Prclrs ersr (on-oer
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`
`REQUEST FOR EX PARTE REEXAMINATION TRANSMITTAL FORM
`
`Address to:
`Mail Stop Ex Pane Reexarn
`Commissioner for Parents
`PO‘ Box ‘#50
`Alexandria. VA 223-13~1I150
`
`Afiomey Docket No
`454032300200
`
`_;
`
`Date: November 10. 2008
`
`1. [:1 This is a avenues: for ex pa-rte reexamination, pursuant to 37 CFR 1.510 of patent number
`
`May 15. 2001
`issued
`6,233,389 B1
`E] third party requester.
`D patent owner.
`2. El The name and address of the persons requesting reexamination are:
`DISH Network Corporation, 9601 S. Meridian Boulevard, Englewood. CO 80112
`
`. The request is made by:
`
`is enclosed to cover the reexamination fee. 37 CFR 1.20(c)(1);
`3- El a. A check in the amount of $
`E b. The Director is hereby authorized to charge the fee as set forth in 37 CPR 1_20(c)(1)
`to Deposit Account No.
`03-1952
`(submit duplicative copy for fee processing): or
`D c. Payment by credit card. Fomr PTt}203B is attached.
`03-1952
`4. El Any refund should be made by I: check or El credit to Deposit Account No.
`37’ CFR 1.26{c).
`it payment Is made by credit card. refund must be to credit card account.
`5‘ '3 A copy of the patent to he reexamined having a double column format on one side of a separate paper
`is enclosed. 37’ CFR 1.510(bJ(4)
`6. El CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
`I: Landscape Table on CD
`7_ Cl Nucleotide andfor Amino Acid Sequence Submission
`if applicable, items a. — c. are required.
`a. |:| Computer Readable Form (CRF)
`b. _Specification Sequence Listing on:
`i. D CD-ROM (2 copies) or CD-Ft [2 copies); or
`ii. '3 paper
`6- D Statements verifying identity of above copies
`A copy of any disclaimer. certificate of correction or reexamination certificate issued in the patent is
`included.
`
`3‘
`
`,
`
`9- El Reexamination ofclaimts)
`is requested.
`31 and 31
`10. [E A copy of every patent or printed publication relied upon is submitted herewith including a listing thereof
`on Form PTOISBIDB. PTO-1449. or equivalent.
`11.
`An English language translation of all necessary and pertinent non-English language patents andior
`printed publications is included.
`
`12. [3 The attached detailed request includes at least the following items:
`a.
`A statement identifying each substantial new question of patentability based on prior
`patents and printed publications. 37 CFR 1.510(b)(1)
`
`b
`
`An identification of every claim for which reexamination is requested. and a detailed
`explanation of the pertinency and manner of applying the cited an to every claim
`for which reexamination is requested. 3? CFR 1.510(b][2)
`13. [:| A proposed amendment is included [only where the patent owner is the requester). 37 CFR 1.5‘lD(e)
`
`I hereby certify that this correspondence is being deposited with the U.S. Postal so - -- - as - 4- ross Mail. Airbill No. EMEEBBASSUZUS. in
`.
`.
`-
`'
`.A|exandr'ia. VA 22313-1450. on the date
`shown below.
`Dated: November 10, 2008
`
`(Marco Jimenez)
`
`1
`
`SAMSUNG 1017
`
`

`
`PTOi5Bi5? (04-05]
`Approved for use through O-h‘30.i‘2i'.'|D?. OMB D651-0033
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`. a train OMB controi number.
`
`-
`
`it is certified that a copy of this request {if fried by other than the patent owner) has been
`served in its entirely on the patent owner as provided in 37 CFR 1.33{c).
`The name and address of the party served and the date of service are:
`Hickman Palermo Tmong 8. Becker LLP
`2055 Gateway Place. Suite 550
`San Jose. CA 95110
`
`Sterne, Kessler. Goidstein 8. Fox P.L.L.C.
`1 100 New York Avenue, N.W.
`Washinton DC 20005
`
`D b.
`
`; or
`November 10, 2008
`Date of Service:
`A duplicate copy is enclosed since service on patent owner was not possible.
`
`15. Correspondence Address: Direct all communication about the reexamination to:
`
`Elmo address associated with Customer Number:
`
`25224
`
`OR
`
`David L. Fehrman
`‘
`Firm or
`Iwividt-=1 Nam MORRISON s FOERSTER LLP
`
`mm
`
`555 West Fifth Street
`
`City
`
`Los Angeles
`
`315.,
`Telephone
`
`CA
`213-892-5501
`
`16. E] The patent is currentiy the subject of the following concurrent proceedingts):
`El 2:. Copending reissue Application No.
`El b. Gopending reexamination Control No.
`D c. Copending Interference No.
`IE d. Copending litigation styted:
`
`90r'007.750
`
`TiVo. Inc. v. Ecl1oStar Communications'Corp.. et al.,
`Case No. 2-04CV-01 DF. U.S. District Court.
`Eastern District of Texas (Marshall Divison)
`
`DISH Network Corp. et al.. v. Tivo, Inc.. Case No".
`1:08-CV-00327-JJF. U.S. District Court. District of
`Delaware
`
`1
`
`E 1
`
`Authorized Signature
`
`November1iJ,2008
`
`Date
`
`David L. Fehrman
`Typed1PrintecI Name
`
`28 600
`Registration No., if applicable
`
`E For Third Party Requester
`
`2
`
`

`
`PTOFS Bu'5'r (06-05)
`Approved for use through miiaeizoor. OMB 0551-0033
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`(Also reforms to as FORM PTO-1465)
`
`REQUEST FOR EXPARTE REEXAMINATION TRANSMl'I'l'AL FORM
`
`5835-1»U.3.PTO
`
`‘i1r'10i08
`
`Address to:
`Mail Stop Ex Parts Reexarn
`Cornmisslo nor for ?ate nts
`PO. Box 1450
`Alexandria, VA 22313-1450
`
`Attorney Docket No.:
`454032800200
`
`Date: November 10. 2008
`
`68354 U.S. PTO
`iiiiiliiiiiililliiii iiliiilliiiiiililliiliiilli
`900 9329
`
`1.
`
`[Z] This is a reouesi for ex barre reexamination. pursuant to 37 CFR 1.510 of patent number
`
`May 15, 2001
`Issued
`0,233,339 B1
`El third party requester.
`D patent owner.
`2. IE The name and address of the persons requesting reexamination are:
`DISH Network Corporation. 9601 S. Meridian Boulevard. Engiewood, CO 80112
`
`. The request is made by:
`'
`
`5_
`
`7_
`
`_
`
`is enclosed to cover the reexamination fee. 37’ CFR 1.20(c)(‘l):
`3- El 3. Acheck in the amountof $
`'3 b. The Director is hereby authorized to charge the fee as set iorth in 37 CFR 1.20(c)i1)
`to Deposit Account No.
`03-1952
`(submit dupiicatlve copy for fee processing); or
`D c. Payment by credit card. Form PTO-2038 is attached.
`03-1952
`4. El Any refund should be made by B check or {3 credit to Deposit Account No.
`3? CFR 1,26(c).
`if payment is made by credit card, refund must be to credit card account.
`A copy of the patent to be reexamined having a double column format on one side of a separate paper
`is enclosed. 37 CFR 1.510(b)(4}
`6. El CD-ROM or CD-R In duplicate. Computer Program (Appendix) or large table
`|:| Landscape Table on CD
`Nucleotide andfor Amino Acid Sequence Submission
`if app.-‘icabie, rte iris a. — c. are required.
`a. D Computer Readable Form {CRF)
`b.
`‘Specification Sequence Listing on:
`i. |:| CD-ROM(2 copies)orCD-R{2 copies): or
`ii. D paper
`0- |:| Statements verifying identity of above copies
`A copy oi any disclaimer, certificate of correction or reexamination certrficate issued in the patent is
`Included.
`
`.
`
`3.
`
`is requested.
`31 and 61
`9. E‘ Reexamination of claims)
`19_
`A copy of every patent or printed publication relied upon is submitted herewith including a listing thereof
`on Form PTOISBIOB, PTO-‘I 449, or equivalent.
`11_ D An English language translation of all necessary and pertinent non-English language patents andlor
`printed publications is included.
`
`12.
`
`The attached detailed request includes at least the following items:
`a.
`A statement identifying each substantial new question of patentabiiity based on prior
`patents and printed publications. 37 CFR 1.51 0(b)(1}
`
`An identification of every claim for which reexamination is requested. and a detailed
`explanation of the periinency and manner of applying the cited an to every claim
`for which reexamination is requested. 37 CFR 1.510(b)(2)
`13. D A proposed amendment is included (oniy where the patent owner is the requester). 37 CFR 1.510(e)
`
`shown below.
`Dated: November 10. 2008
`
`{Marco Jimenez)
`
`3
`
`

`
`rworkFleductbnAi:tol1995 no u:
`
`:-
`
`;
`
`i=1-orsars-r (04-us)
`Appmved for use tlirough 0Il.“3l2li'2OC|T. OMB 0651-0033
`US. Patent and Trademark Oflice: U.S. DEFARTMEN1 OF COMMERCE
`uiredtoresnrlloaooliecunnniinfnnnathnunessfldls - a\ral‘|:I OMB control numlur.
`
`it is certified that a copy of this request (if filed by other than the patent owner) has been
`served in its entirety on the patent owner as provided in 3? CFR 1.33(c).
`The name and address of the party served and the date of service are:
`Hickman Palermo Truong 8- Becker LLP
`2055 Gateway Place. Suite 550
`San Jose, CA 95110
`
`Sterne, Kessler. Goldstein Sr Fox P.L.L.C.
`‘£100 New York Avenue. N.W.
`Washinton DC 20005
`
`:or
`November 10, 2008
`Date of Service:
`A duplicate copy is enclosed since service on patent owner was not possible.
`
`|:lb.
`
`15. Correspondence Address: Direct all communication about the reexamination to:
`
`The address associted with Customer Number:
`
`25224
`
`OR
`
`Firm 9,
`Individual Name
`
`Address
`
`'
`City
`Country
`
`David L. Fehrman
`MORRISON 8. FOERSTER LLP
`555 west Fifth Street
`
`Los Angeles
`US
`
`State
`Telephone
`
`CA
`213-892-5601 %
`
`16. IE The patent is currently the subject of the tollowing concurrent proceedingis):
`U a. Copending reissue Application No.
`E! b. Copendlng reexamination Control No.
`D c. Copendlng Interference No.
`El d. Copending litigation styled:
`
`90l007.750
`
`TiVo, Inc. v. EchoStar Communications Corp. et aI..
`Case No. 2—O4CV—0‘l DF. US. District Court.
`Eastern District of Texas (Marshall Dlvison)
`
`Dawaoe
`
`‘ex
`Authorized Signature
`
`David L. Fehrman
`TypecliPrinted Name
`
`DISH Network Corp. et al., v. Tivo, lno., Case No.
`1 :08-CV—OD327-JJF, US. District Court, District of
`Delaware
`
`November 10 2008
`Date
`
`28,600
`Registration No.. if applicable
`
`IE For Third Party Requester
`
`4
`
`

`
`mmmmnuIumnmuxmmummmm1mores
`
`I hereby certify that lhis correspondence ‘rs be-Ing deposited with ma U.S. Poslal Service as
`Express Mail. Alrbill No. EM26S8459D2US, In an anverope addressed to: M5 Ex Parte
`Reertarrl. Commissioner for Patents. PO. Box 1450. Afexandfla. VA 22313— - —
`.
`data sl1nwn bebuw.
`
`Daied: NDVEMDBT ID, 2008
`
`|||||||l||l|H|||ll1I1llllllilllllllllllfllllllll .
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 90009329
`
`68354 Us. are
`
`In re Reexamination of:
`
`James M. BARTON et al.
`
`Patent No.:
`
`6,233,389 B1
`
`Issue Date:
`
`May 15. 2001
`
`Title:
`
`Multimedia Time Warping System
`
`Group Art Unit No.; Not Yet Assigned
`
`Examiner:
`
`Net Yet Assigned
`
`DETAILED REQUEST FOR EX PARTE REEXAMINATION
`
`la-992363
`
`5
`
`

`
`TABLE OF CONTENTS
`
`Introductory Comments .............
`
`......................................................................................... .. 1-
`
`Claims For Which Reexamination Is Requested ................................................................... ..3
`
`Co-pending Proceedings ........................................................................................................ ..4
`
`Summary Of The "389 Patent ................................................................................................. ..7
`A. Brief Overview .................................................................................................................. ..7
`
`B. The Prosecution History Of The ‘389 Patent ................................................................... .. 10
`
`Detailed Explanation Of Pertineney Of Prior Art To The
`A. Claims Must Be Given Their “Broadest Reasonable Construction” .................
`
`.......... ..ll
`
`13. Claim 3] Is Obvious In View Of Thornason And Krause .............................................. .. 12
`
`C. Claim 61 I5 Obvious In View Of Thomason And Krause .............................................. ..28
`
`Substantial New Questions Of Patentability ........................................................................ .. 30
`
`Conclusion ........................................................................................................................... .. 30
`
`6
`
`

`
`INTRODUCTORY COMMENTS
`
`DISH Network Corporation (“the Requester") requests reexamination of U.S. Patent No.
`
`6,233,389 B1 (“the '389 patent") under 35 U.S.C. §§ 302-307 and 37 CPR. § 1.510. The '389
`
`patent issued on May 15, 2001 and is currently assigned to TiVo, Inc.
`
`The '339 patent is directed to a system for simultaneously storing and playing back
`
`multimedia data, such as a television broadcast program. The system allows a user to rewind or
`
`fast forward through the program while viewing it. The '3 89 patent issued with four independent
`
`claims. Independent claims 1 and 32 are “hardware.claims" directed to the hardware elements
`
`for effecting simultaneous storage and play back. Independent claims 31 and 61 are “software
`
`claims” directed to the corresponding software elements. This request for reexamination is
`
`directed solely to the two independent software claims.
`
`Claims 31 and 61 each recite a physical data source that “parses" video and audio data
`
`from broadcast data and three software “objects" that form a software pipeline through which the
`
`video and audio data is moved. A “source” object extracts the video and audio data from the
`
`data source and fills empty buffers obtained from a “transform” object. The transform object
`
`stores the full buffers of data to a storage device and then retrieves them for transfer to a ‘‘sink’‘
`
`object. The sink object sends the data to a decoder for output to a display.
`
`During a co-pending litigation discussed infra, claims 31 and 61 were broadly construed.
`
`For example, the District Court construed the term “object" as “a collection of data and
`
`operations” based on TiVo’s urging. Furthermore, TiVo asserted that “parsing” video and audio
`
`data was satisfied by detecting video frames in a data stream and generating an index or table of
`
`the start of the detected video frames and their storage location on a hard drive.
`
`The Requester is aware of two references that, in combination, raise a substantial new
`
`question of patentability in view of TiVo’s construction. The first reference — U.S. Patent No.
`
`Ia-992 863
`
`l
`
`7
`
`

`
`6,018,612 to Thomason et al. (“Thomason”) — discloses a system for simultaneous storage and
`
`play back of a television broadcast program.
`
`It allows a user to rewind or fast forward through
`
`the program while viewing it. The system employs three buffers controlled by three direct
`
`memory access controllers that move the data through the system. The DMA controllers are, in
`
`turn, supervised by a microprocessor that runs sofiware. Thomason thus expressly discloses
`
`each ofthe three recited objects when broadly constmed as a collection of data and operations.
`
`The second reference — US. Patent No. 5,949,948 to Krause et al. — discloses a
`
`compressed video data retrieval system for supporting rnulti-speed modes such as reverse and
`
`"fast forward. The system employs an I-frame detector for analyzing incoming MPEG-formatted
`
`data to detect I-frames, and the system then generates a table or index of the storage locations of
`
`the detected I-frames.
`I—frames are complete in that they are not dependent on any other frames
`to complete a picture, so the system can retrieve data’more efficiently by detecting and
`
`reproducing the appropriate I-frame for the selected speed of reverse or fast forward. It is
`
`submitted that it would have been obvious to one of ordinary skill in the art to employ the
`
`indexing of detected I-frames in the system of Thornason when Thomason receives MPEG-
`
`forrnatted data or encodes received data into an MPEG forrnat. Indexing the detected I-frames,
`
`r‘.e., “parsing,” would allow the system of Thomason to more efficiently perform operations such
`
`as reverse or fast forward.
`
`The combination of Thomason and Krause was never considered in the original
`
`examination or in any co-pending proceeding with respect ‘to claims 31 and 61. Thus, the
`
`Requester respectfully requests that an order for reexamination be issued.
`
`la-992863
`
`8
`
`

`
`II.
`
`CLAIMS FOR WHICH REEXAMINATION IS REQUESTED
`
`This request for reexamination raises the following substantial new question of
`
`patentability with respect to claims 31 and 61 of the '3 89 patent, submitted herewith in the
`
`accompanying Exhibits as Exhibit 1.
`
`Claims 31 and 61 are obvious under § 103(3) in View of Thomason et al. (U.S. Pa1entNo.
`
`6,0!8,612 and submitted herewith as Exhibit 2) and Krause et al. (US. Patent No. 3,949,948 and
`
`submitted herewith as Exhibit 3);
`
`9
`
`

`
`III.
`
`C0-PENDING PROCEEDINGS
`
`The '389 patent is the subject of two co-pending litigations and one co-pending
`
`reexamination. The combination of Thomason and Krause with respect to claims 3] and 61 has
`
`not been considered in any of these co-pending proceedings.
`
`The first co—pendin g litigation is an action styled Ti Vo, Inc. v. Er:hoStar Commuriications
`
`Corp, er al., Case No. 2-O4CV-01 DF, in the United States District Court for the Eastern District
`
`of Texas. TiVo initiated this action against the Requester (then known as EchoStar
`
`Communications Corporation) in 2004.
`
`It asserted that certain digital video recorders of the
`
`Requester infringed the hardware and software claims of the '389 patent.
`
`In 2006, the District
`
`Court entered judgment for TiVo after a jury found that certain hardware and software claims
`
`were infringed.
`
`The Federal Circuit affirmed in part and reversed in part the District Court's judgment.
`
`See Tt'Vo, Inc. v. Echostar Communications Corp, 516 F.3d 1290 (Fed. Cir. 2008). The Court
`
`affirmed the judgment of infringement with respect to the software claims, but reversed the
`
`judgment of infringement with respect to the hardware claims. That is, the Court found only
`
`claims 31 and 61 of the '339 patent to be infringed. The combination of Thornason and Krause
`
`with respect to claims 3] and 61 was not raised at trial nor considered on appeal.
`
`The second co-pending litigation is an action styled DISH Network Corporation er al. v.
`
`TiVo, Inc, Case No. 1:08-CV-00327-JJF, in the United States District Court for the District of
`
`Delaware. This action was initiated by the Requester in May 2008 against TiVo after TiVo
`
`publicly stated that the Requester-’s new digital video recorder infringes the '3 39 patent. The
`
`Requester is seeking declaratory relief that it does not infringe any claims of the '3 39 patent,
`
`including software claims 31 and 6]. This co-pending litigation has just commenced, and the
`
`combination of Thomason and Krause with respect to claims 31 and 6] has not been considered.
`
`la-992863
`
`4
`
`10
`
`

`
`The co-pending reexamination of the '3 89 patent bears serial no. 90/007,750. In October
`
`2005, the Requester (then known as EchoStar Communications Corporation) requested
`
`reexamination ofcertain hardware claims - t'.e.. claims I, 6, 20, 21, 23, 32, 37, SI and 52 — ofthe
`
`‘389 patent. The request raised substantial new questions of patentability based on 1.1.8. Patent
`
`No. 5,614,940 to Cobbley et al. alone, as well as Krause in combination with another Krause
`
`patent (U .S. Patent No. 6,304,714). The request did not seek reexamination of software claims
`
`31 and 61, nor did it raise any question of patentability based on Thomason alone or Thomason
`
`with Krause as to any claims. In fact, at that time, Thomason was not known to counsel who
`
`prepared the reexamination request.
`
`The reexamination request was granted in December 2005. In the order granting
`
`reexamination, the Examiner indicated that he would reexamine all the claims of the '3 89 patent.
`
`The Examiner subsequently rejected only certain hardware claims based on Gear at al. (U.S.
`
`Patent No. 6,783,882) and Cobbley. The Examiner did not reject the hardware claims based on
`
`Krause and Krause "714 raised in the reexamination request. He found that Krause and Krause
`
`'7l4 did not disclose “parsing" and “separating" the video and audio data as recited in the
`
`hardware claims} In any event, TiVo overcame the rejection of the hardware claims in
`
`November 2007 when the Examiner issued a Notice of Intent to Issue an Ex Pane
`
`Reexamination Certificate confirming the patentability of all the claims, including claims 31 and
`
`61, and it appears that the reexamination certificate will issue shortly. Thus, in the co-pending
`
`reexamination, Thomason (or its combination with Krause) was not used to reject any claims or
`
`even discussed on the record.
`
`Software claims 31 and 61 do not recite ‘‘separating’‘ the video and audio data in addition to
`'
`“parsing" like the hardware claims. Claims 3] and 6] are accordingly broader in this aspect.
`
`Ia-992 863
`
`11
`
`

`
`The only mention of Thomason in the co-pending reexamination was in an lnforrnation
`
`Disclosure Statement filed in March 2006 by TiVo. The statement listed Thomason with 232
`
`other references. The statement did not explain the content or relevance of any of the listed
`
`references, including Thomason. MPEP 2256 explains that the Examiner's consideration of a
`
`reference listed in an information disclosure statement is limited to what is provided by the party
`
`submitting the statement:
`
`When patents, publications, and other such items of information are submitted by
`a party (patent owner or requester) in compliance with the requirements of the
`rules, the requisite degree of consideration to be given to such information will be
`nomtally limited by the degree to which the party filing the information citation
`has explained the content and relevance of the information. The initials of the
`examiner placed adjacent to the citations on the form PTOISB/08A and 08B or its
`equivalent, without an indication to the contrary in the record, do not signify that
`the information has been considered by the Examiner any further than to the
`extent noted above.
`
`TiVo’s statement did not provide any discussion of Thomason’s content or relevance, so the '
`
`consideration of Thomason was accordingly limited. This conclusion is underscored by the
`
`remainder of the reexamination record as there is no discussion of Thomason at all. Thus, die
`
`question of patentability raised in this Request is new to any question of patentability addressed
`
`in the co-pending reexamination.
`
`lav992863
`
`12
`
`

`
`IV.
`
`SUMMARY OF THE '389 PATENT
`
`A.
`
`Brief Overview
`
`The ‘389 patent (submitted herewith as Exhibit 1) is directed to a system for
`
`simultaneously storing and playing back multimedia data, such as a television broadcast
`
`program. The ability to simultaneously store and play back the program allows the user to
`
`rewind-or fast forward through the program while viewing it. Fig. 1 (reproduced below)
`
`illustrates the system.
`
`FIG. 1
`
`Input Module 101 receives a television input stream and outputs an MPEG formatted
`
`stream. For example, if the television input stream is an analog signal, Input Module 101
`
`converts the signal into an MPEG format through the use of video and audio encoders.
`
`(Col. 2,
`
`lines 10-14 and Col. 3, lines 49-52.) The MPEG formatted stream is then sent to Media Switch
`
`102.
`
`Media Switch 102 includes a “parser.” The parser “parses the stream looking for MPEG
`
`distinguished events including the start of video, audio or private data segments.” (Col. 5, lines
`
`3-6.) When a video or audio segment is distinguished, the parser indexes the segment in an
`
`Ia-992863
`
`13
`
`

`
`appropriate video or audio circular buffer represented by memory 104. (See also Fig. 4 at video
`
`buffer 410 and audio buffer 411.)
`
`At the same time, the parser places events corresponding to the parsed video and audio
`
`segments in an event buffer or memory I04. (Col. 5, lines 6-19.) From the events in the event
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`buffer, the system generates a sequence of logical segments that correspond to the parsed MPEG
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`segments in the audio and video buffers. (Col. 5, lines 36-38.) The logical segments are then
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`gathered together in a PBS buffer and stored in hard disk or storage device 105:
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`When a PES buffer is written to storage, these logical segments are written to the
`storage medium in the logical order in which they appear. This has the effect of
`gathering components of the stream, whether they be in the video, audio or
`private data circular buffers,
`into a single linear buffer of stream data on the
`storage medium. (Col. 6, lines 2-7.)
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`The stored data is thereafter read from the storage device and decoded into an analog signal by
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`Output Module 103 which includes an MPEG video decoder. (Col. 4, lines 5-9.)
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`Claims 31 and 61 are directed to the program logic within CPU 106 that controls the
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`movement of data through the system. The program logic has three conceptual components as
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`illustrated in Fig. 8 below.
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`80)‘
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`buffers
`of data
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`decoder
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`The first component is sources 301. Sources 801 accept data from an encoder and
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`package the data in buffers acquired from trans forms 802. Sources 801 then push the buffers
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`down the pipeline as shown in Fig. 8 above. (Col. 7, lines 58-61.) Transforms 302 write the
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`buffers to a file on the storage medium or hard disk 804. The buffers are pulled out a later time -
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`.".e., a temporal transform — and then sent down the pipeline to be sequenced with the stream.
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`(Col. 8, lines 3-8.) Sinks 803 take the buffer from transforms 802 and send the data to a decoder.
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`The '3 89 patent describes the use of object-oriented programming language, e.g., the CH
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`programming language, to implement the program logic illustrated conceptually in Fig. 8 above.
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`Specifically, the '3 S9 patent describes the use of a “source object" 901, a “transform object” 902
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`and a “sink object“ 903 corresponding to sources 801, transforms 802 and sinks 803. (Col. 8,
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`lines 9-18; Fig. 9.) A “control object" 917 is also employed to accept commands from the user.
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`(Col. 9, lines 25-32.)
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`The source, transform and sink objects operate in conjunction with the hardware elements
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`described above in Fig. 1. The source object “takes data out of a physical data source, such as
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`the Media Switch [102 ofFig. 1], and places it into a PES buffer." (Col. 8, lines 43-45.) The
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`'389 patent describes that the source object calls the transform object for a buffer to fill. (Col. 8,
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`lines 45-48.) The transform object provides the empty buffer to the source object and then takes
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`the full buffer from the source object and stores it on hard disk or storage device [05 in Fig. 1..
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`(Col. 9, lines 2-9.) The sink object calls the transform object for a firll buffer and then sends the
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`data to a decoder in Output Module 103 of Fig. 1. (Col. 9, lines 10-16.) It then releases the
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`empty buffer to the transform object for use again by the source object. (Col. 8, lines 55-59.)
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`Under this system, the source object must wait for the transform object to provide an
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`empty buffer. Similarly, the sink object must wait for the transform object to provide a full
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`buffer. According to the '3 89 patent, “[t]his means that the pipeline is self-regulating; it has
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`automatic flow control.” (Col. 8, lines 48-49.)
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`B.
`
`The Prosecution History Of The ‘I539 Patent
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`The application that matured into the '3 89 patent was filed on July 30, 1998 with 61
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`claims, including claims 31 and 61. In a first Office Action dated November 22, 2000, the
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`Examiner allowed claims 31 and 61 , but rejected the remaining claims under § 112, second
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`paragraph. TiVo responded to the Office Action by amending the rejected claims in an
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`Amendment dated December 13, 2000. The Examiner thereafter allowed all the claims and
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`passed the application to issuance. Neither Thornason nor Krause was considered by the
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`Examiner in allowing the claims.
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`DETAILED EXPLANATION OF PERTINEN CY OF PRIOR ART TO THE
`CLAIMS
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`A.
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`Claims Must Be Given Their “Broadcst Reasonable Construction”
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`The standard for reexamination is well established: claims must be given their broadest
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`reasonable construction consistent with the specification. See MPEP § 2258 K0). The
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`requirement that claims be given their broadest reasonable construction was detailed in In Re
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`American Academy ofScience Tech Center, 36'? F.3d 1359 (Fed. Cir. 2004). As explained by
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`the Federal Circuit in that case, “[g]iving claims their broadest reasonable construction ‘serves
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`the public interest by reducing the possibility that claims, finally allowed, will be given broader
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`scope than isjustified.” Id. at 1364 (quoting in Re Ynmomoto. 740 F. 2d 1569, 1571 (Fed. Cir.
`1984)). The Court further stated that “[c]onstruing claims broadly during prosecution is not
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`unfair to the applicant (or in this case, the patentee), because the applicant has the opportunity to
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`amend the claims to obtain more precise claim coverage." Id. (citing Famamoro, 740 F.2d at
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`1571).
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`As discussed in the Introduction, claims 31 and 61 were broadly construed in the co-
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`pending T:'Vo litigation. For example, the District Court construed the term “object" — based on
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`'I‘iVo’s proposed claim construction — as not being limited to an object—oriented computer
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`programming language, but rather “a collection of data and operations.” Claim Construction
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`Order, at 26 (hereinafter “Order" and submitted herewith at Exhibit 8); T1‘ Va Inc. ’.'.-' Opposition
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`Brief On Claim Construction, at 13 and 2] (submitted herewith as Exhibit 7). For its part, the
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`Federal Ci reuit adopted the District Court‘s construction of “object.” TWO, at 516 F.3d at 1306-
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`7 (submitted herewith as Exhibit 9).
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`The Requester disagrees with TiVo’s asserted constructions of claims 31 and 61 in the
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`co-pending litigation, and the PTO is, of course, not bound by a patent owner’s construction or
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`even a Court’s construction when giving claims their broadest reasonable interpretation during a
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`reexamination. Nevertheless, TiVo‘s and the Court’s constructions are important to the present
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`request for reexamination, because it establishes a “baseline” interpretation of claims 31 and 61.
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`If the claims 31 and 61 are obvious in view of Thomason and Krause based on this “baseline”
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`interpretation, the claims will necessarily be obvious based on any broader interpretation given
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`by the PTO.
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`B.
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`Claim 31 Is Obvious In View Of Thomason And Krause
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`A concise explanation of Thomason and Krause is provided below and then followed by
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`their application to claim 31. A corresponding claim chart is submitted herewith as Exhibit 4.
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`I.
`
`Thomason
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`The earliest effective filing date ofThomasor1 (submitted herewith as Exhibit 2) is
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`October 4, 1993. It thus qualifies as prior art under § l02(e) based upon the filing date of the
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`339 patent, 5.3., July 30, 1993.’
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`Thomason is directed to a system that simultaneously stores and plays back a television
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`program.
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`it explains that the system allows for functions such as reverse and fast forward and
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`conventionally employs a main memory, an input buffer memory and an output buffer memory.
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`In order to enable an uninterrupted storage of a live television program in the
`main memory, and enable uninterrupted and simultaneous retrieval of the
`historical program from the main memory, an input buffer memory and an output
`buffer memory are present. Data arriving for storage in the main memory, while
`the main memory is temporarily busy for another operation, will be stored in the
`input buffer memory, and will be stored at a later moment in the main memory by
`retrieving the data from the input buffer memory. Data will also be requested
`regularly from the main memory to be displayed on a TV screen as a historical
`program. Again,
`the main memory may be temporarily busy for another
`operation, so data must be readily available in the output buffer memory, so as to
`provide continuity of viewing from the user. (Col. 2, lines 36-51.)
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`2
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`The corresponding European patent to Thomason — EP 059424! Bl — was first published on
`April 27, 1994 as EP 0594241 Al. The publication qualifies as prior art under § 102(b).
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`1 2
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`18
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`Thomason discloses an improvement to the conventional system by combining the input
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`buffer memory and the output buffer memory into a single buffer memory. (Col. 2, lines 54-58.)
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`This is achieved by recognizing that the input buffer memory should be empty to receive data
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`and the output buffer memory should be fiill to output data, thereby allowing the same buffer to
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`be used for input and output. (Col. 2, line 59 to (301.3, line 7.) Fig. 1 (reproduced below)
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`illustrates one embodiment.
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`One or more television signals pass through channel selector 1 . Channel selector 1
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`selects which channels to be stored and which channels to be displayed live.
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`(Col. 3, lines 39-
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`43.) The channels selected for storage are digitized by afd converter 2 and then compressed in
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`real time by data compressor 3. (Col. 3, lines 43-46.) The output is placed in one or more
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`buffers 4, with one buffer per selected channel. Thornaso