IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`NO. 6:19-cv-716-ADA
`
`§§§§§§§§§§
`
`BROADBAND iTV, INC.,
`
`Plaintiff,
`
`v.
`
`DISH NETWORK L.L.C.,
`
`Defendant.
`
`DISH NETWORK L.L.C.’S PRELIMINARY INVALIDITY CONTENTIONS
`
`Pursuant to the Order Governing Proceedings – Patent Case, entered on Feb. 26, 2020
`
`(Dkt. No. 23), Defendant DISH Network L.L.C. (“DISH”) hereby serves its Preliminary
`
`Invalidity Contentions for U.S. Patent No. 10,028,026 (the “’026 Patent”), U.S. Patent No.
`
`10,506,269 (the “’269 Patent”), U.S. Patent No. 9,998,791 (the “’791 Patent”) and U.S. Patent
`
`No. 9,648,388 (the “’388 Patent”) (collectively “Patents-in-Suit” or “Asserted Patents”).
`
`Plaintiff Broadband iTV, Inc. (“BBiTV”) has asserted the following 65 claims of the
`
`Asserted Patents, which are collectively called the “Asserted Claims”:
`
`
`
`
`
`
`
`
`
`’026 Patent claims 1-9, 11-16;
`
`’269 Patent claims 1-6, 8-12, 14-17;
`
`’791 Patent claims 1-3, 5-12, 14-18; and
`
`’388 Patent claims 1-19.
`
`I.
`
`INTRODUCTORY STATEMENT
`
`DISH has not completed its investigation of the facts and documents relating to this
`
`action and has not completed its preparation for trial. DISH has not taken any depositions in this
`
`action, including, without limitation, any depositions of the named inventor of the Patents-in-Suit
`
`BBiTV EX2014
`AT&T v. Broadband iTV
`IPR2021-00556
`
`

`

`and/or other persons having potentially relevant information. As discovery in this action
`
`provides DISH with additional information, it is possible that DISH will discovery additional
`
`prior art pertinent to the invalidity of the Asserted Claims of the Patents-in-Suit, and DISH
`
`reserves the right to supplement these contentions after becoming aware of additional prior art or
`
`information. In particular, DISH reserves the right to rely on any invalidity position and any
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`prior art reference included in the invalidity contentions of any defendant in a case brought by
`
`Plaintiff alleging any of the Asserted Patents, or any patents in the same family. DISH further
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`reserves the right to introduce and use such supplemental materials at trial.
`
`There has been no claim construction ruling in this case. Accordingly, DISH’s Invalidity
`
`Contentions reflect the presumed readings of the claims advanced by BBiTV in its Preliminary
`
`Infringement Contentions (“Infringement Contentions”) (to the extent they can be understood),
`
`not what DISH contends is the proper meaning of the claims. These Invalidity Contentions are
`
`not admissions or adoptions as to any particular claim scope or construction, nor an admission
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`that any particular element is met in any particular way in DISH’s accused instrumentalities.
`
`Nothing herein should be treated as an admission that DISH agrees with BBiTV’s express or
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`implied claim constructions or that BBiTV has proposed any discernable constructions for claims
`
`and/or claim terms in its Infringement Contentions. To the extent DISH understands BBiTV’s
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`allegations of infringement, BBiTV attempts to stretch the language of the Asserted Claims
`
`beyond the scope to which the claims could reasonably be entitled in light of the disclosures in
`
`the Patents-in-Suit and their prosecution histories. Moreover, to the extent that the Asserted
`
`Patents include means-plus-function terms, those terms lack corresponding structure. DISH has
`
`not attempted to map the term to corresponding structure. However, insofar as the Court decides
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`that they are means-plus-function terms but disagrees that they lack corresponding structure,
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`DISH will amend these contentions to point to the disclosure of whatever the Court identifies as
`
`corresponding structure within the reference.
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`In addition, DISH contends that certain Asserted Claims do not satisfy one or more
`
`requirements of 35 U.S.C. §§ 101 and/or 112. In order to fulfill its obligations pursuant to the
`
`Order Governing Proceedings – Patent Cases, however, DISH has applied the prior art based on
`
`the assumption that BBiTV contends all Asserted Claims satisfy all of the applicable
`
`requirements of 35 U.S.C. §§ 101 and 112. The application of prior art in these Invalidity
`
`Contentions should not be construed as an admission that DISH agrees that any of the Asserted
`
`Claims satisfies all the requirements of 35 U.S.C. §§ 101 and/or 112.
`
`These Preliminary Invalidity Contentions, including the attached exhibits, are subject to
`
`modification, amendment, and/or supplementation in accordance with the Order Governing
`
`Proceedings – Patent Case, including in DISH’s Final Invalidity Contentions, and/or in light of
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`the Court’s construction of the Asserted Claims, BBiTV’s Final Infringement Contentions, any
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`findings as to the priority or invention date of the Asserted Claims, additional prior art, and/or
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`positions that BBiTV or its expert witness(es) may take concerning claim construction,
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`infringement, and/or invalidity issues.
`
`The Preliminary Invalidity Contentions herein are based on DISH’s present knowledge,
`
`and pursuant to the Order Governing Proceedings – Patent Case, DISH reserves the right to
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`amend these contentions if it identifies new material despite DISH’s reasonable efforts to prepare
`
`these contentions. DISH’s investigation regarding invalidity of the Asserted Patents over prior
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`art and regarding other grounds of invalidity, including those based on the public use and on-sale
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`bars under 35 U.S.C. § 102, obviousness under 35 U.S.C. § 103, failure to comply with 35
`
`U.S.C. § 112, derivation under 35 U.S.C. § 102(f), and prior invention under 35 U.S.C. § 102(g),
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`-3-
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`is ongoing. There may be products that were known or in public use prior to the filing dates of
`
`the applications leading to the Asserted Patents, but DISH must first obtain additional
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`information regarding these products using available discovery tools.
`
`Moreover, prior art not included in this disclosure, whether known or unknown to DISH,
`
`may become relevant. In particular, DISH is currently unaware of the extent, if any, to which
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`BBiTV will contend that limitations of the Asserted Claims are not disclosed in the prior art
`
`identified by DISH, or will contend that any of the identified references does not qualify as prior
`
`art under § 102. In particular, BBiTV has not disclosed its reasoning in support of its claim that
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`certain of the Asserted Patents are entitled to an earlier priority date, nor has BBiTV proved
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`entitlement to an earlier invention date.
`
`Because DISH’s investigation, prior art search, and analysis are still ongoing, it is likely
`
`that DISH will identify additional prior art or contentions that will add meaning to already
`
`known prior art or contentions or possibly lead to additions or changes to these Invalidity
`
`Contentions. Without obligating itself to do so, DISH reserves all rights to amend, modify, or
`
`supplement these Invalidity Contentions. DISH further reserves the right to rely on any facts,
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`documents, or other evidence that are: (i) subsequently discovered; (ii) subsequently determined
`
`to be relevant for any purpose; or (iii) subsequently determined to have been omitted from a
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`production, whether inadvertently or otherwise. DISH further reserve the right to rely on expert
`
`testimony. Documents related to expert testimony, if any, will be produced when expert
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`discovery is exchanged pursuant to the Court’s Order.
`
`The identification of any patents as prior art shall be deemed to include identification of
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`any foreign counterpart patents. To the extent that such issues arise, DISH reserves the right to
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`identify additional teachings in the same references or in other references that anticipate or
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`-4-
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`would have made the addition of the allegedly missing limitation to the apparatus or method
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`obvious.
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`The foregoing statements and reservations of rights are hereby expressly incorporated by
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`reference in their entirety into each of the disclosures below, into the invalidity charts served
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`herewith, and into each disclosure corresponding to each element of every claim.
`
`II.
`
`PRIORITY DATES
`
`For each of the Asserted Claims, BBiTV has failed to demonstrate any basis upon which
`
`the claims are entitled to a priority date earlier than the filing date of the continuation
`
`applications within their family history. The priority dates of the Asserted Claims are no earlier
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`than the filing dates of the respective parent patent applications (excluding any continuations-in-
`
`part) at least because: there is insufficient disclosure in the earlier priority documents; and any
`
`claim to an earlier date of conception is not sufficiently supported by evidence and was not
`
`adequately coupled with sufficient reduction to practice and diligence.
`
`III.
`
`INVALIDITY OF THE ASSERTED PATENTS
`
`A.
`
`Invalidity Based on 35 U.S.C. § 101
`
`Each Asserted Claim is invalid for failing to recite patentable subject matter under 35
`
`U.S.C. § 101. With regard to the subset of the Asserted Claims that are identified in BBiTV’s
`
`Complaint, DISH’s contentions regarding subject matter eligibility are set forth in DISH’s briefs
`
`and accompanying exhibits in support of DISH’s Motion to Dismiss, which are hereby
`
`incorporated by reference. Dkt. No. 17. Regarding the Asserted Claims that BBiTV first
`
`identified in its Infringement Contentions, they are invalid under 35 U.S.C. § 101 for the same
`
`reasons set forth in said materials at least because the claims expressly disclosed in DISH’s
`
`Motion to Dismiss are representative of the additional claims BBiTV asserted in its Infringement
`
`Contentions.
`
`-5-
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`

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`As explained in DISH’s Motion to Dismiss, each of the Asserted Patents, like the
`
`confirmed ineligible ’336 patent to which they are related, is directed to the abstract idea of
`
`“using the same hierarchical ordering based on metadata to facilitate the display and locating of
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`video content.” Each of the asserted claims merely recites a process for using software to
`
`generate conventional menus, and comprises nothing more than conventional and generic
`
`hardware components performing basic and abstract data manipulation and presentation steps.
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`Moreover, as the Asserted Patents admit, these software functions simply automate the menu-
`
`generation process that might have otherwise been performed manually by a human worker at a
`
`cable company.
`
`Further, none of the asserted claims recite an inventive concept because none of the
`
`claims provides any improvements to the functionality of VOD systems as whole. Rather, the
`
`claims simply use known generic components for their known use and benefits to, at most,
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`automate a task or implement abstract data manipulation and presentation functions. Moreover,
`
`many of the claimed functionalities, such as using the internet to upload data, “drill down
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`navigation,” and use of templates to automate the creation of pages are themselves abstract ideas
`
`and thus likewise provide no inventive concept. To the extent any of the claims recite
`
`improvements to VOD technology, those improvements are due to the incorporation of tried-
`
`and-true abstract solutions in the VOD context, which is precisely what the Supreme Court’s
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`Alice/Mayo jurisprudence forbids. The fact that BBiTV elected to focus on these clearly
`
`abstract concepts as the allegedly inventive concepts contained within the Asserted Patents in its
`
`briefing opposing DISH’s Motion to Dismiss further confirms that the claims are directed to
`
`ineligible subject matter.
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`-6-
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`Further none of the limitations in the asserted dependent claims provides any basis for
`
`concluding that those claims are not directed to the same abstract idea, or that those claims
`
`include an inventive concept. In general, many dependent claims either add further details
`
`describing the conventional hierarchical category-based arrangement of the menu, or specify
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`further types of information that can be included in the metadata and/or the menu, neither of
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`which constitutes a patentable improvement. Other dependent claims merely specify the generic
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`devices required by the claims with more particularity, but do not add anything apart from
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`routine, conventional, and well-known components. In sum, none of the Asserted Claims recites
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`any technological solution to any technological challenge, but instead claim applying abstract
`
`and known solutions in the VOD context.
`
`B.
`
`Invalidity Based on 35 U.S.C. §§ 102 and 103
`
`In the following subsections, DISH identifies each item of prior art that DISH presently
`
`alleges anticipates one or more of the Asserted Claims or renders them obvious. These prior art
`
`patents, publications, systems, and products disclose the elements of the Asserted Claims either
`
`explicitly, implicitly, inherently, or via an obvious combination. They, along with other
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`references produced herewith, may also be relied upon to show the state of the art in the relevant
`
`timeframes. DISH further reserves the right to rely upon the following to show the state of the
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`art in the relevant timeframes: all prior art cited on the face of the Patents-in-Suit and Related
`
`Patents, the admitted prior art references1 in the specifications of the Patents-in-Suit and Related
`
`Patents, all prior art cited in the prosecution histories of the Patents-in-Suit and Related Patents,
`
`including any reexaminations, reissue, or other post grant review proceedings, and the references
`
`1 The admitted prior art of the Patents-in-Suit including the systems and methods described in the
`“Background of Invention” sections of the Patents-in-Suit.
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`cited in any invalidity contentions submitted in any action or proceeding involving the Patents-
`
`in-Suit or Related Patents.
`
`To the extent BBiTV challenges a prior art patent’s qualification as prior art, DISH
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`reserves the right to rely upon: (i) foreign counterparts of U.S. patents identified in these
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`Invalidity Contentions; and (ii) U.S. counterparts of foreign patents and foreign patent
`
`applications identified in these Invalidity Contentions, to the extent such references qualify as
`
`prior art and contain the same substantive disclosure.
`
`1.
`
`Prior Art Patents and Applications, Non-Patent Publications, and
`Prior Art Apparatuses and Systems
`
`DISH has identified each prior art patent or application by its number, country of origin,
`
`and date of issue or, if an application, date of publication. Unless otherwise noted, the country of
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`origin for prior art patents or patent applications is the U.S. To the extent feasible, DISH has
`
`identified each prior art publication by its title, date of publication, and publisher.
`
`a.
`
`The ’791 Patent
`
` U.S. Patent Publication 2005/0160458 A1 (“Baumgartner I”)
` U.S. Patent Publication 2010/0153997 A1 (“Baumgartner II”)
` CableLabs Video-On-Demand Content Specification Version 1.1, published
`September 27, 2002 (“CableLabs”)
` CableLabs Asset Distribution Interface Version 1.1, published April 5, 2003
`(“CableLabs ADI”)
` Scheffler, “Ingest & Metadata Partitioning: Requirements for Television on
`Demand” (2003) (“Scheffler”)
` U.S. Patent No. 7,159,233 (“Son”)
` U.S. Patent Publication 2001/0030667 (“Kelts”)
` U.S. Patent No. 5,752,160 (“Dunn”)
` U.S. Patent Publication No. 2004/0136698 (“Mock”)
` U.S. Patent No. 8,352,983 (“Chane”)
` U.S. Patent No. 6,314,572 (“LaRocca”)
` U.S. Patent Application Publication No. 2004/0046801 (“Lin”)
` U.S. Patent 7,174,512 (“Martin”)
` U.S. Patent No. 8,434,118 (“Gonder”)
` PCT Application No. WO 2004/0264296 (“Cuttner”)
`International PCT Publication No. WO200055794 (“Proehl”)
`
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`-8-
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`

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` EP 0944254 (“Nishi”)
` U.S. Patent No. 7,716,703 (“Sheldon”)
` U.S. Patent No. 6,208,335 (“Gordon”)
` U.S. Patent No. 7,089,309 (“Ramaley”)
` U.S. Patent Publication No. 2002/0049971 (“Augenbraun”)
`
`b.
`
`The ’388 Patent
`
` Baumgartner I
` Baumgartner II
` CableLabs
` CableLabs ADI
` Scheffler
` Son
` Kelts
` Dunn
` Mock
` Chane
` LaRocca
` Lin
` Martin
` Gonder
` Cuttner
` Proehl
` Nishi
` Sheldon
` Gordon
` Ramaley
` Augenbraun
`
`c.
`
`The ’026 Patent
`
` Baumgartner I
` Baumgartner II
` CableLabs
` CableLabs ADI
` Scheffler
` Son
` Kelts
` U.S. Patent Publication 2003/0113100 (“Hecht”)
` U.S. Patent Application Pub. No. 2002/0151327 (“Levitt”)
` Dunn
` Mock
` U.S. Patent No. 9,565,387 (“Brodersen”)
`
`-9-
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`

`

` Chane
` U.S. Patent No. 7,703,041 (“Ito”)
` U.S. Patent No. 9,396,212 (“Haberman”)
` LaRocca
` Lin
` Martin
` Gonder
` U.S. Patent Publication 2006/0026655 (“Perez”)
` Cuttner
` Proehl
` Nishi
` Sheldon
` Gordon
` Ramaley
` Augenbraun
`
`d.
`
`The ’269 Patent
`
` Baumgartner I
` Baumgartner II
` CableLabs
` CableLabs ADI
` Scheffler
` Son
` Kelts
` Hecht
` Dunn
` Mock
` Levitt
` Brodersen
` Chane
`Ito
`
` Haberman
` LaRocca
` Lin
` Martin
` Gonder
` Perez
` Cuttner
` Proehl
` Nishi
` Sheldon
` Gordon
` Ramaley
`
`-10-
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`

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` Augenbraun
`
`2.
`
`Prior Art Under 35 U.S.C. § 102(f)
`
`Because discovery has not yet begun, DISH has been unable to explore the potential
`
`defense that Milton Diaz Perez did not himself invent the subject matter sought to be patented in
`
`the Asserted Patents. DISH specifically reserves the right to raise such a defense once it has had
`
`an opportunity to conduct its investigation.
`
`3.
`
`Prior Art Under 35 U.S.C. § 102(g)
`
`To the extent the inventions identified in the patents, publications, systems, and other
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`prior art to the Patents-in-Suit identified in these contentions were conceived by another and
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`diligently reduced to practice before the alleged conception and reduction to practice of the
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`Asserted Claims of the Patents-in-Suit by the named inventors of those patents, DISH alleges
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`that such prior art inventions invalidate those claims under 35 U.S.C. § 102(g).
`
`4.
`
`Claim Charts
`
`Pursuant to Paragraph 6 of the Court’s Order Governing Proceedings – Patent Case (Dkt.
`
`No. 23), DISH provides herewith as Exhibits A-D claim charts setting forth where in the prior art
`
`references each element of the Asserted Claims are found. Prior art claim charts for the ’791
`
`Patent are attached hereto as Exhibit A; charts for the ’388 Patent are attached hereto as Exhibit
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`B; charts for the ’026 Patent are attached hereto as Exhibit C; charts for the ’269 Patent are
`
`attached hereto as Exhibit D. Where DISH cites to a particular figure in a prior art reference, the
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`citation should be understood to encompass, in addition to the figure itself, the caption and
`
`description of the figure as well as any text relating to a figure. Conversely, where a cited portion
`
`of text refers to a figure, the citation should be understood to include the figure as well.
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`-11-
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`The attached exhibits map the prior art references to each element of each Asserted
`
`Claim. In so doing, DISH does not admit that every element is limiting, nor does DISH waive its
`
`right to argue that certain elements are non-limiting.
`
`DISH has endeavored to identify portions of the charted prior art that disclose each
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`element of the Asserted Claims of the Patents-in-Suit. However, the prior art may contain
`
`additional disclosure for a particular claim element. To avoid excessive, cumulative citations,
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`DISH identifies portions of prior art references sufficient to show where the reference discloses
`
`the claimed feature. DISH may point to additional evidence from the reference to support its
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`contention that the cited passage discloses the claimed limitation. Persons of ordinary skill in the
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`art of the Patents-in-Suit would determine what is described, disclosed, suggested, and taught by
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`these items of prior art based on the prior art reference as a whole and in the context of relevant
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`publications and literature in the art. Moreover, to understand and interpret any specific
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`description, disclosure, or teaching of an item of prior art, such persons would rely on other
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`information within the prior art item along with other prior art publications and their general
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`scientific or engineering knowledge.
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`5.
`
`Exemplary § 103 Obviousness Combinations
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`DISH contends that the Asserted Claims are invalid under 35 U.S.C. § 102 and/or §103
`
`as being anticipated by or rendered obvious by prior art disclosed herein and/or in view of the
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`knowledge of one of ordinary skill in the art. The Order Governing Proceedings – Patent Case
`
`does not require that DISH include in these Preliminary Invalidity Contentions any disclosures
`
`relating to its potential § 103 arguments. Nevertheless, and without in any way limiting its
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`ability to make additional arguments later, DISH provides the following non-limiting examples
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`of potential obviousness combinations and motivations to combine.
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`Any obviousness combinations of references provided herein pursuant to 35 U.S.C. § 103
`
`are not intended to be exhaustive. Additional obviousness combinations of the references
`
`identified above, or other prior art references or systems not yet identified, are possible, and
`
`DISH reserves the right to use any such combination in this litigation.
`
`DISH contends that one of skill in the art, at the time the alleged inventions were made,
`
`would have been motivated to combine the references disclosed herein in such a way as to reach
`
`the alleged inventions, as described in further detail below. DISH presently believes a
`
`reasonable basis exists that each of the claims asserted against it would have been obvious to one
`
`of ordinary skill in the art at the time of the alleged invention.
`
`a.
`
`’791 Patent
`
`It would have been obvious to one of ordinary skill in the art to combine various prior art
`
`references listed in Section III.B.1 to arrive at the subject matter of the Asserted Claims. Such
`
`combinations would have involved nothing more than combining prior elements according to
`
`known methods to yield predicable results, using a known technique to improve a similar device
`
`in the same way, and/or applying a known technique to a device ready for improvement to yield
`
`a predictable result.
`
`DISH provides three exemplary § 103 obviousness combinations and the motivations that
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`one of ordinary skill in the art would have to combine those references here. Similar motivations
`
`as those described below would apply to different combinations of prior art not explicitly called
`
`out here. By providing these examples, DISH is in no way precluding itself from introducing
`
`and relying on different combinations and different and/or additional motivations to combine.
`
`DISH expressly reserves the right to do so.
`
`Baumgartner I, Son, Scheffler, and CableLabs: One of ordinary skill in the art as of the
`
`effective filing date of the ’791 Patent would have considered it obvious and would have been
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`motivated to combine the teachings of Baumgartner I, Son, Scheffler, and CableLabs to arrive at
`
`the subject matter of the Asserted Claims.
`
`As an initial matter, Baumgartner I provides a natural starting place for combination.
`
`Baumgartner I discloses a complete “interactive television system 10” with the various
`
`components needed to make video-on-demand available to subscribers. See Baumgartner I ¶
`
`[0044]. This includes a centralized “television distribution facility 14” that received uploaded
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`content, stores that content, and manages its distribution to user devices. See id. ¶¶ [0044]-
`
`[0047]; Fig. 1.
`
`Further, one of ordinary skill in the art would recognize that Baumgartner I’s system
`
`provides numerous desirable benefits. For instance, it allows for the provision of content to
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`various different types of user devices, including both “television equipment” and “computer
`
`equipment.” Id. ¶ [0047]. Baumgartner I’s system is also compatible with and able to transmit
`
`video over a variety of different “communications paths,” including “cables or other wired
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`connections, or wireless connections for broadcast or other satellite links.” Id. ¶ [0048]. As of
`
`the ’791 Patent’s filing date, users were increasingly viewing movies and other media not only
`
`through televisions, but also through other devices like computers. Thus, a system—like that
`
`disclosed by Baumgartner I—able to provide video services to multiple different types of devices
`
`using a variety of communication methods would have been considered highly desirable by one
`
`of ordinary skill in the art.
`
`Baumgartner I’s system also includes a comprehensive, organized, and easy to navigate
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`hierarchical user interface and menu. This allows a user to easily access a “large number of
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`available programs.” Id. ¶ [0009]. And, Baumgartner I’s menu includes customization functions
`
`that allow content and information to tailored to “a user’s interests.” One of ordinary skill in the
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`-14-
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`art would recognize that this would improve the user experience and increase the attractiveness
`
`of Baumgartner I’s system to consumers.
`
`Next, one of ordinary skill in the art would have considered it obvious to apply the web-
`
`based content upload system of Son to the video-on-demand system of Baumgartner I.
`
`Baumgartner I explains that content providers can upload content, including video-on-
`
`demand content, to its central “television distribution facility 14” via virtually any means of
`
`communication. This includes “satellite,” “fiber-optic,” “cable,” or “any other suitable wired or
`
`wireless communications paths of a combination of such paths.” Baumgartner I, ¶ [0045]. Thus,
`
`when implementing Baumgartner’s system, one of ordinary skill in the art would have
`
`considered the types of communication and upload methods that were generally known in the art.
`
`As of the ’791 Patent’s filing, it was well known that content upload to a central server
`
`could be accomplished via a web-interface and the Internet. For instance, Ramaley, which
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`published two years before the ’791 Patent was filed, explains that “many Web-based
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`multimedia services [had] been developed.” Id. ¶ [0003]. “These services allow many
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`publishers, content owners, and other content providers to store large banks of digital media,
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`provide real-time video and audio streams to client computers, and carry out many functions to
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`serve and manage multimedia systems.” Id. The routine use of this type of web-based media
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`upload system in the prior art would have provided one of ordinary skill with a strong motivation
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`to employ such a system, including that disclosed by Son, with Baumgartner I.
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`Son itself also identifies benefits associated with web-based content uploading that would
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`further motivate application of this upload method to a video-on-demand system like that of
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`Baumgartner I. For instance, Son explains that its system allows many different individual users
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`to upload content to a central server. See Son at 1:61-2:15. Use of Son’s web-based upload
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`system, instead of some other proprietary or more complicated system, would allow
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`Baumgartner I’s system to accept and make available content from a broader collection of
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`providers. This is the very same benefit that the ’791 purports to provide. ’791 Patent at 3:4-14.
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`Son’s system also has other benefits. For instance, it converts uploaded content into a
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`format that allows a single “video server” to distribute content to many different types of “access
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`networks.” Son at 1:50-56. This, according to Son, reduces equipment requirements and cost by
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`eliminating the need to use multiple, “separate video servers.” Id. Baumgartner I is also
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`intended to provide content to different types of user devices connected to different types of
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`networks. As a result, one of ordinary skill in the art would be motivated to apply Son’s system
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`to Baumgartner I to reduce the number of servers that must be present at Baumgartner I’s central
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`television distribution facility 14.
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`Web-based upload systems provide other benefits. For instance, no special software—
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`besides a standard browser—is required. Thus, application of a web-based upload system to
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`Baumgartner I would make Baumgartner I’s system more intuitive, familiar, and easier for
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`content providers to use. This, like the other benefits discussed above, would make Baumgartner
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`I’s system more accessible and commercially attractive and would further motivate application
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`of Son to Baumgartner I.
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`One of ordinary skill in the art would also have been motivated to use hierarchical and
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`other metadata supplied by the original content provider when generating Baumgartner I’s
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`interactive programming guide and menu. Showing this, Scheffler explains that the “best place”
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`for “content specific metadata” to be “created” is “at the earliest possible point in the production
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`and distribution chain”: “the studio or encoding provider.” Scheffler at 8. Thus, one of ordinary
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`skill in the art would understand that that Baumgartner’s system could be improved by using
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`content provider metadata, including categorical metadata, rather than metadata from an
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`unspecified “data source 30.”
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`Further, one of ordinary skill in the art would be motivated to include both
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`(1) hierarchical, categorical metadata and (2) metadata that controls the time availability of
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`content in this content provider embedded metadata. Scheffler explains that CableLab’s “Video-
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`on-Demand Content Specification” “has become the de-facto standard of how metadata is
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`created and how it can incorporate many of the rules necessary to describe how on-demand
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`content is to be handled.” Scheffler at 7. And, as explained, this standard metadata includes
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`both “categorical” metadata that can be used to control the category and subcategory under
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`which content can be found in a video-on-demand system’s user interface and metadata that
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`controls time of availability. See CableLabs at 11, 13. Given both Scheffler’s explicit
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`instruction to consider the CableLabs standard, coupled with the fact that the metadata listed in
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`the CableLabs specification was considered “standard,” one of ordinary skill in the art as of the
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`filing date of the ’791 Patent would have been strongly motivated to package this type of
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`metadata with content provider uploaded content.
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`One of ordinary skill in the art would also recognize that content providers are likely
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`more knowledgeable about the characteristics of the content they are supplying than any other
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`entity. Thus, content providers are in the best position to append title, category, and other
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`content related metadata to the content. One of ordinary skill in the art would recognize that
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`applying Scheffler’s teachings to Baumgartner I —and using content provider title, categorical,
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`and other metadata to generate Baumgartner I’s interactive guide—would serve to significantly
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`improve Baumgartner I and improve the accuracy of the categorical and other content-related
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`information it relays to users.
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`One of ordinary skill in the art would also recognize that content providers have a strong
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`interest in controlling the use of the content they make available. Indeed, Scheffler explains that
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`usage “rules” are what “keep[] content flowing from creators to consumers.” Scheffler at 6.
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`This would further motivate application of Scheffler to Baumgartner I. By using content
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`provider embedded metadata when generating its guide—including hierarchical, category
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`metadata—Baumgartner I would provide those content providers with increased control over
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`where the content can be found in the guide. Moreover, content providers would be able to
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`append various usage and access limits to their content, including limits on the total number of
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`views, time of availability limits, and the like.
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`Baumgartner I, Son, Scheffler, and CableLabs all also relate to the same general
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`technological field: video-on-demand systems. This also motivates combination. One of
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`ordinary skill in the art would have considered it obvious to develop a single system that
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`combines the beneficial features of each of these references—including the central server and
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`hierarchical menu of Baumgartner I, the web-based upload of Son, and the content provider
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`embedded metadata of Son, Scheffler, and CableLabs—since they are in the same field of
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`endeavor. Use of these features in combination would be considered nothing more than a routine
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`design choice.
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`One of ordinary skill in the art would also have had a reasonable expectat