PTOISBJSY (D4-05)
`Approved for use through O4i'3CtI2007. OMB 0551-0033
`US. Patent and Tradernark Ofiice; U.S. DEPARTMENT OF COMMERCE
`Unfit‘-‘rifle Panerworlr Reduction Actct 1995. no persons are required to respond to a collection of inicrrnation unless itdlsplays a vain OMB ountroi number.
`(Also referred to as FORM PTO-1465)
`
`REQUEST FOR EXPARTE REEXAMINATION TRANSMITTAL FORM
`
`Address to:
`MS Ex Parle Reexam
`Commissioner for Patents
`P.0. Bax use
`Alexandria. VA 22313-1450
`
`.
`
`Attome Docket No.:
`Y
`
`454030
`
`1
`
`00004
`
`9.... October17. 2005
`
`.
`1
`-
`-
`""°- P’ ‘
`°4°°”
`90007750
`I
`ililiiliiliiliiliiiilmimliIii
`1 O! 1 W05
`
`1.
`
`This is a request for ex parte reexamination pursuant to 37 CFR 1.510 of patent number
`6 233.389
`issued
`Mag 15. 2001
`. The request is made by:
`[1 patent owner.
`El third party requester.
`2. [3 The name and address of the party requesting reexamination is:
`ECHOSTAR COMMUNICATIONS CORPORATION
`9601 S. Meridian Boulevard
`Englewood. Colorado 30112
`
`10!1"H05
`
`iii”
`
`is enciosed to cover the reexarriiriation fee, 37 CFF-2
`1 9nr:~\m-
`
`3- D a. Acheok in the amount of $
`E b. The Director is hereby authorized to charge the fee as set forth in 37 CFR 1.20(c)(t)
`to Deposit Account No.
`03-1952
`{submit duplicative copy for fee processing): or
`D c. Payment by credit card. Fom1 PTO-2038 is attached.
`4. El Any refund should be made by El check or El cred“ 1° D39’-*5" A°°°”m
`03-1952
`Mn
`37 CFR 1.26(c).
`If payment is made by credit card. refund must be to credit card account.
`
`.
`
`5_ El A copy of the patent to be reexamined having a double column format on one side of a separate paper
`is enclosed. 37 CFR 1.51 0(b){4)
`
`6. El CD—ROM or CD-R in duplicate, Computer Program (Appendix) or large table
`El Landscape Table on CD
`7_ El Nucleotide andfor Amino Acid Sequence Submission
`if appiicabie, items a, — c. are required.
`
`a. I: Computer Readable Fon11(CRF)
`b.
`Specification Sequence Listing on:
`
`i. Q QB-ROM (2 copies) or CD-R (2 copies); or
`ii.
`téper
`c. B Stfifegents verifying identity of above copies
`"'1
`8 D A copy of anfidisclaimer, certificate of correction or reexamination certificate issued in the patent is
`included. I"LlJ‘
`'
`is requested.
`1, 6. 20. 21, 23. 32, 37, 51. 52
`9- E Reexamiliigl otc|aim{s)
`1o_
`A copy of‘.-gevfiy patent or printed publication relied upon is submitted herewith including a listing
`thereof ofi°i=ogn PTOISBIOS. PTO-1449. or equivalent.
`11_ B An English laifguage translation of all necessary and pertinent non-English language patents andior
`printed pubtiriations is included.
`
`I hereby certify that this corr'§sponcrence is being deposited with the U.S. Postal Service as Express Mail, Airbill No. EV701013Qd5U5,
`in an envelope addressed to} MS Ex Pane Reexam. Cornrnissioner tor Pa ,- ts. PO. Box 14 . Alexandria. VA 22313-1450. on the
`data shown below.
`so
`/T-
`_ {Marco Jimenez}
`Dated: October '17, 2005
`Signature:
`u-1
`1
`
`1
`
`SAMSUNG 1016
`
`

`
`PTtJirsEl-'57 re-Has;
`Approved for use through O-Itraorzoor. OMB {I651-D033
`US. Patent and Trademark Office: U.s. DEPARTMENT DF COMMERCE
`--
`- toaooflectionothwlonriationuntessi
`.avafld DMBoontrot number.
`
`12. E] The attached detailed request includes at least the following items;
`a.
`A statement identifying each substantial new question ot paterrtabllity based on prior
`patents and printed publications. 37 CFR 1.51 t.'r{b){1)
`An identification of every claim for which reexamination is requested. and a detailed
`explanation of the pertinency and manner 0! applying the cited art to every claim
`for which reexamination is requested. 3? CFR 1 .51D(b)(2)
`
`b.
`
`13. lj A proposed amendment is included (only where the patent owner is the requester). 3? CFR ‘l .510(e)
`
`14- E 3-
`
`It is certified that a copy of this request fif filed by other than the patent owner} has been
`served in its entirety on the patent owner as provided in 37 CFR 1.3303).
`The name and address of the party served and the date of service are:
`KIRK WONG, ESQ.
`HICKMAN PALERMO TRUONG & BECKER, LLP
`2055 GATEWAY PLACE, SUITE 550
`SAN JOSE, CA 951 ID
`
`:or
`October 17 2005
`Date of Service:
`A duplicate copy is enclosed since service on patent owner was not possible.
`E] b.
`15. Correspondence Address: Direct all communication about the reexamination to:
`
`Elflte address associated with Customer Number:
`
`25224
`
`David L. Fehrman
`Finn at
`Individualflame MORRISON 8. FOERSTER LLP
`
`555 w. Fifth‘Street. Suite 3500
`
`W J California
`com,
`(213)892-5601
`
`90013
`DFehrman@mofo.com
`
`16. |:] The patent is currently the subject of the foltowing concurrent proceeding(s):
`El a. Copending reissue Application No.
`
`El 1). Copendlng reexamination Control No.
`|:' c. Copending lnterterence No.
`IE cl. Copending litigation styled:
`Tivo, inc. v. Echostar Communications Corp, et at, Case No. 2-04cvD1 DF,
`U.S. District Court for the Eastern District of Texas Marshall Division
`
`Dg £i
`Authorized Signature
`David L. Fehrn-ran
`TypediPrinted Name
`
`Oct0ber17. 2005
`Date
`28 600
`Registration No.. if applicable
`
`D For Patent Owner Requester
`
`E] For Third Party Requester
`
`Ia-B20?67
`
`2
`
`

`
`I hereby eertify that ‘Ibis correspondence is being depuslled wilrl lhe U.S.
`Pasial Sewice as Efipress Mail, Aimill Nu. EV S4465-$327 US. in an
`envelope addressed to: Ms E: Perle Reenam. Commissioner
`PD. Box 1456. Alexandria, VA 22313-1450, on me datejha
`Dated: October 17. 2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No. 454030000041
`(PATENT)
`
`In re Reexamination of:
`
`James M. BARTON, et a].
`
`Patent No.: 6,233,389
`
`Group Art Unit: Not Yet Assigned
`
`Issue Date: May 15, 200]
`
`Examiner: Not Yet Assigned
`
`For: MULTIMEDLG. TIME WARPING SYSTEM
`
`DETAILED REQUEST FOR EX PARTE REEXAMINATION
`
`3
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTORY COMMENTS .................................................................................................... ..
`
`I
`
`CLAIMS FOR WHICH REEXAMINATION IS REQUESTED ..................................................... .. 3
`
`SUMMARY OF THE ’389
`
`PRIOR ART
`
`5
`
`1.
`
`2.
`
`3.
`
`U8. Patent No. 5,614,940 to Cobbley et al ........................................................................... .. 7
`
`U.S. Patent No. 6,304,714 to Krause et al ............................................................................. .. 9
`
`U.S. Patent No. 5,949,948 to Krause et al ........................................................................... .. 11
`
`OVERVIEW OF CLAIM CONSTRUCTION ISSUES ................................................................. .. I4
`
`DETAILED EXPLANATION OF PERTINENCY OF PRIOR ART TO THE CLAIMS ............. .. 15
`
`1.
`
`Independent claims 1 and 32
`
`a. Claims 1 and 32 are anticipated by Cobbley .................................................................. .. 16
`
`b. Claims 1 and 32 are obvious in view of Krause ’714 and Krause ’948 ......................... .. 22
`
`Dependent claims 6, 20, 21 , 23, 37, 51 and 52 are anticipated by or obvious in View
`ofCobbley, Krause "I14 and K1-ause_’948 __________________________________________________________________________ .. 26
`
`SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY ...................................................... .. 29
`
`CONCLUSION ............................................................................................................................... .. 30
`
`Ia-317044
`
`4
`
`

`
`TABLE OF CONTENTS
`
`(continued)
`
`ATTACHED EXHIBITS
`
`Exhibit 1 ....................................................................... .. U.S. Patent No. 6,233,389 to Barton et al.
`
`Exhibit 2 ..................................................................... ..U.S. Patent No. 5,614,940 to Cobbley et :11.
`
`Exhibit 3 ....................................................................... .. U.S. Patent No. 6,304,714 to Krause et al.
`
`Exhibit 4 ....................................................................... ..U.S. Patent No. 5,949,943 to Krause et al.
`
`Exhibit 5
`
`Patent No. 6,226,447 to Sasaki et al.
`
`Exhibit 6 ................................................................
`
`Patent No. 5,899,578 to Yanagihara et al.
`
`Exhibit 7 ........................................................................ ..U.S. Patent No. 6,167,083 to Sporer et al.
`
`Exhibit 8 ................................................................................. .. U.S. Patent No. 5,577,190 to Peters
`
`Exhibit 9 ..................................................................... .. U.S. Patent No. 6,169,843 to Lenihan et al.
`
`Exhibit 10 .................................... ..Claim Charts based on Cobbley, Krause "714 and Krause ’948
`
`Exhibit 11 ....................... ..Clairn Charts based on Sasaki, Yanagihara, Sporer, Peters and Lenihan
`
`Exhibit 12 ......................................................... .. Claim Construction Order dated August 18, 2005
`
`’ Exhibit 13 .......................... TiVo’s Motion for Partial Summary Judgment dated August 25, 2005
`
`Exhibit 14 .................. .. Deposition Testimony of Dr. Storer (pp. 1-8, 1 13-120, 420-431, 584-599)
`
`Exhibit 15 .............. .. international Standard ISO/IEC 11172 (MPEG-1 Standard, Part 1: Systems)
`
`Exhibit 16 .............................................. ..Collected Articles Concerning MPEG Parsing/Indexing:
`
`K. Shen et al., A fast algorithm for video parsing using MPEG compressed sequences, IEEE,
`pp. 252-255 (0-8185-7310-9/95921995).
`
`S. Smollar et al., Contenbbased video indexing and retrieval, IEEE, Summer 1994, pp. 62-
`72.
`
`J. Meng et al., CVEPS-A compressed video editing and parsing system, ACM Multimedia
`'96, Boston MA, pp. 43-53 (ACM 0-89791-671-1/96/I).
`
`H. Zhang et 211, Video parsing. retrieval and browsing: an integrated and content-based
`solution, ACM Multimedia 95-Electronic Proceedings (Nov. 5-9, 1995, San Francisco, CA).
`
`la-817044
`
`-ii-
`
`5
`
`

`
`INTRODUCTORY COMMENTS
`
`EchoStar Communications Corporation (“EchoStar”) is requesting reexamination of U.S.
`
`Patent No. 6,233,389 (“the ‘389 Patent") under 35 U.S.C. §§ 302-307 and 37 CFR. § 1.510.
`
`The ‘389 Patent issued on May 15, 2001. TiVo Inc. (“TiVo") is the assignee of the ‘339 Patent.
`
`The ’389 Patent is currently the subject of a co-pending litigation styled TiVo Inc. v.
`
`EchoStar Communications C0rp., at al. , Case No. 2—04cv0l DP, before the United States District
`
`Court for the Eastern District of Texas (Marshall Division).
`
`In this litigation, TiVo asserts that
`
`certain products and services provided by EchoStar infringe certain claims of the '38?! Patent.
`
`During the course of the co-pending litigation, Echostar became aware of many U.S.
`
`patents that were neither submitted by TiVo nor cited by the Examiner during prosecution of the
`
`‘389 Patent. EchoStar believes that at least three of these U.S. patents raise substantial new
`
`questions of patentability for at least claims 1, 6, 20, 21, 23, 32, 37, 51 and 52 of the ’389 Patent.
`
`The patentability of these claims is in question particularly in view of TiVo’s
`
`interpretation of the claims in the co-pending litigation. To support its assertion of infringement,
`
`TiVo has argued that certain claim tBl'l't'lS, discussed below, should be ‘‘broadly‘’ construed in a
`
`manner that Echostar believes is incorrect. TiVo's position is important to the reexamination,
`
`because it establishes what TiVo — the patent owner - views as a reasonable interpretation of the
`
`asserted claims.
`
`EchoStar considers TiVo’s interpretation of the asserted claims to be
`
`unreasonable. However, assuming that these claims are given the scope in reexamination that
`
`TiVo asserts in the co-pending litigation, EchoStar respectfully submits that claims 1, 6, 20, 21,
`
`23, 32, 37, S1 and 52 are anticipated by or obvious in view of at least three U.S. patents. An
`
`order for reexamination of these claims should accordingly be issued-
`
`la-3 l 7044
`
`6
`
`

`
`Altematively, if the Examiner believes that TiVo’s interpretation of the asserted claims is
`
`unreasonable and that there is no substantial question of patentability in view of a more proper
`
`claim construction, Echostar respectfully requests that
`
`the Examiner set forth his or her
`
`conclusions as to the unreasonableness of TiVo's claim construction.
`
`la-317044
`
`7
`
`

`
`CLAIMS FOR WHICH REEXAMINATION IS REQUESTED
`
`This request
`
`for
`
`reexamination raises the following substantial new questions of
`
`patentability with respect to the ’389 Patent (attached as Exhibit 1).
`
`Claims 1, 6, 20, 21, 23, 32, 37, 51 and 52 are anticipated under 35 U.S.C. § lO2(a) or
`
`lD2(b) by U.S. Patent No. 5,614,940 to Cobbley et al. (attached as Exhibit 2).
`
`Claims 1, 6, 20, 21, 23, 32, 37, S1 and 52 are obvious under 35 U.S.C. § 103(3) in view
`
`of U.S. Patent No. 6,304,714 to Krause et al. (attached as Exhibit 3) and U.S. Patent No.
`
`5,949,948 to Krause et al. (attached as Exhibit 4).
`
`A detailed explanation for each of these substantial new questions of patentability is
`
`presented below and in corresponding claim charts attached as Exhibit 10.
`
`Aside from Cobbley, Krause "I14 and Krause ‘£943, it is believed that all of the claims for
`
`which reexamination is requested are anticipated by or obvious in view of a number of other
`
`references. Examples of these other references include: U.S. Patent No. 6,226,447 to Sasaki et
`
`al. (attached as Exhibit 5), US Patent No. 5,899,578 to Yanagihara et al. (attached as Exhibit 6),
`
`U.S. Patent No. 6,167,803 to Sporer et al. (attached as Exhibit 7), U.S. Patent No. 5,577,190 to
`
`Peters (attached as Exhibit 3) and U.S. Patent No. 6,169,843 to Lenihan et al. (attached as
`
`Exhibit 9).
`
`Echo Star became aware of Sasaki, Yanagihara, Sporer, Peters and Lenihan during the co-
`
`pending litigation. None of these references was submitted by TiVo or cited by the Examiner
`
`during the prosecution of the ’389 Patent. While the present Request is based primarily on the
`three U.S. patents discussed above, EchoSta.r
`is also submitting herewith claims charts
`
`illustrating how Sasaki, Yanagihara, Sporer, Peters and Lenihan anticipate or render obvious the
`
`la-817044
`
`8
`
`

`
`claims upon which reexamination is considered. The claim charts with respect to Sasaki,
`
`Yanagihara, Sporer, Peters and Lenihan are attached as Exhibit 11. All of this art also impacts
`
`the validity of the remaining claims of the ’389 Patent, which should be reviewed as well in
`
`reexamination.
`
`la-8 l 7044
`
`9
`
`

`
`SUMMARY OF THE ’389 PATENT
`
`The ’389 Patent is directed to a system that captures, stores and displays television
`
`broadcast signals. Figure l (reproduced below) illustrates the system.
`
`FIG. 1
`
`Input Module 101 accepts an input television stream and outputs an MPBG formatted
`
`stream. If the television stream is an analog signal, Input Section 101 “converts" the signal into
`
`an MPEG fonnatted stream using separate audio and video encoders.
`
`(Col. 2, lines 10-14; Col.
`
`3, lines 49-52). The specification discloses that if the incoming signal already contains an
`
`MPEG formatted stream, that MPEG formatted stream is “extracted," rather than convened.
`
`(Col. 2, lines 10-14; Col. 3, lines 46-49). The MPEG formatted stream is then sent to Media
`
`Switch 102.
`
`Media Switch 102 parses and separates the interleaved audio and video components of
`
`the stream into separate PES streams and stores them in corresponding separate audio and video
`
`la-3 l 7044
`
`5
`
`10
`
`

`
`buffers. (Col. 4, line 55 to Col. 5, line 19; Figure 4 (e. g., “video bu_ffer” 410 and “audio buffer“
`
`411)). Although the claims merely require that the audio and video components are parsed and
`
`separated, the specification further discloses that the Media Switch 102 also may place “events”
`
`corresponding to the parsed audio and video components in an “event buffer." (Col. 5, lines 3-
`
`19). From the “events" in the event buffer, the program logic creates and stores separate “logical
`
`segments” that correspond to the PES stored in the separate audio and video buffers.
`
`(Col. 5,
`
`lines 33-3 8). “Each logical segment points 604 directly to the circular buffer, e.g., the video
`
`buffer 613, filled by the Media Switch 601.” (Col. 5, lines 55—57). Thus, the data in the separate
`
`audio and video buffers need not be moved because the logical segments point to the actual data
`
`in the audio buffer and video buffer.
`
`(Col. 5, lines 50-65). The pointer system affords easy
`
`access to the separate components of the MPEG information giving “the effect” of storing the
`
`data as if it were stored “into a single linear buffer of stream data on the storage medium." (Col.
`
`5, line 65 to C01. 6, line 15).
`
`Output Section 103, which has an MPEG decoder, receives the audio and video
`
`components from storage and produces an analog TV signal.
`
`(Col. 4, lines 3-7). Note that
`
`Media Switch 102 is said to handle the incoming data asynchronously and autonomously with
`
`little support or interaction needed from CPU 106, thereby reducing the load on the CPU. (Col.
`
`2, lines 22-25; Col. 6, lines 16-25).
`
`The ’389 Patent issued with a total of 61 claims and four independent claims, i.e., claims
`
`1, 31, 32 and 61. Claim 1
`
`is directed to a process that comprises providing an Input Section, a
`
`Media Switch and an Output Section. Claim 32 is a corresponding apparatus claim to claim I.
`
`11
`
`

`
`PRIOR ART
`
`1.
`
`U.S. Patent No. 5,614,940 [“Cobblex”1
`
`Cobbley (Exhibit 2) issued on March 25, 1997 and, thus, constitutes prior art to the ’339
`
`Patent under 35 U.S.C. § 102(a) and l02(b).
`
`It was neither submitted by TiVo nor cited by the
`
`Examiner during prosecution of the ‘389 Patent.
`
`Cobbley is directed to a broadcast information transmitting, receiving and distribution
`
`system. Figure ] (reproduced below) illustrates one embodiment.
`
`FIGURE 1
`
`Broadcast source 105 transmits broadcast information to broadcast receiver 110 over
`
`medium 107. Cobble)! explains that the broadcast information cart be any type of audio and./or
`
`video data, such as a television program broadcast.
`
`(See Col. 3, lines 14-20). Capture device
`
`1 15 receives the audio and video data from broadcast receiver 110. The data can be in digital or
`
`151-8] 7044
`
`12
`
`

`
`analog form.
`
`If the data is in analog forrn, Cobbley converts the data to digital form. Cobbley
`
`discloses that the audio and video data may be compressed using MPEG compression. (See Col.
`
`6, lines 28-54). Capture device 115 and Index Data Capture Device 112 perform further analysis
`
`and processing of this digital data and eventually transfer the compressed data to cache manager
`
`I
`
`125, which stores the data in cache 130.
`
`Cobbley specifically teaches that the Index Data Capture Device and Capture Device may
`
`generate indexing information based on an analysis of the audio and video MPEG data. To
`
`identify pertinent segments of a broadcast, Cobbley expressly discloses separately scanning the
`
`audio data using speech recognition or other audio related analyses and scanning the video data
`
`using image recognition or other video related analyses.
`
`(See Col. 4, lines 41-56; Col. 6, lines
`
`12-32; Col. 7,
`
`lines l-I8). Such sca.nning generates indexing information for the program
`
`segments and their respective multiple story segments. For example, the indexing information
`
`may provide a subject matter heading for each of the program segments and keywords for each
`
`of the story segments.
`
`(See Col. 3, line 60 to C01. 4, line 7).
`
`Index data capture device 112
`
`obtains the indexing information. The indexing information is then transferred to cache manager
`
`125.
`
`Capture device 115 and index data capture device 112, respectively, associate a block of
`
`audio and video data or indexing information with its time of receipt. This allows the cache
`manager 125 to correlate the indexing infonnation with the blocks of audio and video data for
`
`easy search and retrieval.
`
`(See Col. 7, line 47 to Col. 8, line 6). Cache manager 125 can then
`
`retrieve segments selected by a user and transfer them to a corresponding client system 140.
`
`la-817044
`
`13
`
`

`
`Client system 140 decodes the selected segments and displays them to the user.
`
`(See Col. 9,
`
`lines 53-63).
`
`Cobbley discloses an embodiment in which the Figure 1 devices, including broadcast
`
`receiver 110, index data capture device 112, capture device 115 and cache manager 125 are
`
`connected to a client system 140, shown in Figure 5, including the CPU and a display, such as a
`
`television. Cobbley expressly states that this invention may be incorporated into a set-top box
`
`used in the home with a television. (See Col. 10, lines 7-20; Col. 14, lines 14-46).
`
`2.
`
`U.S. Patent No. 6,§04,714 [“Krause ’714”[
`
`The application for Krause ‘T14 (Exhibit 3) was filed on November 26, 1997 as a
`
`continuation of application no. 08/425,396 filed on April 21, 1995.
`
`It therefore constitutes prior
`
`art to the '389 Patent under 35 U.S.C. § 102(e). Krause '714 was neither submitted by TiVo nor
`
`cited by the Examiner during prosecution of the ’389 Patent.
`
`Krause "H4 is directed to a digital home video system that provides simultaneous
`
`recording and play back of audio and video data. The system can be incorporated in a set-top
`
`box 11 connected to a viewer’s television 12 as illustrated in Figure 1. Figure 2 (reproduced
`
`below) illustrates the system.
`
`Ia-B17044
`
`14
`
`

`
`FIG. 2.
`
`The system receives a signal from an outside source (such as a televised signal), encodes
`
`the signal with encoder 22, and temporarily stores data in input buffer 16.
`
`(See Col. 3, lines 24-
`
`26 and Col. 6, lines 55-59). The encoding may include compression utilizing MPEG. (See Col.
`
`4, lines 14-24).
`
`Input bufier 16 signals to control device 14 when it has reached a certain filled
`
`capacity. Control device 14 then directs high access storage device 17 (e.g., a disk drive) to
`
`accept data from input buffer 16. (See Col. 5, line 65 to Col. 6, line 2). The data is subsequently
`
`transferred from high access storage device 17 to archival storage medium 20 (e.g., a digital
`
`video tape).
`
`While the above recording is taking place, the system can play back previously stored
`
`audio and video data. Control device 14 directs high access storage device 17 to transfer the
`
`audio and video data to output buffer 18.
`
`(See Col. 6, lines 16-23). Output buffer 18 sends the
`
`data to a television after decoding by decoder 19.
`
`It then updates the control device 14 on its
`
`capacity to receive more data. Because the transfer of data from archival medium 20 to high
`
`la-8 l 7044
`
`15
`
`

`
`access storage device 17 is faster than “real time” (i.e., tl'1e normal presentation rate of the
`
`program), the user can fast forward or rewind through the program using user interface 15. User
`
`interface 15 may be a remote control with commands such as play, stop, fast-forward, etc.
`
`(See
`
`Col. 5, lines 51-57).
`
`Krause ’7l4 recognizes that there may be data retrieval problems for some of the trick
`
`play functions, such as multi-speed fast—forward or reverse. During these trick play functions,
`
`decoder 19 must remove data from output buffer 18 at a higher rate. Decoder 19, however, may
`
`not be able to process all the available data. (See Col. 10, lines 1-13). Krause ’714 explains that
`
`the control device 14 can instruct decoder 19 to omit certain frames. While this may alleviate the
`
`processing performed by decoder 19, medium or disk drive 17 must sill transfer data to output
`
`buffer 18 at a higher rate. Krause ‘714 proposes that control device 14 can instruct disk drive 17
`
`to omit certain sections of the data stream when transferring to output buffer 18, but
`
`acknowledges that this may impact the performance of the disk drive and, consequently, the
`
`system. (See Col. 10, lines 14-24).
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`3.
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`U.S. Patent No. 5,949,948 (“Krause ’94B”)
`
`The application for Krause ’948 (Exhibit 4) was filed on November 20, 1995, and, thus,
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`constitutes prior art to the ‘389 Patent under 35 U.S.C. § 102(e). Krause ‘948 was neither
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`submitted by TiVo nor cited by the Examiner during prosecution of the '389 Patent.
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`The application that matured into Krause ’948 was filed approximately seven months
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`after the filing date of the parent application of Krause ’714. The three inventors of Krause ‘948
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`are a subset of the inventors of Krause ‘"114. Krause ’948 adds to Krause "I14 and is directed to
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`improved compressed video data retrieval methods “for supporting multi-speed play back modes
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`in both forward and reverse directions in an optimal manner.”' (Abstract; see also Col. 4, lines
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`55-59). One embodiment is illustrated in Figure 5 (reproduced below).
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`FIG. 5
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`Compressed program source 130 is a source of MPEG-encoded video data and can be an
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`encoder, a cable receiver or a satellite receiver.
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`(Col. 5, lines 1-6 and Col. 6, lines 31-39). As
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`the encoded data is transferred to controller 130, 1-frame detector 515 monitors for I-frames.
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`(See Col. 12, lines 1-3). Under the MPEG compression standard, a complete picture can be
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`generated from an I-frame alone.
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`In contrast, P-frames and B-frames are dependent on other
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`frames to complete a picture. Each time I—frame detector 515 detects an I-frame, it interrupts
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`host 520. (See Col. 12, lines 3-5). Host 520, which can be a computer, reads a sequence number
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`corresponding to the detected I—frame and matches it with a storage block currently being
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`addressed on storage device 140. (See Col. 12, lines 5-8). The system of the Krause ’948 Patent
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`12
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`relies upon on a hard disk storage device 140 without the need for archival tape storage. (Col. 6,
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`lines 43-48). The resulting table can then be used to efficiently retrieve compressed video data
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`from storage device 140 to decoder 150 for trick play functions, such as fast forward or reverse.
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`The system can retrieve directly the appropriate I—frame for the selected speed of the trick play,
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`thereby reducing the amount of data that needs to be transferred from storage device 140.
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`(See
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`Col. 1 1, lines 35-55).
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`OVERVIEW OF CLAIM CONSTRUCTION ISSUES
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`In the co-pending litigation relating to the '38‘) Patent, TiVo and EchoStar submitted
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`respective claim constructions to the Court which recently issued a claim construction ruling
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`(attached as Exhibit 12). TiVo’s infringement assertions in the co-pending litigation affect
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`several tennis and phrases in the claims of the ’389 Patent. For example, claim I
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`recites:
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`“providing a Media Switch, wherein said Media Switch parses said MPEG stream, said MPEG
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`stream is separated into its video and audio components.” TiVo contends that parsing and
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`separating an MPEG stream does not require actual separation of the stream into distinct audio
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`and video streams, but also encompasses “analyzing" an MPEG stream to look for events (such
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`as audio and video data) in order to generate an event queue or frame index. TiVo accordingly
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`asserts that the term “parses” means merely to analyze in any way, while “separated" means to
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`analyze interleaved audio and video data sufficient to distinguish in any way a video packet from
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`an audio data. (Exhibit 13 at 11-13). EchoStar considers these proposed constructions and other
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`constructions discussed below to be unreasonable. Nevertheless, if claims 1, 6, 20, 21, 23, 32,
`
`37, S] and 52 are given the scope in reexamination that TiVo asserts in the co-pending litigation,
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`EchoStar respectfully submits that these claims are either anticipated by or obvious in View of
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`the references discussed above.
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`DETAILED EXPLANATION OF PERTINENCY OF PRIOR ART TO THE CLAIMS
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`Claims 1 and 32
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`Claim 1 of the ’389 Patent is reproduced below:
`
`A process for the simultaneous storage and play
`1.
`back of multimedia data, comprising the steps of:
`accepting television (TV) broadcast signals, wherein
`said TV signals are based on a multitude of standards,
`including, but not limited to, National Television Standards
`Committee
`(NTSC) broadcast, PAL broadcast,
`satellite
`transmission, DSS, DBS, or ATSC;
`
`tuning said TV signals to a specific program;
`providing at least one Input Section, wherein said Input
`Section converts said specific program to an Moving Pictures
`Experts Group (MPEG) formatted stream for internal transfer
`and manipulation;
`providing a Media Switch, wherein said Media Switch
`parses said MPEG stream, said MPEG stream is separated
`into its video and audio components;
`storing said video and audio components on a storage
`
`device;
`
`providing at least one Output Section, wherein said
`Output Section extracts said video and audio components from
`said storage device;
`wherein said Output Section assembles said video and
`audio components into an MPEG stream;
`wherein said Output Section sends said MPEG stream
`to a decoder;
`wherein said decoder converts said MPEG stream into
`
`TV output signals;
`wherein said decoder delivers said TV output signals to
`a TV receiver; and
`accepting control commands from a user, wherein said
`control commands are sent through the system and affect the
`flow of said MPEG stream.
`
`Independent claim 32 recites apparatus elements that directly correspond to the steps of
`
`claim 1.
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`

`
`Claims 1 and 32 are anticipated by Cobbley
`
`Under the construction that TiVo advances, Cobbley fully discloses each and every
`
`element of claims 1 and 32 of the ’389 Patent, as discussed below and summarized in the claim
`
`chart attached as Exhibit 10.
`
`It should be noted that the following analysis only sets forth the
`
`steps of claim 1
`
`for ease of review. The analysis, however, applies to each corresponding
`
`element ofclaim 32.
`
`The first step of claim 1 is “accepting television (TV) broadcast signals, wherein said TV
`
`signals are based on a multitude of standards, including, but not limited to, National Television
`
`Standards Committee (NTSC) broadcast, PAL broadcast, satellite transmission, DSS, DBS, or
`
`ATSC.” TiVo construes these claim terms to be met by any single broadcast signal, for example,
`
`a DBS or cable signal that, in turn, is based upon numerous sub-standards, including closed
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`caption and other audio or video related standards. (See Exhibit 12 at 8 (“DVB format is based
`
`on many specifications and has many related standards”). This interpretation is unreasonable
`
`since it ignores that the claims expressly identify a multitude of transmission standards, not
`
`merely content-based standards.
`
`In any event, Cobbley discloses a broadcast receiver 110 that
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`receives broadcast
`
`information from broadcast source 105 over transmission medium 107.
`
`Cobbley further discloses that the broadcast infonnation may be transmitted by a wide variety of
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`broadcast sources, such as “a satellite dish, a radio or television transmitter, etc." (Col. 3, lines
`
`14-20 and 29-42).
`
`The next step is “tuning said TV signals to a specific program.”
`
`In the co-pending
`
`litigation, TiVo construes this step as “adjusting the system to receive signals at a particular
`
`frequency or a particular program.” (See Exhibit 1'2 at page 13). The Court has construed this
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`term to mean “tuning said TV signals to a specified frequency range."
`
`(Court's Claim
`
`Construction Order, Exhibit 12 at 14). If TiVo’s (or the Court’s) interpretation is applied in this
`
`reexamination, Cobbley fully discloses the step.
`
`It discloses an embodiment with multiple
`
`broadcast receivers l 10. (See Col. 15, lines 34-40). Each of the receivers is tuned to a frequency
`
`of a particular broadcast source 105 and its corresponding program. Moreover, as TiVo’s own
`
`prior art expert admitted, the disclosure of satellite and other broadcast transmission means (Col.
`
`3, lines 14-20 and 29-42), inherently teaches “tuning said TV signals to a specified frequency
`
`range.” (Exhibit 14 at 117:] 1-1 18:15).
`
`Claim 1 further recites “providing at least one Input Section, wherein said Input Section
`
`converts said specific program to an Moving Pictures Experts Group (MPEG) formatted stream
`
`for internal transfer and manipulation.” Although unreasonable in view of the patent’s express
`
`distinction between “convert" and “extract,
`
`TiVo asserts that this limitation covers situations
`
`nl
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`in which the incoming TV signal
`
`is already formatted in MPEG format and is simply
`
`demodulated upon receipt. TiVo construes “Input Section" as “hardware and/or code that
`
`changes or adapts the form or function of the TV program data to an MPEG format suitable for
`
`internal transfer and manipulation." (Exhibit 12 at page 14). Under TiVo's interpretation, this
`
`step is met by an “Input Section” that extracts MPEG formatted data from a carrier signal
`
`through demodulation.
`
`Assuming that this step is given the interpretation in reexamination that TiVo now asserts
`
`in the co-pending litigation, Cobbley fully discloses this step. Broadcast Receiver 110 and
`
`' The '3 89 Patent carefully distinguishes between converting non-MPEG data into MPEG data, on the one
`hand, and extracting MPEG from a carrier signal, on the other. (Col. 2, lines I0-l4; Col. 3, lines 46-52). As noted
`in TiVo