`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`AKAMAI TECHNOLOGIES, INC.,
`Petitioner
`v.
`EQUIL IP HOLDINGS LLC,
`Patent Owner
`
`___________________
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`___________________
`
`DECLARATION OF DR. MARK T. JONES
`IN SUPPORT OF PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Equil EX2001
`Akamai Techs. v. Equil IP Holdings
`IPR2023-00332
`
`
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`TABLE OF CONTENTS
`
`INTRODUCTION ....................................................................................... 1
`I.
`QUALIFICATIONS .................................................................................... 2
`II.
`III. LEGAL PRINCIPLES ................................................................................. 5
`A.
`Claim Construction ............................................................................ 5
`B.
`35 U.S.C. § 112(a) ............................................................................. 6
`IV. THE ’745 PATENT ..................................................................................... 7
`V.
`LEVEL OF ORDINARY SKILL IN THE ART .......................................... 9
`VI. CLAIM CONSTRUCTION ....................................................................... 10
`VII. THE ’745 PATENT PRIORITY ................................................................ 10
`VIII. CONCLUSION ......................................................................................... 12
`
`
`
`
`
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`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`
`
`
`I.
`
`I, Mark. T. Jones, hereby declare as follows.
`
`INTRODUCTION
`I have been retained on behalf of Patent Owner Equil IP Holdings
`1.
`
`LLC (“Equil IP”) for the above-captioned inter partes review (IPR). I understand
`
`that this proceeding involves U.S. Patent No. 9,158,745 (“the ’745 patent”) titled
`
`“Optimization of media content using generated intermediate media content.”
`
`2.
`
`I understand that Sean Barger, Brian Rice, Matt Butler, and David
`
`Pochron are the named inventors of the ’745 patent. I also understand that the ’745
`
`patent is currently assigned to Equil IP.
`
`3.
`
`I have reviewed and am familiar with the following documents:
`
`Paper or
`Exhibit No. Description
`Akamai Technologies’ Petition for Inter Partes Review of U.S.
`Patent No. 9,158,745
`
`2
`
`1001
`1002
`
`1007
`
`1010
`
`1013
`
`1021
`
`U.S. Patent No. 9,158,745 (“the ’745 patent”)
`
`File History of U.S. Application No. 13/752,110
`
`U.S. Patent Application Publication No. US 2002/0078093
`(“Samaniego”)
`
`File History of U.S. Application No. 11/269,916
`
`Redline Comparison of specifications from Samaniego and the
`’745 patent
`
`Redline Comparison of specifications from Samaniego and
`Publication No. 2006/0265476 of Application No. 11/269,916
`
`- 1 -
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`
`Paper or
`Exhibit No. Description
`File History of U.S. Application No. 12/173,747
`1026
`1027
`
`File History of U.S. Application No. 12/238,842
`
`Redline Comparison of specifications from Samaniego and
`Publication No. 2009/0070485 of Application No. 12/173,747
`
`Redline Comparison of specifications from Samaniego and
`Publication No. 2009/0089422 of Application No. 12/238,842
`
`File History of U.S. Application No. 09/929,904
`
`Curriculum Vitae of Dr. Mark T. Jones
`
`1028
`
`1029
`
`1035
`2002
`
`
`II. QUALIFICATIONS
`4. My CV is attached as EX2002. I am a Professor Emeritus of Electrical
`
`and Computer Engineering at Virginia Tech in Blacksburg, Virginia. I graduated
`
`summa cum laude from Clemson University in 1986 with a B.S. in Computer
`
`Science and a minor in Computer Engineering, while holding a National Merit
`
`Scholarship and the R. F. Poole Scholarship. I then graduated from Duke
`
`University in 1990 with a Ph.D. in Computer Science, while holding the Von
`
`Neumann Fellowship.
`
`5.
`
`Upon graduation, I joined the Department of Energy at its Argonne
`
`National Laboratory facility. My responsibilities there included the design and use
`
`of software for computers with hundreds of processing elements. This software
`
`was designed for compatibility with new parallel computer architectures as they
`
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`became available, as well as with other large software components being written in
`
`the Department of Energy. While with the Department of Energy, I received the
`
`IEEE Gordon Bell Prize.
`
`6.
`
`In 1994, I joined the Computer Science faculty at the University of
`
`Tennessee. My teaching responsibilities included computer architecture and
`
`computer networking. My research interests included the design and use of
`
`software that used the collective power of large groups of workstations. While at
`
`the University of Tennessee, I received a CAREER Award from the National
`
`Science Foundation.
`
`7.
`
`In 1997, I joined the Electrical and Computer Engineering faculty at
`
`Virginia Tech. My teaching responsibilities have included the design of embedded
`
`systems, computer organization, computer architecture, a variety of programming
`
`courses, and parallel computing. I have been cited multiple times on the College of
`
`Engineering’s Dean’s List for teaching.
`
`8.
`
`In addition to the activities, education, and professional experience
`
`listed above, I have been involved in research projects that contribute to my
`
`expertise relating to this report. While at Virginia Tech, I have been a primary or
`
`co-investigator on government and industrial research grants and contracts in
`
`excess of five million dollars.
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`The majority of the research contracts undertaken in the laboratory
`
`9.
`
`have involved collaboration and coordination with other groups to build a larger
`
`system. My responsibilities under the SLAAC project (a collaborative effort
`
`funded by the Defense Advanced Research Projects Agency involving the
`
`University of Southern California, Sandia National Laboratory, Los Alamos
`
`National Laboratory, Brigham Young University, UCLA, Lockheed-Martin, and
`
`the Navy) included the development of a software system for monitoring,
`
`configuring, and controlling a networked collection of computers hosting
`
`specialized computer hardware. As part of the DSN project (a collaborative effort
`
`funded by the Defense Advanced Research Projects Agency involving UCLA and
`
`USC), I was responsible for designing algorithms and software for controlling and
`
`monitoring a large network of autonomous computer sensor nodes. This software
`
`was integrated with software from several other teams around the country for a set
`
`of field demonstrations over a three-year period.
`
`10.
`
`In the TEAMDEC project for the Air Force Research Laboratory, I
`
`led an effort to design and construct a collaborative, Internet-based decision
`
`making system. This Java-based system provided a geographically diverse team
`
`with Internet-based tools to enable collaborative decision-making. On the server
`
`side, the system architecture made extensive use of database technology. This work
`
`was awarded first prize at the 2002 AOL/CIT Research Day.
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`11. Other projects have involved the close coupling of computer hardware
`
`and software, including the writing of device drivers and simple operating systems,
`
`the design of hardware circuits, the design of new system architectures,
`
`architectures for secure computing, the modification of complex operating systems,
`
`and software for mediating between complex software packages. Additionally, my
`
`research has included video-conferencing, network-based visualization of large-
`
`scale scientific computing results, and a wireless link for communicating video
`
`from a UAV.
`
`12.
`
`In my professional experience, I have become familiar with many
`
`problems faced by computer scientists, designers, programmers, and users in the
`
`area of networked media delivery and related topics and technologies.
`
`III. LEGAL PRINCIPLES
`A. Claim Construction
`I understand that, during an inter partes review, an unexpired claim is
`13.
`
`construed according to its ordinary and customary meaning consistent with the
`
`standard established in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`
`banc) (“Phillips”). As such, it is my understanding that claim terms are given the
`
`meaning that the term would have to a person of ordinary skill in the art in
`
`question at the time of the invention. In this standard, my understanding is that the
`
`primary source of claim construction should be intrinsic evidence; that is, the
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`patent itself. I also understand that I may use extrinsic evidence to construe the
`
`claims; however, I understand that intrinsic evidence takes priority.
`
`B.
`14.
`
`35 U.S.C. § 112(a)
`I understand that 35 U.S.C. § 112(a) includes a written description
`
`requirement and an enablement requirement. I understand that that while written
`
`description and enablement are separate requirements, they often rise and fall
`
`together in the predictable arts (such as the electrical arts). I also understand that to
`
`rely upon the priority date of an earlier-filed patent application, that earlier-filed
`
`application must also provide support that satisfies the written description and
`
`enablement requirements.
`
`15.
`
`I understand that the test for sufficiency of written description is
`
`whether the disclosure of the patent or application which is relied upon reasonably
`
`conveys that the inventor had possession of the claimed subject matter as of the
`
`filing date. I understand that a description that merely renders the claimed subject
`
`matter obvious does not satisfy the written description requirement.
`
`16.
`
`I understand that the test for enablement is whether the disclosure
`
`teaches those in the art to make and use the invention without undue
`
`experimentation. I understand that the following factors are considered in
`
`determining whether a disclosure would require undue experimentation: (1) the
`
`quantity of experimentation necessary; (2) the amount of direction or guidance
`
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`presented; (3) the presence or absence of working examples; (4) the nature of the
`
`invention; (5) the state of the prior art; (6) the relative skill of those in the art;
`
`(7) the predictability or unpredictability of the art; and (8) the breadth of the
`
`claims.
`
`IV. THE ’745 PATENT
`17. The ’745 patent describes an automatic graphics delivery method that
`
`“automat[es] the production of media through content generation procedures
`
`controlled by proprietary tags placed within URLs embedded within Web
`
`documents.” EX1001, 7:6-11. The method “automatically processes the URL
`
`encoded tags and automatically produces derivative media for the web site from
`
`the original media.” Id., 7:13-16.
`
`18. By way of example, Figure 22, reproduced below, is “a flowchart of
`
`the content generation procedure according to a preferred embodiment” of the ’745
`
`patent. EX1001, 20:3-4. A URL with proprietary tags 2200 is parsed at step 2210
`
`to “determine the content generation procedure to execute, any dynamic
`
`modifications to the media, user profile characteristics, and proxy-cache control.”
`
`Id., 20:5-8. At step 2220, a unique final lookup key is generated for the media. Id.,
`
`20:8-10. The media cache is checked at step 2230. Id. If the indicated media exists,
`
`the media is delivered to the browser at step 2295. Id., 20:10-12.
`
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`
`EX1001, FIG. 22.
`
`
`
`19.
`
`If the media does not exist, dynamic media system tags are separated
`
`from content generation control tags at step 2240. Id., 20:12-14. A unique
`
`intermediate image lookup key is generated at step 2250. Id. The cache is checked
`
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`for this intermediate media at step 22511. Id., 20:15-16. If the intermediate media
`
`is found, it is retrieved at step 2260 and used directly for dynamic processing, if
`
`required. Id., 20:16-17, FIG. 22. If the intermediate media is not found, content is
`
`generated at step 22622 and cached at step 2263. Id., 20:17-19. The intermediate
`
`media is evaluated for dynamic processing at step 2270. Id. If dynamic processing
`
`is required, the dynamic content generator operates on the media at step 2271. Id.,
`
`20:19-22. The image is then customized by the user profiling system at step 2280
`
`for specified browser or client attributes. Id., 20:23-25. Any cache-control
`
`directives specified are attached to the response at step 2290. Id., 20:25-27. The
`
`media is delivered to the browser at step 2295. Id.
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`I have been informed that a person of ordinary skill in the art
`20.
`
`(“POSITA”) is a hypothetical person that has ordinary creativity and is not an
`
`automaton. I understand that Akamai has proposed that a POSITA would have had
`
`a bachelor’s degree in computer systems, computer science, or the equivalent
`
`
`1 The specification includes a typographical error. As seen in Figure 22, the
`
`cache checking step is 2251.
`
`2 There is a typographical error in Figure 22, where the “Content Generation”
`
`block is labeled as 2260 rather than 2262.
`
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`thereof, and at least two years of experience with networked media delivery or
`
`related technologies. Pet., 10. I understand that Akamai has further proposed that
`
`more education can supplement practical experience, and vice-versa. Id. For
`
`purposes of this declaration, I have applied Akamai’s definition of a POSITA. As
`
`of the relevant time period I was at least a person of ordinary skill in the art
`
`according to Akamai’s definition.
`
`VI. CLAIM CONSTRUCTION
`I understand that the ’745 patent is currently involved in the following
`21.
`
`district court litigation between Equil IP and Akamai: Equil IP Holdings LLC v.
`
`Akamai Technologies, Inc., No. 1-22-cv-00677 (D. Del.). I further understand that
`
`the parties have not engaged in claim construction in that litigation.
`
`22.
`
`I understand that Petitioner has proposed that all claim terms should
`
`be construed according to their plain and ordinary meaning. Pet., 10-11. I have
`
`applied the plain and ordinary meaning to the claim terms of the ’745 patent in my
`
`analysis herein.
`
`VII. THE ’745 PATENT PRIORITY
`I have been asked by Patent Owner’s counsel to determine whether
`23.
`
`claims 1-7 of the ’745 patent are supported by each of the applications in its
`
`priority chain, shown in the chart below. A copy of the originally filed
`
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`specification of each application is available in the corresponding file history, the
`
`exhibit numbers of which also are identified in the chart.
`
`Appl. No.
`
`Filing Date
`
`January 28, 2013
`13/752,110
`September 26, 2008
`12/238,842
`July 15, 2008
`12/173,747
`11/269,916 November 7, 2005
`09/929,904 August 14, 2001
`
`24.
`
`Corresponding US
`Patent/Pub. No.
`9,158,745
`8,381,110
`8,656,046
`2006/0265476
`6,964,009
`
`Exhibit No.
`(File History)
`1002
`1027
`1026
`1010
`1035
`
`I understand that Samaniego (EX1007) is the pre-issuance publication
`
`of the ’904 application, the earliest application discussed herein. As shown by
`
`Akamai’s redline comparison in EX1013, the specifications of the ’745 patent and
`
`Samaniego are identical except for the addition of a cross-reference paragraph in
`
`the specification of the ’745 patent. Likewise, the specifications of each of the
`
`applications in the priority chain are the same. See EX1021 (comparison of
`
`Samaniego and publication of the ’916 application), EX1028 (comparison of
`
`Samaniego and publication of the ’747 application), EX1029 (comparison of
`
`Samaniego and publication of the ’842 application).
`
`25. The chart attached to this declaration as Appendix A demonstrates, in
`
`my expert opinion, that all the limitations of claims 1-7 of the ’745 patent are
`
`supported by each of the ’110 application, the ’842 application, the ’747
`
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`U.S. Patent No. 9,158,745
`application, the ’916 application, and the ’904 application.3 The cited portions
`
`demonstrate that the inventors had possession of the claimed subject matter and
`
`also enable a POSITA to make and use the invention without undue
`
`experimentation.
`
`VIII. CONCLUSION
`26. The findings and opinions set forth in this declaration are based on my
`
`work and analysis to date. I may continue my analysis. I may also receive
`
`additional documentation and other factual evidence over the course of this
`
`proceeding that will allow me to supplement and/or refine my opinions. I reserve
`
`the right to add to, alter, or delete my opinions and my declaration upon discovery
`
`of any additional information. I reserve the right to make such changes as may be
`
`deemed necessary.
`
`27.
`
`In signing this declaration, I recognize that the declaration will be
`
`filed as evidence in an inter partes review before the Patent Trial and Appeal
`
`Board of the United States Patent and Trademark Office. I also recognize that I
`
`may be subject to cross-examination in the case and that cross-examination will
`
`
`3 Citations to the ’110 application, the ’842 application, the ’747 application,
`
`the ’916 application, and the ’904 application are exemplary and there may be
`
`additional portions of the applications that support the claims.
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`take place within the United States. If cross-examination is required, I will appear
`
`for cross-examination within the United States during the time allotted.
`
`28.
`
`I hereby declare that all statements made herein of my own
`
`knowledgeare true andthat all statements made on information and belief are
`
`believed to be true, and further that these statements were made with the
`
`knowledgethatwillful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
`Executedon this 25th day of April 2023, in Blacksburg, Virginia.
`
`
`
`Dr. Mark T. Jones
`
`~ 13-
`
`
`
`Appendix A
`Appendix A
`
`
`
`Support for Claimed Features in:
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`
`Claim
`
`U.S. Appl.
`13/752,110,
`EX1002, 4-70
`
`[1.P] A method in
`a host computer
`for developing
`transformation
`processing
`operations to
`optimize media
`content playback
`to a plurality of
`playback devices
`connected with
`the host computer
`in a network, the
`method
`comprising:
`
`1:19-211 “[T]he invention relates to
`an Internet server-based software
`system that provides delivery of
`automated graphics and other media
`to Web sites for access by an end
`user or consumer.”
`
`5:28-30 (discussing the prior art for
`comparison) “TrueSpectra has a
`patent pending for the technology
`employed in its two products,
`IrisAccelerate and IrisTransactive.
`These products are designed for
`zooming and panning and simple
`image transformations and
`conversions, respectively.”
`
`U.S. Appl.
`12/238,842,
`EX1027,
`2-66
`1:19-212
`
`
`
`
`
`
`5:28-30
`
`
`
`
`
`
`
`
`
`U.S. Appl.
`12/173,747,
`EX1026,
`2-64
`1:18-20
`
`
`
`
`
`
`5:27-29
`
`
`
`
`
`
`
`
`
`U.S. Appl.
`11/269,916,
`EX1010,
`4-67
`1:17-19
`
`
`
`
`
`
`5:27-29
`
`
`
`
`
`
`
`
`
`U.S. Appl.
`09/929,904,
`EX1035,
`6-63
`1:7-9
`
`
`
`
`
`
`4:31-33
`
`
`
`
`
`
`
`
`
`
`1 All citations are to the native page and line numbers of the as-filed specifications. The as-filed applications are
`available at the page range of each exhibit identified in the column headers.
`2 Where the quotations are the same across all specifications, only corresponding citations are provided for the ’842
`application, the ’747 application, the ’916 application, and the ’904 application.
`Appendix A - Page 1 of 47
`
`
`
`
`
`Support for Claimed Features in:
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`
`Claim
`
`U.S. Appl.
`13/752,110,
`EX1002, 4-70
`
`U.S. Appl.
`12/238,842,
`EX1027,
`2-66
`
`U.S. Appl.
`12/173,747,
`EX1026,
`2-64
`
`U.S. Appl.
`11/269,916,
`EX1010,
`4-67
`
`U.S. Appl.
`09/929,904,
`EX1035,
`6-63
`
`
`9:30-10:3 (see also 12:22-29, 27:19-
`25) “The system streamlines the
`post-production process by
`automating the production of media
`through content generation
`procedures controlled by proprietary
`tags placed within URLs embedded
`within Web documents… The
`system automatically processes the
`URL encoded tags and
`automatically produces derivative
`media for the website from the
`original media.”
`
`10:5-7 (see also 12:31-33, 27:27-29)
`“The system takes as input the
`client connection, server traffic,
`content generation procedures, and
`proprietary tags placed within the
`URL to generate optimized media
`for the client.”
`
`
`9:30-10:3
`(12:23-29,
`27:19-25)
`
`
`
`
`
`
`
`
`
`
`
`10:5-7
`(12:31-33,
`27:27-29)
`
`
`
`
`
`
`9:30-10:3
`(12:23-29,
`27:19-25)
`
`
`
`
`
`
`
`
`
`
`
`10:5-7
`(12:31-33,
`27:27-29)
`
`
`
`
`
`
`9:30-10:3
`(12:23-29,
`27:5-11)
`
`
`
`
`
`
`
`
`
`
`
`10:5-7
`(12:31-33,
`27:13-15)
`
`
`
`
`
`
`8:13-18
`(10:28-33,
`23:25-30)
`
`
`
`
`
`
`
`
`
`
`
`8:20-22
`(10:35-37,
`23:32-34)
`
`
`
`
`
`
`
`Appendix A - Page 2 of 47
`
`
`
`Support for Claimed Features in:
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`
`Claim
`
`U.S. Appl.
`13/752,110,
`EX1002, 4-70
`
`U.S. Appl.
`12/238,842,
`EX1027,
`2-66
`
`U.S. Appl.
`12/173,747,
`EX1026,
`2-64
`
`U.S. Appl.
`11/269,916,
`EX1010,
`4-67
`
`U.S. Appl.
`09/929,904,
`EX1035,
`6-63
`
`
`13:15-17 “The system 100 is
`attached to a Web server 110, which
`is connected to multiple client
`browsers 120(a-d) via the Internet
`130.”
`
`12:10-11 (see also 27:18-20) “FIG.
`21 is a schematic diagram showing
`process flow of a proprietary
`enabled page delivered to a Web
`browser…”
`
`
`
`13:15-17
`
`
`
`
`
`12:10-11
`(30:18-20)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`13:15-17
`
`
`
`
`
`12:10-11
`(30:18-20)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`13:15-17
`
`
`
`
`
`12:10-11
`(30:4-6)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`11:14-16
`
`
`
`
`
`10:15-16
`(26:9-10)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Appendix A - Page 3 of 47
`
`
`
`Support for Claimed Features in:
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`
`Claim
`
`U.S. Appl.
`13/752,110,
`EX1002, 4-70
`
`U.S. Appl.
`12/238,842,
`EX1027,
`2-66
`
`U.S. Appl.
`12/173,747,
`EX1026,
`2-64
`
`U.S. Appl.
`11/269,916,
`EX1010,
`4-67
`
`U.S. Appl.
`09/929,904,
`EX1035,
`6-63
`
`
`
`
`FIG. 21
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`12:13-14
`(31:29-30)
`
`
`
`
`
`
`FIG. 21
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`12:13-14
`(31:29-30)
`
`
`
`
`
`
`FIG. 21
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`12:13-14
`(31:15-16)
`
`
`
`
`
`
`FIG. 21
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`10:18-19
`(27:14-15)
`
`
`
`
`
`
`12:13-14 (see also 28:29-30) “FIG.
`22 shows a flowchart of a content
`generation procedure according to a
`
`
`
`Appendix A - Page 4 of 47
`
`
`
`Support for Claimed Features in:
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`
`Claim
`
`U.S. Appl.
`13/752,110,
`EX1002, 4-70
`
`U.S. Appl.
`12/238,842,
`EX1027,
`2-66
`
`U.S. Appl.
`12/173,747,
`EX1026,
`2-64
`
`U.S. Appl.
`11/269,916,
`EX1010,
`4-67
`
`U.S. Appl.
`09/929,904,
`EX1035,
`6-63
`
`preferred embodiment of the
`invention;”
`
`21:27-28 (Table B: Media
`processing script commands)
`“Load
`Load( Name @<filename> [type
`@<typename>] [transform @<true,
`false>])
`This command loads a media from
`the specified file.”
`
`
`
`
`
`21:27-28
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`21:27-28
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`21:22-23
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`18:23-24
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Appendix A - Page 5 of 47
`
`
`
`Support for Claimed Features in:
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`
`Claim
`
`U.S. Appl.
`13/752,110,
`EX1002, 4-70
`
`U.S. Appl.
`12/238,842,
`EX1027,
`2-66
`
`U.S. Appl.
`12/173,747,
`EX1026,
`2-64
`
`U.S. Appl.
`11/269,916,
`EX1010,
`4-67
`
`U.S. Appl.
`09/929,904,
`EX1035,
`6-63
`
`
`
`FIG. 22
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`26:23
`
`
`
`
`
`
`
`FIG. 22
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`26:23
`
`
`
`
`
`FIG. 22
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`26:10
`
`
`
`
`
`FIG. 22
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`22:34
`
`
`
`
`26:23 “The claimed method allows
`the creation of all 100 combinations
`automatically.”
`
`
`
`Appendix A - Page 6 of 47
`
`
`
`U.S. Appl.
`13/752,110,
`EX1002, 4-70
`
`Support for Claimed Features in:
`
`U.S. Appl.
`12/238,842,
`EX1027,
`2-66
`
`U.S. Appl.
`12/173,747,
`EX1026,
`2-64
`
`
`30:21-22 “A content generation
`procedure 2140 is created with
`instructions on how the media is to
`be transformed to create the desired
`Web page content.”
`
`1:7-14 “This application is a
`Continuation of U.S. Serial No.
`12/238,842, filed September 26,
`2008, which is a Divisional of U.S.
`Serial No. 12/173,747, filed July 15,
`2008, which is a Divisional of U.S.
`Serial No. 11/269,916, filed
`November 7, 2005, which is a
`Continuation-in-Part of U.S. Serial
`No. 09/929,904, filed August 14,
`2001, now U.S. Patent No.
`6,964,009 granted on November 8,
`2005, which is a Continuation of
`U.S. Serial No. 09/425,326, filed
`October 21, 1999, now U.S. Patent
`
`
`30:21-22
`
`
`
`
`
`1:8-14
`“This
`application
`is a
`Divisional
`of U.S.
`Serial No.
`12/173,747,
`filed July
`15, 2008,
`which is a
`Divisional
`of U.S.
`Serial No.
`11/269,916,
`Appendix A - Page 7 of 47
`
`
`30:21-22
`
`
`
`
`
`1:8-13
`“This
`application
`is a
`Divisional
`of U.S.
`Serial No.
`11/269,916,
`filed
`November
`7, 2005,
`which is a
`Continuatio
`n-in-Part of
`U.S. Serial
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`
`U.S. Appl.
`11/269,916,
`EX1010,
`4-67
`
`
`30:7-8
`
`
`
`
`
`1:8-12
`“This
`application
`is a
`Continuatio
`n-in-Part of
`U.S. Serial
`No.
`09/929,904,
`filed August
`14, 2001,
`now U.S.
`Patent No.
`6,964,009
`granted on
`
`U.S. Appl.
`09/929,904,
`EX1035,
`6-63
`
`
`26:12-13
`
`
`
`
`
`33:13-33
`(Original
`claim 5)
`“An
`apparatus
`for
`generating
`Web-safe
`media …
`comprising
`… a content
`generation
`procedure
`containing
`instructions
`
`Claim
`
`
`
`
`
`Support for Claimed Features in:
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`
`Claim
`
`U.S. Appl.
`13/752,110,
`EX1002, 4-70
`
`No. 6,792,575, granted on
`September 14, 2004, each of which
`is hereby incorporated in its
`entirety by this reference
`thereto.”
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`U.S. Appl.
`09/929,904,
`EX1035,
`6-63
`
`for
`transformin
`g said
`original
`media into
`said Web-
`safe
`media…”
`
`
`U.S. Appl.
`12/238,842,
`EX1027,
`2-66
`filed
`November
`7, 2005,
`which is a
`Continuatio
`n-in-Part of
`U.S. Serial
`No.
`09/929,904,
`filed August
`14, 2001,
`now U.S.
`Patent No.
`6,964,009
`granted on
`November
`8, 2005,
`which is a
`Continuatio
`n of U.S.
`Serial No.,
`09/425,326,
`
`U.S. Appl.
`12/173,747,
`EX1026,
`2-64
`No.
`09/929,904,
`filed August
`14, 2001,
`now U.S.
`Patent No.
`6,964,009
`granted on
`November
`8, 2005,
`which is a
`Continuatio
`n of U.S.
`Serial No.,
`09/425,326,
`filed
`October 21,
`1999, now
`U.S. Patent
`No.
`6,792,575,
`granted on
`
`U.S. Appl.
`11/269,916,
`EX1010,
`4-67
`November
`8, 2005,
`which is a
`Continuatio
`n of U.S.
`Serial No.,
`09/425,326,
`filed
`October 21,
`1999, now
`U.S. Patent
`No.
`6,792,575,
`granted on
`September
`14, 2004,
`all of which
`are hereby
`incorporate
`d in its
`
`
`
`Appendix A - Page 8 of 47
`
`
`
`Support for Claimed Features in:
`
`Claim
`
`[1.1] receiving a
`first request from
`a first playback
`
`
`
`
`
`
`
`
`
`U.S. Appl.
`13/752,110,
`EX1002, 4-70
`
`U.S. Appl.
`12/238,842,
`EX1027,
`2-66
`filed
`October 21,
`1999, now
`U.S. Patent
`No.
`6,792,575,
`granted on
`September
`14, 2004,
`each of
`which is
`hereby
`incorporate
`d in its
`entirety by
`this
`reference
`thereto.”
`
`8:7-10
`8:7-10 “It would be advantageous to
`
`provide a system for automated
`processing and delivery of media
`
`Appendix A - Page 9 of 47
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`
`U.S. Appl.
`09/929,904,
`EX1035,
`6-63
`
`U.S. Appl.
`11/269,916,
`EX1010,
`4-67
`entirety by
`reference.”
`
`U.S. Appl.
`12/173,747,
`EX1026,
`2-64
`September
`14, 2004,
`all of which
`are hereby
`incorporate
`d in its
`entirety by
`reference.”
`
`8:7-10
`
`
`
`8:7-10
`
`
`
`6:34-37
`
`
`
`
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`
`Support for Claimed Features in:
`
`U.S. Appl.
`13/752,110,
`EX1002, 4-70
`
`U.S. Appl.
`12/238,842,
`EX1027,
`2-66
`
`U.S. Appl.
`12/173,747,
`EX1026,
`2-64
`
`U.S. Appl.
`11/269,916,
`EX1010,
`4-67
`
`U.S. Appl.
`09/929,904,
`EX1035,
`6-63
`
`(images, video, and sound) to a
`Web server whereby it eliminates
`the laborious post-production and
`conversion work that must be done
`before a media asset can be
`delivered on a Web server.”
`
`14:2-3 “Original media assets 400
`are original images, video, or sound
`that have not been prepared for the
`Web.”
`
`30:22-28 “An HTML page 301 is
`created for the Web site comprising
`the system 100, the page containing
`one or more URLs directing a
`browser 120 to request the specified
`content generation procedure 2140
`from the system 100 using input
`parameters specified with
`proprietary tags encoded within the
`URL. The browser 120 requests the
`
`
`
`
`
`
`
`
`14:2-3
`
`
`
`
`30:22-28
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`14:2-3
`
`
`
`
`30:22-28
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`14:2-3
`
`
`
`
`30:8-14
`
`
`
`
`
`
`
`
`
`
`Appendix A - Page 10 of 47
`
`
`
`
`
`
`
`
`11:34-35
`
`
`
`
`26:13-19
`
`
`
`
`
`
`
`
`
`
`Claim
`
`device for media
`content;
`
`
`
`
`
`Support for Claimed Features in:
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`
`Claim
`
`U.S. Appl.
`13/752,110,
`EX1002, 4-70
`
`U.S. Appl.
`12/238,842,
`EX1027,
`2-66
`
`U.S. Appl.
`12/173,747,
`EX1026,
`2-64
`
`U.S. Appl.
`11/269,916,
`EX1010,
`4-67
`
`U.S. Appl.
`09/929,904,
`EX1035,
`6-63
`
`
`
`
`
`
`
`28:33-29:1
`
`
`
`
`
`
`29:12-13
`
`
`
`
`Web page 301 from the Web site
`110. Upon receipt of the page 301,
`the browser contacts the system 100
`requesting media specified in the
`URL.”
`
`28:33-29:1 “HTML pages with
`proprietary URL tags 301 describe
`how referenced media therein is to
`be manipulated for Web. Browsers
`120 send such tags to the image
`system 100 as media requests.”
`
`(29:12-13) “The system receives a
`request for media through a URL
`containing proprietary tags for
`controlling image generation.”
`
`
`The claimed “first content
`
`generation operations” include, e.g.,
`
`content generation procedures. The
`claimed “first transformation
`
`Appendix A - Page 11 of 47
`
`
`
`
`
`
`
`28:33-29:1
`
`
`
`
`
`
`29:12-13
`
`
`
`
`
`
`
`28:18-20
`
`
`
`
`
`
`28:31-32
`
`
`
`
`
`
`
`24:33-35
`
`
`
`
`
`
`25:8-9
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`[1.2] wherein the
`first request
`contains
`information, the
`
`
`
`
`
`Claim
`
`information
`indicating a first
`original media
`content, first
`content
`generation
`operations, and
`first
`transformation
`operations;
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`
`Support for Claimed Features in:
`
`U.S. Appl.
`13/752,110,
`EX1002, 4-70
`
`U.S. Appl.
`12/238,842,
`EX1027,
`2-66
`
`U.S. Appl.
`12/173,747,
`EX1026,
`2-64
`
`U.S. Appl.
`11/269,916,
`EX1010,
`4-67
`
`U.S. Appl.
`09/929,904,
`EX1035,
`6-63
`
`operations” include, e.g., dynamic
`content processing and/or user
`profile processing. These content
`generation procedures and/or
`dynamic content processing and/or
`user profile processing to be
`performed on the original media
`content are identified by proprietary
`tags contained within a URL that is
`requested by a browser.
`
`28:14-19 “Resource locators
`(URLs) are placed within HTML
`documents 301 accessible to the
`Web server 110. These URLs direct
`browsers to generate requests for
`media to the system 100. The
`system processes such URLs by
`interpreting the proprietary tags,
`executing the indicated image
`generation procedures on the
`original media 200, and returning
`
`
`
`
`
`
`
`
`
`
`
`
`28:14-19
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`28:14-19
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`27:33-28:4
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`24:14-19
`
`
`
`
`
`
`
`
`
`
`
`
`
`Appendix A - Page 12 of 47
`
`
`
`Support for Claimed Features in:
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`
`Claim
`
`U.S. Appl.
`13/752,110,
`EX1002, 4-70
`
`U.S. Appl.
`12/238,842,
`EX1027,
`2-66
`
`U.S. Appl.
`12/17
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