Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`------------------
`
`THE WALT DISNEY COMPANY,
`DISNEY STREAMING SERVICES LLC,
`AND HULU LLC,
`
`Petitioners,
`
`v.
`
`WAG ACQUISITION, L.L.C.,
`
`Patent Owner.
`
`------------------
`
`Case IPR2022-01227
`U.S. Patent Nos. 9,762,636
`
`------------------
`
`DECLARATION OF W. LEO HOARTY
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 1
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`Table of Contents
`QUALIFICATIONS ................................................................................................. 2
`MATERIALS REVIEWED ..................................................................................... 4
`UNDERSTANDINGS AS TO LEGAL ISSUES ..................................................... 5
`LEVEL OF SKILL IN THE ART ............................................................................ 5
`OVERVIEW OF THE ’824/’626 DISCLOSURE, THE CHALLENGED CLAIMS,
`AND THE INVALIDITY CONTENTIONS HEREIN ............................................ 7
`Background of the ’824 and ’626 Patents ............................................................. 7
`Prior PTAB History ............................................................................................ 12
`Invalidity Contentions Herein ............................................................................. 23
`OVERVIEW OF CITED REFERENCES .............................................................. 25
`Carmel ................................................................................................................. 25
`Shteyn ................................................................................................................. 29
`OBSERVATIONS CONCERNING CARMEL ..................................................... 31
`Failure of Carmel to teach or render obvious limitation h (rate limitation) “the
`data connection between the server system and each requesting user system has
`a data rate more rapid than the playback rate of the one or more media data
`elements sent via that connection.” Ex. 1001, 16:64–67. ................................... 40
`Failure of Carmel to teach limitation (j) “the one or more media data element[s]
`sent are selected without depending on the server system maintaining a record of
`the last media data element sent to the requesting user systems” ....................... 46
`Failure of Carmel to teach or render obvious limitation (k) “all of the media data
`elements that are sent by the server system to the one or more user systems are
`sent in response to the requests” ......................................................................... 52
`OBSERVATIONS ON SHTEYN AS IT ALLEGEDLY MIGHT BE
`COMBINED WITH CARMEL .......................................................................... 62
`Nature of Ground 2 ......................................................................................... 62
`Shortcomings of Shteyn as to Limitation j “the one or more media data
`element sent are selected without depending on the server system maintaining
`a record of the last media data element sent to the requesting user systems.”
`Ex. 1001, 17:4–7. ............................................................................................ 62
`Lack of Rationale to Combine ........................................................................ 70
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 2
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`APPENDIX A – CURRICULUM VITAE ............................................................. 74
`Professional Summary ................................................................ 74
`Technology Summary ................................................................. 74
`Expert Witness Summary ........................................................... 75
`Validity ................................................................................................................... 82
`My Understandings as to Claim Construction .................................................... 82
`My Understandings as to Anticipation ............................................................... 82
`My Understandings as to Obviousness ............................................................... 84
`APPENDIX C – Materials Considered .................................................................. 87
`
`APPENDIX B – Understandings as to Rules of Claim Construction and Patent
`
`
`
`
`–ii–
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 3
`
`

`

`
`
`
`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`1.
`
`2.
`
`I, W. LEO HOARTY, declare the following:
`
`I have been retained by counsel for Patent Owner, WAG Acquisition,
`
`L.L.C. (“WAG” or “Patent Owner”), to provide opinions on certain issues in
`
`connection with U.S. Patent Nos. 9,742,824 (the ’824 patent) and 9,762,636 (the
`
`“’636 patent”).1
`
`3.
`
`I am being compensated at a normal hourly rate for my time in
`
`preparing this declaration, with reimbursement for actual expenses. My
`
`compensation is not contingent on the outcome of this matter, or on the substance
`
`of my opinions.
`
`4.
`
`I have been informed that WAG is a real-party-in-interest to the
`
`Petition. I have no financial interest in WAG. Nor do I have any financial interest
`
`in any of the Petitioners (Walt Disney Company, Disney Streaming Services LLC,
`
`Hulu LLC, and Netflix Inc.).
`
`
`1 This declaration addresses both the ’824 (pre-recorded media) and ’636 (live
`media) patent, which share a common disclosure. Unless otherwise noted, (i)
`column and line citations are to the ’824 patent, and (ii) arguments herein with
`respect to the ’824 patent should be understood as also applying to the ’636 patent.
`The claims differ between the two patents to the extent shown by the redline
`comparison in Ex. 2008.
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 4
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`QUALIFICATIONS
`5.
`I have approximately 40 years of experience in the field of the ’824
`
`and ’636 patents, including multimedia computer communications systems, and
`
`more particularly delivering streaming media, such as audio and video, on the
`
`internet (which started to become a widespread practice beginning nearly 30 years
`
`ago). My education, training, experience, and other qualifications in this field are
`
`set forth at length in my CV, a copy of which is reproduced in Appendix A hereto.
`
`6.
`
`I am familiar with the technology described in the ’824 and ’636
`
`patents as of their earliest claimed priority date of September 12, 2000. I have also
`
`appeared and qualified as an expert in numerous cases involving computer and
`
`network patents and technology, including before the PTAB, as also set forth in my
`
`CV. Highlights of my relevant qualifications, as set forth in my CV, include
`
`without limitation the following:
`
`● Dotcast Inc. (Moviebeam)—I founded the company in 1999 and
`served as CTO. The company developed a settop box that received
`both over-the-air (OTA) and broadband (Internet) delivery of feature
`films stored on an internal hard drive of the settop. Movies were
`delivered in slower than real-time on 24/7 schedule (trickle filled
`cache.) Consumers selected programming from an internal user
`interface guide and purchased movies for rental under similar rules as
`Blockbuster. Service was live from 2004 to 2007 in the top 50 DMAs
`in the U.S. Service utilized HTTP, TCP, UDP, both OTA and via
`broadband.
`● ICTV—Founded by me in 1990, renamed ActiveVideo Networks
`(AVN) in 2003, I was a founder and served as CTO. The company
`
`–2–
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 5
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`developed VOD as well as virtual cable TV settop cloud-based
`systems to deliver video as well as interactive program guide over
`managed (cable TV) and unmanaged (Internet) networks. AVN is
`currently live in 24 million households of the Charter and
`TimeWarner systems. The system employed HTTP, TCP, UDP and
`custom adaptive bit rate streaming technologies.
`● Vizio—Starting in 2018 I wrote three patents for video watermarking
`and helped develop dynamic ad insertion technology in use by major
`broadcast networks under the name Project OAR. Client software runs
`on smart TVs that detect and decode video watermarks and then call a
`Content Delivery Network node to download a TV ad to substitute for
`the existing ad of the program based on zip code and demographic
`profiles, all actions occur within 100msec. The replacement TV ad is
`delivered faster than playback via an HTTP/UDP link.
`● Vizio—In 2015 I wrote a patent for audio-based automated content
`recognition (ACR). Client software runs in a smart TV and generates
`fingerprints from TV audio and sends the fingerprints to a cloud-based
`server system streaming fingerprints in real-time to content matching
`servers which identify content currently play on the respective smart
`TV. In some services, media related to currently playing programing
`is returned to smart TV for display of supplemental information.
`Employs HTTP, TCP, UDP, MPEG DASH.
`● I served on the ISO MPEG committee in the early 1990s, acquiring
`familiarity with MPEG CODECs and containers.
`● Other relevant standards committee work (in addition to ISO
`MPEG)— IEEE, SCTE (Society of Cable Television Engineers),
`ATSC.
`● Software architecture, design, coding, implementation, and testing.
`● Designing and implementing streaming media servers and clients.
`● Responsibility for managing development and advising management.
`● Detailed familiarity with network standards and Internet RFCs,
`including standards and RFCs for TCP, all versions of HTTP.
`
`–3–
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 6
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`● Wireshark and like tools, which I use regularly.
`● Awards and recognition:
`○ Vizio won a Technology Emmy in 2023 for audience
`measurement based on my audio ACR.
`○ Finalist in US Department of Agriculture AIM4C competition
`for best smart agricultural technology for system to analyze
`honeybee beehive health correlated with environmental
`conditions analyzed by an artificial intelligence system.
`● Two years of education in Electronics Engineering at Ohio State
`University
`
`Based on the foregoing, I believe that I am qualified to provide
`
`7.
`
`reliable technical opinions in the field of the ’824 and ’636 patents, and how the
`
`relevant technology was known and practiced as of the September 2000 timeframe.
`
`MATERIALS REVIEWED
`8.
`In preparing my opinions expressed herein, I have reviewed the ’824
`
`and ’636 patents and their prosecution history and the patents and printed
`
`publications listed in Appendix C hereto. I have used my accumulated experience
`
`and insights along with the above-noted references as the basis for my opinions
`
`herein. I have further formed an understanding of the level of skill possessed by a
`
`person of ordinary skill in the art (“POSITA”) in the above-identified field, as of
`
`the earliest claimed priority date of the ’824 and ’636 patents, and considered how
`
`I believe the subject matter addressed by the claims of the ’824 and ’636 patents
`
`would have been viewed by a POSITA in the field as of that time. The material I
`
`–4–
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 7
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`considered includes the declaration of Petitioners’ expert, Dr. Henry Houh (Ex.
`
`1002), and I attended Dr. Houh’s April 10, 2023 deposition herein (Ex. 2005) as
`
`well.
`
`UNDERSTANDINGS AS TO LEGAL ISSUES
`9.
`I am not giving opinions on legal issues. I have been instructed as to
`
`the governing legal principles in this case, as set forth in Appendix B hereto. I am
`
`going by what is in Appendix B to the extent the issues addressed therein bear on
`
`my analysis, or on my use of words that have specific legal meaning.
`
`10. As noted in Appendix B, “obviousness” is considered a legal
`
`conclusion, although it is based on the factual underpinnings. My testimony
`
`addresses the underlying technical facts and provides technical analysis that this
`
`Board or a reviewing court can use to address whether there should (or should not)
`
`be a legal conclusion of obviousness.
`
`11.
`
`I further understand that obviousness is determined as of the time of
`
`the claimed invention. I have been instructed to use the earliest claimed priority
`
`date of September 12, 2000 for this purpose.
`
`LEVEL OF SKILL IN THE ART
`
`12. As part of this inquiry, I have been asked to consider the level of
`
`ordinary skill in the field that someone would have had at the time the claimed
`
`–5–
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 8
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`invention was made. In deciding the level of ordinary skill, I considered the
`
`following:
`
`● the levels of education and experience of persons working in the field;
`● the types of problems encountered in the field; and
`● the sophistication of the technology.
`
`13.
`
`I largely agree with Dr. Houh’s criteria for a POSITA as set forth in
`
`
`
`par. 54 of his declaration (Ex. 1002). One clarification that I would add is that the
`
`level of skill thus specified would include some theoretical understanding as well
`
`as some familiarity with basic internet protocols and tools for working with
`
`dynamic content, and creating interactive web sites to handle such content.
`
`14.
`
`I myself qualify as at least a POSITA under the criteria stated above,
`
`by virtue of a combination of education and experience, which includes two years
`
`of university study in Electrical Engineering, plus considerably more than three
`
`years’ full-time experience implementing both server- and client-side software that
`
`included internet delivered streaming programming. This experience involved in-
`
`depth familiarity with basic internet protocols including TCP and HTTP, as well as
`
`streaming-specific protocols, and both server-side and client-side implementations
`
`for interactive content delivery, including streaming media. This was in fact the
`
`technology that I used in my day-to-day working environment for many years.
`
`–6–
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 9
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`OVERVIEW OF THE ’824/’626 DISCLOSURE, THE CHALLENGED
`CLAIMS, AND THE INVALIDITY CONTENTIONS HEREIN
`Background of the ’824 and ’626 Patents
`15. The invention concerns distribution of streaming media over the
`
`internet.
`
`16. Some networks, such as ATM (Asynchronous Transfer Mode)
`
`networks, come with built-in levels of Quality of Service. Where a sufficient QOS
`
`has been arranged, a server on an ATM network can serve a stream and rely on its
`
`complete and timely delivery.
`
`17. This is not so with the internet, which uses a switched method of
`
`routing data from one distributed node to another, and which only assures best
`
`efforts with respect to delivering individual data elements. Transport protocols
`
`such as TCP can be layered over the internet, creating end-to-end sessions that
`
`provide for retransmission of packets that failed to arrive. Such protocols can
`
`provide “reliable” delivery, but still not “timely” delivery.
`
`18. For streaming, the object in general is to stream the data at about the
`
`transmission speed at which it will need to be played back. If the rate is too slow,
`
`the player will run out of material to play and be interrupted. If the rate is too high,
`
`it could overflow whatever capacity the player has to store the data, again resulting
`
`in loss of some part of the program.
`
`–7–
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 10
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
` Prior art approaches sought, for example, to clock out the contents of
`
`19.
`
`a FIFO buffer to control transmission timing. ’824 patent, Ex. 1001, 2:2-10. The
`
`inventor of the ’824 and ’636 patents found the efforts of the server to pace its
`
`output in such a manner was not effective, resulting in considerable interruptions
`
`for “buffering,” which users found frustrating.
`
`20. Solutions to this problem, provided by the ’824 and ’636 patents,
`
`include alternative embodiments reflecting: (first embodiment, referred to as
`
`“push” or “buffering”) putting streaming data (whether from a live or prerecorded
`
`source) into a server FIFO buffer at about the playback rate, and beginning
`
`delivery from the server, via a transport mechanism, only after a predetermined
`
`amount of media had been built up in the server buffer, with the server maintaining
`
`a pointer into its buffer to maintain a record of the last element sent to each client,
`
`and (second, distinct embodiment, referred to as “pull”) dividing the input into
`
`serially identified sequential elements, and having the client request the elements
`
`by serial identifier as needed to maintain the client’s (receive) buffer at a specified
`
`level. Both embodiments rely on the ability of the connection between the server
`
`and the client to transmit media data elements faster than the playback rate, when
`
`this is called for.
`
`–8–
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 11
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`21. The pull embodiment, described at 14:48-15:25 of Ex. 1001, is the
`
`one most pertinent to the claims. The patent’s description of the pull embodiment
`
`reads as follows:
`
`In another embodiment, the server is connected to the Internet
`and provisioned as initially described. The server buffer
`manager, or the media source, provides for sequentially
`numbering the media data elements. The server buffer manager
`does not maintain a pointer into the server buffer for each user.
`Instead, the media player buffer manager in the user computer
`maintains a record of the serial number of the last data element
`that has been received.
`
`Via the use of standard data communications protocol
`techniques such as TCP, the user computer transmits a request
`to the server to send one or more data elements, specifying the
`serial numbers of the data elements. The server responds by
`sending the requested data elements, and depends upon the
`reliable transmission protocol to assure delivery. The user
`computer then continues with additional data requests for the
`duration of playing the audio/video material. In this manner, the
`user computer, not the server, maintains the record of the
`highest data element number stored in the user computer buffer.
`The media data will be transmitted to the user computer as fast
`as the data connection between the user computer and the server
`will allow. As before, the server provides a buffer manager and
`a FIFO buffer, and provides a means for receiving the
`sequentially numbered media data elements from a broadcast
`media source or a file based media source, and storing those
`data elements in the FIFO buffer. The buffer manager
`comprises means for: receiving the media data; supplying
`media data in order to the FIFO buffer; supplying the FIFO
`buffer with a predetermined number of data elements; and, once
`the FIFO buffer is full, deleting the oldest data element in the
`buffer as each new data element is received.
`
`–9–
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 12
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`Such means is arranged to maintain the pre-determined number
`of data elements in the FIFO buffer. At least one user computer
`is connected to the server via the Internet.
`
`The user computer is associated with a media player software
`incorporating a user buffer and comprises means for receiving
`and storing a predetermined number of media data elements
`which are received sequentially by the media player, playing
`the data out sequentially as audio and/or video, and deleting
`media data elements from the buffer as they are played out. As
`data is played out, the next sequential data elements are
`requested from the server in such a fashion as to approximately
`maintain the predetermined number of data elements in the
`user's buffer.
`
`22. Pull by serial identifier, as described in this embodiment, allows the
`
`client to specifically requests the elements it needs to sustain uninterrupted
`
`playback.
`
`23. The “pull” character of the embodiment allows the client to determine
`
`when and how many elements it needs to keep its buffer at the specified level,
`
`which it can readily do by, among other things, monitoring its own buffer level (as
`
`opposed to the server having to act based on an estimate of what is occurring on
`
`the (remote) client side of the connection).
`
`24. Because the pull requests are based on observed conditions, there is
`
`no set schedule for the requests, and the system must be able to service a request
`
`for an element that is made at a point closer in time to when needed than the time it
`
`will take to play back the element (e.g., the client may determine it needs elements
`
`–10–
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 13
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`totaling five seconds of playback, with only four seconds to retrieve them). Hence,
`
`the system will rely on having a connection with a data rate faster than the
`
`playback rate, in order to maintain a steady buffer.
`
`25. The timing of retrieval by repeatedly pulling sequential elements (as
`
`disclosed) is further impacted by the latency of the request/response cycle for each
`
`requested element, which adds more time for each request and response, on top of
`
`the time required to transfer the responsive element itself. A connection whose data
`
`rate is equal to the playback rate will not do, as the data rate of the connection must
`
`be faster than the playback rate, to accommodate the requests and server responses,
`
`as well as the time needed to transmit the actual elements. In practice, however,
`
`though a suitable connection rate will be specified, contracted for, etc. (and the
`
`claims so recite), the internet cannot guarantee timely delivery, and there will be
`
`recurring delays and interruptions, no matter what level of connection is specified.
`
`This problem is at the root of the motivations for the subject patent. The problem is
`
`addressed, in the push embodiment, by providing, in a server buffer, an initial
`
`buffer load comprising “an amount of data preferably adequate to bridge gaps
`
`typical of Internet and modem delays to the user.” 8:3-8. This initial tranche of
`
`buffered data is rapidly transferred to the client (more rapidly than the playback
`
`rate) (8:14-24), thereby providing the client with a buffer of the “predetermined
`
`number” of element, which, as stated, was chosen to be “adequate to bridge gaps
`
`–11–
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 14
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`typical of [internet delivery.” The disclosure also describes how to keep supplying
`
`stream data to this process (8:25-28), and use the server’s underlying transport
`
`mechanism to maintain this buffer during playback (10:43-11:3).
`
`26.
`
`In the pull embodiment (claimed here), the description of which
`
`begins at 14:48, the irregularity of the internet connection is likewise addressed by
`
`the “predetermined number” of media data elements originating on the server
`
`(15:8-9) and to established in the player buffer (15:16-20), which, as in the pull
`
`embodiment, serves to protect the playback process against gaps in internet
`
`delivery. The disclosure further describes the client request mechanism for
`
`establishing and maintaining approximately the predetermined number of data
`
`elements in the player buffer (14:38-47, 15:23-25). In each case, the predetermined
`
`amount of data buffered on the client, and kept buffered by the disclosed
`
`mechanisms, is sufficient to insulate playback from interruptions of less duration
`
`than the playback duration of the amount of media buffered. 12:19-22.
`
`Prior PTAB History
`27. The Petition seeks to make arguments about how this case should be
`
`decided based on a prior PTAB decision, the Final Written Decision after remand
`
`in IPR2016-001238 (Ex. 1007), which concerned a related patent (U.S. Patent No.
`
`8,122,141 (the “’141 patent”)).
`
`–12–
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 15
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`I am not offering opinions about the prior IPR rulings per se. I am
`
`28.
`
`only commenting to the extent of providing the context of those rulings and the
`
`present case, and to compare and contrast, technically, the patent claims at issue in
`
`the two cases, and to point out how those claims differ.
`
`29. The ’824 and ’636 patents are in a family of continuing patents based
`
`on common underlying disclosures. The family includes the ’141 patent, the claims
`
`of which were also based on the disclosed pull embodiment. However, the
`
`particular claims of the ’824 and ’636 patents, differ materially from those of the
`
`’141 patent.
`
`30.
`
`I understand that the prior IPR involving the ’141 patent (IPR2016-
`
`01238) was instituted, went to a final written decision, was reversed on appeal (on
`
`claim construction) and remanded for reconsideration in view of the appeals
`
`court’s claim construction, and ruled on again, on remand, applying the
`
`construction specified by the appeals court. Though the claims at issue in the prior
`
`IPR of the ’141 patent differed from the ’824 and ’636 patent claims challenged
`
`herein, Petitioners now rely on the same principal reference (Carmel et al., U.S.
`
`Pat. No. 6,389,473) that was cited in the earlier IPR proceedings.
`
`31. The prior IPR litigated issues concerning claim 10 of the ’141 patent.
`
`Claim 10 of the ’141 patent reads as follows:
`
`[PRIOR CLAIM FROM OLDER PATENT] 10. A server
`for distributing streaming media via a data communications
`
`–13–
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 16
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`medium such as the Internet to at least one user system of at
`least one user, the streaming media comprising a plurality of
`sequential media data elements for a digitally encoded audio
`or video program, said user system being assumed to have a
`media player for receiving and playing the streaming media on
`said user system, which is operable to obtain media data
`elements from said server by transmitting requests to said
`server to send one or more specified media data elements, said
`server comprising
`
`at least one data storage device, memory for storing machine-
`readable executable routines and for providing a working
`memory area for routines executing on the server, a central
`processing unit for executing the machine-readable executable
`routines, an operating system, at least one connection to the
`communications medium, and a communications system
`providing a set of communications protocols for
`communicating through said at least one connection;
`
`a machine-readable, executable routine containing instructions
`to cause the server to assign serial identifiers to the sequential
`media data elements comprising the program;
`
`a machine-readable, executable routine containing instructions
`to cause the server to receive requests from the user system for
`one or more media data elements specifying the identifiers of
`the requested data elements; and
`
`a machine-readable, executable routine containing instructions
`to cause the server to send media data elements to the user
`system responsive to said requests, at a rate more rapid
`than the rate at which said streaming media is played back
`by a user.
`
`32. The Patent Owner argued in the prior referenced IPR that claim 10 of
`
`the ’141 patent, in particular, the words “send media data elements to the user
`
`system responsive to said requests, at a rate more rapid than the rate at which said
`
`–14–
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 17
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`streaming media is played back by a user,” required that all requested media data
`
`elements be sent faster than the playback rate. The Board concluded that claim 10
`
`of the ’141 patent did not so require (1st Final Written Decision, Ex. 1006). For
`
`example, the limitation could be satisfied by providing an option during operation
`
`of opening multiple parallel channels that in combination could transfer data faster
`
`than the playback rate. Ex. 1006 at 18.
`
`33. Patent Owner appealed to the United States Court of Appeals for the
`
`Federal Circuit (the court to which appeals from the PTAB are taken), on issues
`
`that included the interpretation of claim 10. The Federal Circuit reversed the Board
`
`(Ex. 2001), holding that “In our view, the ‘rate’ in claim 10 [of the ’141 patent]
`
`refers to the rate at which each requested media data element is transmitted from
`
`the server to the user computer.” Ex. 2001 at 10. The Federal Circuit remanded, for
`
`the PTAB to reconsider anticipation of claim 10 by Carmel under the proper claim
`
`construction, which the Federal Circuit had determined.
`
`34. On remand, the PTAB had another opportunity to consider
`
`anticipation of claim 10 of the ’141 patent by Carmel, this time on the basis of the
`
`more narrow claim interpretation reached by the Federal Circuit. The PTAB, on
`
`remand, again found anticipation of claim 10 by Carmel. Ex. 1007 at 23
`
`(“disagree[ing]” that, even though the Federal Circuit had said “each” element
`
`must be sent in accordance with claim 10’s “rate” limitation, that this required
`
`–15–
`
`The Walt Disney Company et al. v. WAG Acquisition LLC - IPR2022-01227
`WAG Acquisition LLC
`Exhibit 2006 - Page 18
`
`

`

`Ex. 2006 for IPR2022-01228 and IPR2022-01227, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`“that every media data element be transmitted faster than the playback rate”). The
`
`Federal Circuit’s conclusion that the claim required “each” element to be sent
`
`faster than the playback rate did not, according to the Board, require that the
`
`requirement had to be met for “every” element. The Board cited Carmel’s
`
`disclosure of “generally equal to or f