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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
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`v.
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`TOUCHSTREAM TECHNOLOGIES, INC.,
`Patent Owner.
`
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`
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`
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`Patent No. 11,048,751
`Filing Date: August 25, 2017
`Issue Date: June 29, 2021
`Title: PLAY CONTROL OF CONTENT ON A DISPLAY DEVICE
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`Inter Partes Review No.: IPR2024-00323
`
`
`DECLARATION OF DAVID B. LETT
`
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
`
`Declaration in Support of Petition 1 of 2
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`Comcast, Ex. 1002
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`6.
`7.
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`8.
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`TABLE OF CONTENTS
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`Page
`INTRODUCTION .......................................................................................... 1
`1.
`PROFESSIONAL BACKGROUND AND QUALIFICATIONS .................. 1
`2.
`3. MATERIALS CONSIDERED ....................................................................... 7
`4.
`UNDERSTANDING OF APPLICABLE LEGAL STANDARDS .............. 11
`5.
`THE RELEVANT ART AND LEVEL OF ORDINARY SKILL IN
`THE RELEVANT ART ................................................................................ 15
`CLAIM CONSTRUCTION .......................................................................... 16
`OVERVIEW OF THE ’751 PATENT .......................................................... 21
`7.1.
`PROSECUTION HISTORY ........................................................... 23
`OVERVIEW OF THE PRIOR ART ............................................................. 27
`8.1.
`STREAMING FORMATS AND VOD ........................................... 27
`8.2. MEDIA PLAYERS ......................................................................... 28
`8.3.
`APPLICATIONS ON TVS AND STBS ......................................... 30
`8.4.
`DEVICE CASTING ........................................................................ 31
`8.5.
`REMOTE VIEWING ...................................................................... 32
`8.6.
`FILE EXTENSIONS AND MIME TYPES .................................... 33
`8.7.
`APPLICATION PROGRAMMING INTERFACES (APIS) .......... 35
`8.8.
`LOOK-UP TABLES (LUTS) .......................................................... 37
`8.9.
`U.S. PAT. NO. 8,660,545 – REDFORD (EX. 1005) ...................... 37
`8.10. U.S. PUB. NO. 2008/0235588 – GONZE (EX. 1006) .................... 52
`8.11. U.S. PUB. NO. 2006/0107299 - BARTFELD (EX. 1018) ............. 56
`IDENTIFICATION OF HOW CLAIMS ARE UNPATENTABLE ............ 60
`9.
`10. SUMMARY OF OPINIONS WITH RESPECT TO THE ’751
`PATENT ....................................................................................................... 60
`11. REDFORD-BARTFELD AND REDFORD-GONZE-BARTFELD
`RENDER CLAIMS 1-20 OBVIOUS ........................................................... 61
`11.1.
`INDEPENDENT CLAIM 1 ............................................................. 61
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`i
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`11.2. DEPENDENT CLAIM 2: “THE NON-TRANSITORY
`COMPUTER STORAGE MEDIUM OF CLAIM 1,
`WHEREIN EACH COMMAND OF THE AT LEAST ONE
`COMMAND
`IN THE SECOND FORMAT
`IS A
`UNIVERSAL COMMAND.”........................................................ 112
`11.3. DEPENDENT CLAIM 3: “THE NON-TRANSITORY
`COMPUTER STORAGE MEDIUM OF CLAIM 2,
`WHEREIN THE FIRST FORMAT IS DIFFERENT THAN
`THE SECOND FORMAT.” .......................................................... 112
`11.4. DEPENDENT CLAIM 4: “THE NON-TRANSITORY
`COMPUTER STORAGE MEDIUM OF CLAIM 1,
`WHEREIN THE SECOND MESSAGE IS SENT FROM THE
`ASSOCIATED SECOND COMPUTING DEVICE TO THE
`REMOTE SERVER DEVICE.” .................................................... 116
`11.5. DEPENDENT CLAIM 5: “THE NON-TRANSITORY
`COMPUTER STORAGE MEDIUM OF CLAIM 1,
`WHEREIN THE REMOTE SERVER DEVICE
`IS
`CONFIGURED TO CONVERT THE AT LEAST ONE
`COMMAND IN THE SECOND FORMAT INTO THE AT
`LEAST ONE COMMAND IN THE FIRST FORMAT
`BASED AT LEAST IN PART ON THE SECOND MESSAGE
`INCLUDING THEREIN A REFERENCE TO THE FIRST
`PIECE OF CONTENT.” ................................................................ 117
`11.6. DEPENDENT CLAIM 6: “THE NON-TRANSITORY
`COMPUTER STORAGE MEDIUM OF CLAIM 1,
`WHEREIN THE REMOTE SERVER DEVICE
`IS
`CONFIGURED TO CONVERT THE AT LEAST ONE
`COMMAND IN THE SECOND FORMAT INTO THE AT
`LEAST ONE COMMAND IN THE FIRST FORMAT
`BASED AT LEAST IN PART ON A REFERENCE TO THE
`FIRST MEDIA PLAYER APPLICATION HAVING BEEN
`INCLUDED IN THE SECOND MESSAGE.” ............................. 119
`11.7. DEPENDENT CLAIM 7: “THE NON-TRANSITORY
`COMPUTER STORAGE MEDIUM OF CLAIM 1,
`WHEREIN THE FIRST MEDIA PLAYER APPLICATION
`IS SELECTED BASED AT LEAST IN PART ON THE
`RECEIVED FIRST MESSAGE INCLUDING THEREIN A
`
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`ii
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`REFERENCE TO THE FIRST MEDIA PLAYER
`APPLICATION.” .......................................................................... 129
`11.8. DEPENDENT CLAIM 8: “THE NON-TRANSITORY
`COMPUTER STORAGE MEDIUM OF CLAIM 1,
`WHEREIN CONTROLLING HOW THE SELECTED FIRST
`MEDIA
`PLAYER APPLICATION
`PLAYS
`THE
`REFERENCED FIRST PIECE OF CONTENT INCLUDES
`AN EXECUTION OF THE FIRST COMMAND.” ...................... 131
`11.9. DEPENDENT CLAIM 9: “THE NON-TRANSITORY
`COMPUTER STORAGE MEDIUM OF CLAIM 1, THE
`OPERATIONS FURTHER COMPRISING: RETRIEVING
`THE FIRST MEDIA PLAYER APPLICATION FROM A
`REMOTE CONTENT PROVIDER BASED ON A
`DETERMINATION THAT THE FIRST MEDIA PLAYER
`APPLICATION IS NOT ALREADY SELECTED.” ................... 131
`11.10. DEPENDENT CLAIM 10: “THE NON-TRANSITORY
`COMPUTER STORAGE MEDIUM OF CLAIM 9,
`WHEREIN THE REMOTE CONTENT PROVIDER IS
`ASSOCIATED WITH THE REFERENCED FIRST PIECE
`OF CONTENT.” ............................................................................ 132
`11.11. DEPENDENT CLAIM 11: ............................................................ 133
`11.12. INDEPENDENT CLAIM 12 ......................................................... 136
`11.13. DEPENDENT
`CLAIM
`13:
`“THE
`COMPUTER-
`IMPLEMENTED METHOD OF CLAIM 12, WHEREIN THE
`FIRST MEDIA PLAYER APPLICATION IS SELECTED
`BASED FURTHER IN PART ON THE RECEIVED FIRST
`MESSAGE INCLUDING THEREIN A REFERENCE TO
`THE FIRST MEDIA PLAYER APPLICATION.” ....................... 185
`11.14. DEPENDENT
`CLAIM
`14:
`“THE
`COMPUTER-
`IMPLEMENTED METHOD OF CLAIM 12, THE
`OPERATIONS FURTHER COMPRISING: SELECTING
`THE FIRST MEDIA PLAYER APPLICATION BASED ON
`A DETERMINATION THAT A SECOND MEDIA PLAYER
`APPLICATION IS CURRENTLY SELECTED.” ........................ 187
`11.15. DEPENDENT
`CLAIM
`15:
`“THE
`COMPUTER-
`IMPLEMENTED METHOD OF CLAIM 12, FURTHER
`COMPRISING: RETRIEVING, BY THE CONTENT
`
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`iii
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`PRESENTATION DEVICE, THE SELECTED FIRST
`MEDIA PLAYER APPLICATION FROM A REMOTE
`CONTENT PROVIDER BASED ON THE FIRST FORMAT
`OF THE FIRST MESSAGE.” ....................................................... 189
`11.16. DEPENDENT
`CLAIM
`16:
`“THE
`COMPUTER-
`IMPLEMENTED METHOD OF CLAIM 12, WHEREIN THE
`REMOTE SERVER DEVICE
`IS CONFIGURED TO
`CONVERT THE AT LEAST ONE COMMAND IN THE
`SECOND FORMAT
`INTO THE AT LEAST ONE
`COMMAND IN THE FIRST FORMAT BASED AT LEAST
`IN PART ON A REFERENCE TO THE FIRST MEDIA
`PLAYER APPLICATION HAVING BEEN INCLUDED IN
`THE SECOND MESSAGE, AND WHEREIN THE FIRST
`MEDIA PLAYER APPLICATION IS SELECTED BASED
`FURTHER ON THE AT LEAST ONE COMMAND IN THE
`FIRST FORMAT HAVING BEEN CONVERTED FROM
`THE SECOND FORMAT.” .......................................................... 190
`11.17. INDEPENDENT CLAIM 17 ......................................................... 199
`11.18. DEPENDENT
`CLAIM
`18:
`“THE
`CONTENT
`PRESENTATION DEVICE OF CLAIM 17, WHEREIN THE
`FIRST MEDIA PLAYER APPLICATION IS CONFIGURED
`TO RECOGNIZE EACH COMMAND OF THE AT LEAST
`ONE COMMAND IN THE FIRST FORMAT.” .......................... 250
`11.19. DEPENDENT
`CLAIM
`19:
`“THE
`CONTENT
`PRESENTATION DEVICE OF CLAIM 17, WHEREIN THE
`SECOND MESSAGE IS SENT FROM THE ASSOCIATED
`SECOND COMPUTING DEVICE TO THE REMOTE
`SERVER DEVICE.”...................................................................... 253
`11.20. DEPENDENT
`CLAIM
`20:
`“THE
`CONTENT
`PRESENTATION DEVICE OF CLAIM 18, WHEREIN THE
`FIRST MEDIA PLAYER APPLICATION IS SELECTED
`BASED FURTHER ON THE RECEIVED FIRST MESSAGE
`INCLUDING THEREIN A REFERENCE TO THE FIRST
`MEDIA PLAYER APPLICATION.” ............................................ 254
`12. CONCLUSION ........................................................................................... 256
`CLAIM LISTING APPENDIX ............................................................................. 257
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`iv
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`I, David B. Lett, declare that I have personal knowledge of the facts set forth
`
`in this declaration and, if called to testify as a witness, could and would do so
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`competently.
`
`1. INTRODUCTION
`I have been retained as an expert witness on behalf of the Petitioner,
`1.
`
`Comcast Cable Communications, LLC, for the above-referenced inter partes review
`
`proceeding.
`
`2.
`
`I have been asked to provide a declaration regarding certain matters
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`pertaining to U.S. Patent No. 11,048,751 (“the ’751 Patent”) and the unpatentability
`
`grounds set forth in the Petition for this proceeding. My experience with television
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`distribution systems, Set Top Boxes (STBs), Electronic Program Guides (EPGs),
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`Video on Demand (VOD), and content delivery systems provides me with an
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`understanding of the subject matter described and claimed in the ’751 Patent.
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`3.
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`I am being compensated for my work on this matter at my usual
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`consulting rate or testimony rate of $350 or $400 per hour respectively. My
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`compensation is in no way dependent upon my opinions or testimony or the outcome
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`of this proceeding. I have no financial interest in the party or in the outcome of this
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`proceeding.
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`2. PROFESSIONAL BACKGROUND AND QUALIFICATIONS
`I am a technical consultant and product development industry veteran
`4.
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`with expertise in electronics, software, hardware, video, audio, and data
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`1
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`communications, having led product development organizations in cable, satellite,
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`consumer electronics, home automation, asset tracking, remote tank logistics, and
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`alarm industries. My current curriculum vitae is attached as Ex. 1003 and some
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`highlights follow.
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`5.
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`I earned my B.S. in Electrical Engineering (1982) with high honors
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`from the University of Tennessee in Knoxville, Tennessee. I also attended the
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`Georgia Institute of Technology from 1986 to 1987, completing 40% of the required
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`degree hours for the M.S. Electrical Engineering program.
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`6.
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`From 1982 to 1985, I worked at Scientific Atlanta as an Electrical
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`Engineer designing video, audio, and data communications equipment for the cable
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`television industry. I designed software and hardware including addressable data
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`transmitters, video sync suppression scramblers, transaction format converters, and
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`data channel monitors for addressable Cable Television systems and Set Top Boxes.
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`7.
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`From 1983 to 1985, while working at Scientific Atlanta, I also worked
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`as an Assistant Professor at Devry Institute of Technology, teaching courses in
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`electronics and microprocessor hardware/software.
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`8.
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` From 1985 to 1990, I worked at Wegener Communications as a Senior
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`Electrical engineer, designing satellite communications equipment including
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`forward error correction (FEC) coding systems, PSK modems, and analog control
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`systems for RF modulators and PSK demodulators. I was promoted to the Hardware
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`2
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`
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`Engineering Manager, where I managed product development of video, audio, and
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`data satellite receivers, modulators, graphics display systems, DSP-based
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`compandors, FSK and PSK satellite modems, multiplexers, forward error correction
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`(FEC) codecs, RF upconverters and downconverters, and baseband analog and
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`digital processing components.
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`9.
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`In 1990, I returned to Scientific Atlanta, which was acquired by Cisco
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`in 2006. I worked as Engineering Manager running the set top box engineering
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`group where I was promoted to Director and Vice President during my tenure until
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`2011. I led the design of many cable set top boxes and systems through the evolution
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`of analog video, addressability, downloadable software, electronic program guides,
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`digital video, VOD, software applications, high-definition TV, DVR, DOCSIS, full
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`spectrum tuners, and multiroom DVR. These systems implemented various
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`technologies including DOCSIS 1/2/3 and hybrid gateways, 802.11, IPTV, DVR,
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`cable modems, ADSL, VDSL, DVB-T/C/S, bootloaders, factory diagnostics,
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`application frameworks, Nagra, DRMs, conditional access, secure microprocessors,
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`device management, Android, Adobe Flash, Linux, DVD play/record, MPEG-4,
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`MPEG-2, H.264, NTSC, PAL, DAVIC, MoCA, high-performance CPUs,
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`cablecards, network processors, HDMI, multiple video/audio display interfaces,
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`2D/3D graphics, multiple RF tuners, and full spectrum tuners.
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`3
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`10. From 2011 to 2016, I worked for EchoStar Technologies, which served
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`as the product development organization for sister company DISH Network. I
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`served as Vice President of Engineering and was the Head of the Atlanta research
`
`and development center. I led the development of satellite set top boxes, consumer
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`electronic equipment, and a home automation and security system. Technologies
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`used included video/audio, IoT, H.265, HEVC, 3D, Satellite, wireless, MoCA,
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`transcoding, embedded C Linux applications, mobile applications (IOS and
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`Android), SaaS, web applications (Javascript, HTML), BSS/OSS, AWS cloud
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`storage, 2-way video/audio streaming, authentication, and VoIP.
`
`11.
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`In 2016, I started an independent consulting business in technology and
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`intellectual property projects. I have consulted in various technology areas and
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`industries including consumer electronics, Internet of Things (IoT), cable, satellite,
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`television, media, and cryptocurrency.
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`12. From 2019 to 2022, I worked as Chief Technology Officer for Telular,
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`an Ametek company. I was responsible for the development of Industrial Internet
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`of Things (IIoT) recurring revenue solutions, combining wireless technologies,
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`purpose-built hardware, and SaaS in the commercial telematics, security and home
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`automation markets and sold under the SkyBitz and Telguard brands.
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`4
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`13.
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` My record of professional service includes awards on products I
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`designed and developed from several organizations in my field of expertise,
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`including Best of Show, Technology Emmy, and Best of Innovations.
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`14.
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`I am a named inventor on 86 patents and published patent applications
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`corresponding to the areas of my professional work. The patents and published
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`applications involving video and audio technologies include:
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`• U.S. Patent No. 9,882,736 titled “Remote Sound Generation for a
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`Home Automation System”
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`• U.S. Patent No. 9,615,139 titled “Determining Device That Performs
`
`Processing of Output Pictures”
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`• U.S. Patent No. 8,549,567 titled “Media Content Sharing Over a Home
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`Network”
`
`• U.S. Patent No. 8,161,388 titled “Interactive discovery of display
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`device characteristics”
`
`• U.S. Patent Nos. 8,120,924, 7,240,217, 6,785,817, 6,564,324,
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`6,212,278, and 5,440,632
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`titled “Reprogrammable Subscriber
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`Terminal”
`
`• U.S. Patent No. 7,908,625 titled “Networked Multimedia System”
`
`• U.S. Patent Nos. 7,861,272 and 7,849,486
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`titled “Networked
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`Subscriber Television Distribution”
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`5
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`
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`• U.S. Patent Nos. 7,774,820 and 7,069,578 titled “Settop Cable
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`Television Control Device and Method Including Bootloader Software
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`and Code Version Table for Maintaining and Updating Settop Receiver
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`Operating System Software”
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`• U.S. Patent No. 5,771,064 titled “Home Communications Terminal
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`having an Applications Module”
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`• U.S. Patent No. 5,715,515 titled “Method and Apparatus for
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`Downloading On-Screen Graphics and Captions to a Television
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`Terminal”
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`• U.S. Patent No. 5,657,414 titled “Auxiliary Device Control for a
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`Subscriber Terminal”
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`• U.S. Patent No. 5,592,551 titled “Method and Apparatus for Providing
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`Interactive Electronic Programming Guide”
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`• U.S. Patent No. 5,539,822 titled “System and Method for Subscriber
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`Interactivity in a Television System”
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`• U.S. Patent No. 5,357,276 titled “Method of Providing Video On
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`Demand with VCR Like Functions”
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`• U.S. Patent Application Publication Nos. 2004/0068753 and
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`2008/0072272 titled “Video Transmission Systems and Methods for a
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`Home Network”
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`6
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`
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`• U.S. Patent Application Publication No. 2004/0133911
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`titled
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`“Subscriber Network in a Satellite System”
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`15.
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`I have a general understanding of the U.S. patent prosecution process
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`and of the novelty and non-obviousness requirements for patentability.
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`16.
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`I believe that my extensive industry experience and educational
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`background qualify me as an expert in the relevant field of multimedia content
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`management retrieval and distribution systems. I am knowledgeable of the relevant
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`skill set that would have been possessed by a hypothetical person of ordinary skill
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`in the art at the time of the invention of the ’751 Patent, which I (as I discuss below)
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`understand is 2011.
`
`3. MATERIALS CONSIDERED
`In formulating my opinion, I reviewed and considered U.S. Pat. No.
`17.
`
`11,048,751 to Strober (Ex. 1001), as to which I am offering my opinion regarding
`
`the validity of certain claims, as discussed herein.
`
`18.
`
`In preparing this declaration, I also reviewed and considered the
`
`Petition and the file history of the ’751 Patent (included in Ex. 1004) as well as the
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`following references:
`
`• Ex. 1004:
`11,048,751
`
`Certified Prosecution History for U.S. Patent No.
`
`• Ex. 1005:
`
`U.S. Pat. No. 8,660,545 (“Redford”)
`
`• Ex. 1006:
`
`U.S. Pub. No. 2008/0235588 (“Gonze”)
`
`
`
`
`
`7
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`
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`
`
`• Ex. 1007-17: Omitted
`
`• Ex. 1018:
`
`U.S. Pub. No. 2006/0107299 (“Bartfeld”)
`
`• Ex. 1019:
`
`Reserved
`
`Joint Claim Construction Statement, Touchstream
`• Ex. 1020:
`Technologies, Inc. v. Google LLC, 6:21-cv-00569-ADA (WDTX) (Feb.
`8, 2022)
`
`Exhibit 1 to Joint Disputed Claim Terms Charts,
`• Ex. 1021:
`Touchstream Technologies, Inc. v. Vizbee, Inc., 1:17-cv-06247-PGG-
`KNF (SDNY) (Aug. 6, 2018)
`
`Jury Instructions, Touchstream Technologies, Inc. v.
`• Ex. 1022:
`Google LLC, 6:21-cv-00569-ADA (WDTX) (July 21, 2023)
`
`• Ex. 1023-29: Omitted
`
`• Ex. 1030:
`
`U.S. Pub. No. 2002/0104096 (“Cramer”)
`
`• Ex. 1031:
`
`U.S. Pat. No. 7,356,575 (“Shapiro”)
`
`• Ex. 1032:
`
`U.S. Pat. No. 7,269,842 (“Estipona”)
`
`• Ex. 1033:
`
`U.S. Pub. No. 2004/0267899 (“Rahman”)
`
`• Ex. 1034:
`
`U.S. Pub. No. 2004/0098533 (“Henshaw”)
`
`• Ex. 1035:
`
`U.S. Pub. No. 2004/0172656 (“Kim”)
`
`• Ex. 1036:
`
`Omitted
`
`• Ex. 1037:
`
`U.S. Pat. No. 7,343,419 (“Robinson”)
`
`• Ex. 1038-40: Omitted
`
`CODING OF MOVING PICTURES AND AUDIO, MPEG-4
`• Ex. 1041:
`Overview (Int’l Org. Standardisation 2002)
`
`Robert Godwin-Jones, Digital Video Update: YouTube,
`• Ex. 1042:
`Flash, High-Definition, 11 LANGUAGE LEARNING & TECH. 16, 17 (2007)
`
`
`
`
`
`8
`
`
`
`
`
`John C. Paolillo et al., A Network of Social Media
`• Ex. 1043:
`Platform History: Social Structure, Dynamics and Content on YouTube,
`PROC. 52ND HAWAII INT’L CONF. ON SYS. SCIS., 1, (2019)
`
`• Ex. 1044:
`YouTube Opens Internet Video to Masses; Serving 3
`Million Videos Daily and Growing, YouTube Unveils a Fast, Fun, and
`Easy Service for Consumers to Broadcast Original Video, MARKET
`WIRE, Dec. 15, 2005
`
`• Ex. 1045:
`Hulu Debuts via Private Beta and on Distribution
`Partners AOL, Comcast, MSN, MySpace and Yahoo!; Company
`Announces Major Licensing Deals with Metro-Goldwyn-Mayer Studios
`Inc. and Sony Pictures Television; Providence Equity Partners Makes
`Strategic Investment in News Corporation/NBC Universal Online Video
`Joint Venture, BUS. WIRE, Oct. 29, 2007
`
`Blockbuster Offers Cheaper Online Rental, ASSOCIATED
`• Ex. 1046:
`PRESS, Jun. 13, 2007
`
`• Ex. 1047:
`Adobe Delivers Flash Player 9 With H.264 Video
`Support; HD Quality Web Video and Audio Now Available With Adobe
`Flash Player Update, BUS. WIRE, Dec. 4, 2007
`
`• Ex. 1048:
`Microsoft Unveils Silverlight to Power the Next
`Generation of Media Experiences on the Web; Leading Media
`Companies and Solution Providers Announce Support for New Solution
`for Video and Interactivity on Mac- and Windows-Based Web Browsers,
`PR NEWSWIRE US, Apr. 16, 2007
`
`• Ex. 1049:
`Former Apple Multimedia Pioneers Unveil WebTV; New
`Company Brings Internet to Television Viewers, PR NEWSWIRE, Jun.
`12, 1996
`
`Netflix, TiVo Team Up After 4-Year Courtship,
`• Ex. 1050:
`ASSOCIATED PRESS, Oct. 30, 2008
`
`• Ex. 1051:
`TiVo and Amazon.com Announce New Service Enabling
`Amazon Unbox Video Download to TiVo; TiVo Subscribers Will Soon Be
`Able to Watch Amazon Unbox Movies and TV Shows on Their TVs, BUS.
`WIRE, Feb. 7, 2007
`
`
`
`
`
`9
`
`
`
`
`
`Wall Crumbling Between Televisions and Computers,
`• Ex. 1052:
`AGENCE FRANCE PRESSE – ENGLISH, Jan. 8, 2009
`
`ENHANCED TV BINARY INTERCHANGE FORMAT 1.0, ETV
`• Ex. 1053:
`(OpenCable Specifications, Nov. 25, 2009)
`
`• Ex. 1054:
`Award-Winning Sonos™ Digital Music System Begins
`Shipping to Customers, PR NEWSWIRE US, Jan. 27, 2005
`
`Sonos Introduces the Sonos™ ZonePlayer ZP80, PR
`• Ex. 1055:
`NEWSWIRE, Jan. 4, 2006
`
`• Ex. 1056:
`Sonos Introduces the Sonos Controller for iPhone; Free
`Application Lets Music Lovers Control Leading Multi- Room Music
`System from Their iPhone, PR NEWSWIRE, Oct. 28, 2008
`
`AT&T Opens R&D Lab in Cambridge, England, BUS.
`• Ex. 1057:
`WIRE, Feb. 10, 1999
`
`• Ex. 1058:
`Microsoft Releases Windows NT 4.0 Terminal Server
`Edition, M2 PRESSWIRE, Jun 16, 1998
`
`• Ex. 1059:
`TeamViewer: TeamViewer 3.0 Beta Published; Next
`Generation of the Popular Remote Support Software, M2 PRESSWIRE,
`Aug. 27, 2007
`
`• Ex. 1060:
`3am Labs Announces $10 Million Series A Financing;
`McNamee Lawrence & Co. Acts as Exclusive Financial Advisor to 3am
`Labs, BUS. WIRE, Nov. 16, 2004
`
`• Ex. 1061:
`Expertcity's GoToMyPC Product Wins A People's Choice
`Award At Upside Events' Showcase 2001, INTERNET WIRE, Feb. 1, 2001
`
`• Ex. 1062:
`TV2Me(R) Goes Global By Partnering With Leading
`Asian Online Entertainment Company; Manila-Based ESL Adds Sales
`and Marketing Muscle to Bring Pioneering Place Shifting Technology to
`Wider Market, PR NEWSWIRE US, May 16, 2006
`
` CES Innovations 2005 Award and Red Herring Finalist
`• Ex. 1063:
`for 100 Most Innovative Companies are Latest Commendations for Sling
`Media, BUS. WIRE, Nov. 11, 2004
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`10
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`• Ex. 1064:
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`Final Written Decision, IPR2022-00795 (Sep. 27, 2023)
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`• Ex. 1065:
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`Patent Owner Response, IPR2022-00795 (Jan. 13, 2023)
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`• Ex. 1066:
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`Omitted
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`• Ex. 1067:
`Progressive Networks Launches the First Commercial
`Audio-On-Demand System Over the Internet, BUS. WIRE, Apr. 10, 1995
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`• Ex. 1068:
`Progressive Networks’ RealVideo Launched With Wide
`Industry Support, PR NEWSWIRE EUROPE, February 10, 1997
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`• Ex. 1069:
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`Omitted
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`• Ex. 1070:
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`U.S. Pat. Application No. 61/477,998
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`• Ex. 1071:
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`U.S. Pat. No. 8,904,289 to Strober (“the ’289 Patent”)
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`• Ex. 1072:
`8,904,289
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`Certified Prosecution History for U.S. Patent No.
`
`• Ex. 1073-74: Omitted
`4. UNDERSTANDING OF APPLICABLE LEGAL STANDARDS
`19. Although I am not an attorney, I have a general understanding of the
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`applicable legal standards pertaining to the patentability issues presented in this
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`proceeding. I understand that the Petitioner is challenging the patentability of the
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`claims of the ’751 Patent based on the following grounds:
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`• Claims 1-8 and 10-20 as obvious under pre-AIA 35 § 103(a) based on
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`Redford in view of Bartfeld.
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`• Claims 1-20 as obvious under pre-AIA 35 § 103(a) based on Redford-
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`Bartfeld in view of Gonze.
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`11
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`20.
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`I understand that, in this inter partes review, Petitioner has the burden
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`of proving that each challenged claim is unpatentable by a preponderance of the
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`evidence.
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`21.
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`I understand that to be valid, a patent claim must be “novel,” and is
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`invalid if “anticipated” by a single prior art reference. I further understand a
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`reference anticipates if it discloses each and every element as arranged in the claim
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`so as to enable a person of ordinary skill in the art to make and use the claimed
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`invention without undue experimentation.
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`22.
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`I understand that a patent claim is unpatentable if, at the time of the
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`invention, it would have been obvious to one of ordinary skill in the art to combine
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`the teachings of the prior art to yield the patent claim. It is my understanding that
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`this determination is made after weighing the following factors: (1) the level of
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`ordinary skill in the pertinent art; (2) the scope and content of the prior art; (3) the
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`differences between the prior art as a whole and the claim at issue; and (4) as
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`appropriate, other objective considerations identified below.
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`23.
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`It is my understanding that the prior art and claimed invention should
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`be viewed through the knowledge and understanding of a person of ordinary skill
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`in the art – one should not use his or her own insight or hindsight in deciding whether
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`a claim is obvious. I further understand that a claim may be rendered obvious if a
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`person of ordinary skill in the art can implement the claimed invention as a
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`12
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`predictable variation of a known product. I further understand that a person of
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`ordinary skill in the art is presumed to have knowledge of the relevant prior art at the
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`time of the claimed invention, which comprises any prior art that was reasonably
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`pertinent to the particular problems the inventor faced.
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`24.
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`I understand that a showing of obviousness requires some articulated
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`reasoning with a rational underpinning to support the combination of the references.
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`I understand that in consideration of the issue of obviousness it is important to
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`identify whether a reason existed at the time of the invention that would have led a
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`person of ordinary skill in the pertinent art to combine elements of the references in
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`a way that yields the claimed invention.
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`25.
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`I understand that a claim may be considered unpatentable for
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`obviousness for various reasons. I have been informed that the following exemplary
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`rationales may support a finding of obviousness:
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`(A) combining prior art elements according to known methods to yield
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`predictable results;
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`(B) substituting one known element for another to obtain predictable results;
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`(C) use of a known technique to improve similar devices in the same way;
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`(D) applying a known technique to a known device ready for improvement
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`to yield predictable results;
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`13
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`(E) choosing from a finite number of identified, predictable solutions with a
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`reasonable expectation of success;
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`(F) known work in a field that prompts variations in the work in the same or
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`a different field that leads to predictable results; and
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`(G) some teaching, suggestion, or motivation in the prior art that would have
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`led a person of ordinary skill in the art to modify a prior art reference or
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`combine multiple prior art references or teachings to arrive at the
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`claimed invention.
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`26.
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` I understand that various objective or “real world” factors may be
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`indicative of non-obviousness. I understand that such factors include:
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`(A)
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`the commercial success of the claimed invention;
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`(B)
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`the existence of a long-felt, unresolved need for a solution to the problem
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`solved by the claimed invention;
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`(C) failed attempts to solve the problem solved by the claimed invention;
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`(D) copying of the claimed invention;
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`(E) unexpected results of the claimed invention;
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`(F) praise for the claimed invention by others in the relevant field; and
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`(G) willingness of others to accept a license under the patent because of the
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`merits of the claimed invention.
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`14
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`27.
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`It is my understanding that the prior art references themselves may
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`provide a suggestion, motivation, or reason to combine, but other times the link may
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`be based on the common sense of the person of ordinary skill in the pertinent art. I
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`further understand that obviousness analysis recognizes that market demand, rather
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`than scientific literature, often drives innovation, and market demand is sufficient
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`motivation to combine references.
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`28.
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`It is my understanding that a particular combination may be proven
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`obvious merely by showing that it was obvious to try the combination. For
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`example, common sense is a good reason for a person of ordinary skill to pursue
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`known options when there is a design need or market pressure to solve a problem
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`and there are a finite number of identified, predictable solutions.
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`29.
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`I further understand that a proper obviousness analysis focuses on
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`what was known or obvious to a person of ordinary skill in the art, not just the
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`patentee. Accordingly, it is my understanding that any need or problem known in
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`the field at the time of invention and addressed by the patent can provide a reason
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`for combining the limitations in the manner claimed.
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`5. THE RELEVANT ART AND LEVEL OF ORDINARY SKILL IN THE
`RELEVANT ART
`I understand that obviousness is determined from the vantage point of
`30.
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`a person of ordinary skill in the relevant art at the time of the alleged invention
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`(“POSITA”). The ’751 Patent is directed to controlling the presentation of content
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`15
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`on a display device, and I agree that this represents the relevant field of art. See Ex.
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`1001, Abstract. I understand that a person of ordinary skill in the art is one who is
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`presumed to be aware of all pertinent art, thinks along conventional wisdom in the
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`art, and is a person of ordinary creativity.
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`31.
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`I believe that a person of ordinary skill in the art of the ’751 Patent at
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`the time of the alleged invention of the ’751 Patent would have a degree in computer
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`or electrical engineering, computer science, information systems, or a similar
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`discipline, along with three-to-four years of experience with the design and/or
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`implementation of network-based content delivery systems, such as video-on-
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`demand (VOD), cable systems, and Internet video streaming. I worked in the
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`relevant field with such persons at, and leading up to, the time of the alleged
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`invention of the ’751 Patent, and thus, I am familiar with the knowledge that such
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`persons had at the time (i.e., late 2010).
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`32. All of my statements in this declaration regarding what a person of
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`ordinary skill in the art would have known, understood, appreciated, been motivated
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`to do, etc., refer to a person of ordinary skill in the art in late 2010, before the earliest
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`claimed priority date of the ’751 Patent (which, as I discuss below, is April 21, 2011).
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`6. CLAIM CONSTRUCTION
`I understand that my analysis requires an understanding of the scope of
`33.
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`the claims of the ’751 Patent. I understand that claim terms subject to inter partes
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`16
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`review, absent some other definition provided in the patent, are given their ordinary
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`meaning to a person of ordinary skill in the art in light of the patent specification.
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`Therefore, in my analyses given below, I have assumed that all claim terms are given
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`their ordinary interpretation as would have been understood by a POSITA reading
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`the patent specification as of the priority date.
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`34.
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`I understand that Application No. 15/687,249 (“the ’249 Application”),
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`which eventually became the ’751 Patent, was filed on August 25, 2017. It is further
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`my understanding that the ’249 Application was the fourth in a chain of applications
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`claiming priority to an application filed on April 21, 2011. It is my understanding
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`that the ’751 Patent is entitled to a priority date of the filing date of the earliest
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`application from which the ’751 Patent claims priority, i.e., April 21, 2011.
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`35.
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`It is my understanding that in an IPR of claims 1, 2, and 5-9 of U.S.
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`Patent No. 8,356,251 (“the ’251 Patent”), in the same family tree as and involving
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`similar claims to the present, the panel of Administrative Patent Judges found that
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`the term “‘media player’ refers to software and not to a hardware device.” Ex. 1064,
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`13. The panel did not expressly construe any other terms of claims 1, 2, and 5-9 of
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`the ’251 Patent. Ex. 1064, 13.
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`36.
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`It is my understanding that in the IPR of the ’251 Patent, involving
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`similar claim terms to the present, Patent Owner characterized certain claim terms.
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`Regarding the claim term “media player,” Patent Owner asserts “[c]onsidering the
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`17
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`intrinsic record, including the file his