Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 1 of 134 PageID #: 6255
`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 1 of 134 PagelD #: 6255
`
`EXHIBIT 7
`EXHIBIT 7
`
`

`

`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 2 of 134 PageID #: 6256
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`Plaintiff,
`
`v.
`ALTICE USA, INC., et al.,
`
`Defendants.
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`Plaintiff,
`
`v.
`CHARTER COMMUNICATIONS, INC. et
`al.,
`
`Defendants.
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`Plaintiff,
`
`v.
`COMCAST CABLE COMMUNICATIONS,
`LLC, d/b/a XFINITY, et al.,
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Lead Case No. 2:23-cv-00060-JRG
`Member Case No. 2:23-cv-00059-JRG
`Member Case No. 2:23-cv-00062-JRG
`
`
`
`DEFENDANTS’ DISCLOSURES PURSUANT TO P.R. 3-3 AND 3-4
`
`
`
`
`
`

`

`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 3 of 134 PageID #: 6257
`
`PAGE
`Grounds for Invalidity Called for Under P.R. 3-3 .............................................................. 2
`
`I.
`
`TABLE OF CONTENTS
`
`
`
`A.
`
`B.
`
`C.
`
`State of the Art ........................................................................................................ 2
`
`Invalidity under 35 U.S.C. § 101 ............................................................................ 9
`
`Invalidity under 35 U.S.C. §§ 102 and 103 ............................................................ 9
`
`1.
`
`U.S. Patent No. 8,356,251........................................................................... 9
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`h.
`
`i.
`
`j.
`
`k.
`
`l.
`
`McMahon Alone or in view of Morris ’677, Patel, or
`Hayward ........................................................................................ 17
`
`Redford Alone or in view of Morris ’677, Patel, or
`Hayward ........................................................................................ 21
`
`Clicker Alone or in view of Morris ’677, Patel, or Hayward ....... 25
`
`Danciu Alone or in view of Morris ’677, Patel, or Hayward ....... 30
`
`Klein Alone or in view of Morris ’677, Patel, or Hayward .......... 34
`
`Livingston Alone or in view of Morris ’677, Patel, or
`Hayward ........................................................................................ 38
`
`McMahon Alone or in view of Birkler ......................................... 43
`
`Redford Alone or in view of Birkler ............................................. 47
`
`Danciu Alone or in view of Birkler .............................................. 49
`
`Livingston Alone or in view of Birkler......................................... 52
`
`McMahon, Redford, Danciu, Klein, Livingston ........................... 55
`
`Muthukumarasamy Alone or in view of Hayward ....................... 58
`
`m.
`
`Sung Alone or in view of Dasher .................................................. 63
`
`n.
`
`o.
`
`p.
`
`q.
`
`Sung Alone or in view of Agnihotri ............................................. 66
`
`Sukeda Alone or in view of Morelli and Pierce ............................ 69
`
`Cho in view of Morelli and Pierce ................................................ 72
`
`Spencer Alone or in view of Morelli and/or Pierce ...................... 75
`
`i
`
`

`

`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 4 of 134 PageID #: 6258
`
`r.
`
`s.
`
`t.
`
`Alsina Alone or in view of Morelli and/or Pierce......................... 79
`
`Maddali Alone or in view of Morelli and/or Pierce ...................... 82
`
`Morris ’491 Alone or in view of Morelli and/or Pierce ................ 87
`
`2.
`
`3.
`
`U.S. Patent No. 11,048,751....................................................................... 90
`
`U.S. Patent No. 11,086,934....................................................................... 93
`
`D.
`
`Invalidity Under 35 U.S.C. § 112 ......................................................................... 96
`
`1.
`
`2.
`
`3.
`
`U.S. Patent No. 8,356,251......................................................................... 97
`
`U.S. Patent No. 11,048,751..................................................................... 108
`
`U.S. Patent No. 11,086,934..................................................................... 117
`
`II.
`
`P.R. 3-4 ........................................................................................................................... 125
`
`
`
`ii
`
`

`

`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 5 of 134 PageID #: 6259
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`Pursuant to Local Patent Rules 3-3 and 3-4 and the Court’s Standing Order Regarding
`
`Subject Matter Eligibility Contentions, Defendants Comcast Cable Communications, LLC,
`
`Comcast Cable Communications Management, LLC, and Comcast of Houston, LLC (together,
`
`“Comcast”), Defendants Charter Communications, Inc., Charter Communications Operating,
`
`LLC, Time Warner Cable Enterprises LLC, Spectrum Management Holding Company, LLC,
`
`Spectrum Gulf Coast, LLC, and Charter Communications, LLC (together, “Charter”),
`
`Defendants Altice USA, Inc., Cequel Communications, LLC, CSC Holdings, LLC; and
`
`Friendship Cable of Texas, Inc. (together, “Altice”) (all collectively, “Defendants”) make the
`
`following disclosures to Plaintiff Touchstream Technologies, Inc. (“Plaintiff” or
`
`“Touchstream”).
`
`The disclosures provided herein are based on information reasonably available to
`
`Defendants at the present time. Defendants’ investigations of their defenses are ongoing, as is
`
`discovery in this action. Defendants reserve the right to amend and/or supplement these
`
`disclosures periodically as additional information becomes available and/or additional analysis is
`
`performed, including without limitation in connection with claim construction proceedings and
`
`in accordance with P.R. 3-6. These disclosures are provided without the benefit of the Court’s
`
`claim construction or knowledge of Touchstream’s claim construction positions, and with the
`
`understanding that a range of claim construction positions may potentially be advanced by the
`
`parties and adopted by the Court. These disclosures and any exhibits attached hereto therefore
`
`should not be deemed to admit the correctness or incorrectness of any construction of any
`
`limitation of any asserted patent claim. Moreover, particular constructions advocated by
`
`Touchstream or adopted by the Court may give rise to additional defenses not reflected herein,
`
`including, for example, defenses under 35 U.S.C. § 112. Defendants reserve the right to assert
`
`1
`
`

`

`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 6 of 134 PageID #: 6260
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`such defenses in the future. Furthermore, by making these disclosures, Defendants do not
`
`concede the adequacy of Touchstream’s initial infringement contentions or productions made
`
`pursuant to P.R. 3-1 and 3-2 or that any assertion or construction inherent in those contentions is
`
`correct.
`
`I.
`
`Grounds for Invalidity Called for Under P.R. 3-3
`
`Touchstream has asserted claims 1, 2, 5, 7, 8, and 9 of U.S. Patent No. 8,356,251 (the
`
`“’251 Patent”); claims 12, 13, 14, and 16 of U.S. Patent No. 11,048,751 (the “’751 Patent”); and
`
`claims 17, 18, 19, and 20 of U.S. Patent No. 11,086,934 (the “’934 Patent”) against all
`
`Defendants. Defendants hereby provide their contentions regarding the invalidity of the asserted
`
`claims of the asserted patents pursuant to P.R. 3-3.
`
`A.
`
`State of the Art
`
`Before the alleged inventions of the patents-in-suit, a wide variety of devices had
`
`proliferated for accessing media content. See, e.g., Nallusamy at 1 (“Data, voice, video, and
`
`wireless networks are fast converging with smart phones, IPTVs, VoIP phones, [and] portable
`
`multimedia devices . . . for accessing digital content.”). The concept of a digital home—in which
`
`multiple different devices work together to create the user’s multimedia environment—catered to
`
`this availability of diverse media devices. See, e.g., Fagui at 440 (“With the growing awareness
`
`and popularity of the digital home concept, the development of digital multimedia, an important
`
`section in digital home, is also in full swing. At present, media applications are mainly applying
`
`UPnP technology while part of the applications are supported by IGRS. With the implementation
`
`of the standard AV application framework, the media devices can access resources in the home
`
`network.”).
`
`The different devices typically accessed content through different networks and
`
`communicated through different formats. Lee at 1 (“As home multimedia devices become
`
`2
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`

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`increasingly commonplace, receiving and storing multimedia content through various channels
`
`even on a home network becomes possible. . . . Internet Protocol (IP) is a multimedia data
`
`streaming service that provides data in various formats to multimedia clients in real time through
`
`a home server.”).
`
`The devices within the environment could share content in numerous ways, including
`
`screen casting and mirroring. See, e.g., Fan at 0016 (“The display mode can be selected from one
`
`of three available modes. First, display screen only, in which case the user interface is displayed
`
`only on the display screen of the IRC. Second, television display only, in which case the user
`
`interface is displayed only on the television or similar display device. Third, dual display, in
`
`which case the user interface is displayed on both screens.”). Alternatively, a user could switch
`
`from viewing content on one device to resuming the content on another device. See, e.g., McCoy
`
`at Abstract (“In this way, the user is able to retrieve the asset on all their content playback
`
`devices, not only on the content playback device on which the asset was originally played.”).
`
`In order to facilitate communications between the various devices and to ensure that
`
`devices interacted only with authorized devices and users, it was standard practice to implement
`
`some form of identifier (such as a synchronization code) for each device and/or a pairing code
`
`between the devices to set up communications between the devices. See, e.g., Cho at 0008 (“In
`
`order to configure a home network, a security system must be built to prevent a device from
`
`being manipulated by an external intruder. The UPnP technology provides an UPnP security
`
`console standard and an UPnP device security standard so as to present a security function
`
`between a CP and the device. The standards provide security functions such as discrimination of
`
`an UPnP control message, integrity, and authentication.”); Cho at 0023 (“[T]ransmitting
`
`authentication information to the control device or the controlled device via an SAC generated
`
`3
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`

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`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 8 of 134 PageID #: 6262
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`by using a Transport Layer Security Pre-Shared Key ciphersuites (TLS-PSK) protocol
`
`implemented by using the PIN information, wherein the authentication information is necessary
`
`for a user to control the controlled device via the control device.”); Christopher at 0050 (“[I]f a
`
`service provider system (such as one of the computing devices 130 of Fig. 1) detects that the
`
`subscriber has a mobile device server 504, or a mobile device server 504 is offered to and
`
`accepted by the subscriber, the service provider system can proceed to step 608 where it
`
`generates a pairing key which can be used to identify the service grade(s) of the subscriber.”).
`
`The identifiers could further allow for customization between the user and devices. See, e.g., Fan
`
`at Abstract (“The remote control further includes a storage medium that may include a unique
`
`identifier of the user and a user profile indicative of the user’s channel preferences and viewing
`
`permissions.”).
`
`One well-established framework for managing the interoperability of media devices
`
`within a user environment was UPnP (Universal Plug and Play). See, e.g., Fagui at 440 (“At
`
`present, media applications in digital home network are mainly applying UPnP technology.”);
`
`Sung at 1 (“Demand of multimedia content in home network is growing rapidly and UPnP is
`
`expected to bring better multimedia experience with various A/V devices.”). UPnP addressed the
`
`growth of the home media environment. See, e.g., Cho at 0005 (“Due to the development of
`
`home networks, an existing personal computer (PC)—centered network environment in the home
`
`has expanded into a network environment which includes electronic devices using various lower
`
`network technologies. In this regard, there was a necessity to develop a technology that can
`
`network the electronic devices with a unified system by using Internet Protocol (IP) protocol,
`
`thus, a home network middleware technology such as Universal Plug and Play (UPnP)
`
`technology has been presented.”). UPnP “provides a network architecture that facilitates adding
`
`4
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`

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`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 9 of 134 PageID #: 6263
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`and removing devices from a network. For instance, the UPnP architecture allows a user to
`
`simply ‘plug’ a new device into a network coupling, and thereafter the network will
`
`automatically determine the characteristics of the new device and subsequently coordinate
`
`interaction between this new device and others in the network based on the determined
`
`characteristics.” Kuehnel at 1:12-20. UPnP “is particularly well suited for networks associated
`
`with a local setting, such as a home, a business, a school, etc.” Kuehnel at 1:20-23. UPnP
`
`architecture “may interconnect a collection of media source devices and a collection of media
`
`rendering devices”—“an exemplary media source device might comprise a personal computer
`
`that stores a collection of music, video, pictures, etc.” and “an exemplary media rendering device
`
`might comprise a TV, stereo, personal computer, and so on.” Kuehnel at 1:35-39. A control point
`
`“can then be used to route resource information from one of the media source devices to a
`
`selected media rendering device.” Kuehnel at 1:39-42.
`
`The growth in diversity of media devices within the user environment promoted the
`
`delivery of different types of media content to a display device. For example, video-on-demand,
`
`live TV, IPTV, and user-created content were available for viewing on different devices. De at
`
`575 (“In this paper, we build on the model presented by TiVo by designing a general Multimedia
`
`Distribution System where the end users can use their personal computers to watch programs
`
`aired through diverse media, such as, cable TV, close circuit televisions, VCRs, even handheld
`
`cameras.”).
`
`Those of skill in the art developed tools to accommodate the variety of file formats and
`
`media players suitable for playing the content. See, e.g., Sung at 1 (“In this paper, we propose an
`
`intelligent multimedia service framework which enables A/V contents to be adopted and shared
`
`according to user multimedia environments.”); Robbin at 5:4-18 (“It is noted that multimedia
`
`5
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`

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`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 10 of 134 PageID #: 6264
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`data files may be encoded in accordance with any one of a number of different formats. For
`
`example, MPEG-1 (Moving Pictures Experts Group), MPEG-2, MPEG-4, MP3® (Motion
`
`Picture Expert’s Group Layer 3), A3 (Advanced Audio Coding, a/k/a/ MPEG-4 audio),
`
`Quicktime®, AVI (Audio Video Interleave), RI6 (Resource Interchange File Format), WMA
`
`(Windows Media Audio), Ogg, etc. (MP3 is a registered trademark of Thomson Multimedia.
`
`QUICKTIME is a registered trademark of Apple computer.) The claimed invention may be used
`
`to obtain, store and transmit (to a multimedia playback device) data files using any of these, or
`
`other, data formats. It will be recognized by one of ordinary skill in the art that multimedia
`
`device 115 will incorporate decoder capability for each file format it is configured to process
`
`(e.g., software routines).”); Flynn at 0061 (“Format component 525 can include an adaptation
`
`component 605 that adjusts format of multimedia content exchanged. . . . Format of transacted
`
`content 116 can be adjusted to one of a specific set of native formats of a destination
`
`device . . . .”); Flynn at 0062 (“Analysis component 608 can receive a data stream and determine
`
`a specific format utilized for the received content(s) (e.g., MPEG-4, Rec. 601, MP3, and so
`
`on) . . . .”).
`
`To facilitate the display of content on different devices, it was known that a centralized
`
`server could be used to adapt instructions from a sending device to be understandable by the
`
`receiving device. See, e.g., Gold at 13:49-64 (“In one embodiment, remote computer 3 a is a
`
`computer, server or other electronic information processing technology, possibly including or
`
`being associated with a database, that is i) capable of receiving information from mobile
`
`device 2 c, ii) possibly manipulating, converting or interpreting the received information, and
`
`then iii) further communicating the same or new information to object controller 4 a to
`
`ultimately facilitate some action to be performed at object 1 a, for example. In another
`
`6
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`

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`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 11 of 134 PageID #: 6265
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`embodiment of the present invention, remote computer 3 a is ‘in the cloud,’ meaning that remote
`
`computer 3 a is an information processing system (e.g., computer) that is physically remote and
`
`distinct from object 1 a, and may be distributed in nature. As a result, remote computer 3 a may
`
`communicate with object 1 a over the Internet or other network. Other embodiments of remote
`
`computer 3 a are within the scope of the present invention.”); Sung at 2 (“Since we added home
`
`server into standard UPnP A/V architecture, the contents transfer path should be changed to go
`
`through home server so that home server can participate in requested A/V service. Home server
`
`is located logically between media server and media renderer and acts as an intermediate which
`
`receives the contents from media server and passes adapted contents to media renderer.”). This
`
`central server could enhance the ability of heterogeneous devices to communicate with one
`
`another by converting a universal playback command from the sending device into a format
`
`compatible with the receiving device. See, e.g., Gold at 20:14-26 (“As another example of
`
`benefits of the present invention, embodiments of the present invention enable mobile device
`
`users to remotely control objects by means of wireless communication with a remote server,
`
`rather than directly (meaning direct communication between a device and an object, such as
`
`would be the case with a current television remote control). This has many benefits, including
`
`the ability to use information other than that which would be available in a direct interaction
`
`between a mobile device and an object. Embodiments of the present invention allow a mobile
`
`device user to possess and use different remote control user interfaces for each of many different
`
`objects, providing remote control user interfaces that are most relevant to each target object.”).
`
`Within the multi-device media environment, it was well known that it could be beneficial
`
`for a single device to control the plurality of devices. Marriott at 1:33-44 (“The hand-held
`
`consumer electronic market is exploding, and an increasing number of these products including
`
`7
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`

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`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 12 of 134 PageID #: 6266
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`for example PDAs . . . [and] cellular phones . . . have increased their functionality to distance
`
`themselves from their competitors . . . In the future, it is foreseeable that the functionality of all
`
`these devices will continue to merge into a single device.”). In particular, a user’s personal
`
`device, such as a mobile phone, could serve as the controller for other devices within the
`
`environment. Chen at 1 (“As more and more smart phone users carry their phones with them
`
`wherever they go, including the time when they watch TV, it is natural to consider using a smart
`
`phone as an alternative remote control for the HDTV set.”); Sung at 4 (“User always wants to
`
`operate the A/V service with his/her near personal device like a PDA or cellular phone.”);
`
`Christopher at 0002 (“In interactive media communication systems, users can also request
`
`services on demand. Portable media devices such as mobile phones (e.g., Apple’s iPhone) or
`
`media players (e.g., Apple’s iPod) can be adapted to communicate with media processors over a
`
`wireless medium. The combined services of portable and fixed media devices can provide users
`
`with a rich environment for utilizing multimedia services.”). Many such mobile controllers had
`
`been introduced into the market prior to the development of the alleged inventions of the patents-
`
`in-suit, including: Clicker IPTV Remote Control system developed by AT&T Labs Research;
`
`Snapstick system developed by SnapStick Inc.; YouTube Leanback, YouTube Remote, and
`
`Google TV developed by Google LLC/YouTube; Apple AirPlay system developed by Apple
`
`Inc.; Xfinity TV Remote App system developed by Comcast; PlayTo system developed by
`
`Microsoft Corp.; YahooTV system developed by Yahoo Inc.; Verizon FiOS Mobile Remote
`
`developed by Verizon Communications Inc.; DVPRemote developed by Phil Irey; Rokumote
`
`developed by Roku, Inc.; pocketBLU developed by Deluxe Digital Studios; Fetchit developed by
`
`Fetch Interactive; Vizbee developed by Vizbee Inc.; Boxee developed by Boxee, Inc.;
`
`8
`
`

`

`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 13 of 134 PageID #: 6267
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`TwonkyMedia and TwonkyManager developed by Lynx Technology; and Zelfy Peel developed
`
`by Zelfy and Peel Technologies.
`
`Such a remote device could identify the media player needed to play the selected content
`
`on the display device. See, e.g., Brown at 0042 (“The illustrative URL can include a domain
`
`name of the remote server 612 and instructions to launch a specific software application
`
`executable by the web server application in the mobile device server 604 which can be used to
`
`launch the software application.”).
`
`Defendants also incorporate herein their Section 3-3(b)-(c) disclosures, which further
`
`evidence the state of the art and subject matter known in the field at the time of the alleged
`
`inventions of the patents-in-suit.
`
`B.
`
`Invalidity under 35 U.S.C. § 101
`
`The asserted claims of the asserted patents claim unpatentable subject matter and are
`
`invalid under 35 U.S.C. § 101. Pursuant to the Court’s Standing Order Regarding Subject Matter
`
`Eligibility Contentions, attached hereto as Exhibits D, E, and F are Defendants’ Eligibility
`
`Contentions concerning each of the asserted patents.
`
`C.
`
`Invalidity under 35 U.S.C. §§ 102 and 1031
`
`1.
`
`U.S. Patent No. 8,356,251
`
`In addition to the prior art disclosed on the face of the ’251 Patent, pursuant to P.R. 3-
`
`3(a), Defendants hereby identify the following patents, patent applications, and/or printed
`
`
`1 For each asserted patent, Touchstream claims priority to applications filed before March
`16, 2013. See Touchstream’s May 19, 2023 Disclosure Under P.R. 3-1 at 15. Therefore, pre-AIA
`35 U.S.C. §§ 102 and 103 apply. Defendants reserve the right to challenge the April 21, 2011
`priority date asserted by Touchstream for each of the asserted patents in Touchstream’s First
`Supplemental Disclosure of Asserted Claims and Infringement Contentions, served on May 26,
`2023.
`
`9
`
`

`

`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 14 of 134 PageID #: 6268
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`publications as prior art rendering the asserted claims of the ’251 Patent invalid under 35 U.S.C.
`
`§§ 102 and 103:
`
`Ex.
`Nos.
`
`Priority
`Date
`
`Country
`of
`Origin
`
`A-1
`
`11/10/2010 U.S.
`
`A-2
`
`12/28/2007 U.S.
`
`A-3
`
`8/31/2010
`
`U.S.
`
`A-4
`
`3/31/2011
`
`U.S.
`
`A-5
`
`7/2/2007
`
`China
`
`A-6
`
`11/8/2010
`
`U.S.
`
`A-7
`
`4/11/2011
`
`U.S.
`
`A-8
`
`2/26/2009
`
`U.S.
`
`A-9
`
`1/8/2011
`
`U.S.
`
`A-10
`
`10/24/2000 U.S.
`
`A-11
`
`11/30/2006 U.S.
`
`Prior Art Reference
`
`U.S. Patent Application Publication No. 2012/0117590
`entitled, “Device Registration Process from Second
`Display,” to Agnihotri et al., (May 10, 2012) (“Agnihotri”)
`
`U.S. Patent Application Publication No. 2009/0172757
`entitled, “Method and Apparatus for Remote Set-Top Box
`Management,” to Aldrey et al. (July 2, 2009) (“Aldrey”)
`
`U.S. Patent No. 8,614,625 entitled, “Adaptive Media
`Content Scrubbing on a Remote Device,” to Alsina et al.
`(Dec. 24, 2013) (“Alsina”)
`
`U.S. Patent No. 9,276,921 entitled, “System and Method
`for Establishing a Communication Session,” to Birkler et
`al. (Mar. 1, 2016) (“Birkler”)
`
`Jana et al., “Clicker – An IPTV Remote Control in Your
`Cell Phone,” ICME (2007) (“Clicker”)
`
`U.S. Patent No. 9,490,998 entitled, “Network-Based
`Remote Control,” to Danciu et al. (Nov. 8, 2016)
`(“Danciu”)
`
`U.S. Patent Application Publication No. 2012/0260282
`entitled, “Controlling Delivery of Video Programs Using
`User Defined Identifiers for Video Receiver Devices,” to
`Dasher et al. (Oct. 11, 2012) (“Dasher”)
`
`U.S. Patent Application Publication No. 2010/0218214
`entitled, “Intelligent Remote Control,” to Fan et al. (Aug.
`26, 2010) (“Fan”)
`
`U.S. Patent No. 8,655,345 entitled, “Proximity-Enabled
`Remote Control,” to Gold (Feb. 18, 2014) (“Gold”)
`
`U.S. Patent No. 8,918,812 entitled, “Method of Sizing an
`Embedded Media Player Page,” to Hayward (Dec. 23,
`2014) (“Hayward”)
`
`U.S. Patent Application Publication No. 2007/0136488
`entitled, “Method and Device for Switching Media
`Renderers During Streaming Playback of Content,” to Cho
`et al. (June 14, 2007) (“Cho”)
`
`10
`
`

`

`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 15 of 134 PageID #: 6269
`
`Ex.
`Nos.
`
`Priority
`Date
`
`Country
`of
`Origin
`
`A-12
`
`6/2/2008
`
`U.S.
`
`A-13
`
`12/21/2009 U.S.
`
`A-14
`
`7/9/2010
`
`U.S.
`
`A-15
`
`5/10/2010
`
`U.S.
`
`A-16
`
`5/10/2010
`
`U.S.
`
`A-17
`
`10/6/2000
`
`U.S.
`
`A-18
`
`11/19/2010 U.S.
`
`A-19
`
`1/29/2010
`
`U.S.
`
`A-20
`
`3/20/2009
`
`U.S.
`
`A-21
`
`10/20/2009 U.S.
`
`Prior Art Reference
`
`U.S. Patent Application Publication No. 2009/0298535
`entitled, “Smart Phone as Remote Control Device,” to
`Klein et al. (Dec. 3, 2009) (“Klein”)
`
`U.S. Patent No. 10,785,027 entitled, “System and Methods
`for Accessing and Controlling Media Stored Remotely,” to
`Livingston et al. (Sept. 22, 2020) (“Livingston”)
`
`U.S. Patent No. 8,661,494 entitled, “Method and System
`for Presenting Media Via a Set-Top Box,” to Maddali et al.
`(Feb. 25, 2014) (“Maddali”)
`
`U.S. Patent Application No. 61/333,066 entitled,
`“Intelligent Remote Control,” to McMahon et al. (May 10,
`2010) (“McMahon App.”)
`
`U.S. Patent No. 9,294,800 entitled, “Intelligent Remote
`Control,” to McMahon et al. (Mar. 22, 2016)
`(“McMahon”)
`
`U.S. Patent No. 7,437,150 entitled, “Method for Wireless
`Data Exchange for Control of Structural Appliances Such
`as Heating, Ventilation, Refrigeration, and Air
`Conditioning Systems,” to Morelli et al. (Oct. 14, 2008)
`(“Morelli”)
`
`U.S. Patent No. 8,880,491 entitled, “Systems and Methods
`to Play Media Content Selected Using a Portable
`Computing Device on a Display Device External to the
`Portable Computing Device,” to Morris (Nov. 4, 2014)
`(“Morris ’491”)
`
`U.S. Patent Application Publication No. 2011/0191677
`entitled, “Methods, Systems, and Computer Program
`Products for Controlling Play of Media Streams,” to Morris
`(Aug. 4, 2011) (“Morris ’677”)
`
`U.S. Patent Application Publication No. 2010/0241699
`entitled, “Device-Based Control System,” to
`Muthukumarasamy et al. (Sept. 23, 2010)
`(“Muthukumarasamy”)
`
`U.S. Patent No. 8,396,055 entitled, “Methods and
`Apparatus for Enabling Media Functionality in a Content-
`Based Network,” to Patel et al. (Mar. 12, 2013) (“Patel”)
`
`11
`
`

`

`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 16 of 134 PageID #: 6270
`
`Ex.
`Nos.
`
`Priority
`Date
`
`Country
`of
`Origin
`
`A-22
`
`11/12/2010 U.S.
`
`A-23
`
`1/6/2010
`
`U.S.
`
`A-24
`
`6/27/2001
`
`U.S.
`
`A-25
`
`12/18/2008 U.S.
`
`A-26
`
`4/27-28
`/2006
`
`Korea
`
`A-27
`
`12/19/2008 U.S.
`
`
`
`Prior Art Reference
`
`U.S. Patent No. 8,892,634 entitled, “Extensible Video
`Player Selection Via Server-Side Detection of Client
`Application,” to Pierce et al. (Nov. 18, 2014) (“Pierce”)
`
`U.S. Patent No. 8,660,545 entitled, “Responding to a
`Video Request by Displaying Information on a TV Remote
`and Video on the TV,” to Redford et al. (Feb. 25, 2014)
`(“Redford”)
`
`U.S. Patent Application Publication No. 2003/0014630
`entitled, “Secure Music Delivery,” to Spencer et al. (Jan.
`16, 2003) (“Spencer”)
`
`U.S. Patent Application Publication No. 2009/0172780
`entitled, “Server for Displaying Contents,” to Sukeda et al.
`(July 2, 2009) (“Sukeda”)
`
`Sung et al., “UPnP Based Intelligent Multimedia Service
`Architecture for Digital Home Network,” IEEE (2006)
`(“Sung”)
`
`U.S. Patent Application Publication No. 2010/0162294
`entitled, “Methods, Systems and Computer Program
`Products for Remote DVR Interface Provisioning,” to Yin
`et al. (June 24, 2010) (“Yin”)
`
`Defendants hereby identify the following systems that were in public use prior to the
`
`invention date of the ’251 Patent as prior art under §§ 102(a), 102(b), and/or 102(g)(2):2
`
`System
`
`Ex.
`Nos.
`
`
`
`Clicker
`
`A-28 Xfinity TV Remote Mobile
`Application
`
`
`
`
`
`Apple AirPlay
`
`Snapstick
`
`Relevant
`Dates
`
`Persons/Entities Involved
`
`2007
`
`AT&T Labs Research
`
`2010-2011
`
`Comcast
`
`2010
`
`Apple Inc.
`
`2010-2011
`
`SnapStick, Inc.
`
`
`2 Defendants have served discovery on third parties and will supplement their invalidity contentions when
`additional information is received.
`
`12
`
`

`

`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 17 of 134 PageID #: 6271
`
`Ex.
`Nos.
`
`System
`
`YouTube Leanback, YouTube
`Remote, and/or Google TV
`
`PlayTo
`
`YahooTV
`
`Relevant
`Dates
`
`Persons/Entities Involved
`
`2010-2011 Google LLC
`
`2009-2011 Microsoft Corp.
`
`2009-2010 Yahoo Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Verizon FiOS Mobile Remote
`
`2009-2010 Verizon Communications, Inc.
`
`Fetchit
`
`Vizbee
`
`Boxee
`
`TwonkyMedia and/or
`TwonkyManager and related
`products and systems
`
`Zelfy Peel
`
`Rokumote
`
`DVPRemote
`
`pocketBLU
`
`
`
`2009-2011
`
`Fetch Interactive
`
`2014
`
`Vizbee Inc.
`
`2009-2010
`
`Boxee, Inc., Samsung
`Electronics America, Inc.
`
`2007-2011
`
`Lynx Technology
`
`2010-2011
`
`Zelfy, Peel Technologies
`
`2008-2011
`
`Roku, Inc.
`
`2010
`
`2010
`
`Phil Irey
`
`Deluxe Digital Studios, Inc.
`
`Attached hereto as Exhibits A-1 through A-28 are exemplary invalidity charts describing
`
`where each element of the asserted claims of the ’251 Patent may be found in certain prior art
`
`references and demonstrating how those references anticipate and/or render obvious (alone or in
`
`combination) the asserted claims. These charts contain only representative examples of where
`
`each element may be found in a particular prior art reference and are not intended to be an
`
`exhaustive list of every instance of where that element is disclosed.
`
`To the extent it is determined that any limitation of the asserted claims is not disclosed by
`
`any one of the references charted in Exhibits A-1 through A-28 on its own, the asserted claims
`
`are nevertheless invalid as obvious in view of each reference by itself or in combination with
`
`other prior art references. The Supreme Court in KSR emphasized that inventions arising from
`
`13
`
`

`

`Case 2:23-cv-00059-JRG Document 113-7 Filed 08/16/24 Page 18 of 134 PageID #: 6272
`
`ordinary innovation, ordinary skill, or common sense are not patentable. See KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 427 (2007). Rationales that may support a conclusion of obviousness
`
`include:
`
`
`
`
`
`
`
` Combining various claimed elements known in the prior art according to known
`methods to yield a predictable result;
`
` Making a simple substitution of one or more known elements for another to
`obtain a predictable result;
`
` Using a known technique to improve a similar device or method in the same way;
`
` Applying a known technique to a known device or method ready for improvement
`to yield a predictable result;
`
` Choosing from a finite number of identified, predictable solutions with a
`reasonable expectation of success, such that the solution was one which was
`“obvious to try”;
`
` A known work in one field of endeavor prompting variations of it for use either in
`the same field or a differ