UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CHARTER COMMUNICATIONS, INC.,
`Petitioner
`
`v.
`
`TOUCHSTREAM TECHNOLOGIES, INC.
`Patent Owner
`
`Patent No. 11,048,751
`Filing Date: August 25, 2017
`Issue Date: June 29, 2021
`Title: PLAY CONTROL OF CONTENT ON A DISPLAY DEVICE
`
`Inter Partes Review No.: IPR2024-01232
`
`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.
`
` Charter Ex. 1102
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`1.
`
`2.
`
`INTRODUCTION ................................................................................................... 1
`
`PROFESSIONAL BACKGROUND AND QUALIFICATIONS ........................... 1
`
`3. MATERIALS CONSIDERED ................................................................................ 6
`
`4. UNDERSTANDING OF APPLICABLE LEGAL STANDARDS ...................... 11
`
`THE RELEVANT ART AND LEVEL OF ORDINARY SKILL IN THE
`5.
`RELEVANT ART .......................................................................................................... 15
`
`6.
`
`CLAIM CONSTRUCTION .................................................................................. 16
`
`7. OVERVIEW OF THE ’751 PATENT .................................................................. 20
`7.1. Prosecution History ..................................................................................... 22
`
`
`
`
`
`
`
`
`
`7.1.1. Prosecution History of the ’998 Application .................................................. 22
`
`7.1.2. Prosecution History of the ’289 Patent ........................................................... 22
`
`7.1.3. Prosecution History of the ’195 Patent ........................................................... 23
`
`7.1.4. Prosecution History of the ’751 Patent ........................................................... 24
`
`8. OVERVIEW OF THE PRIOR ART ..................................................................... 26
`8.1. Streaming Formats and VOD ............................................................................. 26
`8.2. Media Players................................................................................................... 27
`8.3. Applications on TVs and STBs ........................................................................ 29
`8.4. Device Casting ................................................................................................... 30
`8.5. Remote Viewing ................................................................................................ 30
`8.6. File Extensions and MIME Types ..................................................................... 32
`
`
`
`ii
`
`

`

`8.7. Application Programming Interfaces (APIs) .................................................... 33
`8.8. Look-Up Tables (LUTs) ................................................................................... 35
`8.9. U.S. Pat. No. 9,490,998 – Danciu (Ex. 1112) ................................................... 35
`8.10 U.S. Pub. No. 2009/0172757 – Aldrey (Ex. 1115) ........................................... 48
`8.11 U.S. Pub. No. 2004/0078812 – Calvert (Ex. 1111) .......................................... 52
`8.12 U.S. Pub. No. 2009/0248802 - Mahajan (Ex. 1114) ......................................... 61
`
`9. OPINIONS WITH RESPECT TO THE ’751 PATENT ....................................... 65
`9.1 DANCIU IN VIEW OF MAHAJAN AND/OR DANCIU IN VIEW OF
`MAHAJAN AND CALVERT RENDERS CLAIMS 1-20 OBVIOUS ..................... 65
`9.2 ALDREY IN VIEW OF MAHAJAN RENDERS CLAIMS 1-20
`OBVIOUS ................................................................................................................. 115
`
`10. CONCLUSION ................................................................................................... 148
`
`CLAIM LISTING APPENDIX .................................................................................... 149
`
`
`
`
`iii
`
`

`

`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
`
`competently.
`
`1.
`
`INTRODUCTION
`I have been retained as an expert witness on behalf of the Petitioner,
`1.
`
`Charter Communications, Inc., for the above-referenced inter partes review
`
`proceeding.
`
`2.
`
`I have been asked to provide a declaration regarding certain matters
`
`pertaining to U.S. Patent No. 11,048,751 (“the ’751 Patent”) (Ex. 1101) and the
`
`unpatentability grounds set forth in the Petition for this proceeding. My experience
`
`with television distribution systems, Set Top Boxes (STBs), Electronic Program
`
`Guides (EPGs), Video on Demand (VOD), and content delivery systems provides
`
`me with an understanding of the subject matter described and claimed in the ’751
`
`Patent.
`
`3.
`
`I am being compensated at my usual consulting rate of $385 per hour
`
`for my work on this matter. My compensation is in no way dependent upon my
`
`opinions or testimony or the outcome of this proceeding. I have no financial interest
`
`in the party or in the outcome of this proceeding.
`
`2.
`
`PROFESSIONAL BACKGROUND AND QUALIFICATIONS
`I am a technical consultant and product development industry veteran
`4.
`
`with expertise
`
`in electronics, software, hardware, video, audio, and data
`
`
`
`1
`
`

`

`communications, having led product development organizations in cable, satellite,
`
`consumer electronics, home automation, asset tracking, remote tank logistics, and
`
`alarm industries. My current curriculum vitae is attached as Ex. 1103 and some
`
`highlights follow.
`
`5.
`
`I earned my B.S. in Electrical Engineering (1982) with high honors
`
`from the University of Tennessee in Knoxville, Tennessee. I also attended the
`
`Georgia Institute of Technology from 1986 to 1987, completing 40% of the required
`
`degree hours for the M.S. Electrical Engineering program.
`
`6.
`
`From 1982 to 1985, I worked at Scientific Atlanta as an Electrical
`
`Engineer designing video, audio, and data communications equipment for the cable
`
`television industry. I designed software and hardware including addressable data
`
`transmitters, video sync suppression scramblers, transaction format converters, and
`
`data channel monitors for addressable Cable Television systems and Set Top Boxes.
`
`7.
`
`From 1983 to 1985, while working at Scientific Atlanta, I also worked
`
`as an Assistant Professor at DeVry Institute of Technology, teaching courses in
`
`electronics and microprocessor hardware/software.
`
`8.
`
`From 1985 to 1990, I worked at Wegener Communications as a Senior
`
`Electrical engineer, designing satellite communications equipment including
`
`forward error correction (FEC) coding systems, PSK modems, and analog control
`
`systems for RF modulators and PSK demodulators. I was promoted to the Hardware
`
`Engineering Manager, where I managed product development of video, audio, and
`2
`
`
`

`

`data satellite receivers, modulators, graphics display systems, DSP-based
`
`compandors, FSK and PSK satellite modems, multiplexers, forward error correction
`
`(FEC) codecs, RF upconverters and downconverters, and baseband analog and
`
`digital processing components.
`
`9.
`
`In 1990, I returned to Scientific Atlanta, which was acquired by Cisco
`
`in 2006. I worked as Engineering Manager running the set top box engineering
`
`group where I was promoted to Director and Vice President during my tenure until
`
`2011. I led the design of many cable set top boxes and systems through the evolution
`
`of analog video, addressability, downloadable software, electronic program guides,
`
`digital video, VOD, software applications, high-definition TV, DVR, DOCSIS, full
`
`spectrum tuners, and multiroom DVR. These systems implemented various
`
`technologies including DOCSIS 1/2/3 and hybrid gateways, 802.11, IPTV, DVR,
`
`cable modems, ADSL, VDSL, DVB-T/C/S, bootloaders, factory diagnostics,
`
`application frameworks, Nagra, DRMs, conditional access, secure microprocessors,
`
`device management, Android, Adobe Flash, Linux, DVD play/record, MPEG-4,
`
`MPEG-2, H.264, NTSC, PAL, DAVIC, MoCA, high-performance CPUs,
`
`cablecards, network processors, HDMI, multiple video/audio display interfaces,
`
`2D/3D graphics, multiple RF tuners, and full spectrum tuners.
`
`10. From 2011 to 2016, I worked for EchoStar Technologies, which served
`
`as the product development organization for sister company DISH Network. I
`
`served as Vice President of Engineering and was the Head of the Atlanta research
`3
`
`
`

`

`and development center. I led the development of satellite set top boxes, consumer
`
`electronic equipment, and a home automation and security system. Technologies
`
`used included video/audio, IoT, H.265, HEVC, 3D, Satellite, wireless, MoCA,
`
`transcoding, embedded C Linux applications, mobile applications (IOS and
`
`Android), SaaS, web applications (Javascript, HTML), BSS/OSS, AWS cloud
`
`storage, 2-way video/audio streaming, authentication, and VoIP.
`
`11.
`
`In 2016, I started an independent consulting business in technology and
`
`intellectual property projects. I have consulted in various technology areas and
`
`industries including consumer electronics, Internet of Things (IoT), cable, satellite,
`
`television, media, and cryptocurrency.
`
`12. From 2019 to 2022, I worked as Chief Technology Officer for Telular,
`
`an Ametek company. I was responsible for the development of Industrial Internet of
`
`Things (IIoT) recurring revenue solutions, combining wireless technologies,
`
`purpose-built hardware, and SaaS in the commercial telematics, security and home
`
`automation markets and sold under the SkyBitz and Telguard brands.
`
`13. My record of professional service includes awards on products I
`
`designed and developed from several organizations in my field of expertise,
`
`including Best of Show, Technology Emmy, and Best of Innovations.
`
`14.
`
`I am a named inventor on 86 patents and published patent applications
`
`corresponding to the areas of my professional work. The patents and published
`
`applications involving video and audio technologies include:
`4
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`•
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`•
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`•
`
`U.S. Patent No. 9,882,736 titled “Remote Sound Generation for a
`Home Automation System”
`
`U.S. Patent No. 9,615,139 titled “Determining Device That
`Performs Processing of Output Pictures”
`
`U.S. Patent No. 8,549,567 titled “Media Content Sharing Over a
`Home Network”
`
`U.S. Patent No. 8,161,388 titled “Interactive discovery of display
`device characteristics”
`
`U.S. Patent Nos. 8,120,924, 7,240,217, 6,785,817, 6,564,324,
`
`6,212,278, and
`Terminal”
`
`5,440,632 titled “Reprogrammable Subscriber
`
`U.S. Patent No. 7,908,625 titled “Networked Multimedia System”
`
`U.S. Patent Nos. 7,861,272 and 7,849,486 titled “Networked
`Subscriber Television Distribution”
`
`U.S. Patent Nos. 7,774,820 and 7,069,578 titled “Settop Cable
`Television Control Device and Method Including Bootloader
`Software and Code Version Table for Maintaining and Updating
`Settop Receiver Operating System Software”
`
`U.S. Patent No. 5,771,064 titled “Home Communications Terminal
`having an Applications Module”
`
`U.S. Patent No. 5,715,515 titled “Method and Apparatus for
`Downloading On-Screen Graphics and Captions to a Television
`Terminal”
`
`U.S. Patent No. 5,657,414 titled “Auxiliary Device Control for a
`Subscriber Terminal”
`
`U.S. Patent No. 5,592,551 titled “Method and Apparatus for
`Providing Interactive Electronic Programming Guide”
`
`U.S. Patent No. 5,539,822 titled “System and Method for Subscriber
`Interactivity in a Television System”
`
`U.S. Patent No. 5,357,276 titled “Method of Providing Video On
`5
`
`
`
`

`

`Demand with VCR Like Functions”
`
`•
`
`U.S. Patent Application Publication Nos. 2004/0068753 and
`2008/0072272 titled “Video Transmission Systems and Methods for
`a Home Network”
`
`•
`
`U.S. Patent Application Publication No. 2004/0133911 titled
`“Subscriber Network in a Satellite System”
`I have a general understanding of the U.S. patent prosecution process
`
`15.
`
`and of the novelty and non-obviousness requirements for patentability.
`
`16.
`
`I believe that my extensive industry experience and educational
`
`background qualify me as an expert in the relevant field of multimedia content
`
`management retrieval and distribution systems. I am knowledgeable of the relevant
`
`skill set that would have been possessed by a hypothetical person of ordinary skill in
`
`the art at the time of the invention of the ’751 Patent, which I (as I discuss below)
`
`understand is late 2010 or early 2011.
`
`3. MATERIALS CONSIDERED
`In formulating my opinion, I reviewed and considered U.S. Pat. No.
`17.
`
`11,048,751 to Strober (Ex. 1101), 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. 1104) as well as the
`
`following references:
`
`•
`
`•
`
`
`
`Ex. 1103:
`
`Curriculum Vitae of David B. Lett
`
`Ex. 1105-10: Omitted
`6
`
`

`

`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
`
`Ex. 1111:
`
`Ex. 1112:
`
`Ex. 1113:
`
`Ex. 1114:
`
`Ex. 1115:
`
`U.S. Pub. No. 2004/0078812 (“Calvert”)
`
`U.S. Pat. No. 9,490,998 (“Danciu”)
`
`U.S. Prov. App. No. 61/411,386
`Provisional”)
`
`(“Danciu
`
`U.S. Pub. No. 2009/0248802 (“Mahajan”)
`
`U.S. Pub. No. 2009/0172757 (“Aldrey”)
`
`Ex. 1112-19: Omitted
`
`Ex. 1120:
`
`Ex. 1121:
`
`Ex. 1122:
`
`Joint Claim Construction Statement, Touchstream
`Technologies, Inc. v. Google LLC, 6:21-cv-00569-
`ADA (WDTX) (Feb. 8, 2022)
`
`Exhibit 1 to Joint Disputed Claim Terms Charts,
`Touchstream Technologies, Inc. v. Vizbee, Inc.,
`1:17-cv- 06247-PGG-KNF (SDNY) (Aug. 6, 2018)
`
`Jury Instructions, Touchstream Technologies, Inc. v.
`Google LLC, 6:21-cv-00569-ADA (WDTX) (July
`21, 2023)
`
`Ex. 1123-29: Omitted
`
`Ex. 1130:
`
`Ex. 1131:
`
`Ex. 1132:
`
`Ex. 1133:
`
`Ex. 1134:
`
`Ex. 1135:
`
`Ex. 1137:
`
`U.S. Pub. No. 2002/0104096 (“Cramer”)
`
`U.S. Pat. No. 7,356,575 (“Shapiro”)
`
`U.S. Pat. No. 7,269,842 (“Estipona”)
`
`U.S. Pub. No. 2004/0267899 (“Rahman”)
`
`U.S. Pub. No. 2004/0098533 (“Henshaw”)
`
`U.S. Pub. No. 2004/0172656 (“Kim”)
`
`U.S. Pat. No. 7,343,419 (“Robinson”)
`
`Ex. 1138-40: Omitted
`
`Ex. 1141:
`
`CODING OF MOVING PICTURES AND AUDIO,
`MPEG-4 Overview (Int’l Org. Standardisation 2002)
`7
`
`
`
`

`

`•
`
`•
`
`Ex. 1142:
`
`Ex. 1143:
`
`•
`
`Ex. 1144:
`
`•
`
`Ex. 1145:
`
`•
`
`•
`
`Ex. 1146:
`
`Ex. 1147:
`
`•
`
`Ex. 1148:
`
`•
`
`Ex. 1149:
`
`Robert Godwin-Jones, Digital Video Update:
`YouTube, Flash, High-Definition, 11 LANGUAGE
`LEARNING & TECH. 16, 17 (2007)
`
`John C. Paolillo et al., A Network of Social Media
`Platform History: Social Structure, Dynamics and
`Content on YouTube, PROC. 52ND HAWAII
`INT’L CONF. ON SYS. SCIS., 1, (2019)
`
`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
`
`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 PRESS, Jun. 13, 2007
`
`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
`
`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
`
`Former Apple Multimedia Pioneers Unveil WebTV;
`New Company Brings
`Internet
`to Television
`Viewers, PR NEWSWIRE, Jun. 12, 1996
`
`
`
`8
`
`

`

`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
`
`Ex. 1150:
`
`Ex. 1151:
`
`Ex. 1152:
`
`Ex. 1153:
`
`Ex. 1154:
`
`Ex. 1155:
`
`Ex. 1156:
`
`Ex. 1157:
`
`Ex. 1158:
`
`Ex. 1159:
`
`Ex. 1160:
`
`Netflix, TiVo Team Up After 4-Year Courtship,
`ASSOCIATED PRESS, Oct. 30, 2008
`
`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
`
`and
`Wall Crumbling Between Televisions
`Computers, AGENCE FRANCE PRESSE –
`ENGLISH, Jan. 8, 2009
`
`INTERCHANGE
`ENHANCED TV BINARY
`FORMAT 1.0, ETV (OpenCable Specifications,
`Nov. 25, 2009)
`
`Award-Winning Sonos™ Digital Music System
`Begins Shipping to Customers, PR NEWSWIRE
`US, Jan. 27, 2005
`
`Sonos Introduces the Sonos™ ZonePlayer ZP80, PR
`NEWSWIRE, Jan. 4, 2006
`
`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. WIRE, Feb. 10, 1999
`
`Microsoft Releases Windows NT 4.0 Terminal
`Server Edition, M2 PRESSWIRE, Jun 16, 1998
`
`TeamViewer: TeamViewer 3.0 Beta Published; Next
`Generation of
`the Popular Remote Support
`Software, M2 PRESSWIRE, Aug. 27, 2007
`
`3am Labs Announces $10 Million Series A
`Financing; McNamee Lawrence & Co. Acts as
`Exclusive Financial Advisor to 3am Labs, BUS.
`WIRE, Nov. 16, 2004
`9
`
`
`
`

`

`•
`
`•
`
`Ex. 1161:
`
`Ex. 1162:
`
`•
`
`Ex. 1163:
`
`Ex. 1164:
`
`Ex. 1165:
`
`Expertcity's GoToMyPC Product Wins A People's
`Choice Award At Upside Events' Showcase 2001,
`INTERNET WIRE, Feb. 1, 2001
`
`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 for 100 Most Innovative Companies are
`Latest Commendations for Sling Media, BUS.
`WIRE, Nov. 11, 2004
`
`Final Written Decision, IPR2022-00795 (Sep. 27,
`2023)
`
`Patent Owner Response, IPR2022-00795 (Jan. 13,
`2023)
`
`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
`
`Ex. 1166:
`
`Omitted
`
`Ex. 1167: Progressive Networks
`the First
`Launches
`Commercial Audio-On-Demand System Over the
`Internet, BUS. WIRE, Apr. 10, 1995
`
`Ex. 1168:
`
`Progressive Networks’ RealVideo Launched With
`Wide Industry Support, PR NEWSWIRE EUROPE,
`February 10, 1997
`
`Ex. 1169:
`
`Ex. 1170:
`
`Ex. 1171:
`
`Omitted
`
`U.S. Prov. App. No. 61/477,998
`
`U.S. Pat. No. 8,904,289 to Strober (“the ’289
`Patent”)Ex. 1172:
`Certified Copy of Prosecution
`History of U.S. Pat No. 8,904,289
`
`Ex. 1173:
`
`U.S. Pat. No. 9,767,195 to Strober (“the ’195
`Patent”)
`
`
`
`10
`
`

`

`•
`
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`•
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`•
`
`Ex. 1174:
`
`Ex. 1175:
`
`Ex. 1176:
`
`Ex. 1177:
`
`Ex. 1178:
`
`Ex. 1179:
`
`Ex. 1180:
`
`Ex. 1181:
`
`Certified Copy of Prosecution History of U.S. Pat.
`No. 9,767,195
`
`U.S. Pat. No. 11,048,751 to Strober (“the ’751
`Patent”)
`
`Certified Copy of Prosecution History of U.S. Pat.
`No. 11,048,751
`
`U.S. Pat. No. 8,356,251 to Strober (“the ’251
`Patent”)
`
`Certified Copy of Prosecution History of U.S. Pat.
`No. 8,356,251
`
`(Omitted)
`
`My analysis of Danciu Claim 1 in view of Danciu
`Provisional
`
`Annotated Copy of Danciu Provisional in view of
`Danciu
`
`•
`
`Ex. 1183
`
`Order,
`Construction
`Claim
`Touchstream
`Technologies, Inc. v. Charter Communications, Inc.
`et al, 2-23-cv-00059-RJG (E.D. Tex.) (July 9, 2024)
`UNDERSTANDING OF APPLICABLE LEGAL STANDARDS
`19. Although I am not an attorney, I have a general understanding of the
`
`4.
`
`applicable legal standards pertaining to the patentability issues presented in this
`
`proceeding. I understand that the Petitioner is challenging the patentability of the
`
`claims of the ’751 Patent based on the following grounds:
`
`•
`
`•
`
`Claims 1-20 as obvious under pre-AIA 35 § 103(a) based on Danciu
`
`in View of Mahajan and/or Danciu in View of Mahajan and Calvert.
`
`Claims 1-20 as obvious under pre-AIA § 103(a) based on Aldrey in
`
`
`
`11
`
`

`

`View of Mahajan.
`
`20.
`
`I understand that, in this inter partes review, Petitioner has the burden
`
`of proving that each challenged claim is unpatentable by a preponderance of the
`
`evidence.
`
`21.
`
`I understand that to be valid, a patent claim must be “novel,” and is
`
`invalid if “anticipated” by a single prior art reference. I further understand a
`
`reference anticipates if it discloses each and every element as arranged in the claim
`
`so as to enable a person of ordinary skill in the art to make and use the claimed
`
`invention without undue experimentation.
`
`22.
`
`I understand that a patent claim is unpatentable if, at the time of the
`
`invention, it would have been obvious to one of ordinary skill in the art to combine
`
`the teachings of the prior art to yield the patent claim. It is my understanding that
`
`this determination is made after weighing the following factors: (1) the level of
`
`ordinary skill in the pertinent art; (2) the scope and content of the prior art; (3) the
`
`differences between the prior art as a whole and the claim at issue; and (4) as
`
`appropriate, other objective considerations identified below.
`
`23.
`
`It is my understanding that the prior art and claimed invention should
`
`be viewed through the knowledge and understanding of a person of ordinary skill in
`
`the art – one should not use his or her own insight or hindsight in deciding whether a
`
`claim is obvious. I further understand that a claim may be rendered obvious if a
`
`person of ordinary skill in the art can implement the claimed invention as a
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`predictable variation of a known product. I further understand that a person of
`
`ordinary skill in the art is presumed to have knowledge of the relevant prior art at the
`
`time of the claimed invention, which comprises any prior art that was reasonably
`
`pertinent to the particular problems the inventor faced.
`
`24.
`
`I understand that a showing of obviousness requires some articulated
`
`reasoning with a rational underpinning to support the combination of the references. I
`
`understand that in consideration of the issue of obviousness it is important to
`
`identify whether a reason existed at the time of the invention that would have led a
`
`person of ordinary skill in the pertinent art to combine elements of the references in
`
`a way that yields the claimed invention.
`
`25.
`
`I understand that a claim may be considered unpatentable for
`
`obviousness for various reasons. I have been informed that the following exemplary
`
`rationales may support a finding of obviousness:
`
`(A)
`
`combining prior art elements according to known methods to yield
`
`predictable results;
`
`(B)
`
`substituting one known element for another to obtain predictable results;
`
`(C) use of a known technique to improve similar devices in the same way;
`
`(D)
`
`applying a known technique to a known device ready for improvement to
`
`yield predictable results;
`
`(E)
`
`choosing from a finite number of identified, predictable solutions with a
`
`
`
`reasonable expectation of success;
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`(F)
`
`known work in a field that prompts variations in the work in the same or a
`
`different field that leads to predictable results; and
`
`(G)
`
`some teaching, suggestion, or motivation in the prior art that would have led
`
`a person of ordinary skill in the art to modify a prior art reference or
`
`combine multiple prior art references or teachings to arrive at the claimed
`
`invention.
`
`26.
`
`I understand that various objective or “real world” factors may be
`
`indicative of non-obviousness. I understand that such factors include:
`
`(A)
`
`the commercial success of the claimed invention;
`
`(B)
`
`the existence of a long-felt, unresolved need for a solution to the problem
`
`solved by the claimed invention;
`
`(C)
`
`failed attempts to solve the problem solved by the claimed invention;
`
`(D)
`
`copying of the claimed invention;
`
`(E)
`
`unexpected results of the claimed invention;
`
`(F)
`
`praise for the claimed invention by others in the relevant field; and
`
`(G) willingness of others to accept a license under the patent because of the
`
`merits of the claimed invention.
`
`27.
`
`It is my understanding that the prior art references themselves may
`
`provide a suggestion, motivation, or reason to combine, but other times the link may be
`
`based on the common sense of the person of ordinary skill in the pertinent art. I further
`
`understand that obviousness analysis recognizes that market demand, rather than
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`scientific literature, often drives innovation, and market demand is sufficient
`
`motivation to combine references.
`
`28.
`
`It is my understanding that a particular combination may be proven
`
`obvious merely by showing that it was obvious to try the combination. For example,
`
`common sense is a good reason for a person of ordinary skill to pursue known options
`
`when there is a design need or market pressure to solve a problem and there are a finite
`
`number of identified, predictable solutions.
`
`29.
`
`I further understand that a proper obviousness analysis focuses on what
`
`was known or obvious to a person of ordinary skill in the art, not just the patentee.
`
`Accordingly, it is my understanding that any need or problem known in the field at the
`
`time of invention and addressed by the patent can provide a reason for combining the
`
`limitations in the manner claimed.
`
`5.
`
`THE RELEVANT ART AND LEVEL OF ORDINARY SKILL IN THE
`RELEVANT ART
`I understand that obviousness is determined from the vantage point of a
`30.
`
`person of ordinary skill in the relevant art at the time of the alleged invention
`
`(“POSITA”). The ‘751 Patent is directed to controlling the presentation of content on a
`
`display device, and I agree that this represents the relevant field of art. See Ex. 1101,
`
`Abstract. I understand that a person of ordinary skill in the art is one who is presumed
`
`to be aware of all pertinent art, thinks along conventional wisdom in the art, and is a
`
`person of ordinary creativity.
`
`
`
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`31.
`
`I believe that a person of ordinary skill in the art of the ‘751 Patent at the
`
`time of the alleged invention of the ‘751 Patent would have a degree in computer or
`
`electrical engineering, computer science, information systems, or a similar discipline,
`
`along with three-to-four years of experience with the design and/or implementation of
`
`network-based content delivery systems, such as video-on- demand (VOD), cable
`
`systems, and Internet video streaming. I worked in the relevant field with such persons
`
`at, and leading up to, the time of the alleged invention of the ‘751 Patent, and thus, I am
`
`familiar with the knowledge that such persons had at the time (i.e., late 2010).
`
`32. All of my statements in this declaration regarding what a person of
`
`ordinary skill in the art would have known, understood, appreciated, been motivated to
`
`do, etc., refer to a person of ordinary skill in the art in late 2010, before the earliest
`
`claimed priority date of the ‘751 Patent (which, as I discuss below, is April 21, 2011).
`
`6.
`
`CLAIM CONSTRUCTION1
`I understand that my analysis requires an understanding of the scope of
`33.
`
`the claims of the ‘751 Patent. I understand that claim terms subject to inter partes
`
`review, absent some other definition provided in the patent, are given their ordinary
`
`meaning to a person of ordinary skill in the art in light of the patent specification.
`
`Therefore, in my analyses given below, I have assumed that all claim terms are
`
`1 It is my understanding that in the related Civil Action in the District Court for the
`Eastern District of Texas, Patent Owner proposed plain and ordinary meaning for the
`claim terms of the ’251 Patent and that the U.S. District Judge gave all these terms their
`plain and ordinary meaning. Ex. 1183, p. 6-33. It is my understanding that the U.S.
`District Judge also found that the term “the first format of the first message” is not
`indefinite. Id. at 30.
`
`
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`given their ordinary interpretation as would have been understood by a POSITA
`
`reading the patent specification as of the priority date.
`
`34.
`
`I understand that Application No. 15/687,249 (“the ‘249 Application”),
`
`which eventually became the ‘751 Patent, was filed on August 25, 2017. It is further
`
`my understanding that the ‘249 Application was the fourth in a chain of applications
`
`claiming priority to an application filed on April 21, 2011. It is my understanding
`
`that the ‘751 Patent is entitled to a priority date of the filing date of the earliest
`
`application from which the ‘751 Patent claims priority, i.e., April 21, 2011.
`
`35.
`
`It is my understanding that in an IPR of claims 1, 2, and 5-9 of U.S.
`
`Patent No. 8,356,251 (“the ‘251 Patent”), in the same family tree as and involving
`
`similar claims to the present, the panel of Administrative Patent Judges found that
`
`the term “‘media player’ refers to software and not to a hardware device.” Ex. 1164,
`
`13. The panel did not expressly construe any other terms of claims 1, 2, and 5-9 of
`
`the ‘251 Patent. Ex. 1164, 13.
`
`36.
`
`It is my understanding that in an IPR of the ‘251 Patent, involving
`
`similar claim terms to the present, Patent Owner characterized certain claim terms.
`
`Regarding the claim term “media player,” Patent Owner asserts “[c]onsidering the
`
`intrinsic record, including the file history, an ordinary artisan would have
`
`understood the ordinary and customary meaning of ‘media player’ in the ‘251 patent
`
`refers to application software and does not encompass hardware devices.” Ex. 1165,
`
`13. Additionally, Patent Owner asserts, “[t]he term ‘programming code,’ which
`17
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`appears in claim 1 of the ‘251 patent, should be construed as ‘computer program
`
`instruction(s) encoded for execution by a data processing apparatus (such as a
`
`computer processor).’” Ex. 1165, 16.
`
`37.
`
`It is my understanding that in a Civil Action in the District Court for
`
`the Southern District of New York, Patent Owner proposed, for claim terms of the
`
`‘251 Patent (in the same family tree as and involving similar claim terms to the
`
`present), the following constructions:
`
`Term/Phrase
`
`“synchronization code”
`
`“storing”/”store”
`
`“programming code”
`
`Patent Owner’s Proposed
`Construction
`“No construction necessary. This term
`should be given its plain and ordinary
`meaning, which is ‘an identifier that can
`be used to facilitate a connection
`between two or more devices.’” Ex.
`1121, at 1.
`“No construction necessary. This term
`should be given its plain and ordinary
`meaning, which is ‘placing in a location
`for subsequent use.’” Ex. 1121, at 2.
`“No construction necessary. This term
`should be given its plain and ordinary
`meaning, which is ‘instructions for a
`computer.’” Ex. 1121, at 4.
`“universal playback control command” “No construction necessary. This term
`should be given its plain and ordinary
`meaning, which
`is
`‘command
`for
`controlling playing of content.’” Ex.
`1121, at 6.
`“No construction necessary. This term
`should be given its plain and ordinary
`meaning, which
`is
`‘command
`for
`controlling playing of content.’” Ex.
`1121, at 6.
`
`“playback control command”
`
`
`
`18
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`

`

`Term/Phrase
`
`“media player”
`
`“assigning, by a server system, a
`synchronization code to the display
`device; receiving, in the server system, a
`message from a personal computing
`device that is separate from the server
`system and separate from the display
`device, wherein the message includes
`the synchronization code”
`“a synchronization code assigned by the
`server system to the display device and
`received by the server system in a
`message from the personal computing
`device”
`
`that was
`“a synchronization code
`assigned to the display device by a
`server system,
`the server system
`subsequently storing, based on a
`message from a personal computing
`device that is separate from the server
`system and the display device, an
`association between the display device
`and the personal computing device, the
`message from the personal computing
`device including the synchronization
`code”
`
`
`
`Patent Owner’s Proposed
`Construction
`“No construction necessary. This term
`should be given its plain and ordinary
`meaning, which
`is
`‘a
`computer
`application operable to present content
`and control presentation of content.’”
`Ex. 1121, at 7.
`“Associating identification information
`of a display device based on information
`that is received by the server from a
`personal computing device that a