`Filed on behalf of The Walt Disney Company, Disney Streaming Services LLC,
`and Hulu LLC
`By: Larissa S. Bifano, Reg. No. 59,051
`Thomas J. Fuller, Reg. No. 74,439
`
`DLA Piper LLP (US)
`33 Arch Street, 26th Floor
`Boston, Massachusetts 02110-1447
`Email: larissa.bifano@us.dlapiper.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`The Walt Disney Company, Disney Streaming Services LLC, and Hulu LLC
`
`Petitioner
`
`v.
`
`WAG Acquisition LLC,
`
`Patent Owner
`
`IPR2022-01227
`
`SUPPLEMENTAL DECLARATION OF HENRY HOUH, PH.D.
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER
`RESPONSE
`
`IPR2022-01227
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`IPR2022-01227
`U.S. Patent No. 9,762,636
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`MATERIALS CONSIDERED ....................................................................... 1
`
`SUMMARY OF OPINIONS .......................................................................... 3
`
`III.
`
`LEVEL OF ORDINARY SKILL IN THE ART ............................................ 4
`
`IV. CLAIM CONSTRUCTION ........................................................................... 6
`
`A.
`
`Program ................................................................................................ 6
`
`V.
`
`CARMEL RENDERS OBVIOUS CLAIMS 1-12 OF THE ’636
`PATENT ......................................................................................................... 8
`
`A.
`
`Carmel Inherently Teaches Claim Limitations [1.k]/[5.k]/[9.k]:
`the Media Data Elements are Sent by the Server in Response to
`Requests ................................................................................................ 8
`
`VI. CONCLUSION ............................................................................................. 14
`
`i
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`IPR2022-01227
`U.S. Patent No. 9,762,636
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`I, Henry Houh, Ph.D., declare as follows:
`
`1.
`
`2.
`
`My name is Henry Houh.
`
`I have previously provided a July 13, 2022, declaration in support of
`
`Petitioner’s Petition for Inter Partes review of U.S. Patent No. 9,762,636 (“the
`
`’636 Patent”) in the instant proceeding (“First Declaration”). See EX1002.
`
`3.
`
`I have been asked to provide my opinions in response to certain
`
`arguments by Patent Owner (“PO”) in its Patent Owner Response (“POR”) (Paper
`
`15) and certain opinions in the May 1, 2023, Declaration of Mr. W. Leo Hoarty
`
`(EX2006) regarding whether claims 1-12 (“Challenged Claims”) of the ’636 Patent
`
`are invalid as disclosed to a person having ordinary skill in the art (“POSITA”) at
`
`the time of the alleged invention.
`
`4.
`
`Specifically, in this supplemental declaration, I outline why (1) the
`
`preambles do not require requesting and transmitting an “entire program” and (2)
`
`Carmel inherently teaches claim limitations [1.k]/[5.k]/[9.k] to respond to Mr.
`
`Hoarty and PO.
`
`I.
`
`MATERIALS CONSIDERED
`
`5.
`
`In forming the opinions expressed in this Declaration, I have relied
`
`upon my education and experience in the relevant field of the art and have
`
`1
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`
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`considered the viewpoint of a person having ordinary skill in the relevant art as of
`
`the claimed priority date of the ’636 Patent.
`
`6.
`
`In addition to the materials I considered when forming my First
`
`Declaration, I also reviewed the POR and Mr. Hoarty’s declaration (EX2006), and
`
`considered the additional materials listed below, including Mr. Hoarty’s deposition
`
`(EX1029) and PO’s exhibits (EX2001-EX2008) filed with the POR:
`
`Exhibit
`
`Description
`
`1029
`
`2001
`
`July 6, 2023, Remote Deposition of W. Leo Hoarty, IPR2022-
`01227-28
`
`WAG Acquisition v. WebPower, Inc., 781 App’x 1007 (Fed. Cir.
`2019)
`
`2002
`
`IETF RFC 1945
`
`2003
`
`Declaration of Henry Houh, Ph.D. Regarding Claims 1-17 of
`U.S. Patent No. 9,729,594, IPR2022-01346, Exhibit 1002
`
`2004
`
`IETF RFC 2068
`
`2005
`
`April 10, 2023, Remote Deposition of Dr. Henry Houh, IPR
`2022-01227-28
`
`2006
`
`May 1, 2023, Declaration of W. Leo Hoarty
`
`2007
`
`IETF RFC 1738
`
`2008
`
`Redline comparison of claims of ’824 and ’636 patents
`
`2
`
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`II.
`
`SUMMARY OF OPINIONS
`
`7.
`
`As I explain in my First Declaration, it is my opinion that the
`
`Challenged Claims (claims 1-12) of the ’636 Patent are rendered obvious by U.S.
`
`Patent No. 6,389,473 to Carmel et al. (“Carmel”) (Ground I), and also by Carmel
`
`in combination with U.S. Patent No. 7,529,806 to Shteyn (“Shteyn”) (Ground II).
`
`Program
`
`8.
`
`Mr. Hoarty opines that the preambles of the claims require the claims
`
`are limited to the “entire program.” EX2006, ¶38. I disagree, for reasons detailed
`
`in Section § IV.A. Further, Mr. Hoarty, in his deposition, contradicts PO’s
`
`arguments, testifying that the claims are not limited to the “entire program” but
`
`rather, a system “capable of delivering a program to the extent you wish to
`
`consume it.” See EX1029 (“Hoarty Tr.”) at 31:13-22 (emphasis added).
`
`Carmel Inherency
`
`9.
`
`Mr. Hoarty further opines that the Petition fails to show that claim
`
`limitations [1.k]/[5.k]/[9.k] is disclosed inherently by Carmel. EX2006, ¶¶121-
`
`142.
`
`10.
`
`Particularly, PO and Mr. Hoarty assert that Carmel’s one citation of
`
`HTTP 1.1 indicates that Carmel would use from HTTP 1.1 “‘chunked’” and “range
`
`3
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`retrieval request” to send a plurality of elements in response to a single user
`
`request. POR 48 (providing two instances of an “example process”); EX2006
`
`¶¶88, 91-92. These are referred to as “example processes” in the POR and
`
`“example embodiments” in Mr. Hoarty’s Declaration.
`
`11.
`
` I disagree because Carmel does not teach replacing its express
`
`disclosure of using an index file to request each slice with PO’s and Mr. Hoarty’s
`
`two created processes/embodiments. Nevertheless, Patent Owner and Mr.
`
`Hoarty’s two processes/embodiments are technically inaccurate. HTTP 1.1 does
`
`not function as Mr. Hoarty describes because in Carmel “[p]referably, each
`
`segment or slice is contained in a separate, respective file” where the client
`
`requests and receives each slice file (e.g., 42, 44, 46, etc.). EX1004, 2:22-23
`
`(emphasis added). Thus, it is my opinion that PO and Mr. Hoarty’s two
`
`processes/embodiments further show that Carmel inherently teaches claim
`
`limitations [1.k]/[5.k]/[9.k], for reasons detailed in Sections § V.A.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`12.
`
`In the First Declaration, I stated that a POSITA “would have had a
`
`B.S. degree in computer science or electrical engineering (or comparable degree)
`
`and two years of experience in networking or streaming media, or a M.S. in
`
`4
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`computer science of electrical engineering (or comparable degree). Additional
`
`education in networking or streaming media can remedy a deficiency in
`
`experience, and vice versa.” EX1002, ¶54.
`
`13. Mr. Hoarty “largely agrees” with my stated criteria for a POSITA.
`
`EX2006, ¶13. However, the PO and Mr. Hoarty contend that the POSITA should
`
`further have “some theoretical understanding . . with basic internet protocols and
`
`tools for working with dynamic content, and creating interactive web sites . . . .”
`
`POR 9; EX2006, ¶13.
`
`14.
`
`PO does not explain with evidence from the ’636 Patent why this
`
`addition is necessary, including the POSITA “working with dynamic content, and
`
`creating interactive web sites.” Id.
`
`15.
`
`I also do not believe this addition is necessary to understand the ’636
`
`Patent claims in view of, for instance, Carmel’s disclosure.
`
`16. Regardless, I am a POSITA under either definition because of my
`
`PhD degree and significant research and work experience since the early 1990s in
`
`streaming media, and networking protocols include those used in the world wide
`
`web including HTTP. EX1002, ¶¶6-20.
`
`5
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`IV. CLAIM CONSTRUCTION
`
`17.
`
`In my First Declaration, I stated that I have applied the ordinary and
`
`customary meaning of the claims, when read in light of the ’636 Patent and the
`
`prosecution history of the ’636 Patent, as understood by a POSITA at the time of
`
`the invention. EX1002, ¶47.
`
`18.
`
`I believe that no claim construction is necessary for this proceeding
`
`and the plain and ordinary meaning should apply.
`
`19.
`
`I understand that PO contends that certain terms should be construed.
`
`However, the constructions proposed by PO are improper, as I describe below.
`
`A.
`
`Program
`
`20.
`
`I have reviewed the POR submitted by PO, and I understand that PO
`
`argues that preambles of the claims are for “distributing an entire program over the
`
`internet, and not merely some portion of a program.” POR 11.
`
`21.
`
`I do not believe PO’s claim construction is correct for a couple of
`
`reasons.
`
`22.
`
`First, claim 1 of the ’636 Patent only recites “program” not an “entire
`
`program” and claim 1 of the ’636 Patent does not recite the word “entire.”
`
`6
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`23.
`
`Second, the claimed steps do not support PO’s argument. Claim 1
`
`recites requesting and sending “one or more of the media data elements,” not the
`
`entire program. EX1001, claim 1 (“receiving requests . . . for one or more of the
`
`media data elements” and “sending, by the server system, the one or more media
`
`data elements”); POR, 12-13, 18 (“regardless of whether what is being sent is one
`
`element or more than one element”).
`
`24. Claim 1 further recites, “all of the media data elements that are sent . .
`
`.,” but this “are sent” refers back to the previously sent “one or more media data
`
`elements” in the claim limitation, “responsive to the requests, sending, by the
`
`server system, the one or more media data elements . . . ,” not that the entire
`
`program must be sent. EX1001, claim 1
`
`25. During his deposition, Mr. Hoarty stated that the entire program
`
`means the system must be “capable of delivering a program to the extent you
`
`wish to consume it” which according to Mr. Hoarty’s definition would means that
`
`the construction of “program” depends on each user’s consumption at a point in
`
`time, e.g., consuming 5 minutes, consuming 10 minutes, consuming 30 minutes, or
`
`some other duration of a two-hour movie. Hoarty Tr., 31:13-33:7 (emphasis
`
`added).
`
`7
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`V.
`
`CARMEL RENDERS OBVIOUS CLAIMS 1-12 OF THE ’636 PATENT
`
`26.
`
`In my opinion, the challenged claims of the ’636 Patent, including
`
`claims 1-12, are invalid as obvious over Carmel and separately Carmel and Shteyn
`
`to a POSITA as of the Critical Date. EX1002, ¶¶ 48-192.
`
`27. Carmel expressly teaches claim limitations [1.k]/[5.k]/[9.k] (EX1002,
`
`¶¶94-96, 98-99, 127-131), and below I respond to certain of Mr. Hoarty’s opinions
`
`and PO’s arguments to explain why Carmel also inherently teaches these claim
`
`limitations.
`
`A.
`
`Carmel Inherently Teaches Claim Limitations [1.k]/[5.k]/[9.k]: the
`Media Data Elements are Sent by the Server in Response to
`Requests
`
`28.
`
`It is my opinion that Carmel inherently teaches sending the media data
`
`elements in response to requests.
`
`29. As I stated in my First Declaration, “Carmel’s data stream is divided
`
`into various media data elements … it is inherent that when using the HTTP
`
`protocol to download each of the slice files, every slice file is requested
`
`individually using an HTTP GET request and the server sends each requested slice
`
`to the user system in response.” EX1002, ¶130.
`
`8
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`30.
`
`The operation of HTTP as described in the evidence of record is
`
`necessarily present to “download” the stream in Carmel. Pet., 45-46; EX1002,
`
`¶130.
`
`31. Mr. Hoarty agrees that the “primary HTTP method provided to fetch
`
`data is GET, and this is true for both HTTP versions 1.1 and 1.0” (EX2006, ¶81),
`
`and Mr. Hoarty also agrees with my descriptions of the operation of an HTTP
`
`GET. EX2006, ¶81; EX1002, ¶130; Hoarty Tr., 50:1-6.
`
`32.
`
`Thus, for HTTP 1.0 or PO and Mr. Hoarty’s HTTP 1.1 the “GET
`
`method means retrieve whatever information (in the form of an entity) is identified
`
`by the Request-URI.” EX2004, 43.
`
`33.
`
`In other words, the server only sends the data requested (GET) by the
`
`client and no more.
`
`34. Despite this agreed principle, Mr. Hoarty argues so-called
`
`embodiments/processes involving features identified in HTTP 1.1, such as
`
`“‘chunked’ encoding response header” and “range retrieval requests” in an attempt
`
`to demonstrate that Carmel is a server push system. POR 47-48, 51; EX2006 ¶¶88,
`
`91-92.
`
`9
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`35. But, Carmel does not teach replacing its express disclosure of using an
`
`index file to request each slice (EX1002, ¶¶94-96, 98-99, 127-130) with Mr.
`
`Hoarty’s two created processes. Regardless, PO’s examples, however, technically
`
`misdescribe HTTP.
`
`36.
`
`PO and Mr. Hoarty first assert that a server using chunked encoding
`
`“begins sending them one-by-one (with no further GET request)” (POR 48;
`
`EX2006 ¶91) but that only applies in the context of a single requested slice file
`
`where the server breaks that single slice file into smaller chunks.
`
`37.
`
`It is my opinion that this example does not apply to Carmel when the
`
`client requests several slice files (e.g., 42, 44, 46, etc.) because, as Mr. Hoarty
`
`agrees, a server only sends what is requested by the client (via a GET request), i.e.,
`
`a request for a slice file 42 to the server will return the same slice file 42, not
`
`additional slice files 44, 46, etc. EX2004, 21; EX1002, ¶130; Hoarty Tr., 66:5-
`
`67:1 (agreeing that “File B” would only be sent if requested by the server because
`
`Mr. Hoarty “would have to assume common sense that servers don’t send data
`
`they’re not specifically requested to send. Right?”) (emphasis added).
`
`10
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`38. Mr. Hoarty suggests using a server-side scripting language, such as
`
`PHP, to generate a script that can use chunked transfer encoding to implement the
`
`first “example process.” POR 51, 47-48; EX2006, ¶88.
`
`39. However, Carmel does not discuss using a script as Mr. Hoarty
`
`agrees.
`
`Q. Does Carmel teach transfer of data, using these supervising
`scripts?
`
`A. I don’t believe so.
`
`Q. Okay. Does Carmel talk about ASP?
`
`A. I don’t recall that in Carmel.
`
`Q. Okay. What about PHP?
`
`. . .
`
`I don’t recall reading it, and I don’t see a direct reference to a
`scripting language.
`
`Hoarty Tr., 65:2-15 (emphasis added).
`
`40.
`
`In my opinion, no reasonable POSITA would ignore Carmel’s express
`
`disclosure in Figures 6A-B and corresponding written description, as discussed in
`
`my First Declaration of a client using an index file to request each slice file
`
`(EX1002, ¶¶94-96, 98-99, 127-130) to instead employ a convoluted solution of
`
`script writing that Mr. Hoarty admits is not described in Carmel.
`
`11
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`41.
`
`It also is my opinion that PO’s description of the second “range
`
`retrieval request” embodiment likewise is technically inaccurate.
`
`42.
`
`First, when explaining range retrieval in the context of Carmel, Mr.
`
`Hoarty and PO use Carmel’s single indexed file embodiment (i.e., all slices in one
`
`file), which Mr. Hoarty improperly denotes as the “separate file” embodiment.
`
`EX1004, 2:24-25 (“the segments or slices may all be contained in a single indexed
`
`file”); EX2006, ¶91.
`
`43. However, the Petition and my First Declaration do not rely on the
`
`“single indexed file” (or one file) embodiment and instead rely on the preferred
`
`embodiment where “[p]referably, each segment or slice is contained in a separate,
`
`respective file.” EX1004, 2:22-23 (emphasis added); Pet., 14-49; EX1002, ¶¶62-
`
`138.
`
`44.
`
`In this preferred embodiment of Carmel, each slice is a separate file
`
`that can be requested by the client, e.g., slice file 42, slice file 44, slice file 46, etc.,
`
`using the index file.
`
`45.
`
`Second, PO contends that “leaving out the ending specifier” in the
`
`range will result in the server transmitting numerous slices based on a request for a
`
`single slice. POR 48, EX 2006 ¶92.
`
`12
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`46.
`
`This inaccurately describes the technical operation of a range retrieval
`
`because it only allows for the transfer of less than one slice file or only the entire
`
`single slice file.
`
`47. According to HTTP 1.1, a range retrieval request “may request one or
`
`more sub-ranges of the entity, instead of the entire entity . . . .” EX2004, 112.
`
`48. Applying to Carmel, this would mean that the client could request
`
`“sub-ranges of the entity,” i.e., a single slice file.
`
`49.
`
`Thus, simply “leaving out the ending specifier” (POR 48, EX 2006
`
`¶92) does not result in several slice files being transmitted by the server.
`
`50. Rather, failing to specify an ending range only means that the full
`
`remainder of the single slice file will be transmitted instead of “sub-ranges” of that
`
`single slice file.
`
`51. Accordingly, in my opinion, PO and Mr. Hoarty’s two
`
`“embodiments” or “process[es]” further show that Carmel inherently teaches claim
`
`limitations [1.k]/[5.k]/[9.k].
`
`13
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`VI. CONCLUSION
`
`52.
`
`In my opinion, and for the reasons provided above and in my First
`
`Declaration, claims 1-12 are obvious over Carmel and separately Carmel and
`
`Shteyn.
`
`53.
`
`I declare that all statements made in this declaration regarding my
`
`personal knowledge are true and accurate, and that all statements made on
`
`information and belief are believed to be true. Further, I understand that these
`
`statements were made with the knowledge that willful false statements and the like
`
`are punishable by fine, imprisonment, or both, under Section 1001 of Title 18 of
`
`the United States Code.
`
`Henry Houh
`
`Executed on July 21, 2023.
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`14
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a true and correct copy of the Supplemental
`
`Declaration of Henry Houh, PhD has been served on the Patent Owner via email to
`
`Patent Owner by serving the email correspondence addresses of record as follows:
`
`ron.abramson@listonabramson.com
`
`michael.lewis@listonabramson.com
`
`ari.jaffess@listonabramson.com
`
`gina.kim@listonabramson.com
`
`Date: July 24, 2023
`
`By: /Larissa S. Bifano/
` Larissa S. Bifano
` Reg. No. 59,051
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`
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