UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DISH NETWORK L.L.C.,
`Petitioner
`
`v.
`
`BROADBAND ITV, INC.,
`Patent Owner
`
`
`U.S. Patent No. 10,028,026
`Issue Date: July 17, 2018
`
`Title: SYSTEM FOR ADDRESSING ON-DEMAND TV PROGRAM
`CONTENT ON TV SERVICES PLATFORM OF A DIGITAL TV
`SERVICES PROVIDER
`
`Case No. IPR2020-01267
`
`
`DECLARATION OF DR. SAMUEL H. RUSS, PH.D.
`
`
`
`
`
`
`
`
`DISH Ex. 1002, p. i
`DISH v. BBiTV
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`AT&T EXHIBIT 1002
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`

`
`
`TABLE OF CONTENTS
`
`Page
`TABLE OF CONTENTS ......................................................................................... ii
`I.
`INTRODUCTION .......................................................................................... 1
`II.
`EDUCATION BACKGROUND, PROFESSIONAL EXPERIENCE,
`AND OTHER QUALIFICATIONS ............................................................... 2
`III. ASSIGNMENT AND MATERIALS CONSIDERED .................................. 5
`IV. THE ’026 PATENT’S EFFECTIVE FILING DATE .................................... 7
`V. UNDERSTANDING OF THE LAW ........................................................... 17
`A.
`Claim Construction ............................................................................ 17
`B.
`Obviousness ........................................................................................ 18
`VI. CLAIM INTERPRETATION ...................................................................... 22
`A.
`“Web-based content management system” ........................................ 22
`B.
`“Hierarchically-arranged category information associated with
`the respective title” ............................................................................. 24
`“Internet Protocol TV (IPTV) system” .............................................. 24
`C.
`VII. OVERVIEW OF THE ’026 PATENT ......................................................... 25
`A. Disclosure of the ’026 Patent ............................................................. 25
`B.
`Prosecution History of the ’026 Patent .............................................. 34
`C.
`Claims of the ’026 Patent ................................................................... 38
`VIII. UNPATENTABILITY ANALYSIS ............................................................ 41
`A.
`Level of Skill in the Art ...................................................................... 42
`B.
`Overview of the Prior Art ................................................................... 43
`1.
`Gonder ...................................................................................... 43
`2.
`Son ............................................................................................ 55
`3.
`Kelts ......................................................................................... 60
`Ground 1: Claims 1-16 Are Obvious in view of Gonder, Son
`and/or Kelts ........................................................................................ 64
`
`C.
`
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`1.
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`Claim 1 ..................................................................................... 67
`[1.preamble] An Internet-connected digital device for
`receiving, via the Internet, video content to be
`viewed by a subscriber of a video-on-demand
`system using a hierarchically arranged electronic
`program guide, ............................................................... 68
`[1.a] 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, which uses at least one
`of a plurality of different display templates to
`which the Internet-connected digital device has
`access, to enable a subscriber using the Internet-
`connected digital device to navigate in a drill-
`down manner through titles by category
`information in order to locate a particular one of
`the titles whose associated video content is desired
`for viewing on the Internet-connected digital
`device using the same category information as was
`designated by a video content provider in metadata
`associated with the video content .................................. 79
`[1.b] wherein the templatized video-on-demand display
`has been generated in a plurality of layers,
`comprising: .................................................................... 89
`(a) a first layer comprising a background screen to
`provide at least one of a basic color, logo, or
`graphical theme to display; ............................................ 91
`(b) a second layer comprising a particular display
`template from the plurality of different display
`templates layered on the background screen,
`wherein the particular display template comprises
`one or more reserved areas that are reserved for
`displaying content provided by a different layer of
`the plurality of layers; and ............................................. 96
`
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`TABLE OF CONTENTS
`(continued)
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`Page
`
`(c) a third layer comprising reserved area content
`generated using the received video content, the
`associated metadata, and an associated plurality of
`images to be displayed in the one or more reserved
`areas in the particular display template as at least
`one of text, an image, a navigation link, and a
`button; .......................................................................... 100
`[1.c] wherein the navigating through titles in a drill-down
`manner comprises navigating from a first level of
`the hierarchical structure of the video-on-demand
`content menu to a second level of the hierarchical
`structure to locate the particular one of the titles,
`and ................................................................................ 109
`[1.d] wherein a first template of the plurality of different
`display templates is used as the particular display
`template for the templatized display for displaying
`the first level of the hierarchical structure and
`wherein a second template of the plurality of
`different display templates is used as the particular
`display template for the templatized display for
`displaying the second level of the hierarchical
`structure ....................................................................... 110
`
`DISH Ex. 1002, p. iv
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`TABLE OF CONTENTS
`(continued)
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`Page
`
`[1.e] wherein the received video content was uploaded to
`a Web-based content management system by a
`content provider device associated with the video
`content provider via the Internet in a digital video
`format, along with associated metadata including
`title information and category information, and
`along with the associated plurality of images
`designated by the video content provider, the
`associated metadata specifying a respective
`hierarchical location of a respective title of the
`video content within the electronic program guide
`to be displayed on the Internet-connected digital
`device using the respective hierarchically-arranged
`category information associated with the
`respective title .............................................................. 112
`[1.f] wherein at least one of the uploaded associated
`plurality of images designated by the video content
`provider is displayed with the associated respective
`title in the templatized video-on-demand display. ...... 116
`Claim 2 ............................................................................................. 117
`2.
`Claim 3 ............................................................................................. 118
`3.
`Claim 4 ............................................................................................. 119
`4.
`Claim 5 ............................................................................................. 122
`5.
`Claim 6 ............................................................................................. 123
`6.
`Claim 7 ............................................................................................. 126
`7.
`Claim 8 ............................................................................................. 127
`8.
`Claim 9 ............................................................................................. 129
`9.
`10. Claim 10 ........................................................................................... 130
`11. Claim 11 ........................................................................................... 133
`12. Claim 12 ........................................................................................... 137
`13. Claim 13 ........................................................................................... 138
`
`DISH Ex. 1002, p. v
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`TABLE OF CONTENTS
`(continued)
`
`Page
`14. Claim 14 ........................................................................................... 140
`15. Claim 15 ........................................................................................... 141
`16. Claim 16 ........................................................................................... 142
`D. Motivation to Combine ............................................................................... 144
`E.
`Secondary Considerations of Non-Obviousness ........................................ 156
`IX. CONCLUSION ..................................................................................................... 156
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`DISH Ex. 1002, p. vi
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`
`
`I, Samuel H. Russ, Ph.D. declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by DISH Network L.L.C. (“DISH”) as an
`
`independent expert consultant in this proceeding before the United States Patent
`
`and Trademark Office (“PTO”). I am not an employee of DISH or any affiliate or
`
`subsidiary of DISH.
`
`2.
`
`I have been asked to prepare this declaration concerning technical
`
`subject matter relevant for the above-captioned inter partes review (“IPR”) of U.S.
`
`Patent No. 10,028,026 (Ex. 1001, “the ’026 patent”), which is titled “System for
`
`Addressing On-Demand TV Program Content on TV Services Platform of a
`
`Digital TV Services Provider.” I have been asked to consider whether certain
`
`references teach or suggest the features recited in certain claims of ’026 patent.
`
`3. My opinions and the bases for my opinions are set forth below.
`
`4.
`
`I am being compensated at my ordinary and customary consulting rate
`
`($350 per hour) for my work, plus reimbursement for any reasonable expenses.
`
`My compensation is based solely on the amount of time that I devote to activity
`
`related to this case and is in no way contingent on the nature of my findings, the
`
`presentation of my findings in testimony, or the outcome of this or any other
`
`proceeding. I have no other financial interest in this proceeding.
`
`DISH Ex. 1002, p. 1
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`II. EDUCATION BACKGROUND, PROFESSIONAL EXPERIENCE,
`AND OTHER QUALIFICATIONS
`I have over 20 years of experience in the field of cable television
`
`5.
`
`specifically set-top boxes, spanning a variety of positions in academia and
`
`industry.
`
`6.
`
`A summary of my educational and professional experiences is set
`
`forth in my curriculum vitae (CV), which is attached as Ex. 1004. My CV also
`
`includes a list of my publications and the cases where I have testified over the past
`
`10 years. Some of the relevant points in my CV are described below.
`
`7.
`
`I obtained a Bachelor of Science degree in Electrical Engineering
`
`from the Georgia Institute of Technology in 1986 and a Ph.D. degree in Electrical
`
`Engineering from the Georgia Institute of Technology in 1991.
`
`8.
`
`From 2007 to the present, I have held a faculty position as an
`
`Assistant and Associate Professor in the Department of Electrical and Computer
`
`Engineering at the University of South Alabama. I have taught a number of classes
`
`including classes in embedded systems and the design of high-speed digital
`
`systems. During that time, I won awards for excellent teaching and have been
`
`actively publishing research in home networking and digital video recording
`
`(DVR) technologies. I am active in the Institute of Electrical and Electronic
`
`Engineers (IEEE) and am a Distinguished Lecturer for the IEEE Consumer
`
`DISH Ex. 1002, p. 2
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`Electronics Society. I am also a consultant, in which role I have conducted
`
`briefings for members of the financial community on technology trends in the
`
`cable, satellite, and Internet Protocol television (IPTV) sectors.
`
`9.
`
`From 2000 to 2007 and prior to my academic positions at the
`
`University of South Alabama, I was the manager in the Advanced Technologies
`
`R&D group for Scientific-Atlanta (now Cisco’s Service Provider Video
`
`Technology Group). As part of this work, I managed a cable set-top box (STB)
`
`design group that designed four STB models for the cable television industry,
`
`including the Explorer 4200 (non-DVR) and 8300 (DVR) models. Both models
`
`were produced in high volumes and sold several million units. As the design-
`
`group manager, I was responsible for managing the design and prototyping
`
`activities of the group and for interfacing with other groups (especially integrated
`
`circuit design, procurement, software developers, the factory where prototypes
`
`were built, and product managers). I also maintained the hardware and mechanical
`
`development schedule.
`
`10. While at Scientific-Atlanta, I became a staff expert in home
`
`networking, and conducted demonstrations of wireless video technology. I also
`
`managed a group that developed a new coaxial home networking system. This
`
`coaxial system won a Technology and Engineering Emmy® Award in 2013.
`
`DISH Ex. 1002, p. 3
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`Further, I was a staff expert in digital video recorder (DVR) reliability, and led a
`
`team that improved the software, hardware, repair, and manufacturing processes.
`
`11.
`
`I am a named inventor on 51 patent applications that were filed while
`
`I was at Scientific-Atlanta, many of which focus on cable technology. These
`
`applications have led to 29 issued U.S. patents and 9 as European patents.
`
`12.
`
`I have researched and written about video storage, multimedia
`
`broadcasting over networks, embedded systems, consumer electronics, STBs,
`
`access of stored video from peer devices in a local network, electronic
`
`manufacturing systems, and other topics in video and image processing. Along
`
`this same vein, I have authored or co-authored 32 journal articles and conference
`
`papers in the areas of video storage, video networking and consumer electronics.
`
`One of my conference papers on digital video recording won second place in a
`
`“Best Paper” competition at the 2011 International Conference on Consumer
`
`Electronics in Las Vegas, Nevada.
`
`13. From 1994 to 1999, I served on the faculty of Mississippi State
`
`University as an Assistant Professor in the Department of Electrical & Computer
`
`Engineering. I taught circuit board design and two-way interactive video classes,
`
`among other things.
`
`DISH Ex. 1002, p. 4
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`III. ASSIGNMENT AND MATERIALS CONSIDERED
`I have been asked to provide analysis and explain the subject matter of
`14.
`
`the ’026 patent, including the state of the art when the ’026 patent application was
`
`filed. I have also been asked to consider, analyze, and explain certain prior art to
`
`the ’026 patent including how that art relates to the challenged claims of the ’026
`
`patent and to provide my opinions regarding whether that art invalidates the
`
`claimed subject matter.
`
`15. The opinions expressed in this declaration are not exhaustive of my
`
`opinions regarding the unpatentability of the claims of the ’026 patent. Therefore,
`
`the fact that I do not address a particular point should not be understood to indicate
`
`an agreement on my part that any claim complies with the requirements of any
`
`applicable patent or other rule.
`
`16.
`
`I reserve the right to amend and supplement this declaration in light of
`
`additional evidence, arguments, or testimony presented during this IPR or related
`
`proceedings on the ’026 patent.
`
`17.
`
`In forming the opinions set forth in this declaration, I have considered
`
`and relied upon my education, knowledge of the relevant field, knowledge of
`
`scientific and engineering principles, and my experience. I have also reviewed and
`
`considered the ’026 patent (Ex. 1001), its prosecution history (Ex. 1018), and the
`
`following additional materials:
`
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`
`
`Exhibit
`1001
`1004
`1005
`1006
`1007
`1011
`1012
`1013
`1017
`1018
`1019
`1020
`1024
`1025
`1026
`
`1027
`
`1030
`
`1031
`
`1032
`
`1038
`
`1039
`
`1040
`
`Description
`U.S. Patent No. 10,028,026 (“’026 patent”)
`Curriculum Vitae for Dr. Samuel Russ
`U.S. Patent No. 8,434,118 (“Gonder”)
`U.S. Patent No. 7,159,233 (“Son”)
`U.S. Patent Application Publication No. 2001/0030667 (“Kelts”)
`CableLabs Video-On-Demand Content Specification Version 1.1
`Declaration of Christie Poland
`U.S. Patent No. 7,631,336 (“’336 patent”)
`U.S. Patent No. 7,590,997 (“’997 patent”)
`File History of U.S. Patent No. 10,028,026 (“’026 File History”)
`Claim Construction Order, Broadband iTV, Inc. v. Hawaiian Telcom,
`Inc., et al., 14-00169 ACK-RLP (D. Haw. June 24, 2015)
`U.S. Patent Application Publication No. 2002/0138619 (“Ramaley”)
`Excerpt from File History for related U.S. Patent Application No.
`12/632,745
`Family Chart for the ’997 patent
`Broadband iTV, Inc.’s Preliminary Infringement Contentions and
`Identification of Priority Dates cover pleading dated April 30, 2020
`Broadband iTV, Inc.’s Claim Chart for U.S. Patent No. 10,028,026 (Ex.
`1) dated April 30, 2020
`Comcast’s 2004 Annual Report – Excerpts
`http://www.annualreports.com/HostedData/AnnualReportArchive/c/NAS
`DAQ_CMCSA_2004.pdf
`Time Warner, Inc.’s Form 10-K for the year 2003 – Excerpts
`http://getfilings.com/o0000950144-04-002438.html
`AT&T U-Verse Wikipedia page
`https://en.wikipedia.org/wiki/AT%26T_U-verse.
`Scientific-Atlanta Launches Explorer 4200 Set-Top,
`https://www.tvtechnology.com/equipment/scientificatlanta-launches-
`explorer-4200-settop.
`Samsung gains first OpenCable Certification on two-way digital
`television, https://www.tvtechnology.com/news/samsung-gains-first-
`opencable-certification-on-twoway-digital-television
`The Razor V3 was launched 14 years ago: Here’s why it still has a place
`in our hearts, https://www.androidauthority.com/motorola-razr-v3-
`888664/
`
`DISH Ex. 1002, p. 6
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`
`
`Exhibit
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`1047
`1048
`
`
`
`Description
`CableLabs OpenCable - www.opencable website Way Back Machine
`capture,
`https://web.archive.org/web/20060326111508/http://www.opencable.co
`m/ocap/ocap.html
`Google pays the price to capture online video zeitgeist, Way Back
`Machine capture,
`https://web.archive.org/web/20070901031352/http://www.eurekastreet.c
`om.au/article.aspx?aeid=1837
`Mpeg-2 Wikipedia page, https://en.wikipedia.org/wiki/MPEG-2
`Sony’s PS3 makes U.S. debut to long lines, short supplies,
`https://usatoday30.usatoday.com/tech/gaming/2006-11-17-ps3-
`debut_x.htm
`The Federal Circuit Bar Association Model Patent Jury Instructions, last
`edited May 2020
`CableLabs Specifications Library,
`https://www.cablelabs.com/specifications
`Merriam-Webster’s definition of “effect”
`Document Details from CableLabs website re CableLabs Video-On-
`Demand Content Specification Version 1.1
`
`IV. THE ’026 PATENT’S EFFECTIVE FILING DATE
`I understand that the parties have a dispute about the effective filing
`18.
`
`date of the ’026 patent. In order to frame this discussion, I refer to a chart of the
`
`patent family that includes the ’026 patent. See Ex. 1025.
`
`19.
`
`I have reviewed infringement contentions provided by Patent Owner
`
`Broadband iTV, Inc. (“BBiTV” or “Patent Owner”) and I understand Patent Owner
`
`has taken the position that claims 1 through 9 of the ’026 patent are entitled to the
`
`priority date of July 30, 2004, the date that the original patent in the family, U.S.
`
`Patent No. 7,590,997 (the “’997 patent”) (Ex. 1017) was filed. Ex. 1026. Patent
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`Owner appears to concede that claims 11 through 16 are entitled only to the
`
`priority date of March 12, 2007, the date that the continuation-in-part application
`
`that resulted in U.S. Patent No. 7,361,336 (the “’336 patent”) (Ex. 1013) was filed.
`
`Id.1
`
`20. Based on the material recited in these claims, it appears that Patent
`
`Owner’s position is that while the original ’997 patent does not disclose digital
`
`phones, PDAs, video game consoles, and media players (like those recited in
`
`claims 11-14), it does purportedly disclose a set-top box that is an “Internet-
`
`connected digital device.” I disagree with this position.
`
`21.
`
`I have reviewed the specifications of the ’997 patent and the ’336
`
`patent. I understand that the ’336 patent’s specification is identical in substance to
`
`the specification of the ’026 patent. I understand that in order for later-filed claims
`
`
`
`1 I am aware that Patent Owner has provided amended contentions that set forth a
`range of dates as the potential date of conception. These amended contentions,
`however, still treat claims 1-9 and claims 11-16 differently, and still seem to
`acknowledge that claims 11-16 are not entitled to the earliest priority date of July
`2004, which further supports my understanding of Patent Owner’s position, as set
`forth below. It is my understanding that Patent Owner’s conception allegations are
`irrelevant because all the art discussed herein is 102(b) art based on the 2007 priority
`date.
`
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`to legally be entitled to an earlier priority date, the earlier related application filed
`
`on the proposed priority date must include a written description of all the matter
`
`recited in the later-issued claims. If the claims recite subject matter that was not
`
`disclosed until the filing of a later application, they are not entitled to the earlier
`
`priority date.
`
`22.
`
`In my opinion, each claim of the ’026 patent is entitled only to a
`
`March 12, 2007 priority date. Claim 1 of the ’026 patent, which is the only
`
`independent claim, recites “[a]n Internet-connected digital device for reviewing,
`
`via the Internet, video content to be viewed by a subscriber of a video-on-demand
`
`system…” Claim 1 also recites that the hierarchical EPG is displayed on the
`
`“Internet-connected digital device.”
`
`23. Based on my review of the ’997 patent specification, I have not seen
`
`any disclosure that describes an “Internet-connected digital device” that performs
`
`either of these functions. The only device that receives video content and EPG
`
`content in the ’997 patent is a conventional set-top box connected to a cable TV
`
`network, which is not described as being connected to the Internet and is not an
`
`Internet-connected digital device. As I explain in more detail below, the only
`
`discussions of Internet use in the ’997 patent pertain to the ability of users to
`
`upload content to a Web-based content management server, which is a separate
`
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`component of the claims. There is no description at all of any Internet-connected
`
`devices for receiving video content and EPG content.
`
`24. By contrast, the ’336 patent, filed on March 12, 2007, includes an
`
`added express disclosure—not present in the earlier 2004 filing—of “Internet-
`
`connected digital devices.” Specifically, the ’336 patent explained that “TV EPGs
`
`can be exported to [sic] via the Internet to Internet-connected digital devices,
`
`including digital phones, media players, game consoles, Video iPodsTM, PDAs,
`
`etc., and conversely, TV bookmarks selected from EPGs on the Internet can be
`
`imported back into the viewer’s ‘MyEPG’ or ‘MyVideoLibrary’ for their TV
`
`through the Web-based Content Management System.” Ex. 1013, 20:27-33.
`
`25.
`
`I will also note that during prosecution of the related U.S. Patent
`
`Application No. 12/632,745 (which is the “grandparent” of the ’026 patent and
`
`shares the same specification), Patent Owner cited the very same added sections of
`
`the later-filed ’336 patent specification that I cite above—and not portions of the
`
`earlier 2004 filing—as providing written support for a limitation requiring
`
`“access[ing] of the electronic program guide … through an Internet-connected
`
`digital device.” This was also contrasted with devices that are “connected to the
`
`VOD services platform through a TV services platform.” Ex. 1024, file history for
`
`related 12/632,745 application at 2-3.
`
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`26. Based on my review of the Patent Owner’s infringement contentions
`
`provided in the co-pending litigation, it appears that Patent Owner is taking the
`
`position that the set-top box disclosed in the ’997 patent is an “Internet-connected
`
`digital device” as claimed in the ’026 patent by virtue of the fact that it is received
`
`video content that may have been uploaded via the Internet to the claimed Web-
`
`based content management system. Specifically, when providing support for its
`
`assertion that Petitioner’s products meet the similar and related requirement that
`
`the claimed device “receive, via the Internet, video content…,” Patent Owner
`
`provided the following rationale:
`
`
`
`Ex. 1027 at 10. While the ’997 patent includes no discussion of a set-top box (or
`
`any other subscriber device) “receiving, via the Internet, video content,” I believe
`
`that Patent Owner contends this claimed material to be described in the ’997 patent
`
`by virtue of the fact that “received video content [is] uploaded to a Web-based
`
`content management system.”
`
`27.
`
`In my opinion, BBiTV’s implicit construction of “via the Internet,”
`
`and relatedly, of “Internet-connected digital device,” contradict the grammatical
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`structure of the claim and are inconsistent with how those terms would have been
`
`understood by one of ordinary skill in the art. I will address each term in turn.
`
`First, claim 1 of the ’026 patent requires an “Internet-connect digital device for
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`receiving, via the Internet, video content.” This language is focused on the receipt
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`of the video content by the claimed “Internet-connected digital device,” not on the
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`previously occurring step of uploading video content to a central server that runs a
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`video-on-demand system. When read by one of ordinary skill in the art, the
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`grammar of this claim language dictates that the transmission of video content to
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`the “Internet-connected digital device,” i.e., the transmission wherein the “Internet-
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`connected digital device” “receive[s]” the video content, must be “via the
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`Internet.” The fact that video content was uploaded to a Web-based content
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`management server at one time in the past does not indicate that its delivery to and
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`receipt by a set-top box at a later time using non-Internet means is “via the
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`Internet.”
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`28. Second, there is no discussion in the ‘997 patent specification of the
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`set top box having any Internet-based capability. For example, the ‘997 patent
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`does not discuss the set top box as having an IP address or any knowledge of
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`Internet protocols. Thus a person of ordinary skill in the art would not have
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`understood it as being able to send or receive information via the Internet.
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`DISH Ex. 1002, p. 12
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`IPR2020-01267
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`AT&T EXHIBIT 1002
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`29.
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` The Patent Owner’s apparent position is also clearly at odds with
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`how persons of ordinary skill would understand the term. For example, under
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`Patent Owner’s approach all old over-the-air 1970s era broadcast televisions
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`(which receive signals exclusively through old “rabbit ear” antennas) became
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`“Internet-connected” the moment NBC nightly news first broadcasted a clip
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`downloaded from YouTube. No one working in the field would properly describe
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`such televisions as “Internet-connected,” and a store which marketed such a
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`television as “Internet-connected” would almost certainly be sued for false
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`advertising. But what goes for broadcast televisions is equally true for
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`conventional cable-cast set-top boxes; they are not “Internet-connected” by virtue
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`of the fact that the cable head end is capable of receiving information from a server
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`that (in turn) received that information via the Internet. .
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`30. The Board should note that I am not attempting to offer an affirmative
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`definition of “Internet-connected.” Instead I am making the far more limited point
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`that, however defined, that term would not properly be understood by persons of
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`ordinary skill in the art at the relevant time to encompass the kind of conventional
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`set-top box described in the ’997 patent.
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`31.
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`I will add that my understanding appears to be consistent with the
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`understanding the Patent Owner exhibited during prosecution of a related patent.
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`During prosecution of U.S. Patent Application No. 12/632,745, discussed above,
`DISH Ex. 1002, p. 13
`DISH v. BBiTV
`IPR2020-01267
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`AT&T EXHIBIT 1002
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`Patent Owner amended application claim 33. Previously, the method claimed by
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`application claim 33 includes a step requiring “the updated electronic program
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`guide being accessible by subscribers of the VOD services platform via electronic
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`devices connected to the VOD services platform allowing the subscribers to
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`navigate and select hierarchically-arranged titles of video-on-demand program
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`content…” Ex. 1024, file history for related 12/632,745 application at 8-9. The
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`claim was amended so that this step instead required “the updated electronic
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`program guide being accessible by subscribers of the VOD services platform both
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`via electronic devices connected to the VOD services platform through a TV
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`services platform and via electronic devices connected through the Internet
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`allowing the subscribers to navigate and select hierarchically-arranged titles of
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`video-on-demand program content…” Id. (underlining in original to show content
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`added by amendment). The Patent Holder thus made a direct distinction between
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`devices that receive content “via … a TV services platform” and “via … the
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`Internet.” Further, when explaining the amendment, Patent Owner further
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`elaborated that “[t]he amended claims thus require dual access of the electronic
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`program guide, either through a TV platform connected to the VOD services
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`platform or through an Internet-connected digital device, which can connect to the
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`VOD services platform.” Id. at 2 (emphasis added). In other words, Patent Owner
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`expressly described the “Internet-connected digital device” as a device that
`DISH Ex. 1002, p. 14
`DISH v. BBiTV
`IPR2020-01267
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`AT&T EXHIBIT 1002
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`accessing the electronic program guide using the Internet, as distinct from the set-
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`top box described in the patents’ specification which accesses the electronic
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`program guide “through a TV services platform.” Id. Contrary to the position it
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`appears to be taking now, Patent Owner did not contend or suggest that a device,
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`like a set-top box, that received the EPG content “through a TV services platform”
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`was an “Internet-connect digital device” but in fact expressly distinguished
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`“Internet-connect digital devices” from such set top boxes.
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`32. As mentioned above, the ’997 patent does not disclose any “Internet-
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`connected digital device,” nor does it disclose such a device “receiving, via the
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`Internet, the video content.” In the ’997 patent, the device that viewers use to
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`browse EPGs and receive video content is Set Top Box 21. Ex. 1017, 5:11-15.
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`There is no disclosure in the ’997 patent suggesting the Set Top Box 21 is
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`connected to the Internet or receives video content via the Internet. Rather,
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`the ’997 patent repeatedly confirms that Set Top Box 21 is connected to the cable
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`headend through “Digital Cable Television System.” Id. 5:11-15