Trials@uspto.gov
`571-272-7822
`
`
`Paper 70
`Entered: December 6, 2021
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`DISH NETWORK L.L.C.,
`AT&T SERVICES, INC., and DIRECTV, LLC,1
`Petitioner.
`
`v.
`
`BROADBAND iTV, INC.,
`Patent Owner.
`
`
`
`CONFIDENTIAL PORTION
`
`__________
`
`IPR2020-01267
`Patent 10,028,026 B2
`
`__________
`Record of Oral Hearing
`Held: November 1, 2021
`__________
`
`Before JEFFREY S. SMITH, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`
`
`
`
`
`
`1 AT&T Services, Inc. and DIRECTV, LLC filed a motion for joinder and a
`petition in Cases IPR2021-00603, and IPR2021-00649, which were granted,
`and, therefore, have been joined as petitioners in these proceedings.
`
`
`571-272-7822
`
`
`Paper 70
`Entered: December 6, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`DISH NETWORK L.L.C.,
`AT&T SERVICES, INC., and DIRECTV, LLC,1
`Petitioner.
`
`v.
`
`BROADBAND iTV, INC.,
`Patent Owner.
`
`
`
`CONFIDENTIAL PORTION
`
`__________
`
`IPR2020-01267
`Patent 10,028,026 B2
`
`__________
`Record of Oral Hearing
`Held: November 1, 2021
`__________
`
`Before JEFFREY S. SMITH, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`
`
`
`
`
`
`1 AT&T Services, Inc. and DIRECTV, LLC filed a motion for joinder and a
`petition in Cases IPR2021-00603, and IPR2021-00649, which were granted,
`and, therefore, have been joined as petitioners in these proceedings.
`
`
`
`IPR2020 01267
`Patent 10,028,026 B2
`
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`CLEMENT ROBERTS, ESQ.
`K. PATRICK HERMAN, ESQ.
`of: Orrick, Herrington & Sutcliffe LLP
`The Orrick Building
`405 Howard Street
`San Francisco, CA 94105-2669
`United States
`415-773-5700
`croberts@orrick.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`HONG LIN, ESQ.
`RUSSELL TONKOVICH, ESQ.
`of: Feinberg Day Kramer Alberti Lim Tonkovich & Belloli LLP
`577 Airport Boulevard
`Suite 250
`Burlingame, California 94010
`650-825-4300
`hlin@feinday.com
`
`
`
`
`The above-entitled matter came on for hearing on Monday,
`
`November 1, 2021, commencing at 11:19 a.m. EDT, via Video
`Teleconference.
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`IPR2020-01267
`Patent 10,028,026 B2
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`P-R-O-C-E-E-D-I-N-G-S
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`
`11:19 a.m.
`JUDGE ARBES: This is the confidential portion of the hearing in
`Case IPR2020-01267, involving Patent 10,028,026.
`We'll follow the same order of presentation as the public portion, and
`have confirmed that only the parties and the Board are on the line.
`Any questions from the parties before we begin?
`MR. ROBERTS: None from Petitioner, Your Honors.
`MR. TONKOVICH: None from Patent Owner.
`JUDGE ARBES: Okay. Counsel for Petitioner, you may begin.
`And would you like to reserve time for rebuttal?
`MR. ROBERTS: Yes, thank you. I'll reserve seven minutes. So, 18
`minutes on the primary, if I could.
`Thank you, I'd like to ask the Board to start with Slide 7. The only
`point I want to make about this is timing, which is that in order to antedate
`Gonder, they need to both show constructive reduction to practice. And they
`need to show an earlier conception date.
`Either one of them is not sufficient on its own, because Gonder is
`before their alleged date of constructive reduction to practice.
`Slide 10, the well-constructed reduction to practice, I don't need to
`tell the Board this, but for thoroughness, it requires that they show basically
`that they have an adequate written description.
`They have to possess the full scope of what they claim is the
`invention, in order to get constructive reduction to practice from the 2004
`application.
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`IPR2020-01267
`Patent 10,028,026 B2
`
`
`And the problem is, Your Honor, that they do not have the
`internet-connected digital device, as claimed.
`Now sometimes in the parties' papers and in the slides, people just
`talk about the internet-connected digital device. But I want to point out to
`the Board that the first limitation of the claim, called for 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, et cetera.
`So, it is not nearly sufficient, wouldn't be sufficient to show that you
`had the idea of an internet-connected digital device. You have to show that
`you have the full scope of what is claimed, which includes an
`internet-connected digital device configured for this purpose.
`Meaning, it has to be an integrated part of the invention, not merely
`the idea that internet-connected digital devices existed.
`Moving to Slide 11, the Board's seen this picture before. But the
`point is that when you look at the 2004 application, the only discussion of
`the internet is in connection with the upload path from the end user web
`browser, to the web-based content management system.
`And when we talk about the ICDD, the internet-connected digital
`device of the claim, we're talking about what is used to present the electronic
`program guide to the consumer. And in the image that they gave the Board
`in the 2004 spec, this is the, Digital Set-Top Box 21, in red. And as you can
`see, it is connected to the system via the Digital Cable Television System. It
`is not connected via the internet.
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`IPR2020-01267
`Patent 10,028,026 B2
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`
`There is nothing in the 2004 application that discusses connecting
`the Digital Set-Top Box 21, to anything else via the internet. It's never
`discussed that way.
`Slide 12, in fact when you look at what it talks about, and this is
`from Paragraph 22 of the July 24 -- July 2004 application. It talks about the
`VOD application for the CATV, the cable TV system. And it's talking about
`the fact, you key press on the viewer's remote, that is sent on a back channel
`of the Digital Cable Television System. So, it's very clear all the way
`through the patent, and consistent that the digital set-top box connects
`through the traditional digital cable, CATV system.
`Conversely, and this is in blue, when they talk about the Web-based
`Content Management System, they do talk about uploading over the internet.
`So, they knew how to talk about the internet. They understood what the
`internet was. They knew what the web was. And they used that to talk
`about the upload mechanism. But there is no discussion of that, or having
`reduced it to practice, for the delivery to the client device or the consumer.
`Slide 13, this is the material they added in 2007 to change that. In
`the 2007, they added literally, 50 percent of the text, and they added half the
`drawings. And they added express support for internet-connected digital
`devices, including phones, media players, game consoles, iPods, PDAs and
`the like. That was added in 2007.
`So, this is Slide 14, then the question is, how did they get there?
`And what they're attempting to do is they're attempting to pull in material
`from the Navic Patent location. And that doesn't work for the four reasons I
`have outlined here.
`
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`5
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`IPR2020-01267
`Patent 10,028,026 B2
`
`
`Where I want to start with this, is with Slide 15. And the Board
`quoted this exact case and this exact language in its institution decision,
`which when it was talking about the cable lab. 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. It has
`to be specific.
`And if the Board, this is Slide 16, looks at the incorporation by
`reference in the 2004 application, it was specific about what they were
`attempting to incorporate. And I have it highlighted here on left in yellow.
`It says, an example of an advanced VOD delivery platform, that's what we're
`talking about, a delivery platform in the N-Band system offered by Navic.
`This is an integrated system which provides an application development
`platform for third party application developers, to develop new VOD service
`applications.
`That's what it is. This is a server side, app development platform.
`No discussion here of any kind of set-top boxes being used in connection
`with it, whatsoever. And then the next --
`JUDGE ARBES: Counsel, counsel, please counsel. I'm sorry.
`Counsel, can you please stop? Can we -- we'd like to go off the record for a
`moment. For the court reporter, please -- we'll stop the record here.
`(Whereupon, the above-entitled matter went off the record at 11:26
`a.m. and resumed at 11:31 a.m.)
`JUDGE ARBES: Counsel, this is continuing the confidential portion
`of the hearing in IPR2020-01267. Before we continue, I would ask the
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`IPR2020-01267
`Patent 10,028,026 B2
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`parties to confirm that only the parties and the Board are on the line for this
`hearing. Counsel for Petitioner, can you please confirm?
`MR. ROBERTS: Confirmed.
`JUDGE ARBES: And Counsel for Patent Owner?
`MR. TONKOVICH: Confirmed.
`JUDGE ARBES: Thank you very much. Counsel for Petitioner,
`your time will continue now.
`MR. ROBERTS: Thank you. Turning the Board's attention back to
`Slide 16. The final sentence on the left-hand side of the slide says, a detailed
`description of the Navic N-Band system is contained in the '106 application,
`which is incorporated here and by reference.
`So, when we look at the specific material they were attempting to
`incorporate, it was material about the Navic N-Band system, which the
`patent itself described as being an application development environment. If
`you look on the right-hand side, I have another quote, which talks about the
`Navic N-Band system. It's the only other reference to the Navic N-Band in
`the application.
`And it uses it as an example of a VOD application server. No
`mention whatsoever of internet-connected digital devices, set-top boxes, or
`anything like that. It's talking about the Navic N-Band system which is a
`server-side application development platform.
`Slide 17, if you then look at the Navic patent application, and at the
`passages they point to, and I have those passages highlighted here in Slide
`17. You will see that these are passages that are not talking about the Navic
`N-Band system. They don't mention the Navic invention.
`
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`7
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`IPR2020-01267
`Patent 10,028,026 B2
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`
`They say, in the future, the functionality offered by set-top boxes or
`other invented platforms will expand. They may offer internet routing
`capabilities and e-commerce serving capabilities. It is anticipated that,
`common household appliances will also have computer network
`functionality. They're not talking about the Navic N-Band system. They're
`talking about what they anticipate set-top boxes could do in the future.
`And so, this material was not the material that was incorporated by
`reference. Even if, this material is what was incorporated by reference, even
`if it was, it wouldn't help them. Because this is not, there's no inkling that
`this is, that this meets the limitations of the claim, or that this was conceived
`of, or thought of, or reduced to practice as an internet-connected digital
`device configured to obtain and present to the subscriber, an electronic
`program guide as a templatized video-on-demand display. There's no
`discussion in Paragraph five and six about these devices doing anything like
`that. And there's no discussion of that whatsoever.
`And so, these are not the internet-connected digital devices of the
`claim. They're not even the internet-connected digital devices of the Navic
`N-Band system. These are future devices that are hypothesized to exist by
`the Navic system. And they're discussed in the background of the invention
`of the Navic patent.
`Slide 18, their next attempt to try to show reduction to practice, is by
`pointing out that Paragraph 22 talks about DSL. And they say, ah, DSL,
`that's an internet technology. But DSL is a dual-use technology. And what
`this says is cable television, CATV network systems, may include any of
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`IPR2020-01267
`Patent 10,028,026 B2
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`hybrid fiber coax, physical cabling, satellite, or even digital video contact
`distribution system based on DSL.
`And then it goes on and talks about microwave. This is not
`discussing the internet, not discussing internet-connected set-top boxes. It's
`talking about the cable television network making use of DSL, which of
`course it did, before DSL was used for the internet.
`Slide 19, this is really the problem, which is you can't point to an
`amalgamation of disclosures. This is not an obviousness analysis. In
`obviousness, you can point to multiple different things, and say, well how
`would we naturally be inclined to put them together? In a written
`description, you have to ask a different question. The different question is,
`did they have possession of the invention as an integrated whole? That's
`literally what the words are out of FlashControl. They don't get to say, well,
`Navic had thought about the future including these devices. And so,
`therefore, we had possession of them as well. That's not how written
`description works.
`But even if the Board is feeling that somehow, they incorporated by
`reference, and had possession of internet-connected set-top boxes, that still
`wouldn't help them.
`And here I'm going to Slide 20. This is the construction of
`internet-connected digital device, which the parties agreed to in the District
`Court. And the point I want to make about this, is it's very broad. It's a
`device configured to send and receive information via the internet. And
`when they claimed, they claimed all internet-connected digital devices.
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`IPR2020-01267
`Patent 10,028,026 B2
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`
`Slide 21, and we know because of the dependent claims. That those
`internet digital -- internet-connected digital devices include phones, PDAs,
`media players and game consoles. And so, if you're saying the exact same
`question, did they have possession of the full scope of what they claimed,
`including all of these devices, plus some more? They didn't.
`Indeed, and we pointed this out in our papers, they've admitted that
`many of these claims don't have priority to the 2007 -- 2004 application.
`Now, their response to that is, well, different claims can have different
`priority dates. And that's true. But these are dependent claims.
`And they've admitted that dependent claims, which are within the
`scope of the independent Claim 1, don't have priority to the 2004
`application. And that is functionally an admission that they did not have
`possession of the full scope of what they currently claim.
`JUDGE ARBES: Counsel --
`(Simultaneous speaking)
`MR. ROBERTS: -- care of that.
`JUDGE ARBES: Counsel, how much did the applicant need to
`include in the application for this to be a constructive reduction to practice?
`Particularly given the admission, or the acknowledgment by both parties,
`and both parties’ declarants, that internet-connected set-top boxes were
`known at the time? How much more than what they have in the '192
`application and the Navic publication did they need to have to disclose this,
`in your view?
`MR. ROBERTS: Well so, for set-top boxes specifically, what I
`would say is they needed some indication that the set-top box could be used
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`IPR2020-01267
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`as the terminal of their claim. And there's no indication that the set-top box
`could be used to deliver or receive the electronic program guide and
`navigate -- that an internet set-top box could be used for that purpose. So, I
`think for the set-top box, they would that.
`For the full scope of all of this, to get priority for this full scope of
`the claim, I think then this is where we kind of go to the genus-species law.
`Which is -- which tells you, you can do it either through a plurality of
`examples which show them that you really knew the full scope, right. So,
`you'd need, I think, maybe, I don't know, three of the five examples here, or
`some number of examples. Some awareness of actually having possession of
`all internet-connected digital devices. Or, and this is the other thing the
`genus-species law gives you, like some common structural characteristic that
`would allow you to identify them.
`And they don't have either of those two things. And if I could just
`focus on the second one here, because I know my time is quite short, but if --
`and that law by the way is on Slide 22.
`But if I could focus on Slide 24. I asked Dr. Shamos, who is their
`expert in deposition, whether all internet-connected digital devices were
`appropriate for use within the confines of the invention? And he said, no.
`And he said, in particular, he noted that there has to be a particular
`bandwidth for the internet connection to be useful. And that the screen has
`to have a particular resolution of the display. So, these are the kinds of
`problems you run into if you're trying to use internet-connected digital
`devices in the invention.
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`IPR2020-01267
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`
`And if they really want to say they have reduced it to practice, I
`think at a minimum they needed some awareness of these problems and how
`they would solved, or which phones, or which PDAs, or which internet-
`connected digital devices were actually appropriate for the claims, and
`which were not.
`And so, the point is, not only is there no structure describing how
`these things are common, but there is -- there's an admission by their expert
`that there are requirements that they were not aware of, or that there's no
`indication that they were aware of. And so, therefore, I think you have to
`put the words, in possession of the full scope of what they claim.
`Even if you were to conclude that somehow, they got there on set-
`top boxes, which again, I don't think they do because there's nothing to
`indicate that they were -- in their patent application, that those set-top boxes
`were internet connected. The only thing they have is the Navic patent
`application. And the Navic patent application talked about set-top boxes
`that may exist in the future. That's not their possession of set-top boxes in
`connection with their invention. It's not.
`I think I'm about at the end of the time I had for this. So, I think I
`will save the remaining piece of it for rebuttal, unless there are specific
`questions about this. I didn't touch on the conception piece of it, but we can
`get there if we want to. I think the reduction to practice piece is sufficient to
`find that they don't have priority.
`JUDGE ARBES: Thank you, you have eight minutes remaining.
`Counsel, for Patent Owner, you have 30 minutes, and would you like
`to reserve time for rebuttal?
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`
`MR. TONKOVICH: Yes, can I reserve five minutes for rebuttal?
`JUDGE ARBES: Yes.
`MR. TONKOVICH: Morning, my name is Russell Tonkovich on
`behalf of the Patent Owner.
`So, I'd like to start on Patent Owner's Slide 45. Claims 1 through 9
`here, were conceived by March 31st, 2004 and reduced to practice in the
`'192 application by July 30th, 2004. So, Gonder is not prior art, Claims 1
`through 9.
`If we move on to Slide 46, so, in the briefing, you know, just give a
`few different arguments why the prior art is, why Gonder is prior art and
`conception fails. One of these is no conception of internet-connected digital
`device. No, constructive reduction of practice, in internet-connected digital
`device.
`And they have an argument where they didn't mention here about
`reserved area content, generated using received video content.
`I'm going to focus on the internet-connected digital device, since
`that's what Petitioner focused on in their argument. I'd like to point out,
`DISH has not challenged diligence here in this case. They made no
`arguments with regard to diligence.
`Moving to Slide 49, I'd like to start with the law here. And I'll start
`by speaking about conception of internet-connected digital device and then
`move to reduction to practice. The federal circuit said, that although
`conception must include every feature or limitation of the claimed invention,
`the corroboration requirement has never been so demanding, such that the
`corroborating evidence must constitute definitive proof of the inventor's
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`IPR2020-01267
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`account, or disclose of each claim as written. The focus must be whether the
`totality of the evidence makes the inventor's testimony credible.
`And here we not only have the testimony of the inventor as to each,
`every claim on the case, I think 1 through 9. We have supporting testimony
`from his Patent Attorney, Mr. Chong, as well as several documents that each
`individually corroborate, sufficiently corroborate, the testimony of the
`inventor, Mr. Perez.
`But I'd like to start at Slide 52. I think the Board had alluded to this.
`Conception of reduction to practice is looked at from the viewpoint of one of
`ordinary skill in the art. And to start there, both experts agree that
`internet-connected set-top boxes were well-known in 2004. Petitioner's
`expert admits this, that they were, quote, "well-known." And points to an
`internet-connected set-top box from 2002.
`Moving on to Slide 53, their expert goes on, to talk about how the
`internet-connected set-top box was sold in large quantities. And not only
`were internet-connected set-top boxes well-known in the art, they were also
`in widespread commercial uses as well, at that time.
`Going on to Slide 50, Mr. Perez, presents a declaration where, you
`know, he testifies he conceived of each of the limitations of Claims 1
`through 9.
`And on Slide 51, that is supported by the testimony of Mr. Chong,
`who was the patent attorney working with Mr. Perez to file the '192
`application. And he testified during the March 3rd, 2004 meeting, "Mr.
`Perez, disclosed to me a roadmap of the different parts of the video-on-
`demand system and its interaction with an internet-connected device."
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`At that meeting, he discussed internet-connected set-top boxes and
`other internet-connected digital devices. For instance, computers that could
`utilize and receive video from Mr. Perez's video-on-demand system. So,
`here we have corroborating testimony from a witness at the time, as to
`conception of internet-connected digital device, by Mr. Perez, as of March
`31st, 2004.
`I'd like to now jump to Slide 56, and talk about Navic. So, the
`March draft patent application was written by Mr. Chong. It is dated March
`31st, 2004. And that incorporates the Navic -- '106 application. Navic was
`a company that BVI was working with to develop products at the time. And
`we can see for instance,
`
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`Right. Both experts admit, internet-connected set-top boxes were well-
`known.
`So, this idea that they're looking at hypothesizing internet-connection
`may be there in the future, makes no sense. He's, you know, Paragraph 6
`states right here,
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` But that no way
`negates the fact that it was well understood that there were,
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`IPR2020-01267
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`internet-connected set-top boxes, both that were known in the art, and were
`creating commercial use.
`I move on to Slide 57.
`JUDGE ARBES: Counsel.
`MR. TONKOVICH: Yes.
`JUDGE ARBES: Counsel, doesn't the language of, in the future, in
`the publication and the application, doesn't that in some sense indicate that
`this is really not part of the disclosed invention? This is something that may
`happen in the future?
`MR. TONKOVICH: Yes, it does. But it doesn't relate to what we're
`talking about here, before disclosure. There's a difference between having
`internet-connected set-top box for content delivery, and for instance, web
`browsing or e-commerce. Right. Saying,
`
`. And this application
`
`goes back to 2002, a few years before this.
`But that's different, as I'll show you in the next slide, from saying
`content delivery will be made through the internet-connected set-top box.
`Right.
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`
`
`So, following up from that, let's go to Slide 57 here. And here Navic
`is talking about -- Navic application is only, you know, three and a half
`pages, the specification. It's talking about a system for content delivery of
`video-on-demand. And says, the content delivery system may be any type
`of cable television network system, including any type of hybrid fiber coax,
`physical cabling, or satellite equipment. That's the cable side of it. Or, it
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`says or, you know, in the alternative, even digital video content distribution
`systems based on digital subscriber lines, DSL, or broadband wireless
`technologies, which are both referring to internet-connected -- internet
`technologies.
`Now, Petitioner's argument with regard to DSL being a cable
`technology, entirely brand new at the hearing. It was not brought up in any
`paper, at any point, in this proceeding. And as this, been waived, and should
`not be considered by the Board. DSL was a well-known internet access
`technology by 2004. And as was, you know, broadband wireless
`technologies.
`So, what this is disclosing is that in the Navic system, the video, the
`content delivery system, which is how the server delivers content to the set-
`top box, can be over the internet. Which is consistent with one, with the
`understanding of one of ordinary skill in the art. Right. I mean both parties
`have recognized, both experts have recognized that internet-connected
`digital devices were well-known in the art. And that they were in
`widespread commercial use.
`This idea of having, you know, internet-connected content delivery
`was already known, to one of ordinary skill in the art. And is being
`referenced specifically here in the Navic application, which is incorporated
`by reference in the March draft.
`And going kind of back to --
`JUDGE GALLIGAN: This is --
`MR. TONKOVICH: Yes.
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`JUDGE GALLIGAN: This is Judge Galligan and I had some
`questions on this. So, if we're talking about the Navic application,
`incorporation by reference, we're talking about constructive reduction to
`practice there, right?
`MR. TONKOVICH: Right now, I'm on conception. So, this is the
`March draft, which is different from '192 application, which also
`incorporates it by reference. But I can jump there if you would like.
`JUDGE GALLIGAN: Yes, you can continue on. I do want to get to
`the constructive reduction to practice issues, here. But proceed with
`conception for now. I just wanted to clarify your -- okay, thanks. Yes,
`proceed and then we'll talk about the constructive. Thank you.
`MR. TONKOVICH: Okay. No problem, I will get to it shortly.
`And then moving on to Slide 54. You know, Paragraph 3 of the March draft
`references
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`Moving on to Paragraph 55, here we see,
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` For the user to be able to interact with the UI
`system, that's internet-based, they would need to have internet connectivity.
`Which is consistent with the set-top boxes that were in use at the time.
`JUDGE GALLIGAN: Counsel, this is Judge Galligan. On this
`issue, on
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`And that's expressly disclosed in the, in the '192 application. I don't think
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`anyone disputes that. How does that relate to the set-top box? There's, I
`don't, I never read anything about, in the '192 application about people using
`the set-top box to compose the content.
`MR. TONKOVICH: Well, so, this goes to, what it talks about here
`is user interface and it just being presented to the user on an interactive
`basis, from the system. So, the user interface images are going from the
`system to the user.
`JUDGE GALLIGAN: To the user at the computer, where they're
`using the web-based content management system. Correct?
`MR. TONKOVICH: The web-based content management, they
`compose code and do the quality assurance, user interface images.
`JUDGE GALLIGAN: Right.
`MR. TONKOVICH: But that side, those are not --
`(Simultaneous speaking.)
`JUDGE GALLIGAN: But not, so you're saying, you're saying
`Paragraph 28. You're saying Paragraph 28 relates to the set-top box?
`MR. TONKOVICH: No, I'm saying
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`JUDGE GALLIGAN: Okay, yes. I didn't think Petitioner was
`disputing that part of it. I, they even admitted that the internet was used on
`the back end. Thanks, just wanted to clarify.
`MR. TONKOVICH: Okay. And then moving on to, I want to go on
`to Slide 59, because it's further corroboration, which is April development
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`document here.
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`Mr. Perez testified at the time, Java servlets were components used
`by servers as part of the internet to transmit information using an internet
`protocol.
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` which Navic described as internet appliances,
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`the '106 application.
`So, with Perez had testified, that
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`And then if we move to Slide 60 --
`JUDGE SMITH: Can I ask you, can I ask you about the Java
`servlet, real quick?
`MR. TONKOVICH: Yes.
`JUDGE SMITH: Is it only used on the internet? Is it possible to use
`Java on a network that's not the internet?
`MR. TONKOVICH: So, Java servlets are typically used for
`interactive web applications. Is there a theoretical use otherwise? Possibly.
`Yes, I mean I'm sure there are theoretical uses otherwise. I think that that is
`in the testimony somewhere. But the question really is, how is it used in the
`corroborated document? How as it used in this system that BBI was
`developing at the time, as reflected in this document? Right. And there is
`testimony about that both from Mr. Perez and Dr. Shamos that that Java
`servlet was used on the Navic server in the system that they were
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`developing, to provide a connectivity to the internet-connected digital set-
`top box.
`So, in terms of corroboration, goes to does this corroborate the
`inventor's testimony, not does it definitively prove there can be no other use
`for a Java servlet. Right. It goes back to the law that I think I quoted earlier.
`So, following on that, if we go to Slide 60. This shows the testimony
`from Dr. Shamos that this particular document,
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`So, Dr. Shamos is testifying how one of ordinary skill would
`understand this April development document,
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`So, turning now to the constructive reduction to practice of the '192
`application. If we can go to Patent Owner's Slide 62. Again, just starting
`with one of, the knowledge of one of ordinary skill in the art. There's no
`dispute that internet-connected set-top boxes were well-known, and in
`commercial use at the time that the '192 application was filed in 2004.
`So, moving on to Slide 63. This is showing Paragraph 3 of the '192
`application. And Paragraph 3 starts out by talking about current set-top
`boxes. The type of current set-top boxes that would be used in the context
`of the inventions, those in the '192 application.
`The first sentence is the current set-top box provides various
`functions. So really the second sentence I want to focus on for now. It talks
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`IPR2020-01267
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`about more advanced digital set-top boxes. And it's described as more
`advanced digital set-top boxes, which apart of the current set-top boxes, to
`provide a wider functionality and then in the final phrase of that sentence, it
`says, thereby enabling subscribers to access interactive
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