Case 5:19-cv-00036-RWS Document 348-4 Filed 06/18/20 Page 1 of 15 PageID #: 12288
`Case 5:19-cv-00036—RWS Document 348-4 Filed 06/18/20 Page 1 of 15 PageID #: 12288
`
`EXHIBIT 21
`
`EXHIBIT 21
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`

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`Case 5:19-cv-00036-RWS Document 348-4 Filed 06/18/20 Page 2 of 15 PageID #: 12289
`Defendant’s Invalidity Contentions
`Exhibit E2
`
`
`Invalidity of U.S. Patent No. 10,084,991
`by
`U.S. Patent No. 7,565,680 to Asmussen (“Asmussen”)
`
`
`The excerpts cited herein are exemplary. For any claim limitation, Defendant may rely on excerpts cited for any other limitation
`and/or additional excerpts not set forth fully herein to the extent necessary to provide a more comprehensive explanation for a
`reference’s disclosure of a limitation. Where an excerpt refers to or discusses a figure or figure items, that figure and any additional
`descriptions of that figure should be understood to be incorporated by reference as if set forth fully therein.
`
`Except where specifically noted otherwise, this chart applies the apparent constructions of claim terms as used by Plaintiff in its
`infringement contentions; such use, however, does not imply that Defendant adopts or agrees with Plaintiff’s constructions in any
`way.
`
`U.S. Patent No. 10,084,991 (“the ’991 Patent”) claims priority to Japanese Application No. 2008-246232, filed September 25, 2008.
`For purposes of these invalidity contentions, Defendant applies the Sep. 25, 2008, priority date for the ’991 Patent. However,
`Defendant reserves the right to contest Plaintiff’s reliance on the Sep. 25, 2008, priority date, should the priority date become an issue
`in this proceeding.
`
`U.S. Patent No. 7,565,680 to Asmussen (“Asmussen”) was filed on June 30, 2000. Asmussen therefore qualifies as prior art with
`regard to the ’991 Patent at least under 35 U.S.C. § 102(e) (pre-AIA).
`
`U.S. Patent No. 7,548,255 to Bear, et al. (“Bear”) was filed on September 30, 2003. Bear therefore qualifies as prior art with regard to
`the ’991 Patent at least under 35 U.S.C. § 102(e) (pre-AIA).
`
`U.S. Patent Application Publication No. 2007/0139514 to Marley (“Marley”) published on June 21, 2007. Marley qualifies as prior art
`with regard to the ’991 Patent at least under 35 U.S.C. §§ 102(a) and (b) (pre-AIA).
`
`U.S. Patent Application Publication No. 2003/0041333 to Allen, et al. (“Allen”) was published on February 27, 2003. Allen therefore
`qualifies as prior art with regard to the ’991 Patent at least under 35 U.S.C. §§ 102(a) and (b) (pre-AIA).
`U.S. Patent No. 7,046,268 to Saburi (“Saburi”) was published on May 16, 2006. Saburi therefore qualifies as prior art with regard to
`the ’991 Patent at least under 35 U.S.C. §§ 102(a) and (b) (pre-AIA).
`
`Asmussen anticipates or otherwise renders obvious claims 1-5 and 8-12 under 35 U.S.C. §§ 102 and 103(a).
`
`
`
`1
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`Case 5:19-cv-00036-RWS Document 348-4 Filed 06/18/20 Page 3 of 15 PageID #: 12290
`Defendant’s Invalidity Contentions
`Exhibit E2
`
`
`Alternatively, Asmussen in view of Marley renders claims 1 and 8 obvious under 35 U.S.C. § 103(a).
`
`Alternatively, Asmussen in view of Saburi renders claims 1 and 8 obvious under 35 U.S.C. § 103(a).
`
`Alternatively, Asmussen in view of Bear renders claims 1 and 8 obvious under 35 U.S.C. § 103(a).
`
`Alternatively, Asmussen in view of any of Marley, Saburi, and/or Bear renders claims 1 and 8 obvious under 35 U.S.C. § 103(a).
`
`Alternatively, Asmussen in view of Allen renders claims 2-5 and 9-12 obvious under 35 U.S.C. § 103(a).
`
`Alternatively, Asmussen in view of Marley and further in view of Allen renders claims 2-5 and 9-12 obvious under 35 U.S.C.
`§ 103(a).
`
`Alternatively, Asmussen in view of Saburi and further in view of Allen renders claims 2-5 and 9-12 obvious under 35 U.S.C. § 103(a).
`
`Alternatively, Asmussen in view of Bear and further in view of Allen renders claims 2-5 and 9-12 obvious under 35 U.S.C. § 103(a).
`
`Alternatively, Asmussen in view of any of Marley, Saburi, and/or Bear and further in view of Allen renders claims 2-5 and 9-12
`obvious under 35 U.S.C. § 103(a).
`
`
`Asmussen
`
`To the extent the preamble is limiting, Asmussen discloses a communication apparatus for
`transmitting and receiving digital information to and from another communication apparatus.
`
` A
`
` set top terminal equipped with a camera and microphone includes the
`capability to send and receive video calls through a cable television delivery
`system or other communications networks. In response to detection of the
`occurrence of a video call event or triggering event, a video program is
`automatically paused. In response to an incoming video phone call, message,
`web page, or other video communications information, the system pauses the
`video program and displays an indication of the occurrence of the
`
`2
`
`U.S. Patent No. 10,084,991
`Claim 1
`[1(P)] A communication
`apparatus for transmitting and
`receiving digital information
`to and from another
`communication apparatus,
`comprising:
`
`
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`Case 5:19-cv-00036-RWS Document 348-4 Filed 06/18/20 Page 4 of 15 PageID #: 12291
`Defendant’s Invalidity Contentions
`Exhibit E2
`
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`communications event. The system also buffers the video program while paused,
`permitting a user to replay missed portions of it.
`
`
`Asmussen at Abstract.
`
`The present invention is a set top converter box or terminal for a television
`program delivery system. More specifically, the present invention is an
`advanced set top converter box that acts as a terminal in the viewer's home. The
`set top terminal is a key component of a digital cable television delivery system.
`The set top terminal is an upgradeable system that provides for the
`decompression of digital program signals. The preferred set top terminal
`provides both a menu generation capability as well as a number of advanced
`features and functional capabilities.
`
`Asmussen at 3:20-30.
`
`
`Such features include the capability to send and receive video calls through the
`set top terminal equipped with a camera and microphone. The video call can
`be communicated through the cable television delivery system or other
`communications networks.
`
`Asmussen at 4:5-9.
`
`
`Still other such features include caller identification of video calls and dual
`display of video programs and video calls, such as picture in picture. The video
`call functionality can be built into a set top terminal or provided as a hardware
`upgrade to a set top terminal.
`
`
`Asmussen at 4:26-30.
`
`
`Additionally, the set top terminal 220 includes a camera input 666 and a
`microphone jack 667, by which a camera and microphone, respectively, can be
`
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`Case 5:19-cv-00036-RWS Document 348-4 Filed 06/18/20 Page 5 of 15 PageID #: 12292
`Defendant’s Invalidity Contentions
`Exhibit E2
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`steady state unlit when the camera is off, steady state red when video capture is
`taking place, a slowly blinking red indicator light when there is an incoming
`video call, or steady state green when the camera is used for proximity
`detection. Note that although video-capable applications can set this indicator
`to a particular color such as red when recording, the firmware may additionally
`ensure the indicator is set to red if the camera is actively streaming video.
`
`
`Bear at 7:46-60.
`
`
`Claim 2
`2. The communication
`apparatus according to claim
`1,
`wherein after the videophone
`call is finished, the processor
`restarts the displaying of the
`first digital information.
`
`
`
`Asmussen discloses wherein after the videophone call is finished, the processor restarts the
`displaying of the first digital information.
`
`
`A set top terminal equipped with a camera and microphone includes the
`capability to send and receive video calls through a cable television delivery
`system or other communications networks. In response to detection of the
`occurrence of a video call event or triggering event, a video program is
`automatically paused. In response to an incoming video phone call, message,
`web page, or other video communications information, the system pauses the
`video program and displays an indication of the occurrence of the
`communications event. The system also buffers the video program while paused,
`permitting a user to replay missed portions of it. Alternatively, the system waits
`for a triggering event, which includes the user's access to the communications
`event, in order to pause the video program. The set top terminal also includes
`features for caller identification of video calls and dual display of video
`programs and video calls, such as picture in picture. A hardware upgrade for
`adding video call functionality to a set top terminal is also disclosed.
`
`
`Asmussen at Abstract.
`
`
`Other such features include a system for automatically pausing a video
`program in response to detection of the occurrence of a video call event or
`triggering event. In response to an incoming video phone call, message, web
`
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`Case 5:19-cv-00036-RWS Document 348-4 Filed 06/18/20 Page 6 of 15 PageID #: 12293
`Defendant’s Invalidity Contentions
`Exhibit E2
`
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`page, or other Video information, the system pauses the video program and
`displays an indication of the occurrence of the video call event. Alternatively,
`the system pauses the video program in response to a triggering event, which
`includes a user's access to a video call event. The system also buffers the video
`program while paused, permitting a user to replay missed portions of it.
`
`
`Asmussen at 4:10-20.
`
`
`This program pause feature provides the user with an indication of a particular
`communications event, while buffering the paused video program. The user can
`thus take a particular action in response to the communications event without
`missing any substantial portion of the video program.
`
`
`Asmussen at 44:20-24.
`
`
`FIGS. 25 and 26 illustrate how use of the buffer for a video program permits
`the user to replay portions of the video program and execute other VCR-type
`functions for it. This feature is particularly useful for real-time (“live') video
`program transmission, where the user typically would otherwise lose portions
`of the transmission when the video program is paused. This feature may be used
`with any type of video program, whether transmitted, for example, in real-time
`or prerecorded. The buffer receives and stores the video program for
`subsequent playback.
`
`
`Asmussen at 44:38-47.
`
`
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`Case 5:19-cv-00036-RWS Document 348-4 Filed 06/18/20 Page 7 of 15 PageID #: 12294
`Defendant’s Invalidity Contentions
`Exhibit E2
`
`
`
`Asmussen at Fig. 25 and 26.
`
`
`
`
`As shown in FIG. 25, a buffer 1420 receives a video signal from a video
`program source 1423, which includes any source of a video signal for use in
`displaying a video program. Examples include broadcast television, and other
`wireless and cable television transmission, and electronic devices out putting
`video signals. The video signal is typically processed for storage within buffer
`1420, such as through conversion to a digital signal, compression, and filtering.
`Buffer point 1422 in buffer 1420 illustrates a point of current transmission. In
`other words, a beginning of the buffer corresponds with a current transmission
`of a video program from video program source 1423. The video program is
`transmitted from the buffer to a video program display 1424.
` Upon reading the video signal from buffer 1420, various processing of it may
`occur for Subsequent display on a television or other display device. For
`
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`Case 5:19-cv-00036-RWS Document 348-4 Filed 06/18/20 Page 8 of 15 PageID #: 12295
`Defendant’s Invalidity Contentions
`Exhibit E2
`
`
`example, the stored video signal is typically converted to an analog signal,
`amplified, and filtered before transmission to the display device. A transmission
`point 1425 illustrates a point of transmission of the video program from buffer
`1420 to display 1424. Therefore, when the system transmits the video program
`from the start of the buffer, with transmission point 1425 corresponding to the
`point of current transmission 1422, the video program is transmitted in real-
`time.
`
`
`Asmussen at 44:57-45:13.
`
`
`FIG. 26 illustrates use of the buffer for performing various video control
`functions, particularly after the video program has been paused. As the video
`program is paused, buffer point 1425 moves along buffer 1420 to track the last
`point of transmission of the video program. When the video program is paused,
`the user may execute various functions to continue to play the video program
`and play portions that were missed. Therefore, the amount of video buffered
`between point 1421 and buffer point 1425 represents an amount buffered before
`the video program was paused. The amount buffered between buffer point 1425
`and point of current transmission 1422 represents the amount of video program
`missed by the user and buffered while the video program was paused. Upon
`requesting to play the video program, buffer point 1425 moves toward the
`beginning of buffer 1422 in order to play a buffered portion that was missed.
`
`
`Asmussen at 45:22-37.
`
`
`
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`Case 5:19-cv-00036-RWS Document 348-4 Filed 06/18/20 Page 9 of 15 PageID #: 12296
`Defendant’s Invalidity Contentions
`Exhibit E2
`
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`59
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`Case 5:19-cv-00036-RWS Document 348-4 Filed 06/18/20 Page 10 of 15 PageID #: 12297
`Defendant’s Invalidity Contentions
`Exhibit E2
`
`
`
`Asmussen at Fig. 29.
`
`
`FIG. 29 illustrates video program control method 1470, which may be executed
`simultaneously with event monitoring method 1440. Video program control
`method 1470 permits VCR-type functions based upon use of the buffer as
`explained with respect to FIGS. 25 and 26. In addition, video program control
`method 1470 permits the user to enter a command in step 1457 in the flow chart
`in FIG. 28 in order to begin playing a video program after it has been paused
`in response to detection of an occurrence of a communications event.
`
`
`Asmussen at 48:29-38.
`
`
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`Case 5:19-cv-00036-RWS Document 348-4 Filed 06/18/20 Page 11 of 15 PageID #: 12298
`Defendant’s Invalidity Contentions
`Exhibit E2
`
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`
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`61
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`Case 5:19-cv-00036-RWS Document 348-4 Filed 06/18/20 Page 12 of 15 PageID #: 12299
`Defendant’s Invalidity Contentions
`Exhibit E2
`
`
`
`Asmussen at Fig. 28.
`
`Additionally or alternatively, it would have been obvious to a PHOSITA to configure Asmussen’s
`processor to restart the first digital information after the videophone call is finished, as taught by
`Allen. Like Asmussen, Allen teaches a set-top box device with a processor that automatically restarts
`displaying of the television program from the point at which the video call commenced in response
`to the termination of the call. Allen emphasizes a benefit of resuming the program from the point of
`pausing as allowing a “user to subsequently view the program in its entirety.” Allen at ¶ [0008]. A
`PHOSITA would have been motivated to configure Asmussen’s system to restart displaying of the
`first digital information thereby improving similar devices in the same way. Combining prior art
`elements according to known methods would have yielded the predictable result of restarting a
`paused program upon termination of a videophone call with a reasonable expectation of success.
`
`
`What is also needed is a system and method for automatically answering and
`recording video calls in Which a television program or other broadcast
`entertainment program is automatically buffered to allow a user to
`subsequently view the program in its entirety.
`
`
`Allen at ¶ [0008].
`
`
`
`
`In certain embodiments, if the user accepts the request (or later interrupts the
`recording of a video message to communicate with the caller), the ITV system
`begins to buffer a television signal being currently displayed. When the video
`communication is terminated, the ITV system plays back the television program
`being buffered from the point in time at which the communication commenced.
`
`
`Allen at ¶ [0027].
`
`
`Later, when the communication is terminated, the television signal 404 being
`buffered may be played back from the point in time at which the communication
`commenced. Buffering may continue during playback, effectively time-shifting
`the television signal 404 for the period of the communication. As a result, the
`
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`Case 5:19-cv-00036-RWS Document 348-4 Filed 06/18/20 Page 13 of 15 PageID #: 12300
`Defendant’s Invalidity Contentions
`Exhibit E2
`
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`user 402 may provide complete attention to the caller 406 without missing
`significant portions of a television broadcast.
`
`
`Allen at ¶ [0084].
`
`
`Upon termination of the two-way video communication channel 602, a playback
`component 914 may begin to play back the buffered television signal 404 from
`the point in time at which communication commenced. The playback component
`914 retrieves the buffered television signal 404 from the storage device 310 and
`displays the signal 404 on the television 104.
`
`
`Allen at ¶ [0096].
`
`
`A determination 1108 is then made whether the user accepts or rejects the
`request 408. If the user accepts, in certain embodiments, a television signal 404
`currently being viewed is buffered 1110 to a storage device 310. Thereafter,
`two-way video communication is established 1112 between the user 402 and
`the caller 406. Next, a determination 1114 is made whether the communication
`has been terminated. If so, the television signal 404 being buffered is played
`back 1116 from a point in time at which the request 408 was accepted 1108. If
`not, the method returns to step 1114 to await the termination of the
`communication.
`
`
`Allen at ¶ [0101].
`
`
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`Case 5:19-cv-00036-RWS Document 348-4 Filed 06/18/20 Page 14 of 15 PageID #: 12301
`Defendant’s Invalidity Contentions
`Exhibit E2
`
`
`Claim 3
`
`
`
`Allen at Fig. 11.
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`Case 5:19-cv-00036-RWS Document 348-4 Filed 06/18/20 Page 15 of 15 PageID #: 12302
`Defendant’s Invalidity Contentions
`Exhibit E2
`
`
`Asmussen discloses a microphone configured to generate audio information which is included in
`the third digital information. See supra, Claims 1(c), 1(g).
`
`Additionally or alternatively, Asmussen in view of Bear renders this limitation obvious. See supra,
`Claims 1(c), 1(g).
`
`Asmussen discloses when the processor receives the inbound videophone call notice while
`displaying the first digital information on the display, the processor switches a function of
`processing video information of the first digital information to a function of processing video
`information of the second digital information of the videophone call. See supra, Claim 1(f).
`Asmussen further teaches the processor switching to a function of processing video information of
`the second digital information of the videophone call, e.g., displaying video signals from a calling
`party.
`
`
`In regards to reception, an incoming (i.e., downstream) video conferencing
`signal is received by a receiver 750, decoded by a channel decoder 755,
`decrypted by a decryptor 760, and demutliplexed with proper relative timing
`among video, audio and other data components by a demultiplexer
`synchronizer 765. Video signals are decompressed by a video source decoder
`770 and output for display on a display device 602, which is typically the
`television 222. Audio signals are decompressed by an audio source decoder 775
`and output for playing on the speaker/microphone 2002, the speaker portion of
`which may be the speaker(s) of the television 222 Data files, such as electronic
`books, are stored in one or more files 777. Again, the order of processing can
`be different from that illustrated.
`
`
`Asmussen at 50:44-57; see also id. at 50:18-43, 33:26-59.
`
`Alternatively, Asmussen in view of any of Marley, Saburi, and Bear renders this limitation
`obvious. See supra, Claim 1(f).
`
`65
`
`3. The communication
`apparatus according to claim
`2,
`further comprising a
`microphone configured to
`generate audio information
`which is included in the third
`digital information.
`Claim 4
`4. The communication
`apparatus according to claim
`3,
`wherein when the processor
`receives the inbound
`videophone call notice while
`displaying the first digital
`information on the display, the
`processor switches a function
`of processing video
`information of the first digital
`information to a function of
`processing video information
`of the second digital
`information of the videophone
`call.
`
`
`
`