IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`Case No. 1:20-cv-717-ADA
`
`BROADBAND iTV, INC.,
`
`Plaintiff,
`
`v.
`
`AT&T SERVICES, INC., and AT&T
`COMMUNICATIONS, LLC,
`
`Defendants.
`
`BROADBAND iTV, INC.,
`
`Plaintiff,
`
`v.
`
`DIRECTV, LLC,
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`FINAL INVALIDITY CONTENTIONS OF
`AT&T SERVICES, INC., AT&T COMMUNICATIONS, LLC, AND DIRECTV, LLC
`
`Pursuant to the Court’s Amended Scheduling Order (Dkt. No. 84), Defendants AT&T
`
`Services, Inc., AT&T Communications, LLC, and DIRECTV, LLC (collectively “Defendants” or
`
`“AT&T”) provide the following Final Invalidity Contentions and accompanying document
`
`production with respect to claims collectively identified by Plaintiff Broadband iTV, Inc.
`
`(“BBiTV” or “Plaintiff”) in its Preliminary Infringement Contentions served on each Defendant
`
`(“Preliminary Infringement Contentions”). AT&T reserves the right to amend these contentions
`
`in accordance with the existing rules of this Court, any orders of record in this matter, including
`
`Footnote 4 to the Order Governing Proceedings (Dkt. No. 28), and the Federal Rules of Civil
`
`0001
`
`BBiTV EX2032
`AT&T v. Broadband iTV
`IPR2021-00556
`
`

`

`Procedure.
`
`The Asserted Claims, as reflected in Plaintiff’s Preliminary Infringement Contentions, are
`
`summarized in the following chart:
`
`AT&T TV, AT&T TV
`Now, AT&T Watch
`TV
`
`U-Verse
`
`DirecTV
`
`’791 Patent
`
`’388 Patent
`
`1-18
`
`1-19
`
`’026 Patent
`
`1-9, 11-13, 15-16
`
`’101 Patent
`
`’269 Patent
`
`-
`
`-
`
`1-18
`
`1-19
`
`1-16
`
`1-8, 10, 12-17
`
`-
`
`1-3, 5-6, 8-12, 14-18
`
`1-13, 15-19
`
`1-9, 11-13
`
`-
`
`1-6, 8-12, 14-15, 17
`
`I.
`
`Statement Concerning Amendment of Invalidity Contentions.
`
` Pursuant to the Court’s Order Governing Proceedings (Dkt. No. 28), Defendants certify
`
`that Defendants undertook reasonable efforts to prepare their Preliminary Invalidity Contentions.
`
`The amendment of Defendants’ Invalidity Contentions is based on material identified and/or
`
`disclosed after the Preliminary Invalidity Contentions were served. U.S. Patent No. 5,752,160
`
`(“Dunn”) was first brought to Defendants’ attention through BI’s recent production of DISH’s
`
`Preliminary Invalidity Contentions. U.S. Patent No. 7,159,233 (“Son”) was first brought to
`
`Defendants’ attention through DISH’s petitions for inter partes review of the asserted patents. U.S.
`
`Patent Publication No. 2004/0136698 (“Mock”) was first brought to Defendants’ attention through
`
`BI’s recent production of DISH’s Preliminary Invalidity Contentions. Defendants understand U.S.
`
`Patent Publication No. 2007/0157252 (“Perez”) to be prior art to the ’388 and ’791 Patents under
`
`35 U.S.C. § 102(b) based on BI’s responses to Defendants’ Interrogatory Nos. 1-3. See BI’s
`
`Responses to AT&T’s First Set of Interrogatories (Nos. 1-21), dated January 4, 2021.
`
`2
`
`0002
`
`

`

`II.
`
`INVALIDITY CONTENTIONS.
`
`Pursuant to the Court’s Order Governing Proceedings (Dkt. No. 28) and the Amended
`
`Scheduling Order (Dkt. No. 84), Defendants hereby serve their final invalidity contentions in the
`
`form of (1) a chart setting forth where in the prior art references each element of the asserted
`
`claim(s) are found, (2) an identification of any limitations the Defendant contends are indefinite
`
`or lack written description under section 112, and (3) an identification of any claims the Defendant
`
`contends are directed to ineligible subject matter under section 101.
`
`A.
`
`A Chart Setting Forth Where in the Prior Art References Each Element of the
`Asserted Claims are Found.
`
`Overview.
`
`Exhibits A-1 to A-19 and C-1 to C-18 to these Invalidity Contentions contain claim charts
`
`for the primary prior art references selected by Defendants. With respect to Exhibits C-1 to C-18,
`
`it is not clear from the Court’s Claim Construction Order (Dkt. No. 74) whether the “was uploaded”
`
`step of independent claim 1 of each of the ’388, ’026, and ’269 patents is a limitation of the claim.
`
`Furthermore, BI has refused to answer Defendants’ Requests for Admission (Nos. 1-10)
`
`concerning the “was uploaded” step. As such, Defendants provide Exhibits C-1 to C-18 in the
`
`event the “was uploaded” step is not a limitation of claim 1. Exhibits B-1 to B-14 to these
`
`Invalidity Contentions contain claim charts showing how certain of the claimed concepts were
`
`taught by a number of prior art references and thus render the claims obvious over other prior art
`
`as recited herein.
`
`Defendants’ reliance on each prior art reference identified throughout these Invalidity
`
`Contentions (whether primary references or obviousness references) includes the reference itself,
`
`anything incorporated by the reference or described as relevant technology by the reference, any
`
`system embodying the reference, and any testimony by those with knowledge of the reference,
`
`3
`
`0003
`
`

`

`such as named authors and inventors. Moreover, AT&T reserves the right to seek through
`
`discovery the testimony of one or more engineers with knowledge of the development of any prior
`
`art system identified herein or subsequently discovered. On information and belief, the evidence
`
`cited in one or more exhibits as identified herein comprises evidence of a prior art system or
`
`solution and is therefore anticipatory under § 35 U.S.C. 102 even though that system may be
`
`described in multiple different documents. See Unitherm Food Sys. v. Swift-Eckrich, Inc., 375
`
`F.3d 1341, 1352-54 (Fed. Cir. 2004) (relying on “contemporaneous correspondence, color
`
`photographs, witness testimony, and promotional videos” to establish characteristics of
`
`anticipating Unitherm process), rev’d on other grounds, 546 U.S. 394, 126 S. Ct. 980, 163 L. Ed.
`
`2d 974 (2006); Sonoscan, Inc. v. Sonotek, Inc., 936 F.2d 1261, 1263 (Fed. Cir. 1991) (“That the
`
`offered product is in fact the claimed invention may be established by any relevant evidence, such
`
`as memoranda, drawings, correspondence, and testimony of witnesses.”). Moreover, while some
`
`prior art may be charted separately, Defendants reserve the right to show that combinations of
`
`individual charts describe a portion of single prior art system or solution.
`
`Defendants reserve the right to revise, amend, and/or supplement the information provided
`
`herein, including by identifying and relying on additional references, based on developments in
`
`the case including, without limitation, based on changes in the priority date of any Asserted Claim,
`
`newly discovered prior art, depositions and document productions of prior art witnesses, claim
`
`construction determinations, challenges by Plaintiff to the authenticity or content of the prior art
`
`and positions taken by Plaintiff during the litigation. For instance, Defendants are seeking
`
`discovery from several of the individuals and companies associated with the references below and
`
`reserve the right to rely on such discovery and/or supplement these contentions to the extent that
`
`discovery reveals additional facts and/or prior art bases.
`
`4
`
`0004
`
`

`

`Anticipation.
`
`The following printed prior art references in Table 1, taken either alone or in combination
`
`with each other, the knowledge of a person of ordinary skill in the art, and/or the references
`
`identified in Defendants’ Exhibits B-1 to B-14, anticipate and/or render obvious the Asserted
`
`Claims of the Asserted Patents as identified below, along with an identification of the Asserted
`
`Patents to which the reference is applied in each chart. An explanation for how and under what
`
`statutory basis each reference qualifies as prior art can be found within each of the charts identified
`
`below.
`
`Table 1: Printed Prior Art References
`
`Chart
`
`Reference
`
`Asserted Patents
`
`A-1
`
`A-2
`
`A-3
`
`A-4
`
`A-5
`
`A-6
`
`A-7
`
`A-8
`
`A-9
`
`A-10
`
`A-11
`
`A-12
`
`A-13
`
`A-14
`
`Hendricks I
`
`Hendricks II
`
`Baumgartner I
`
`Baumgartner II
`
`Grimes
`
`Finseth
`
`Gagnon
`
`Gaydou
`
`Ellis I
`
`Ellis III
`
`Haberman
`
`Bachet
`
`Ellis II
`
`Shannon
`
`5
`
`’791, ’388, ’026, ’101, ’269
`
`’791, ’388, ’026, ’101, ’269
`
`’791, ’388, ’026, ’101, ’269
`
`’791, ’388, ’026, ’101, ’269
`
`’791, ’388
`
`’791, ’388, ’026, ’101, ’269
`
`’026, ’101, ’269
`
`’791, ’388, ’026, ’101, ’269
`
`’791, ’388, ’026, ’101, ’269
`
`’791, ’388
`
`’791, ’388, ’026, ’101, ’269
`
`’026, ’101, ’269
`
`’026, ’101, ’269
`
`’026, ’101, ’269
`
`0005
`
`

`

`A-15
`
`A-19
`
`C-1
`
`C-2
`
`C-3
`
`C-4
`
`C-5
`
`C-6
`
`C-7
`
`C-8
`
`C-9
`
`C-10
`
`C-11
`
`C-12
`
`C-13
`
`C-14
`
`C-15
`
`Microsoft References
`
`’791, ’388, ’026, ’101, ’269
`
`Perez
`
`Hendricks I
`
`Hendricks II
`
`Baumgartner I
`
`Baumgartner II
`
`Grimes
`
`Finseth
`
`Gagnon
`
`Gaydou
`
`Ellis I
`
`Ellis III
`
`Haberman
`
`Bachet
`
`Ellis II
`
`Shannon
`
`’791, ’388
`
`’388, ’026, ’269
`
`’388, ’026, ’269
`
`’388, ’026, ’269
`
`’388, ’026, ’269
`
`’388
`
`’388, ’026, ’269
`
`’026, ’269
`
`’388, ’026, ’269
`
`’388, ’026, ’269
`
`’388
`
`’388, ’026, ’269
`
`’026, ’269
`
`’026, ’269
`
`’026, ’269
`
`Microsoft References
`
`’388, ’026, ’269
`
`On information and belief, the following charts identified below in Table 2 cite to
`
`documents and videos describing prior art systems, which anticipate and/or render obvious the
`
`Asserted Claims of the Asserted Patents either standing alone and/or as modified by other
`
`references in Exhibits A, B, and/or C. The system or device is identified below along with an
`
`explanation for how and under what statutory basis each reference qualifies as prior art can be
`
`found within each of the charts identified below along with an identification of the Asserted Patents
`
`to which the reference is applied in each chart.
`
`6
`
`0006
`
`

`

`Table 2: Prior Art Systems
`
`Chart
`
`A-16
`
`A-17
`
`A-18
`
`C-16
`
`C-17
`
`C-18
`
`Reference
`
`Asserted Patent
`
`Seachange International VOD Solution
`
`’791, ’388, ’026, ’101, ’269
`
`Microsoft TV Solution
`
`’791, ’388, ’026, ’101, ’269
`
`AT&T U-verse Solution
`
`’791, ’388, ’026, ’101, ’269
`
`Seachange International VOD Solution
`
`’388, ’026, ’269
`
`Microsoft TV Solution
`
`AT&T U-verse Solution
`
`’388, ’026, ’269
`
`’388, ’026, ’269
`
`On information and belief, numerous additional prior art systems existed prior to the
`
`earliest priority date of the Asserted Patents (and/or the earliest date of priority to which the
`
`Asserted Patents are entitled). Defendants’ have located evidence of the existence of several such
`
`systems, including Charter Communications VOD system, Ncube nABLE VOD system, Motorola
`
`VOD system (e.g., BMC and VIP STBs), Russound Smart Media Server. See, e.g., ATTS-
`
`000052219 to ATTS-000052224; ATTS-000058414 to ATTS-000058481; ATTS-000058482 to
`
`ATTS-000058485; ATTS-000058486 to ATTS-000058533; ATTS-000058534 to ATTS-
`
`000058569. Defendants have produced such information as Defendants have located to date
`
`regarding these systems. Defendants reserve the right to seek discovery of these systems as
`
`discovery continues and to determine based on any subsequent evidence that may be discovered
`
`whether these systems anticipated or rendered obvious one or more of the Asserted Claims of the
`
`Asserted Patents. Defendants reserve the right to supplement these contentions to rely on any such
`
`system and evidence.
`
`Derivation.
`
`BI admits that Mr. Milton Diaz Perez attended the CTAM Digital and Broadband
`
`7
`
`0007
`
`

`

`Conference in Los Angeles, California from March 9–11, 2004. See BI’s Responses to AT&T’s
`
`First Set of Interrogatories (Nos. 1-21) at 72. On information and belief, SeaChange International
`
`attended this trade show and may have communicated the details of its VOD system, as charted in
`
`Exhibit A-16, to Mr. Perez during this time. BI contends that Mr. Perez drafted a document
`
`allegedly containing all elements of the asserted ’791 and ’388 Patent claims on March 24, 2004
`
`and a document allegedly containing all elements of claims 1-9 of the ’026 Patent and claims 1-8
`
`and 10 of the ’101 Patent on March 31, 2004. Id. at 26-36, 39-47. BI also admits that Mr. Perez
`
`attended the International Broadcasting Convention in Amsterdam from September 10–14, 2005.
`
`Id. at 72. On information and belief, Microsoft attended this trade show to promote its IPTV
`
`platform and may have communicated the details of its VOD system, as charted in Exhibits A-15
`
`and A-17, to Mr. Perez. BI contends that claims 10-16 of the ’026 Patent, claims 12-17 of the ’101
`
`Patent, and all claims of the ’269 Patent do not have a conception date before March 12, 2007. Id.
`
`at 43, 47. Accordingly, Defendants’ investigation into this issue continues and Defendants reserve
`
`the right to supplement these contentions to contend that each asserted claim is rendered invalid
`
`under 35 U.S.C. § 102(f) as more information is uncovered. Defendants’ investigation is
`
`continuing, and Defendants reserve the right to amend and/or supplement the information provided
`
`herein.
`
`In addition, many of the details of other prior art systems disclosed herein were widely
`
`covered in the media and on the websites of those prior artists, and those details were therefore
`
`undisputedly accessible to the named inventor. Defendants’ reserve the right to seek discovery of
`
`the inventor’s prior knowledge of such prior art systems, and to amend these contentions to assert
`
`additional grounds of invalidity under 35 U.S.C. 102(f) should evidence be uncovered that the
`
`named inventor derived the claimed invention from others.
`
`8
`
`0008
`
`

`

`Obviousness.
`
`The references identified in Exhibits A-1 to A-18 and C-1 to C-18 each disclose, either
`
`expressly, or inherently, every element of the Asserted Claims as identified in each respective
`
`chart. To the extent that any primary reference A-1 to A-18 and C-1 to C-18 is alleged to not
`
`disclose any limitation of the Asserted Patents, the charts identified below in Table 3 show that it
`
`would have been obvious to modify the primary references with concepts from other prior art, as
`
`explained throughout this section. Defendants assert that each reference or system as identified in
`
`Exhibits A-1 through A-18 and C-1 through C-18 discloses or renders obvious each Asserted
`
`Claim of the Asserted Patents, either taken alone, or taken in view of one or more other references
`
`or systems cited in Exhibits A-1 through A-18 and C-1 through C-18.
`
`a)
`
`The Claims Recite Well-Known Concepts That Would Have
`Been Obvious to Combine with Predictable and Well-Known
`Results.
`
`To the extent that any reference in Charts A-1 to A-18 and C-1 to C-18 are alleged to lack
`
`any of the following concepts, it would have been nevertheless obvious to combine them with
`
`well-known prior art concepts identified below in Table 3 to arrive at the claimed inventions, at
`
`least under BBiTV’s apparent application of the claims. Indeed, BBiTV’s claims recite common
`
`and well-known features of TV systems existing at or before the time of invention of the Asserted
`
`Patents. The following are provided as examples only of reasons why any alleged missing
`
`limitation would have been obvious in light of the prior art, are provided in addition to the other
`
`obviousness rationales provided herein and are not intended to be limiting.
`
`Table 3: Well-Known Features and Concepts of Prior Art TV Systems
`
`Chart
`
`B-1
`
`Concept
`
`Relevant Asserted Claim(s)
`
`Video on Demand Server
`
`’791 Patent: Claims 1, 3
`
`9
`
`0009
`
`

`

`Chart
`
`Concept
`
`B-2
`
`B-3
`
`Web-Based Content
`Management System
`
`Obtaining and Using
`Metadata from Content
`Provider
`
`B-4
`
`Drill-Down Navigation
`
`B-5
`
`Templates and Levels
`
`B-6
`
`Three-Layer Display
`
`Relevant Asserted Claim(s)
`’388 Patent: Claim 1
`’026 Patent: Claims 1, 6-7, 15
`’101 Patent: Claims 1, 16
`’269 Patent: Claims 1-2, 9-10
`
`’791 Patent: Claim 1
`’388 Patent: Claim 1
`’026 Patent: Claim 1
`’269 Patent: Claim 1
`
`’791 Patent: Claims 1, 9-11, 14-15
`’388 Patent: Claims 1, 10-12, 15-16
`’026 Patent: Claims 1-2, 5-7
`’101 Patent: Claims 1, 3-8
`’269 Patent: Claims 1, 4-5, 8-10
`
`’791 Patent: Claims 1, 4
`’388 Patent: Claims 1, 3, 14
`’026 Patent: Claims 1, 3
`’101 Patent: Claim 1
`’269 Patent: Claims 1, 6
`
`’791 Patent: Claims 1, 5-8, 12, 14, 18
`’388 Patent: Claims 1, 3-9, 13, 15, 19
`’026 Patent: Claims 1, 3-4
`’101 Patent: Claims 1, 3, 5
`’269 Patent: Claims 1, 4, 6
`
`’791 Patent: Claims 12, 18
`’388 Patent: Claims 13, 19
`’026 Patent: Claim 1
`’101 Patent: Claim 1
`’269 Patent: Claim 1
`
`B-7
`
`Digeo Moxi Interface
`
`’791 Patent: Claims 1-18
`
`10
`
`0010
`
`

`

`Chart
`
`Concept
`
`Relevant Asserted Claim(s)
`’388 Patent: Claims 1-19
`’026 Patent: Claims 1-16
`’101 Patent: Claims 1-8, 10, 12-17
`’269 Patent: Claims 1-6, 8-12, 14-15, 17
`
`B-8
`
`B-9
`
`B-10
`
`Content Availability
`
`’791 Patent: Claim 1
`
`Closed System
`
`’388 Patent: Claim 1
`
`Internet-Connected Digital
`Device
`
`’026 Patent: Claims 1, 6-14
`’101 Patent: Claims 1, 10, 12-15
`’269 Patent: Claims 1, 11-12, 14-15
`
`B-11
`
`Login
`
`B-12
`
`Tracking and Updating
`
`B-13
`
`B-14
`
`Storing and Sharing
`Bookmarks
`
`Metadata Received in Real-
`Time
`
`’101 Patent: Claim 1
`’269 Patent: Claim 3
`
`’791 Patent: Claims 3-4, 13
`’388 Patent: Claim 14
`’101 Patent: Claims 1-2
`
`’026 Patent: Claims 15-16
`’101 Patent: Claims 16-17
`
`’791 Patent: Claims 14-15
`’388 Patent: Claim 15-16
`’269 Patent: Claim 1
`
`It would have been well-within the level of ordinary skill in the art to combine any of the
`
`features detailed above in Exhibits B-1 to B-14 in any of the references charted in Exhibits A-1 to
`
`A-18 and C-1 to C-18 with well-known and predictable results.
`
`(1)
`
`It would have been obvious to include a video on demand
`feature and to use a server to store the video.
`
`As shown by each reference cited in Exhibits A-1 to A-18 and C-1 to C-18, the ability for
`
`a television content provider to include a video on demand feature that stored video content on a
`
`11
`
`0011
`
`

`

`server, which was a well-known technique that was prevalent in prior art TV systems and
`
`disclosures. To the extent that BBiTV contends that this element is missing from any primary
`
`reference, it would have been manifestly obvious to include a video on demand feature based on
`
`the disclosures cited in other primary references and in Exhibit B-1. For example, video on
`
`demand concepts and video servers are clearly disclosed by U.S. Patent Nos. 5,442,389 (“Blahut”),
`
`5,812,123 (“Rowe”), 7,020,652 (“Matz II”), 7,380,258 (“Durden I”), 7,512,964 (“Rodriguez”),
`
`7,631,328 (“Clancy”), 7,801,303 (“Dulac”), 8,046,788 (“Durden II”), 8,051,450 (“Robarts”),
`
`8,312,490 (“Yap”), 8,387,093 (“Danker”), and 8,650,601 (“Allegrezza”); U.S. Patent Publication
`
`Nos. 2002/0059610
`
`(“Ellis
`
`IV”), 2002/0104099
`
`(“Novak”), 2003/0229898
`
`(“Babu”),
`
`2003/0167471 (“Roth”), 2004/0117831 (“Ellis V”), 2004/0143850 (“Costa”), 2004/0261096
`
`(“Matz I”), and 2005/00229227 (“Rogers”); International Patent Application Publication Nos. WO
`
`1999/041684 (“Kazeroonian”), WO 2000/008855 (“Allison I”), WO 2001/010124 (“Poggio”),
`
`WO 2001/010127 (“Liwerant”), WO 2001/022688 (“Horng-Juing”), WO 2001/099416 (“Durden
`
`III”), WO 2003/026275 (“Chane”), and 2004/051453 (“Steenkamp”); inside i-Guide User’s
`
`Reference Manual (“i-Guide”); and Time Warner Pegasus technical documentation (“Time
`
`Warner Pegasus”).
`
`The reasons to combine include all the reasons discussed herein, including those discussed
`
`below. As another example, video on demand was a well-known improvement on existing
`
`television systems because it was a common, ordinary, and well-known way to provide more
`
`flexibility to television subscribers with respect to their viewing options at any given time. In fact,
`
`the Asserted Patents admit that prior art video-on-demand systems, which enable content to be
`
`delivered “instantaneously,” were well-known and “attractive to employ” in the art at the time of
`
`the inventions. See, e.g., ’791 Patent at 2:7-56. As such, one of ordinary skill in the art would
`
`12
`
`0012
`
`

`

`have been motivated to provide video on demand to television subscribers to, for example, satisfy
`
`television subscribers and increase subscriber viewership. For example, the Seachange Solution
`
`charts cite video evidence from 2003 that demonstrate that it was well known that video on demand
`
`systems increase viewership and ad revenue by “matching content with available eyeballs.” See
`
`Seachange VOD Commercial (Future_300.asf). Moreover, as shown in examples cited in Exhibits
`
`A-1 to A-18, C-1 to C-18, and Exhibit B-1, it was well-known that television providers could
`
`charge for on-demand content leading to additional revenue stream possibilities. Thus, one of
`
`ordinary skill would have been motivated to include such features because of the known and
`
`predictable benefits to the consumer and television provider as well as ordinary market forces. At
`
`the time of the invention, placing video in a location where it can be accessed was well known and
`
`it would have been obvious to provide this feature as part of an integrated system.
`
`Furthermore, a person having ordinary skill in the art at the time of the alleged invention
`
`of the asserted patents would have been familiar with the well-understood practice of storing video
`
`content on a server associated with a content delivery system to address the problem of efficiently
`
`aggregating, storing, and maintaining video content in a centralized database. Those of ordinary
`
`skill in the art therefore would have been motivated to include a video server to obtain known
`
`advantages.
`
`(2)
`
`It would have been obvious to use a Web-based Content
`Management System.
`
`As shown by each reference cited in Exhibits A-1 to A-18, the ability for a television
`
`content provider to include a Web-based content management system for uploading video content
`
`and metadata to the television content provider was a well-known technique that was prevalent in
`
`prior art TV systems and disclosures. To the extent that BBiTV contends that this element is
`
`missing from any primary reference, it would have been manifestly obvious to include a Web-
`
`13
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`0013
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`

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`based content management system based on the disclosures cited in other primary references and
`
`in Exhibit B-2. For example, the use of a Web-based content management system is clearly
`
`disclosed by U.S. Patent Nos. 6,920,617 (“Nitta”), 6,963,898 (“Yoshimine”), 7,159,233 (“Son”),
`
`7,222,163 (“Girouard”), 8,042,132 (“Carney”), and 8,650,601 (“Allegrezza”); U.S. Patent
`
`Publication Nos. 2002/0104099 (“Novak”) and 2004/0136698 (“Mock”); and International Patent
`
`Application Publication Nos. WO 2001/010127 (“Liwerant”), WO 2003/052572 (“D’Souza”), and
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`2004/051453
`
`(“Steenkamp”); Krebs, Kindschi & Hammerquist, Building
`
`Interactive
`
`Entertainment and E-Commerce Content for Microsoft TV (“Interactive Entertainment
`
`Book”);and Time Warner Pegasus.
`
`The reasons to combine include all the reasons discussed herein, including those discussed
`
`below. As another example, it was well known to use web browsers to facilitate existing electronic
`
`or mechanical processes including using a Web-based content management systems to transfer
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`electronic content from one party to another as claimed. The Federal Circuit has recognized that
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`“adapting existing electronic processes to incorporate modern internet and web browser
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`technology was [] commonplace” as early as 1998, well before the earliest alleged priority date of
`
`the asserted patents. Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1325-27 (Fed. Cir.
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`2008) (finding patent obvious whose alleged novelty was using a web browser to implement
`
`known processes); see also Soverain Software LLC v. Newegg Inc., 705 F.3d 1333, 1343-44 (Fed.
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`Cir. 2013) (finding claims obvious for the routine corporation of Internet technology into existing
`
`processes). Here, the claimed Web-based content management system does nothing more than to
`
`propose implementing existing processes (e.g. delivering metadata and video content to a
`
`television provider) using well-known and commonplace web browser technology. As recognized
`
`by the Federal Circuit with respect to web browsers, the “modification of [known prior art] to
`
`14
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`0014
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`incorporate web browser functionality represents a combination of two well known prior art
`
`elements to a person of ordinary skill in the art.” Muniauction, 532 F.3d at 1326. “When there is
`
`a design need or market pressure to solve a problem and there are a finite number of identified,
`
`predictable solutions, a person of ordinary skill has good reason to pursue the known options
`
`within his or her technical grasp. If this leads to the anticipated success, it is likely the product not
`
`of innovation but of ordinary skill and common sense. In that instance the fact that a combination
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`was obvious to try might show that it was obvious under § 103.” Id. The claimed web-based
`
`content management system (as well as the claimed functions it performs) are therefore, at best,
`
`nothing more
`
`than
`
`a
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`“routine
`
`incorporation of Internet technology
`
`into
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`existing
`
`processes.” Soverain, 705 F.3d at 1344.
`
`In addition, the use of web-based interfaces for content management was a well-known
`
`technique for enabling content providers to easily upload, search, access, modify, and control
`
`content and metadata. Web-based interfaces also provide a common framework for provisioning,
`
`managing, deploying, layout, and navigation of video content, television menus, and interactive
`
`program guides. Moreover, as evident from the references in Exhibits A-1 to A-18 and B-2, the
`
`technique of uploading upload video content and metadata over the Internet was known before the
`
`earliest priority date for the Asserted Patents. For example, one of ordinary skill in the art would
`
`have been motivated to upload content via the Internet in an industry-standard file format
`
`compatible with the television provider’s system and streaming video, such as a digital format.
`
`Indeed, specifications for providing metadata in an Internet-compatible format called XML had
`
`already been developed into a CableLabs industry standard well before the alleged priority date of
`
`the Asserted Patents. Thus, one of ordinary skill would have been motivated to include the above
`
`features because of the known and predictable benefits, with predictable results.
`
`15
`
`0015
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`

`

`(3)
`
`It would have been obvious to use metadata from the
`video content provider.
`
`As shown by each reference cited in Exhibits A-1 to A-18 and C-1 to C-18, the ability for
`
`a television content provider to use metadata from a video content provider was a well-known
`
`technique that was prevalent in prior art TV systems and disclosures. To the extent that BBiTV
`
`contends that this element is missing from any primary reference, it would have been manifestly
`
`obvious to include the ability for the content provider to transmit metadata to the television
`
`provider’s system based on the disclosures cited in other primary references and in Exhibit B-3.
`
`For example, the television provider using metadata from the video content provider is clearly
`
`disclosed by U.S. Patent Nos. 6,920,617 (“Nitta”), 6,963,898 (“Yoshimine”), 7,055,104
`
`(“Billmaier”), 7,146,626 (“Arsenault”), 7,493,341 (“Israel”), 7,596,799 (“Chen”), 7,600,246
`
`(“Taylor”), 7,788,695 (“Walter”), 8,042,132 (“Carney”), 8,046,804 (“Kelts”), and 8,312,490
`
`(“Yap”); U.S. Patent Publication Nos. 2003/0126605 (“Betz”), 2003/0229898 (“Babu”),
`
`2004/0221308 (“Cuttner”), and 2005/0240963 (“Preisman”); International Patent Application
`
`Publication No. WO 03/026275 (“Chane”); European Patent No. EP 1 283 639 (“Scheffler”); ETSI
`
`Electronic Programme Guide (EPG) Protocol for a TV Guide Using Electronic Data Transmission
`
`(ETSI EN 300 707 V1.2.1 (2003-2004)) (“ETSI EPG Protocol”); CableLabs Video-On-Demand
`
`Content Specifications Version 1.1, September 27, 2002 (“CableLabs Content Specification”);
`
`CableLabs Asset Distribution Interface Specification Version 1.1, September 27, 2002
`
`(“CableLabs Asset Distribution”); Krebs, Kindschi & Hammerquist, Building Interactive
`
`Entertainment and E-Commerce Content for Microsoft TV (“Interactive Entertainment Book”);
`
`and Time Warner Pegasus technical documentation (“Time Warner Pegasus”).
`
`The reasons to combine include all the reasons discussed herein, including those discussed
`
`below. As another example, a person of ordinary skill would have been familiar with the well-
`
`16
`
`0016
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`

`

`understood technique of using metadata designated by a content provider to generate program
`
`guide menus. As the provider of the content, such party would naturally possess the knowledge
`
`required to provide the metadata about the content. It would have therefore been a matter of
`
`common sense to have the party responsible for providing the digital content also provide
`
`information describing that content to the television provider such as the title, category, and/or
`
`subcategory of the content. In addition, using metadata from a content provider allows a content
`
`provider to brand their content, for example, by having customized, provider-specific menus. This
`
`concept was well known, and it was disclosed by numerous prior artists including those discussed
`
`above. See also Breen as cited in the Seachange Solution charts. Similarly, it was well-known
`
`that using content provider-designated metadata enables content providers to specify the metadata
`
`they wish to display in the program guide and the design and layout of the menus associated with
`
`their video content. At the time of this invention, supplying data about data to ease the use of the
`
`data was well known, and it would have been obvious to include this feature as part of an integrated
`
`system that used data. Accordingly, one of ordinary skill would have been motivated to use
`
`metadata from content providers to generate program guides because of the known and predictable
`
`benefits and ordinary market forces, with predictable results.
`
`(4)
`
`It would have been obvious to include a drill-down
`navigation menu.
`
`As shown by each reference cited in Exhibits A-1 to A-18 and C-1 to C-18, the ability for
`
`a television content provider to include a hierarchically-arranged, drill-down navigation menu was
`
`a well-known technique that was prevalent in prior art TV systems and disclosures. To the extent
`
`that BBiTV contends that this element is missing from any primary reference, it would have been
`
`manifestly obvious to include drill-down navigation based on the disclosures cited in other primary
`
`references and in Exhibit B-4. For example, drill-down navigation menus are clearly disclosed by
`
`17
`
`0017
`
`

`

`U.S. Patent Nos. 5,812,123 (“Rowe I”), 5,812,124 (“Eick”), 5,973,680 (“Ueda”), 6,008,803
`
`(“Rowe II”), 6,100,883 (“Hoarty”), 6,742,184 (“Finseth II”), 6,928,433 (“Gordon”), 7,076,734,
`
`7,203,952 (“Broadus”), 7,225,455 (“Bennington”), 7,337,462 (“Dudkiewicz”), 7,685,520
`
`(“Rashkovskiy”), 7,908,626 (“Williamson”), 7,941,819 (“Stark”), 8,046,804 (“Kelts”), 8,321,892
`
`(“Malaby”), 8,566,871 (“Knowles”), 8,683,518 (“Cuttner”), 8,707,354 (“Moreau”), 9,160,976
`
`(“McCarthy III”), and 9,456,241 (“Bayrakeri”); U.S. Patent Publication Nos. 2002/0196268
`
`(“Wolff”), 2003/0112467 (“McCollum”), 2004/0268413 (“Reid”), 2005/0229209 (“Hildebolt”),
`
`and 2005/0240963 (“Preisman”); International Patent Application Publication Nos. WO
`
`1995/032585 (“Alten”), WO 1999/03271 (“Allison II”), WO 2003/026275 (“Chane”), WO
`
`2003/069457 (“Wilson”), WO 2004/051453 (“Steenkamp”), and WO 2004/102285 (“Hunleth”);
`
`and ETSI Electronic Programme Guide (EPG) Protocol for a TV Guide Using Electronic Data
`
`Transmission (ETSI EN 300 707 V1.2.1 (2003-04) (“ETSI EPG Protocol”).
`
`The reasons to combine include all the reasons discussed herein, including those discussed
`
`below. As another example, drill-down navigation was a well-known improvement on existing
`
`television program guides because it was a common, ordinary, and well-known way to display
`
`programming information in a hierarchical fashion, thereby enabling television subscribers to
`
`easily and intuitively navigate through an electronic program guide and “drill down” through
`
`content to locate a desired program. Indeed, as recognized by the Asserted Patents, drill-down
`
`navigation “allow[s] the viewer to navigate to progressively more focused content” and “to find
`
`specific end content of interest.” ’791 Patent at 6:35-39, 6:53-57; see also Breen, Background
`
`section (recognizing that “drill-down” hierarchical menus were prior art as of 2002). Addi