DOCKET NO.: 410797-000028
`Filed on behalf of The Walt Disney Company, Disney Streaming Services LLC,
`Hulu LLC, and Netflix Inc.
`By: Larissa S. Bifano, Reg. No. 59,051
`Anand Mohan, Reg. No. 76,518
`
`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, Hulu LLC, and
`
`Netflix Inc., Petitioner
`
`v.
`
`WAG Acquisition LLC, Patent Owner
`
`IPR2022-01228
`
`DECLARATION OF HENRY HOUH, PH.D.
`REGARDING CLAIMS 1-12
`OF U.S. PATENT NO. 9,742,824
`
`WEST\296650966.6
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`BACKGROUND AND QUALIFICATIONS ................................................ 1
`
`III. MATERIALS CONSIDERED ..................................................................... 15
`
`IV.
`
`LEGAL STANDARDS ................................................................................ 17
`
`V.
`
`OVERVIEW OF THE ’824 PATENT ......................................................... 20
`
`A. Summary of the Alleged Invention ......................................................... 21
`
`B. Prosecution History .................................................................................. 27
`
`C. Priority Date ............................................................................................. 28
`
`VI.
`
`LEVEL OF ORDINARY SKILL IN THE ART .......................................... 28
`
`VII. CLAIM CONSTRUCTION ......................................................................... 29
`
`VIII. SUMMARY OF OPINIONS ........................................................................ 30
`
`A. Ground 1: Claims 1-12 are obvious over Carmel .................................... 30
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Overview of Carmel ................................................................. 31
`
`Independent claims 1, 5, and 9 are obvious over Carmel ........ 34
`
`Claims 2, 6, and 10 are obvious over Carmel .......................... 77
`
`Claims 3, 7, and 11 are obvious over Carmel .......................... 79
`
`Claims 4, 8, and 12 are obvious over Carmel .......................... 80
`
`B. Ground 2: Claims 1-12 are obvious over Carmel in view of Shteyn ...... 81
`
`1.
`
`Overview of Shteyn ................................................................. 81
`
`2. Independent claims 1, 5, and 9 are obvious over Carmel in
`view of Shteyn ......................................................................... 82
`
`i
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`3. Claims 2, 6, and 10 are obvious over Carmel in view of
`Shteyn ..................................................................................... 101
`
`4. Claims 3, 7, and 11 are obvious over Carmel .............................. 101
`
`5. Claims 4, 8, and 12 are obvious over Carmel .............................. 101
`
`IX. CONCLUSION ........................................................................................... 101
`
`ii
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`I, Henry Houh, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`My name is Henry Houh, and I have been retained by counsel for The
`
`Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix
`
`Inc. (collectively “Petitioner”) to analyze U.S. Patent No. 9,742,824 (“’824
`
`patent”) (EX1001) and to provide my opinions regarding the patentability of
`
`claims 1-12 of the ’824 patent.
`
`2.
`
`I am being compensated at my normal consulting rate of $650 per
`
`hour for my time. My compensation is not contingent on the outcome of this
`
`proceeding, or of any proceedings relating to the ’824 patent.
`
`II.
`
`BACKGROUND AND QUALIFICATIONS
`
`3.
`
`My professional career has spanned more than 25 years. As set forth
`
`in my curriculum vitae, a copy of which is attached to this report as Appendix A,
`
`during these years I have gained extensive experience in web content delivery, web
`
`site architectures, distributed network applications, data caching, multi-media
`
`streaming, and networking and communication protocols.
`
`4.
`
`I was awarded a Ph.D. degree in Electrical Engineering and Computer
`
`Science in February 1998 from Massachusetts Institute of Technology (MIT). I
`
`1
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`also received a Master of Science (M.S.) in Electrical Engineering and Computer
`
`Science (February 1991), a Bachelor of Science in Electrical Engineering and
`
`Computer Science (June 1989) and a Bachelor of Science in Physics (February
`
`1990) from MIT.
`
`5.
`
`I defended and submitted my Ph.D. thesis, titled "Designing Networks
`
`for Tomorrow's Traffic," in January 1998. As part of my thesis research, I analyzed
`
`local-area and wide-area data flows to show a more efficient method for routing
`
`content (including email, web pages, and streaming media such as voice and video)
`
`in a network, based on traffic patterns at the time.
`
`6.
`
`My research and work experience in multimedia content delivery over
`
`the Internet, streaming media over the Internet, networking, and network ar-
`
`chitecture dates back to the popularization of the Web in the early 1990s and
`
`coincides with when I started my doctoral research at MIT. After returning full
`
`time to MIT for graduate school after completing an internship at AT&T Bell
`
`Laboratories, I worked as a research assistant in the Telemedia Network Systems
`
`(TNS) group at the Laboratory for Computer Science at MIT. The TNS group built
`
`a high speed gigabit network and applications which ran over the network, such as
`
`remote video capture, processing, and display on computer terminals. I designed
`
`2
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`the core networking hardware and software, including the high speed data links
`
`and the device drivers for the network interface cards.
`
`7.
`
`My group's work focused on high speed networking and the types of
`
`applications that require increased network bandwidth and computing power,
`
`including where more extensive processing occurred in the network itself. One of
`
`the applications I investigated was live streaming video, and real-time processing
`
`of such video. My work was focused around the transport, switching, and routing
`
`of data (including video streams), and the integration of TNS's network into the
`
`computing environment, including the protocols, IP/ATM integration, operating
`
`system software and device drivers. TNS created a computing environment where
`
`it was possible to stream video live, and also created software processing modules
`
`to further process video to perform advanced functions such as green screening,
`
`scene change detection, motion detection, compression, video blending and video
`
`overlay, among the many features - all in real-time while displaying the processed
`
`video live. While the Internet at the time did not have the capability for such
`
`applications to be widely deployed, my group at TNS researched what would be
`
`possible when the required network and computing power became available. As
`
`discussed above, my Ph.D. thesis work focused on studying the routing resources
`
`3
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`required to route streams of video through the network, proposing several
`
`alternative labeling strategies to speed up network routing. Part of what I proposed
`
`was borne out later in the form of Multiprotocol Label Switching (MPLS), which
`
`is a method of tagging packets at the edge of the network to enable more efficient
`
`routing inside the network.
`
`8.
`
`During the early part of my graduate studies, a time when there were
`
`perhaps a hundred or so web servers in existence, I set up a web server on one of
`
`our lab computers, and created content rich web pages for my research group and
`
`my research activities. Eventually, I, together with others I was working with,
`
`added live video demonstrations to TNS's web site. TNS's web site was one of the
`
`first several hundred web servers to exist, and the first to offer live video
`
`demonstrations initiated from the web site to computers utilizing the X-Windows
`
`computer windowing system. In addition to TNS's live video demonstrations, TNS
`
`offered pre-recorded video and computer-processed video demonstrations. TNS's
`
`web site was nominated for the Best of the Web 1994 Awards in "Best
`
`Entertainment Servers" and "Best Use of Multiple Media," and received an
`
`honorable mention in the "Best Use of Multiple Media" category.
`
`4
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`9.
`
`TNS's web site was among the first, if not the first, to initiate a remote
`
`video display using a web browser. Vice President Al Gore visited my group in
`
`1996 and received a demonstration of - and remotely drove - a radio controlled toy
`
`car with a wireless video camera mounted on it; the video was encoded by TNS-
`
`designed hardware, streamed over the TNS-designed network, and displayed using
`
`TNS-designed software. The demonstration showed the successful application of
`
`live, interactive video streaming applications, and real-time remote control using
`
`video streamed across a network.
`
`10.
`
`I co-authored several papers about web site development which were
`
`presented at the very first World-Wide Web conference held in 1994 at CERN in
`
`Geneva, Switzerland. CERN is the birthplace of the Web, and the conference was
`
`chaired by Tim Berners-Lee, the inventor of the World-Wide Web. One of the
`
`papers, "The Media Gateway: Live Video on the World Wide Web," was about
`
`TNS's web-based video demonstrations that I worked on, and the other paper,
`
`"Active Pages: Intelligent Nodes on the World Wide Web" discussed database
`
`backed web pages which were generated from a computer program accessing a
`
`database each time the page was requested. Today, many content providers use this
`
`method to generate dynamic and personalized web sites.
`
`5
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`11.
`
`I started a web consulting business in 1994 and won contracts to set up
`
`and manage web sites for various companies, including Bay Networks and Data
`
`Communications Magazine. Our customers at the time were concerned about web
`
`server load, and how to scale their web sites in case the load became unmanageable
`
`for a single web server. My company investigated many methods of load balancing
`
`and distributing the load over multiple servers. My web company also created
`
`software for staging updates to the web site and pushing approved changes into
`
`production through a system of multiple servers. As part of this start-up, I registered
`
`various domain names for my company and other organizations such as MIT's
`
`World Wide Web consortium, (which was formed after Tim Berners-Lee left
`
`CERN to come to MIT), and various other organizations with which I had a
`
`volunteer advisory role. The World Wide Web Consortium to this day helps set
`
`standards for the World Wide Web. At the time, commercial Domain Name
`
`services did not exist. I also set-up, configured, and managed the domain name
`
`servers for many of the domains I registered, creating and managing the domain
`
`name records for these domains by manually creating and editing DNS zone files.
`
`12.
`
`I authored or co-authored twelve papers and conference presentations
`
`on my group's research at TNS. I also co-edited TNS's final report on its gigabit
`
`6
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`networking research effort with Professor David Tennenhouse and Senior Research
`
`Scientist David Clark, who is generally considered to be one of the fathers of the
`
`Internet Protocol. I have also participated in various Internet Engineering Task
`
`Force (IETF) working groups, and attended IETF meetings in the mid-to-late
`
`1990's.
`
`13. As an undergraduate at MIT, I was a Laboratory Teaching Assistant,
`
`head Laboratory Teaching Assistant, and Teaching Assistant. I was also a
`
`Teaching Assistant and head Teaching Assistant when I was a graduate student
`
`there. One class that I was a Teaching Assistant for was a Computer Architecture
`
`course, which was a required class for all Electrical Engineering and Computer
`
`Science majors. Among the concepts taught in this course was the concept of
`
`caching, which is holding frequently-accessed memory values in faster memory
`
`that was closer to the central processing unit (CPU), as well as concepts regarding
`
`maintaining the coherence (synchronization) of a cache with the main memory
`
`under various circumstances. Caching techniques may also be applied to the
`
`Internet as well, and many of the same principles apply.
`
`14.
`
`Since the 1990s, as a researcher and practitioner in the field of web
`
`content delivery, I followed the development and studied the operation of content
`
`7
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`delivery networks (CDNs). I have also provided technical consulting services in
`
`networking, streaming media, mobile applications, and other areas, and some of
`
`my clients' applications utilize content delivery networks (CDNs). In servicing
`
`these clients, I have studied CDNs in the context of applications such as video
`
`streaming services for both live and pre-recorded video, involving how the back
`
`end origin servers distribute content to the edge servers and whether the delivery
`
`methods of CDNs are part of infringing systems.
`
`15.
`
`From 1997 to 1999, I was a Senior Scientist and Engineer at NBX
`
`Corporation, a start-up that made business telephone systems that streamed
`
`packetized audio over data networks instead of using traditional telephone lines.
`
`NBX was later acquired by 3Com Corporation, and the telephone system is still
`
`available and being used by tens of thousands of businesses or more. As part of my
`
`work at NBX, I designed the core audio reconstruction algorithms for the
`
`telephone systems, as well as the packet transmission algorithms. I also designed
`
`and validated the core packet transport protocol used by the telephone system. The
`
`protocol was used millions of times a day. Two of the company founders and I
`
`were co-inventors on U.S. Patent No. 6,967,963 titled "Telecommunication method
`
`8
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`for ensuring on-time delivery of packets containing time-sensitive data," that
`
`covered some of the work I did at NBX.
`
`16.
`
`From 2001 to 2004, I was chief technologist for the Web Application
`
`Test Group of Empirix. Empirix was a spin-out company of Teradyne, a company
`
`known for making semiconductor testing equipment used by computer chip
`
`manufacturers, and at the time I was there achieved over $1 billion in quarterly
`
`bookings. The Teradyne founder and chairman, Alex d'Arbeloff, wanted to
`
`improve formalized testing for telecommunications systems and information
`
`systems. My division provided software and services for testing web sites.
`
`Empirix's customers included many large companies with highly complex web
`
`sites, such as Dell (a full e-commerce web site for configuring and ordering
`
`computers) and H&R Block (a web site for filing income taxes). The software
`
`emulated individual users exercising the complex features of a web site, such as
`
`filling out tax forms or configuring computers for purchase. The software could
`
`also create the load of thousands or even hundreds of thousands of users hitting a
`
`particular web site at once, all using complex features (rather than just accessing
`
`the home page). Because of the complex and highly varying web sites of Empirix's
`
`customers, I had to understand many different types of web site architectures, and
`
`9
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`the various methods of creating and delivering dynamic content from a web site. I
`
`was the architect for my division's next-generation web testing product, for which I
`
`helped write a JavaScript interpreter that ran the code on a web site similar to a
`
`standard web browser so that the software could understand the dynamic aspects of
`
`the code on a web site.
`
`17.
`
`I worked at BBN Technologies from 2004 to 2009. BBN
`
`Technologies, formerly known as Bolt, Beranek and Newman, was a pioneer of the
`
`Internet. BBN received the first contract to build components of a packet switched
`
`network as part of the ARPANET, a U.S. Department of Defense effort funded
`
`through the Advanced Projects Research Agency (ARPA). BBN has a storied
`
`history of networking research, and BBN's domain name, "bbn.com" was the
`
`second dot-com domain ever registered.1 While this effort preceded my time at
`
`BBN by many years, BBN continued to maintain a strong presence in network
`
`research and development. In 2006, as part of my role at BBN Technologies, I
`
`helped found PodZinger Inc., now known as RAMP Inc. PodZinger utilized BBN's
`
`speech recognition algorithms to search through the spoken words inside audio and
`
`video. After managing the creation of the initial prototype system, PodZinger built
`
`out a full web-based streaming audio and video search solution when I was the
`
`10
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`Vice President of Operations and Technology there. The web site had a full load-
`
`balanced back end which provided search and indexing solutions for our hosted
`
`multimedia (audio and video) content. I was responsible for procuring,
`
`configuring, and deploying all the servers into our data center. Our back-end
`
`consisted of over 40 individual servers. I also researched and evaluated various
`
`content-delivery network solutions available at the time to understand how our site
`
`may utilize such services.
`
`18.
`
`In 2012, I founded Einstein's Workshop, a science, technology,
`
`engineering and math enrichment program for kids of all ages, which I still operate
`
`today. The Workshop teaches programming, robotics, "making" (akin to creating,
`
`building and tinkering), engineering, 3D CAD and many other subjects. We operate
`
`year-round, with weekly school-year programs as well as week-long vacation
`
`programs. We also created and developed BlocksCAD, a 3D CAD system for kids
`
`and adults. BlocksCAD is used world-wide and has over 28,000 registered users
`
`and 60,000 stored CAD projects. BlocksCAD is being used in maker spaces
`
`worldwide and is integrated into school curriculum in various school systems in the
`
`U.S. at elementary, middle, and high school levels. School districts such as
`
`Talladega County Schools in Alabama, Hudson City Schools in Ohio, Clark County
`
`11
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`Schools in Nevada, and Boston Public Schools in Massachusetts are using
`
`BlocksCAD. BlocksCAD is delivered as a web-based application, and we have
`
`created a rich application and content-sharing site for users. Recently, BlocksCAD
`
`was spun out into a separate company which was accepted as part of the
`
`LearnLaunch business accelerator program for educational technologies, and also
`
`has been accepted into the Play Labs accelerator program at MIT for summer
`
`2018.
`
`19.
`
`I am a co-inventor on eight U.S. Patents and two European/German
`
`Patents, as well as several pending patent applications including:
`
`™
`
`U.S. Patent No. 9,697,231, titled "Methods and apparatus for
`
`providing virtual media channels based on media search," July 4, 2017. This
`
`patent relates to providing virtual media channels utilizing rules and media
`
`search.
`
`™
`
`U.S. Patent No. 9,697,230, titled "Methods and apparatus for dynamic
`
`presentation of advertising, factual, and informational content using
`
`enhanced metadata in search-driven media applications," July 4, 2017. See
`
`also WO2007056485. This patent relates to the placement of advertising
`
`content within a playback stream.
`
`12
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`™
`
`U.S. Patent No. 7,975,296, titled "Automated security threat testing of
`
`web pages," July 5, 2011. This patent relates to automatically finding
`
`security holes in web sites.
`
`™
`
`U.S. Patent No. 7,877,736, titled Computer language interpretation
`
`and optimization for server testing," January 25, 2011. This patent. This
`
`patent relates to interpreting the code in a web site in order to interpret any
`
`dynamic content generated on the web pages.
`
`™
`
`U.S. Patent No. 7,801,910, titled "Method and apparatus for timed
`
`tagging of media content," September 21, 2010. This patent relates to using
`
`timed data of when spoken words appear in an audio or video file to build a
`
`search index and to synchronize words in a transcript to the media file itself.
`
`™
`
`U.S. Patent Number 6,967,963, titled "Telecommunication method for
`
`ensuring on-time delivery of packets containing time-sensitive data."
`
`™
`
`U.S. Patent Publication Number 2007/0106685, "Method and
`
`apparatus for updating speech recognition databases and reindexing audio
`
`and video con-tent using the same."
`
`™
`
`U.S. Patent Publication Number 2007/0106693, "Methods and appa-
`
`ratus for providing virtual media channels based on media search."
`
`13
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`™
`
`U.S. Patent Publication Number 2007/0106760, "Methods and
`
`apparatus for dynamic presentation of advertising, factual, and informational
`
`content using enhanced metadata in search-driven media applications."
`
`™
`
`U.S. Patent Publication Number 2007/0112837, "Method and
`
`apparatus for timed tagging of media content."
`
`™
`
`U.S. Patent Publication Number 2007/0118873, "Methods and
`
`apparatus for merging media content."
`
`™
`
`U.S. Patent Publication Number 2009/0222442, "User-directed
`
`navigation of multimedia search results."
`
`20. Additional information regarding my professional qualifications,
`
`experience, publications, and other U.S. Patents, European Patents and Patent
`
`Publications are set forth in my curriculum vitae, a copy of which is attached as
`
`Appendix A.
`
`21. Based on my academic and work experiences relating to computer
`
`networking, distributed systems and content delivery technology, I believe I am
`
`well-positioned to understand and address the skills and mindset of a person of
`
`ordinary skill in this field circa 1999-2000.
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`III. MATERIALS CONSIDERED
`
`22.
`
`In preparing this declaration, I reviewed the ’824 patent, including the
`
`claims of the patent in view of the specification, and I have reviewed the
`
`prosecution history of the ’824 patent and numerous prior art and technical
`
`references from the time of the alleged invention. Of the materials cited as an
`
`exhibit to the ’824 patent IPR petition, I reviewed the following:
`
`Exhibit
`
`Description
`
`1001
`
`U.S. Patent No. 9,742,824
`
`1003
`
`File History of U.S. Patent No. 9,742,824
`
`1004
`
`U.S. Patent No. 6,389,473 to Carmel et al.
`
`1005
`
`U.S. Patent No. 8,122,141 to Price
`
`1006
`
`1007
`
`Final Written Decision, WebPower v. WAG Acquisition, LLC,
`IPR2016-01238, Paper No. 22 (Dec. 26, 2017)
`
`Final Written Decision on Remand, WebPower v. WAG
`Acquisition, LLC, IPR2016-01238, Paper No. 28 (July 16, 2020)
`
`1008
`
`U.S. Patent No. 7,529,806 to Shteyn
`
`1015
`
`1016
`
`Plaintiff’s Responsive Claim Construction Brief, No. 6-21-cv-
`00815, Dkt. No. 38 (WDTX)
`
`Declaration of Keith J. Teruya, No. 6-21-cv-00815, Dkt. No.
`38-1 (WDTX)
`
`1017
`
`U.S. Patent No. 6,728,763 to Chen
`
`15
`
`IPR2022-01228
`EXHIBIT 1002 - PAGE 18
`
`WAG, Exhibit 2003
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 18 of 105
`
`

`

`IPR2022-01228
`U.S. Patent No. 9,742,824
`
`1018
`
`IETF RFC793 published in September 1981.
`
`1019
`
`TCP/IP Illustrated, Volume 1 by W. Richard Stevens published
`in 1994.
`
`1020
`
`U.S. Patent No. 6,848,004 to Chang
`
`1021
`
`WO1997044942 to Kliger
`
`1022
`
`U.S. Patent No. 6,668,088 to Werner et al.
`
`1023
`
`U.S. Patent No. 5,533,138 to Kim et al.
`
`1024
`
`U.S. Patent No. 5,469,212 to Lee
`
`1025
`
`U.S. Patent No. 6,314,137 to Ono et al.
`
`23.
`
`Petitioner’s counsel has asked me to consider whether certain
`
`references disclose or suggest, alone or in combination, the features recited in
`
`certain claims of the ’824 patent. I have also been asked to consider the state of the
`
`art and the prior art available before the time of the alleged invention of the ’824
`
`patent. My opinions are provided in this declaration.
`
`24. My opinions in this declaration are based on my review of the
`
`documents above, my understanding as an expert in the relevant field, and my
`
`education, training, research, knowledge, and personal and professional
`
`experience.
`
`16
`
`IPR2022-01228
`EXHIBIT 1002 - PAGE 19
`
`WAG, Exhibit 2003
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 19 of 105
`
`

`

`IPR2022-01228
`U.S. Patent No. 9,742,824
`
`25.
`
`To my knowledge, I have no financial interest in Petitioner. Counsel
`
`for Petitioner has informed me that WAG Acquisition, LLC purports to own the
`
`’824 patent. To the best of my knowledge, I have no financial interest in WAG
`
`Acquisition, LLC and, to my recollection, have had no contact with WAG
`
`Acquisition, LLC or the named inventor of the ’824 patent, Harold Edward Price.
`
`To the best of my knowledge, I do not have any financial interest in the ’824
`
`patent.
`
`26.
`
`To the extent any mutual funds or other investments that I own have a
`
`financial interest in the Petitioner, the Patent Owner, or the ’824 patent, I am not
`
`aware of, and do not control, any financial interest that would affect or bias my
`
`judgment.
`
`IV. LEGAL STANDARDS
`
`27.
`
`Petitioner’s counsel has informed me that, in an inter partes review
`
`proceeding, a patent claim may be deemed unpatentable if it is shown by a
`
`preponderance of the evidence that the claim was either anticipated by a prior art
`
`patent or publication or rendered obvious by one or more prior art patents or
`
`publications.
`
`17
`
`IPR2022-01228
`EXHIBIT 1002 - PAGE 20
`
`WAG, Exhibit 2003
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 20 of 105
`
`

`

`IPR2022-01228
`U.S. Patent No. 9,742,824
`
`28.
`
`Petitioner’s counsel has informed me that a claim is unpatentable if
`
`the differences between the subject matter of the patent and the prior art are such
`
`that the subject matter as a whole would have been obvious to a person of ordinary
`
`skill in the art, or a “POSITA”, at the time of the invention.
`
`29.
`
`Petitioner’s counsel has informed me that a determination of whether
`
`a claim would have been obvious should be based upon several factors, including
`
`the following:
`
`filed;
`
`™
`
`™
`
`™
`
`The level of ordinary skill in the art at the time the application was
`
`The scope and content of the prior art; and
`
`What differences, if any, existed between the claimed invention and
`
`the prior art.
`
`30.
`
`Petitioner’s counsel has informed me that a single reference can
`
`render a patent claim obvious if any differences between that reference and the
`
`claims would have been obvious to a person of ordinary skill in the art.
`
`Alternatively, the teachings of two or more references may be combined in the
`
`same way as disclosed in the claims, if such a combination would have been
`
`obvious to one having ordinary skill in the art. In determining whether a
`
`18
`
`IPR2022-01228
`EXHIBIT 1002 - PAGE 21
`
`WAG, Exhibit 2003
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 21 of 105
`
`

`

`IPR2022-01228
`U.S. Patent No. 9,742,824
`
`combination based on either a single reference or multiple references would have
`
`been obvious, I understand from Petitioner’s counsel that it is appropriate to
`
`consider the following factors:
`
`™
`
`Whether the teachings of the prior art references disclose known
`
`concepts combined in familiar ways, and when combined, would yield predictable
`
`results;
`
`™
`
`Whether a POSITA could implement a predictable variation, and
`
`would see the benefit of doing so;
`
`™
`
`Whether the claimed elements represent one of a limited number of
`
`known design choices, and would have a reasonable expectation of success by
`
`those skilled in the art;
`
`™
`
`Whether a person of ordinary skill would have recognized a reason to
`
`combine known elements in the manner described in the claim;
`
`™
`
`Whether there is some teaching or suggestion in the prior art to make
`
`the modification or combination of elements claimed in the patent; and
`
`™
`
`Whether the innovation applies a known technique that had been used
`
`to improve a similar device or method in a similar way.
`
`19
`
`IPR2022-01228
`EXHIBIT 1002 - PAGE 22
`
`WAG, Exhibit 2003
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 22 of 105
`
`

`

`IPR2022-01228
`U.S. Patent No. 9,742,824
`
`31.
`
`Petitioner’s counsel has informed me that a POSITA has ordinary
`
`creativity and is not an automaton.
`
`32.
`
`Petitioner’s counsel has informed me that all prior art references are to
`
`be looked at from the viewpoint of a POSITA.
`
`33.
`
`Petitioner’s counsel has informed me that, in considering obviousness,
`
`it is important not to determine obviousness using the benefit of hindsight derived
`
`from the patent being considered, and that obviousness is analyzed from the
`
`perspective of a POSITA at the time of the invention.
`
`V.
`
`OVERVIEW OF THE ’824 PATENT
`
`34.
`
`The ’824 patent, titled “Streaming media delivery system” was filed
`
`on October 3, 2016, and issued on August 22, 2017.
`
`35.
`
`The ’824 patent issued from U.S. Patent Application No. 15/283,578
`
`(“’578 application”), filed on October 3, 2016. The ’578 application is a
`
`continuation of Application No. 13/815,040, filed on Jan 25, 2013, which is a
`
`continuation of Application No. 13/385,375, filed on February 16, 2012, which is a
`
`continuation of Application No. 12/800,177, filed on May 10, 2010, which is a
`
`continuation of Application No. 10/893,814, filed on July 19, 2004, which is a
`
`continuation-in-part of Application No. 09/819,337, filed on March 28, 2001,
`
`20
`
`IPR2022-01228
`EXHIBIT 1002 - PAGE 23
`
`WAG, Exhibit 2003
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 23 of 105
`
`

`

`IPR2022-01228
`U.S. Patent No. 9,742,824
`
`which claims priority to Application No. 60/231,997 (“’997 application”), filed on
`
`September 12, 2000 (“Critical Date”).
`
`A. Summary of the Alleged Invention
`
`36.
`
`The ’824 patent provides in the “Field of Invention” section of the
`
`specification that it relates generally to “multimedia computer communication
`
`systems” and more specifically describes “systems and methods for delivering
`
`streaming media, such as audio and video, on the Internet.” EX1001, 1:52-55.
`
`37. According to the ’824 patent systems purportedly use a “pre-buffering
`
`t