IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`TOUCHSTREAM TECHNOLOGIES, INC.,
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`GOOGLE LLC,
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`Defendant.
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`Plaintiff,
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`v.
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`Civil Case No. 6:21-cv-569-ADA
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`JURY TRIAL DEMANDED
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`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
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`Defendant Google LLC (“Google” or “Defendant”), by their attorneys, make these
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`Invalidity Contentions concerning U.S. Patent Nos. 8,356,251 (the “’251 patent”), 8,782,528 (the
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`“’528 patent”), and 8,904,289 (the “’289 patent”) (collectively, the “Asserted Patents”), to Plaintiff
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`Touchstream Technologies, Inc. (“Plaintiff” or “Touchstream”) in connection with the above-
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`referenced action, pursuant to the Court’s Scheduling Order entered by the Court (Dkt. 21) and the
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`Court’s Order Governing Proceedings – Patent Case.
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`Defendant’s Preliminary Invalidity Contentions herein reflect Defendant’s knowledge as
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`of this early date in the present action. Defendant reserves the right, to the extent permitted by the
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`Court and the applicable statutes and rules, including but not limited to the Court’s Order
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`Governing Proceedings – Patent Case, to modify and/or supplement the Preliminary Invalidity
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`Contentions in response to becoming aware of additional prior art or information regarding prior
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`art, any modification or supplementation of Touchstream’s Infringement Contentions, any claim
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`construction by the Court, or as otherwise may be appropriate.
`
`The Scheduling Order and the Order Governing Proceedings – Patent Case contemplate
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`that these Preliminary Invalidity Contentions would be prepared and served in response to
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`
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`1
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`Touchstream Tech., Inc. | Ex. 2006
`Google LLC v. Touchstream Tech., Inc., IPR2022-00795
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`

`

`Touchstream’s Infringement Contentions. Touchstream’s Infringement Contentions, however, are
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`deficient at least insofar as they fail to articulate how any single accused product, system, or
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`application (or its use) infringes each and every element of any of the asserted claims, and
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`Defendant reserves the right to amend the Preliminary Invalidity Contentions in response to any
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`permissible supplementation or amendment of Touchstream’s Infringement Contentions. Due to
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`Touchstream’s failure to provide proper and complete disclosure of its Infringement Contentions,
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`under the Order Governing Proceedings – Patent Case, Defendant reserves the right to seek leave
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`from the Court to amend these Invalidity Contentions should Touchstream be allowed by the Court
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`to amend its Infringement Contentions or its apparent claim constructions. Defendant also reserves
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`the right to amend these Invalidity Contentions in light of positions that Touchstream or its expert
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`witness may assert concerning claim construction, infringement, and/or invalidity issues.
`
`Defendant’s Exhibits attached hereto cite to particular teachings and disclosures of the
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`prior art as applied to features of the asserted claims. However, persons having ordinary skill in
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`the art generally may view an item of prior art in the context of other publications, literature,
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`products, and understanding. As such, the cited portions of prior art identified herein are
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`exemplary only. Defendant may rely on the entirety of the prior-art references listed herein,
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`including un-cited portions of those prior-art references, and on other publications and expert
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`testimony shedding light on those prior-art references, including as aids in understanding and
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`interpreting the cited portions, as providing context thereto and as additional evidence that the
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`prior art discloses a claim limitation.
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`Defendant will also rely on documents, products, testimony, and other evidence to establish
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`bases for and motivations to make combinations of certain cited references that render the asserted
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`claims obvious. Defendant may rely upon corroborating documents, source code, products,
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`2
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`testimony, and other evidence including materials obtained through further investigation and third-
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`party discovery of the prior art identified herein that describes the invalidating features identified
`
`in these Contentions; evidence of the state of the art in the relevant time period (irrespective of
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`whether such references themselves qualify as prior art to the Asserted Patents), including prior
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`art listed on the face of the Asserted Patents and/or disclosed in the specification; and/or expert
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`testimony to provide context to or aid in understanding the cited portions of the identified prior
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`art.
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`The references discussed in the Exhibits herein disclose the elements of the asserted claims
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`explicitly or inherently, and/or they may be relied upon to show the state of the art in the relevant
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`time frame. To the extent the attached claim charts cite to a reference for each element or limitation
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`of an asserted claim, Defendant contends that such reference anticipates that claim and/or, in the
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`alternative, render the claim obvious. In addition, to the extent that the attached claim charts cite
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`to additional references, Defendant contends, in the alternative, that the asserted claim is rendered
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`obvious for the reasons set forth herein and/or in the attached charts. To the extent suggested
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`obviousness combinations are included in the attached claim charts, they are provided in the
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`alternative to Defendant’s anticipation contentions and are not to be construed to suggest that any
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`reference included in the combinations is not by itself anticipatory.
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`For purposes of these Preliminary Invalidity Contentions, Defendant identifies prior-art
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`references and provides element-by-element claim charts based, in part, on the apparent claim
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`constructions advanced by Touchstream in its Infringement Contentions.
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`To the extent that these Preliminary Invalidity Contentions reflect or otherwise embody
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`particular constructions of terms or phrases in the asserted claims, Defendant is not proposing any
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`such constructions as proper constructions of those terms or phrases. Various positions put forth
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`3
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`in these Preliminary Invalidity Contentions are predicated on Touchstream’s incorrect and
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`overbroad interpretation of its claims as evidenced by its Infringement Contentions provided to
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`Defendant. These Preliminary Invalidity Contentions are not intended to, and do not necessarily,
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`reflect Defendant’s interpretation of the true and proper scope of the asserted claims. Nothing
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`stated herein shall be treated as an admission or suggestion that Defendant agrees with
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`Touchstream regarding either the scope of any of the asserted claims or the claim constructions
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`advanced in the Infringement Contentions. Defendant reserves the right to adopt claim
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`construction positions that differ from or even conflict with the positions put forth in this
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`document.
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`In those instances where Defendant asserts the asserted claims are invalid under 35 U.S.C.
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`§ 112 (e.g., no written description, not enabled, and/or indefinite), Defendant has applied the prior
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`art in accordance with its assumption that Touchstream contends such asserted claims (1) are
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`definite, (2) have written description support, and (3) are enabled, as evidenced by Touchstream’s
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`Infringement Contentions. As such, Defendant’s Preliminary Invalidity Contentions do not
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`represent its agreement or view as to the meaning, definiteness, written description support for, or
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`enablement of any asserted claim. Moreover, nothing in these Preliminary Invalidity Contentions
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`shall be treated as an admission that any of Defendant’s accused technology meets any limitations
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`of the claims. The citation of prior art herein and the accompanying Exhibits are not intended to
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`reflect Defendant’s claim construction contentions, which will be disclosed in due course in
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`accordance with the Scheduling Order, and may instead reflect Touchstream’s apparent (and
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`potentially erroneous) claim constructions based on its Infringement Contentions.
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`Pursuant to the Order Governing Proceedings – Patent Case, Defendant has provided
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`disclosures and related documents pertaining only to the asserted claims as identified by
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`
`4
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`Touchstream in its Infringement Contentions. Defendant will further supplement its document
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`production should it later find additional, responsive documents, such as documents produced by
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`third-parties. Much of the art identified below reflects common knowledge and the state of the art
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`prior to the filing date of the Asserted Patents.
`
`Each of the asserted claims of the Asserted Patents are anticipated by and/or obvious in
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`view of one or more items of prior art identified herein, alone or in combination. Specific examples
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`of this anticipation and obviousness, along with the motivation to combine the prior art, are set
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`forth in Section IV.
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`In addition to the prior art identified below and the accompanying invalidity claim charts,
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`Defendant also incorporates by reference as if set forth herein any additional invalidity
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`contentions, identified prior art, or invalidity claim charts or arguments already disclosed or that
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`will be disclosed at any later date in the present, parallel, or related litigation, foreign or domestic,
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`by Defendant or any other individual or entity to any other litigation or U.S. Patent & Trademark
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`Office (“USPTO”) proceeding involving the asserted patents or any related patent, including,
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`without limitation, any invalidity contentions, applications, or petitions drafted, served, or filed (or
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`that will be drafted, served, or filed) by any party, including those in any co-pending current, past
`
`or future litigations (including, for example, by Vizbee, Inc.). For example, Defendant further
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`relies on and incorporates all prior art references cited in and/or on the cover of the Asserted
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`Patents and their respective prosecution histories, including for supporting the obviousness of any
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`asserted claim. Defendant further relies on and incorporates by reference, as if originally set forth
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`herein, all invalidity positions, and all associated prior art and claim charts, disclosed to
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`Touchstream by present or former defendants in any lawsuits or other proceedings or by potential
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`or actual licensees to any of the asserted claims. Moreover, Defendant incorporates by reference
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`
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`5
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`any prior art identified and/or invalidity claim charts set forth in any petition, application or
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`submission to the USPTO involving and/or challenging the validity of the Asserted Patents,
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`including, but not limited, in any inter partes review petitions and/or proceedings involving the
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`Asserted Patents. Defendant hereby discloses and identifies as if originally set forth herein, all
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`prior art references listed and/or asserted in the above as invalidating prior art against each of the
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`asserted claims of the Asserted Patents.
`
`I.
`
`PRIORITY
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`In its Infringement Contentions, Touchstream contends that each of the asserted claims of
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`the Asserted Patents are entitled to a priority date of April 21, 2011. To the extent that
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`Touchstream is permitted to modify, and in fact modifies in any manner, the alleged date to which
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`the Asserted Patents are entitled to priority, Defendant reserves the right to respond and challenge
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`that date to the extent required by law to satisfy its burden. Without admitting the priority of that
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`early priority date, Defendant uses April 21, 2011 as the priority date for the purposes of these
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`Preliminary Invalidity Contentions.
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`II.
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`STATE OF THE ART
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`The references discussed in the Exhibits herein may be relied upon to show the state of the
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`art in the relevant time frame. This prior art identification is only exemplary and is not in any way
`
`intended to limit the scope of what one of ordinary skill in the art would have understood at the
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`relevant time period of the alleged invention or the breadth of the state of the art to which the
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`alleged invention of the Asserted Patents relate. Defendant reserves the right to rely upon
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`additional prior art, information, testimony, and/or knowledge to demonstrate what one of ordinary
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`skill in the art would have understood prior to the date of the alleged invention of the asserted
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`claims of the Asserted Patents.
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`
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`6
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`

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`III.
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`IDENTIFICATION OF PRIOR ART
`
`In addition to the prior art identified in the prosecution history of the Asserted Patents,
`
`Defendant intend to rely upon the prior art identified below in support of these Invalidity
`
`Contentions pursuant to the Court’s Order Governing Proceedings – Patent Case. In these
`
`Contentions, Defendant provides the full identity of each item of prior art, including: (1) each
`
`patent by its patent number, country of origin, and date of issue; (2) each non-patent publication
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`by its title, date of publication, and, where feasible, author and publisher; (3) 35 U.S.C. § 102(b)
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`prior art by the item offered for sale or publicly used or known, the date the offer or use took place
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`or the information became known, and the identity of the person or entity which made the use or
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`which made and received the offer, or the person or entity which made the information known or
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`to whom it was made known; (4) 35 U.S.C. § 102(f) prior art by the name of the person(s) from
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`whom and the circumstances under which the invention or any part of it was derived; and (5) 35
`
`U.S.C. § 102(g) prior art by the identities of the person(s) or entities involved in and the
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`circumstances surrounding the making of the invention before the patent applicant(s), based on
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`currently available information.
`
`Defendant’s identification of patents and publications as prior art herein and in the attached
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`claim charts under 35 U.S.C. §§ 102(a), (b), (e), and/or (g) and § 103 includes the publications
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`themselves as well as the use of the products, devices, and systems described therein. Although
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`Defendant’s investigation continue, information available to date indicates that such products,
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`devices, and systems were known or used in the country before the alleged invention of the claimed
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`subject matter of the asserted claims, and/or were invented by another who did not abandon,
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`suppress, or conceal, before the alleged invention of the claimed subject matter of the asserted
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`claim. Upon information and belief, these prior art products, devices, and systems and their
`
`
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`7
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`associated references anticipate and/or render obvious each of the asserted claims. Defendant
`
`further intends to rely on inventor admissions concerning the scope of the prior art relevant to the
`
`Asserted Patents found in, inter alia, the prosecution history of the Asserted Patents and any related
`
`patents, patent applications, and/or re-examinations; any deposition testimony of the named
`
`inventor on the Asserted Patents; and the papers filed and any evidence submitted by Touchstream
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`in conjunction with this litigation.
`
`Defendant reserves the right to rely upon additional evidence of invalidity obtained from
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`third-parties in the future. In addition, Defendant reserves the right to assert invalidity under 35
`
`U.S.C. § 102(c) or (d) to the extent that further investigation and discovery yield information
`
`forming the basis for such claims.
`
`A. Prior Art Patents
`
`Defendant contends the following prior art patents anticipate or render obvious one or more
`
`asserted claims of the Asserted Patents under 35 U.S.C. §§ 102(a), (b), and/or (e) or 35 U.S.C. §
`
`103:
`
`Ex.
`A
`
`B
`
`C
`
`D
`
`E
`
`F
`
`G
`
`H
`
`
`
`Patent No.
`Country of Origin
`2009/0298535 U.S.
`
`Issue/Publication Date
`December 3, 2009
`
`Short Title
`Klein
`
`8,060,631
`
`U.S.
`
`2009/0019492 U.S.
`
`2009/0270085 U.S.
`
`8,789,086
`
`7,551,918
`
`8,238,887
`
`8,014,768
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`June 11, 2009
`
`January 15, 2009
`
`October 29, 2009
`
`July 22, 2014
`
`June 23, 2009
`
`August 7, 2012
`
`September 6, 2011
`
`8
`
`Collart
`
`Grasset
`
`Jones
`
`McCoy
`
`Bowen
`
`Filipov
`
`Ackley
`
`

`

`I
`
`J
`
`J
`
`K
`
`L
`
`M
`
`N
`
`K
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`
`
`2011/0138429 U.S.
`
`2010/0241699 U.S.
`
`June 9, 2011
`
`Schade
`
`September 23, 2010
`
`Muthukumara-
`
`samy
`
`9,680,886
`
`8,544,046
`
`U.S.
`
`U.S.
`
`May 22, 2014
`
`Arunachalam
`
`September 24, 2013
`
`Gran
`
`WO
`
`WIPO/PCT
`
`June 30, 2011
`
`Al-Shaykh
`
`2011/078879
`
`9,490,998
`
`U.S.
`
`2012/0144416 U.S.
`
`November 8, 2016
`
`June 7, 2012
`
`Danciu
`
`Wetzer
`
`WO
`
`WIPO/PCT
`
`December 29, 2010
`
`Al-Shaykh 2
`
`2010/151284
`
`8,644,757
`
`7,383,229
`
`8,739,294
`
`U.S.
`
`U.S.
`
`U.S.
`
`2006/0085823 U.S.
`
`8,614,625
`
`U.S.
`
`2009/0320065 U.S.
`
`U.S.
`
`U.S.
`
`8,918,812
`
`61/450,472
`
`(9,258,609)
`
`2012/0151509 U.S.
`
`7,136,709
`
`U.S.
`
`February 4, 2014
`
`June 3, 2008
`
`May 27, 2014
`
`April 20, 2006
`
`December 24, 2013
`
`December 24, 2009
`
`Curcio
`
`Jacoby
`
`Risan
`
`Bell
`
`Alsina
`
`Sloo
`
`December 23, 2014
`
`Hayward
`
`February 9, 2016
`
`Odryna
`
`June 14, 2012
`
`McCarthy
`
`November 14, 2006
`
`Arling
`
`9
`
`

`

`X
`
`WO
`
`WIPO/PCT
`
`June 12, 2008
`
`Chapweske
`
`2008/070050
`
`
`
`B. Prior Art Publications
`
`Defendant contends the following publications anticipate or render obvious one or more
`
`asserted claims of the Asserted Patents under 35 U.S.C. §§ 102(a) and/or (b) or 35 U.S.C. § 103:
`
` Ex. Title
`Author/Publisher
`
`See patent publications above
`
`
`C. Prior Art Systems
`
`Publication Date Short Title
`
`Defendant contends the following prior art systems anticipate or render obvious one or
`
`more asserted claims of the Asserted Patents under 35 U.S.C. §§ 102(a), (b), and/or (g), or 35
`
`U.S.C. §103:
`
`System
`YouTube Remote
`and Google TV
`TwonkyMedia
`and/or
`TwonkyManager
`and related products
`and systems
`Zelfy Peel
`
`
`
`Relevant Dates Persons/Entities Involved
`2010-2011
`Google
`
`Short Title
`YouTube Remote
`and Google TV
`Twonky Media, PacketVideo Twonky
`
`2009-2011
`
`2010-2011
`
`Zelfy, Peel Technologies
`
`Zelfy Peel
`
`D. Prior Art under 35 U.S.C. § 102(f)
`
`Defendant will assert that the Asserted Patents are invalid under 35 U.S.C. § 102(f) in the
`
`event Defendant obtains evidence that the named inventor of the Asserted Patents did not alone
`
`invent the subject matter claimed in the Asserted Patents. Should Defendant obtain such evidence,
`
`
`
`10
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`Defendant will provide the name of the person(s) from whom and the circumstances under which
`
`the invention or any part of it was derived.
`
`E. Prior Art under 35 U.S.C. § 102(e) and 35 U.S.C. § 102(g)
`
`At present, Touchstream has neither adequately alleged nor provided sufficient evidence
`
`of a conception date for the Asserted Patents earlier than the claimed priority date on the face of
`
`the Asserted Patents. Should the Court permit Touchstream to provide evidence of an earlier
`
`conception date, Defendant reserves the right to assert that any of the § 102(a) prior art is § 102(e)
`
`and/or § 102(g) prior art.
`
`Defendant contends that each of the disclosures in Sections III.A. (list of prior art patents),
`
`III.B. (list of prior art publications), and III.C. (list of prior art systems) constitute prior inventions
`
`to the asserted claims as detailed above.
`
`IV.
`
`INVALIDITY UNDER 35 U.S.C. §§ 102 AND 103
`
`In addition to and including the prior art disclosed in the Exhibits incorporated by reference
`
`herein, each of the asserted claims of the Asserted Patents are anticipated by and/or obvious in
`
`view of one or more of items of prior art identified above in Sections III.A. (list of prior art patents),
`
`III.B. (list of prior art publications), and/or III.C. (list of prior art systems), alone or in combination.
`
`Furthermore, along with the references disclosed in these contentions, the exhibits thereto,
`
`the Asserted Patents and their prosecution history, and the common sense and understanding of
`
`those in the relevant field at the time of the alleged invention, invalidity may be demonstrated by
`
`the live testimony of relevant witnesses, who will be identified in accordance with the case
`
`schedule and as discovery in this matter opens and proceeds. Such witnesses may be used, among
`
`other purposes, to discuss issues of prior art systems, prior art references, and the knowledge of
`
`one of ordinary skill in the art at the time of the alleged invention. Although information may be
`
`
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`11
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`identified through discovery as this case proceeds, such witnesses may include at least the
`
`following individuals: YouTube Remote and Google TV – Daniel Danciu, Yaniv Bernstein,
`
`Ramona Bobohalma, Oliver Heckmann, Jasmine Langridge, Alin Sinpalean, and other current or
`
`former employees or representatives of Defendant; Twonky, TwonkyManager, and related
`
`products and systems – Christian Gran, Andreas Zisowsky, Ralph Neff, Magdalena Leuca
`
`Espelien, Osama Al-Shaykh, Dann Wilkens, and other former employees or representatives of
`
`PacketVideo and/or TwonkyMedia; and Peel – Thirumalai Arunachalam, Balamurugan Krishnan,
`
`Hong Wu, Leslie Andrew Prock, Gregory Charles Lindley, Sivasubramanian Muthukumarasamy,
`
`Christopher Steven Lock, Avinash Shetty, and other current or former employees or
`
`representatives of Peel and/or Zelfy. For other prior art systems identified by Defendant herein,
`
`Defendant are serving or will serve subpoenas for documents and testimony related to products,
`
`patents and/or publications, and specifically reserves the right to supplement its Contentions
`
`following additional discovery received. Defendant further intends to seek discovery regarding
`
`the above-mentioned prior art systems, in addition to other systems, including, but not limited to,
`
`for instance, AppleTV, AirTunes, Plex, and MacMini from Apple and the Roku Streaming Stick
`
`from Roku, and other systems that may be related to the Asserted Patents and printed publication
`
`references disclosed in these contentions.
`
`One or more combinations of the prior art references identified above pursuant to the
`
`Court’s Order Governing Proceedings – Patent Case would have been obvious because these
`
`references would have been combined using: known methods to yield predictable results; known
`
`techniques in the same way; a simple substitution of one known, equivalent element for another to
`
`obtain predictable results; and/or a teaching, suggestion, or motivation in the prior art generally.
`
`In addition, it would have been obvious to try combining the prior-art references identified above
`
`
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`12
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`pursuant to the Court’s Order Governing Proceedings – Patent Case because there were only a
`
`finite number of predictable solutions and/or because known work in one field of endeavor
`
`prompted variations based on predictable design incentives and/or market forces either in the same
`
`field or a different one. In addition, the combination of the prior-art references identified above
`
`pursuant to the Court’s Order Governing Proceedings – Patent Case would have been obvious
`
`because the combination represents the known potential options with a reasonable expectation of
`
`success.
`
`Additional evidence that there would have been a motivation to combine the prior-art
`
`references identified above pursuant to the Court’s Order Governing Proceedings – Patent Case
`
`includes the interrelated teachings of multiple prior art references; the effects of the demands
`
`known to the design community or present in the marketplace; the complimentary and overlapping
`
`subject matter of the prior-art references; the existence of a known problem for which there was
`
`an obvious solution encompassed by the asserted claims; the existence of a known need or problem
`
`in the field of the endeavor at the time of the invention(s); and the background knowledge that
`
`would have been possessed by a person having ordinary skill in the art.
`
`Thus, the motivation to combine the teachings of the prior art references disclosed herein
`
`is found in the references themselves and: (1) the nature of the problem being solved, (2) the
`
`express, implied, and inherent teachings of the prior art, (3) the knowledge of persons of ordinary
`
`skill in the art, (4) the fact that the prior art is generally directed towards control of media on a
`
`display or content presentation device, including through use of a server to transport media control
`
`information, (5) the fact that the prior art generally is employed on similar mobile devices,
`
`televisions, or other audio or display devices and utilize standard components, including data
`
`receivers and transmitters, processors, displays, speakers, servers, databases, and other
`
`
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`13
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`components; (6) the fact that many of the prior-art references refer to other references; and (7) the
`
`predictable results obtained in combining the different elements of the prior art. Additionally, one
`
`would be motivated to address at least the alleged problems or achieve the purported objectives
`
`identified in the description of the Asserted Patents.
`
`Any reference or combination of references that anticipates or makes obvious an asserted
`
`independent claim also makes obvious any asserted claim dependent on that independent claim
`
`because every element of each dependent claim was known by a person of ordinary skill at the
`
`time of the alleged invention, and it would have been obvious to combine those known elements
`
`with the independent claims at least as a matter of common sense and routine innovation.
`
`Accordingly, Defendant contends that each asserted claim would have been obvious not only by
`
`the combinations explicitly defined in these contentions, but also by any combination of references
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`that renders obvious an asserted claim.
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`Numerous prior-art references, including those identified herein and in the claim charts
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`reflect common knowledge and the state of the prior art prior to the priority date of the Asserted
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`Patents. As it would be unduly burdensome to create detailed claim charts for such invalidating
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`combinations, Defendant has provided illustrative examples of such invalidating combinations
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`below and in the charts attached hereto. For at least the reasons described above and below in the
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`examples provided as well as in the attached claim charts, it would have been obvious to one of
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`ordinary skill in the art to combine any of a number of prior art references, including any
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`combination of those identified in the attached claim charts, to meet the limitations of the asserted
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`claims. As such, Defendant’s inclusion of exemplary combinations does not preclude Defendant
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`from identifying other invalidating combinations as appropriate.
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`Defendant has attached Exhibits containing claim charts identifying examples of prior art
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`that anticipate and/or render obvious each asserted claim of the Asserted Patents. Specifically, to
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`the extent the attached claim charts cite to a reference for each element or limitation of an asserted
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`claim, Defendant contends that such reference anticipates that claim. In addition, Defendant
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`contends, in the alternative, that each asserted claim is rendered obvious for the reasons set forth
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`in this document and the attached charts.
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`Invalidity Charts
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`Exhibit A – Klein
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`Exhibit B – Collart
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`Exhibit C – Grasset
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`Exhibit D – Jones
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`Exhibit E – McCoy
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`Exhibit F – Bowen
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`Exhibit G – Filipov
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`Exhibit H – Ackley
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`Exhibit I – Schade
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`Exhibit J – Zelfy Peel
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`Exhibit K – Twonky
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`Exhibit L – Al-Shaykh
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`Exhibit M – YouTube Remote and Google TV
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`Exhibit N - Wetzer
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`Exhibit X – Secondary References
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`To the extent that Touchstream contends that any one of the primary references does not
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`disclose one or more elements of the asserted claims, it would have been obvious to combine the
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`primary references in the Invalidity Charts with one or more references, including, for example,
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`Klein, Collart, Grasset, Jones, McCoy, Bowen, Filipov, Ackley, Schade, Muthukumarasamy,
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`Gran, Al-Shaykh, Danciu, Wetzer, YouTube Remote and Google TV, Twonky, Zelfy Peel as
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`discussed more fully below.
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`As detailed in the Invalidity Charts and in this document, the asserted claims of the
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`Asserted Patents are obvious in view of the state of the prior art alone and/or in combination with
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`the references described in the above-referenced Exhibits as well as the references and disclosures
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`described below. The alleged “inventions” claimed in the asserted claims of the Asserted Patents
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`would have been obvious because the prior art, common knowledge, and the nature of the
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`problems, viewed through the eyes of a person ordinarily skilled in the art, suggested the claimed
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`elements. A person of ordinary skill in the relevant fields would have possessed knowledge and
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`skills rendering him or her capable of combining the prior art references with knowledge in the
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`field and common sense. Moreover, the asserted claims represent well-known combinations of
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`familiar and pre-existing elements, yielding only predictable results.
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`For example, to the extent that any reference does not explicitly describe or teach assigning,
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`by a server system, a synchronization code to the display device, receiving at the server a message
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`that includes the synchronization and/or information associated with an identification code, and/or
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`storing a record establishing an association between the personal computing device and the display
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`or content presentation device based on the synchronization or identification code, such usage of
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`a synchronization or identification code would have been obvious to a person of ordinary skill in
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`the art in view of the teachings of the reference and her background knowledge and ordinary
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`creativity. In addition, the use of synchronization and/or identification codes, including to
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`facilitate synchronization between devices (including personal computing devices and display or
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`presentation devices) was well-known in the art, as evidenced by its repeated use for this purpose
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`in the field. Indeed, such a combination would have yielded the predictable result of simplification
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`of the synchronization process, minimize network bandwidth (as transmission of a code would
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`require minimal bandwidth), and to ensure the consistency of data between distributed devices.
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`Moreover, a person of ordinary skill would understand the benefits of permitting the server more
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`control over the transmission of synchronized data, which would in turn allow the server to debug
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`errors in the system and create improvements in the synchronization process. Exemplar references
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`that disclose such features include, but are not limited to: Klein, Collart, McCoy, Filipov,
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`Muthukumarasamy, Gran, Al-Shaykh, Danciu, YouTube Remote and Google TV, Twonky, Zelfy
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`Peel, Curcio, McCarthy, Odryna, Arling, Wetzer.
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`As another example, to the extent that any reference does not explicitly describe or teach
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`specifying a file, including a video file, to be acted upon, such an identification over a networked
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`connection would have been obvious to a person of ordinary skill in the art in view of the teachings
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`of the reference and her background knowledge and ordinary creativity. In addition, the
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`identification of the file, including as intended for playback on a display or presentation device
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`was well-known in the art, as evidenced by its repeated use for this purpose in the field. Indeed,
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`such a combination would have yielded the predictable result of allowing display or other
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`presentation devices to display or otherwise present a particular media file on the intended
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`presented device. Moreover, a person of ordinary skill would understand the benefits of specifying
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`the particular file along with the command to ensure more accurate control for user of the personal
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`computing device, as the user can specify the file, rather than the server just assuming that a
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`particular file (e.g., the file currently being played, files being queued for playing later, etc.) needs
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`to be controlled. Thus, such combination would ensure operational accuracy of the server as well
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`as the overall system. Exemplar references that disclose such features include, but are not limited
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`to: Klein, Collart, Jones, McCoy, Bowen, Filipov, Schade, Muthukumarasamy, Gran, Al-Shaykh,
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`Danciu, YouTube Remote and Google TV, Twonky, Zelfy Peel, Risan, Bell, Alsina, Sloo, Odryna,
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`Wetzer, McCarthy, Arling, Chapweske.
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`As another example, to the extent that any reference does not explicitly describe or teach
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`the identification of a particular media player for playing content, such identification received
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`and/or used b