisement is provided and makes no mention of using
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`video to generate reserved area content in a multi-layer template. Compare POR at
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`20-21 with EX2061 ¶ 27-28, 35; EX1053 ¶¶ 69-71. The March Draft does not
`
`even discuss the concept of displays with multiple layers, templates or reserved
`
`areas. See EX2061, passim; EX1053 ¶ 72.
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`Finally, as Mr. Diaz admitted, the April Development Document shows no
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`reserved area content generated using the received video content. EX1054, 84:23-
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`85:13, 93:4-94:17. It shows that reserved areas to be populated with text and
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`images. EX1053 ¶¶ 73-75.
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`III. GONDER INCORPORATES CABLELABS BY REFERENCE.
`The Board has invited further briefing on whether Gonder incorporates the
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`CableLabs specification by reference. Dec. to Institute at 53, Paper 15.
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`Gonder states that “VOD MD-SP-VOD Content Specification 101-020327,
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`Mar. 27, 2003” is incorporated by reference. EX1005, 5:15-25. At the time of
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`Gonder’s publication, there were only 3 versions of CableLabs’s VOD content
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`specification—I01, I02 and I03. EX1048; EX1053 ¶¶ 76-78.
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`Notably, the original application of Gonder referred to version “I01,” and its
`
`conversion to “101” appears to have been a USPTO error. EX1059, p. 9, line 1.
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`But regardless, because Gonder refers to the version “101,” a POSITA would
`
`conclude that Gonder is referring to version “I01” (because “1” and “I” look
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`similar in many typefaces). That version is entitled “MD-SP-VOD-Content 1.1-
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`01-020927” and its six-digit reference number is only one digit different from the
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`number given in Gonder (it has a 9 where Gonder has a 3). The only other two
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`possibilities (versions I02 and I03) have totally different reference numbers –
`
`namely 030415 and 040107, respectively. Russ Reply Decl. ¶¶ 79-81; EX1056;
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`EX1057; EX1053, EX1048. Thus a POSITA would have known that Gonder
`
`refers to version I01.
`
`That said, whether the CableLabs specification is incorporated into Gonder’s
`
`disclosure should not matter. CableLabs is a not-for-profit research and
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`development lab funded by the major cable operators. EX1053 ¶ 83. Any
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`POSITA active in the cable industry over the past two decades would be familiar
`
`with CableLabs, and any POSITA working with VOD would be familiar with
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`CableLab’s metadata specifications. Id. In fact, an industry article written in 2002
`
`explains that “The Video-on-Demand content specification as published by
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`CableLabs has become the de-facto standard of how metadata is created and how it
`
`can incorporated many of the rules necessary to describe how on-demand content
`
`is to be handled.” EX1060, p. 7; see also EX1061-EX1067 (corroborating the
`
`publication date); EX1052, 83:9-14 (admitting that a POSTIA would be familiar
`
`with the CableLabs specification). Thus, even if CableLabs is not incorporated
`
`into Gonder, a POSITA would be familiar with it, with the ADI packets it
`
`describes and to which Gonder refers, and to the metadata and other assets (e.g.
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`images) the specification tells content providers to package with their videos.
`
`EX1053 ¶ 84.
`
`IV. GONDER TEACHES THE CLAIMED THIRD LAYER.
`BBiTV makes only one attempt to distinguish claim 1 from Gonder. BBiTV
`
`contends that Gonder does not teach the display of “reserved area content
`
`generated using images” in a third layer of a display. POR, 61-75. BBiTV’s
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`argument mischaracterizes the claim, treats Gonder as if it had only one
`
`embodiment, and ignores the general knowledge of a POSITA. Contrary to
`
`BBiTV’s arguments, Gondor is replete with disclosure of images populating
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`reserved areas in templates, including content provider logos and still images from
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`videos.
`
`A.
`
`The “generated using” language is not limiting for purposes of
`obviousness.
`The “generated using” language that BBiTV relies upon is not a limitation
`
`for purposes of determining obviousness. The “generated using” language does
`
`not concern a structure of the claimed Internet-connected digital device, or provide
`
`any structural information concerning the reserved area content the device
`
`displays. Rather, it relates to how and from what the reserved area content was
`
`generated. The claim does not require that generation be performed by the
`
`Internet-connected digital device and the cited language imparts no structure to the
`
`“reserved area content.” At most, the “generated using” language is a product-by-
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`process limitation that describes how reserved area content is made rather than
`
`what it is. See Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334 (Fed.
`
`Cir. 2020) (explaining that product-by-process treatment can apply to nested
`
`limitations in broader claims). It is