UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`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.: IPR2024-00324
`
`________________
`
`
`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 2 of 2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Comcast, Ex. 1102
`
`

`

`TABLE OF CONTENTS
`
`Page
`1.
`INTRODUCTION .......................................................................................... 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
`
`6.
`7.
`
`8.
`
`OVERVIEW OF THE PRIOR ART ............................................................. 27
`
`9.
`
`OPINIONS WITH RESPECT TO THE ’751 PATENT ............................... 66
`
`i
`
`

`

`10. CONCLUSION ........................................................................................... 149
`CLAIM LISTING APPENDIX ............................................................................. 150
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`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,
`
`
`Comcast Cable Communications, LLC, for the above-referenced inter partes review
`
`proceeding.
`
`
`
`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.
`
`
`
`I am being compensated at my usual consulting rate of $350 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
`
`
`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.
`
`
`
`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.
`
`
`
`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.
`
`
`
`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.
`
`
`
` 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
`
`
`
`
`
`2
`
`
`
`

`

`Engineering Manager, where I managed product development of video, audio, and
`
`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.
`
`
`
`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.
`
`
`
`
`
`3
`
`
`
`

`

` 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
`
`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.
`
`
`
`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.
`
` 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.
`
`
`
`
`
`4
`
`
`
`

`

`
`
` 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.
`
`
`
`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:
`
`• 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 5,440,632 titled “Reprogrammable Subscriber
`Terminal”
`
`• 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”
`
`
`
`
`
`5
`
`
`
`

`

`• 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
`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
`
`
`
`and of the novelty and non-obviousness requirements for patentability.
`
`
`
`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.
`
`
`
`
`
`6
`
`
`
`

`

`3. MATERIALS CONSIDERED
`In formulating my opinion, I reviewed and considered U.S. Pat. No.
`
`
`11,048,751 to Strober (Ex. 1101), as to which I am offering my opinion regarding
`
`the validity of certain claims, as discussed herein.
`
`
`
`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
`
`• Ex. 1111:
`
`U.S. Pub. No. 2004/0078812 (“Calvert”)
`
`• Ex. 1112:
`
`U.S. Pat. No. 9,490,998 (“Danciu”)
`
`• Ex. 1113:
`
`U.S. Prov. App. No. 61/411,386 (“Danciu Provisional”)
`
`• Ex. 1114:
`
`U.S. Pub. No. 2009/0248802 (“Mahajan”)
`
`• Ex. 1115:
`
`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)
`
`
`
`
`
`7
`
`
`
`

`

`• Ex. 1123-29: Omitted
`
`• Ex. 1130:
`
`U.S. Pub. No. 2002/0104096 (“Cramer”)
`
`• Ex. 1131:
`
`U.S. Pat. No. 7,356,575 (“Shapiro”)
`
`• Ex. 1132:
`
`U.S. Pat. No. 7,269,842 (“Estipona”)
`
`• Ex. 1133:
`
`U.S. Pub. No. 2004/0267899 (“Rahman”)
`
`• Ex. 1134:
`
`U.S. Pub. No. 2004/0098533 (“Henshaw”)
`
`• Ex. 1135:
`
`U.S. Pub. No. 2004/0172656 (“Kim”)
`
`• Ex. 1137:
`
`U.S. Pat. No. 7,343,419 (“Robinson”)
`
`• Ex. 1138-40: Omitted
`
`CODING OF MOVING PICTURES AND AUDIO, MPEG-4
`• Ex. 1141:
`Overview (Int’l Org. Standardisation 2002)
`
`Robert Godwin-Jones, Digital Video Update: YouTube,
`• Ex. 1142:
`Flash, High-Definition, 11 LANGUAGE LEARNING & TECH. 16, 17 (2007)
`
`John C. Paolillo et al., A Network of Social Media
`• Ex. 1143:
`Platform History: Social Structure, Dynamics and Content on YouTube,
`PROC. 52ND HAWAII INT’L CONF. ON SYS. SCIS., 1, (2019)
`
`• Ex. 1144:
`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. 1145:
`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. 1146:
`PRESS, Jun. 13, 2007
`
`
`
`
`
`8
`
`
`
`

`

`• Ex. 1147:
`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. 1148:
`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. 1149:
`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. 1150:
`ASSOCIATED PRESS, Oct. 30, 2008
`
`• Ex. 1151:
`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
`
`Wall Crumbling Between Televisions and Computers,
`• Ex. 1152:
`AGENCE FRANCE PRESSE – ENGLISH, Jan. 8, 2009
`
`ENHANCED TV BINARY INTERCHANGE FORMAT 1.0, ETV
`• Ex. 1153:
`(OpenCable Specifications, Nov. 25, 2009)
`
`• Ex. 1154:
`Award-Winning Sonos™ Digital Music System Begins
`Shipping to Customers, PR NEWSWIRE US, Jan. 27, 2005
`
`Sonos Introduces the Sonos™ ZonePlayer ZP80, PR
`• Ex. 1155:
`NEWSWIRE, Jan. 4, 2006
`
`• Ex. 1156:
`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. 1157:
`WIRE, Feb. 10, 1999
`
`
`
`
`
`9
`
`
`
`

`

`• Ex. 1158:
`Microsoft Releases Windows NT 4.0 Terminal Server
`Edition, M2 PRESSWIRE, Jun 16, 1998
`
`• Ex. 1159:
`TeamViewer: TeamViewer 3.0 Beta Published; Next
`Generation of the Popular Remote Support Software, M2 PRESSWIRE,
`Aug. 27, 2007
`
`• Ex. 1160:
`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. 1161:
`Expertcity's GoToMyPC Product Wins A People's Choice
`Award At Upside Events' Showcase 2001, INTERNET WIRE, Feb. 1, 2001
`
`• Ex. 1162:
`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. 1163:
`for 100 Most Innovative Companies are Latest Commendations for Sling
`Media, BUS. WIRE, Nov. 11, 2004
`
`• Ex. 1164:
`
`Final Written Decision, IPR2022-00795 (Sep. 27, 2023)
`
`• Ex. 1165:
`
`Patent Owner Response, IPR2022-00795 (Jan. 13, 2023)
`
`• Ex. 1166:
`
`Omitted
`
`• Ex. 1167:
`Progressive Networks Launches the First 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:
`
`Omitted
`
`• Ex. 1170:
`
`U.S. Prov. App. No. 61/477,998
`
`• Ex. 1171:
`
`U.S. Pat. No. 8,904,289 to Strober (“the ’289 Patent”)
`
`
`
`
`
`10
`
`
`
`

`

`• 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”)
`
`• Ex. 1174:
`
`Certified Copy of Prosecution History of U.S. Pat. No.
`9,767,195
`
`• Ex. 1175:
`
`U.S. Pat. No. 11,048,751 to Strober (“the ’751 Patent”)
`
`• Ex. 1176:
`
`Certified Copy of Prosecution History of U.S. Pat. No.
`11,048,751
`
`• Ex. 1177:
`
`U.S. Pat. No. 8,356,251 to Strober (“the ’251 Patent”)
`
`• Ex. 1178:
`
`Certified Copy of Prosecution History of U.S. Pat. No.
`8,356,251
`
`• Ex. 1179:
`
`(Omitted)
`
`• Ex. 1180:
`
`My analysis of Danciu Claim 1 in view of Danciu
`Provisional
`
`Annotated Copy of Danciu Provisional in view of Danciu
`• Ex. 1181:
`4. UNDERSTANDING OF APPLICABLE LEGAL STANDARDS
` Although I am not an attorney, I have a general understanding of the
`
`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 View
`
`of Mahajan.
`
`
`
`
`
`11
`
`
`
`

`

`
`
`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.
`
`
`
`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.
`
`
`
`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.
`
`
`
`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
`
`
`
`
`
`12
`
`
`
`

`

`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.
`
`
`
`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.
`
`
`
`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;
`
`
`
`
`
`13
`
`
`
`

`

`(E) choosing from a finite number of identified, predictable solutions with a
`
`reasonable expectation of success;
`
`(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.
`
`
`
` 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.
`
`
`
`
`
`14
`
`
`
`

`

`
`
`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 scientific literature, often drives innovation, and market demand is sufficient
`
`motivation to combine references.
`
`
`
`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.
`
`
`
`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 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
`
`
`
`
`
`15
`
`
`
`

`

`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.
`
`
`
`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).
`
` 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 CONSTRUCTION
`I understand that my analysis requires an understanding of the scope of
`
`
`the claims of the ’751 Patent. I understand that claim terms subject to inter partes
`
`
`
`
`
`16
`
`
`
`

`

`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 given
`
`their ordinary interpretation as would have been understood by a POSITA reading
`
`the patent specification as of the priority date.
`
`
`
`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.
`
`
`
`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.
`
`
`
`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
`
`
`
`
`
`17
`
`
`
`

`

`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 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.
`
`
`
`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”
`
`“universal playback control command”
`
`
`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.
`“No construction necessary. This term
`should be given its plain and ordinary
`
`
`
`
`
`18
`
`
`
`

`

`for
`‘command
`is
`meaning, which
`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.
`“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 allows
`communication among
`the
`server
`system and the different devices.” Ex.
`1121, at 11.
`
`associates
`system
`server
`“The
`identification information of a content
`presentation
`device
`based
`on
`information provided to the server
`system from a personal computing
`device.” Ex. 1121, at 12.
`associates
`“The
`server
`system
`identification information of a content
`presentation
`device
`based
`on
`information provided to the server
`system from a personal computing
`device
`that allows communication
`among
`the server system and
`the
`different devices.” Ex. 1121, at 12-13.
`
`“playback control command”
`
`“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”
`
`
`
`
`
`19
`
`
`
`

`

`
`
`
`
`It is my understanding that in a Civil Action in the District Court for
`
`the Western District of Texas, Patent Owner proposed the following claim
`
`constructions:
`
`Term/Phrase
`
`“universal command”
`
`“unique identification code assigned to
`the content presentation device” and
`“synchronization code assigned to the
`content presentation device”
`
`“identifying, [by the server system,]
`programming code corresponding to the
`action control command, wherein the
`programming code is for controlling
`presentation of the content presentation
`device using
`the particular media
`player”
`
`
`
`Patent Owner’s Proposed
`Construction
`“plain and ordinary meaning - no
`construction needed
`
`ordinary
`and
`plain
`alternatively,
`meaning, which is ‘a standard command
`used for controlling playback of media
`content such as play or pause’” Ex.
`1120, at 2.
`“plain and ordinary meaning - no
`construction needed alternatively, plain
`and ordinary meaning which is ‘[unique
`identification code] / [synchronization
`code] associated with a content
`presentation device’” Ex. 1120, at 2.
`“plain and ordinary meaning - no
`construction needed
`
`ordinary
`and
`plain
`alternatively,
`meaning for ‘programming code’ which
`is ‘instructions that the media player can
`recognize and execute’” Ex. 1120, at 3.
`
`
`
`It is my understanding that in a Civil Action in the District Court for
`
`the Western District of Texas, the U.S. District Judge gave all terms of claim 1 of
`
`the ’251 Patent (in the same family tree as and involving similar claim terms to the
`
`present) their plain and ordinary meaning. Ex. 1122, p. 19.
`
`
`
`
`
`20
`
`
`
`

`

`7. OVERVIEW OF THE ’751 PATENT
` The ’751 Patent states that it relates to “creation, storage, manipulation
`
`and access of media playlists used in conjunction with display devices and control
`
`of the display devices.” Ex. 1101, 1:24-26.
`
` The alleged invention of the ’751 Patent relates to controlling playing
`
`of content on a display device. Ex. 1101, 3:13-56, 6:5-25, 7:4-9. The system of the
`
`’751 Patent includes a personal computing device 20 (blue), a display 23 (red), and
`
`a server system 24 (red).
`
`
`
`Ex. 1101, Fig. 1 (annotated)
`
`
`
`
`
`
`
`21
`
`
`
`

`

` A user may use the personal computing device 20 (e.g., a smartphone)
`
`to control content on the display device 23. Ex. 1101, 3:13-21, 4:4-10, 4:39-51, 5:59-
`
`6:4, 7:4-15, 7:55-8:5, 8:21-28, 8:54-65. The