IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`James M. Barton, et al.
`In re Patent of:
`6,233,389 Attorney Docket No.: 39843-0037IP2
`U.S. Patent No.:
`May 15, 2001
`
`Issue Date:
`Appl. Serial No.: 09/126,071
`
`Filing Date:
`July 30, 1998
`
`Title:
`Multimedia Time Warping System
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 6,233,389 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`
`
`
`James M. Barton, et al.
`In re Patent of:
`6,233,389 Attorney Docket No.: 39843-0037IP2
`U.S. Patent No.:
`May 15, 2001
`
`Issue Date:
`Appl. Serial No.: 09/126,071
`
`Filing Date:
`July 30, 1998
`
`Title:
`Multimedia Time Warping System
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 6,233,389 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`
`
`
`
`Attorney Docket No. 39843-0037IP2
`IPR of U.S. Patent No. 6,233,389
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`REQUIREMENTS FOR IPR .......................................................................... 3
`A. Grounds for Standing ................................................................................ 3
`B. Challenge and Relief Requested ............................................................... 3
`III. BACKGROUND ............................................................................................. 7
`A. Overview of the ’389 Patent ..................................................................... 7
`B. Prior Art .................................................................................................. 11
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3) ............................ 17
`IV. APPLICATION OF PRIOR ART TO CHALLENGED CLAIMS .............. 22
`A. GROUND 1: Claims 31 and 61 are Anticipated under § 102(a) by
`Platform SDK.......................................................................................... 23
`B. GROUND 2: Claims 31 and 61 are Obvious under § 103 over Platform
`SDK 71
`V.
`Redundancy ................................................................................................... 78
`VI. CONCLUSION .............................................................................................. 77
`VII. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 80
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 80
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 80
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 80
`D. Service Information ................................................................................ 81
`
`
`
`
`i
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`
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`
`
`SE1001
`
`SE1002
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`SE1003
`
`SE1004
`
`SE1005
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`SE1006
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`SE1007
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`SE1008
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`SE1009
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`SE1010
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`SE1011
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`Attorney Docket No. 39843-0037IP2
`IPR of U.S. Patent No. 6,233,389
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`EXHIBITS
`
`
`
`
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`
`
`U.S. Pat. No. 6,233,389 to Barton et al. (“the ’389 patent”)
`
`Prosecution History of the ’389 patent (Serial No. 09/126,071)
`
`Declaration of Declaration of John Michael Strawn, Ph.D.
`
`Microsoft Platform Software Development Kit (January 1998)
`(Excerpts including DirectShow SDK and Broadcast
`Architecture Programmer’s Reference) (“Platform SDK”)
`
`Disc Image of Microsoft Developer Network Platform SDK
`(DISC 6) (January 1998)
`
`U.S. Patent No. 6,061,692 to Thomas et al. (“Thomas”)
`
`Giant Stakes in Cable, CNET (11/5/1997) (“CNET”)
`
`Microsoft Releases DirectShow SDK – Universal Playback for
`DVD, Digital Video and Audio, and the Internet, Microsoft
`(12/10/1997)
`
`Declaration of Rohan Coelho Regarding Public Availability of
`Microsoft Platform SDK
`
`Coelho, Rohan et al., DirectX, RDX, RSX, and MMX
`Technology, A Jumpstart Guide to High Performance APIs,
`(1998).
`
`Claim Construction Order, TiVo Inc. v. Echostar
`Communications Corp., et al., 2:04-cv-00001 (8/18/2005)
`
`ii
`
`
`
`
`SE1012
`
`SE1013
`
`SE1014
`
` SE1015
`
`SE1016
`
`SE1017
`
`SE1018
`
`SE1019
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`Attorney Docket No. 39843-0037IP2
`IPR of U.S. Patent No. 6,233,389
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`Claim Construction Order, TiVo, Inc. v. AT&T Inc., et al., 2:09-
`cv-00259 (10/13/2011)
`
`Claim Construction Order, TiVo, Inc. v. Verizon Comm’n, Inc.
`et al., 2:09-cv-00257 (3/12/2012)
`
`Memorandum Opinion and Order, Motorola Mobility, Inc. et al.
`v. TiVo, Inc., 5:11-cv-00053 (12/06/2012)
`
`Exhibit A, Preliminary Infringement Claim Chart for U.S. Pat.
`No. 6,233,389, Samsung Mobile Devices (“Infringement
`Contentions”)
`
`Prosecution History of Ex Parte Reexamination of claims 1, 3-
`5, 15-18, 20-25, 32, 34-36, 46-49, and 51-55 of the ’389 patent
`(Serial No. 90/007750) (“First Reexam”)
`
`Prosecution History of Ex Parte Reexamination of claims 31
`and 61 of the ’389 patent (Serial No. 90/009329) (“Second
`Reexam”
`
`Bescos, Jesus et al., From Multimedia Stream Models to GUI
`Generation (1997) (“Bescos”)
`
`Exhibit A, Supplemental Preliminary Infringement Claim Chart
`for U.S. Pat. No. 6,233,389, Samsung Mobile Devices
`(“Supplemental Infringement Contentions”)
`
`iii
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`
`
`
`SE1020
`
`SE1021
`
`SE1022
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`SE1023
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`Attorney Docket No. 39843-0037IP2
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`Microsoft Corporation, Microsoft Broadcast Technologies
`White Paper, Broadcast-Enabled Computer Hardware
`Requirements (1997)
`
`Microsoft Corporation, Microsoft Broadcast Technologies
`White Paper, Introduction to Broadcast Architecture (1997)
`
`Microsoft Corporation, MSBDN Receiver Board
`Implementation, Introduction to Broadcast Architecture (1997)
`
`Microsoft Corporation, Innovating in Broadcasting Media,
`From the Web to Digital Television (April 1997)
`
`iv
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`
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`I.
`
`INTRODUCTION
`
`Attorney Docket No. 39843-0037IP2
`IPR of U.S. Patent No. 6,233,389
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`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(collectively “Petitioner”) petition for Inter Partes Review (“IPR”) of claims 31
`
`and 61 (“the Challenged Claims”) of U.S. Patent No. 6,233,389 (“the ’389
`
`patent”). The ’389 patent is titled “Multimedia Time Warping System” and
`
`“relates to the real time capture, storage, and display of television broadcast
`
`signals.” SE1001, 1:6-9. The ’389 patent includes 61 claims. Most of those
`
`claims are directed to “television (TV) broadcast signals” and specific features
`
`related thereto (see SE1001, cl. 1-30, 32-60) and are not subject to this IPR
`
`petition.
`
`This petition relates only to claims 31 and 61 of the ’389 patent. During
`
`prosecution of the application that resulted in the ’389 patent, claims 31 and 61
`
`received a first action allowance. SE1002, 1007, 111. The stated reason for
`
`allowance merely recited all claim elements. SE1002, 111.
`
`The ’389 patent also was reexamined twice. See SE1016; SE1017. The first
`
`reexamination challenged unrelated claims—not claims 31 and 61. SE1016, 1. In
`
`the second reexamination, claims 31 and 61 were challenged and ultimately
`
`confirmed patentable over the art cited in the reexamination request. SE1017, 1,
`
`1336. The stated reason for allowance was that the cited references “do not teach
`
`or render obvious a transform object that automatically flow controls source and
`
`1
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`
`
`
`sink objects as claimed.” SE1017, 1340. In discussing automatic flow control by a
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`transform object, the examiner credited expert testimony and explained:
`
`This architecture is “self-regulating” with respect to the flow of data
`down the pipeline as noted at column 8, lines 47-51 and column 21,
`lines 24-25. In other words, the transform object is not merely self-
`regulating in an abstract sense. Rather, it controls the flow of data
`through the pipeline. (Villasenor at 7) Hence, the automatic flow
`control can be thought of as intelligent.
`
`SE1017, 1336-1337 (emphasis added). The examiner then distinguished the cited
`
`references, stating: “Thomason just manages buffers in a reactive way in response
`
`to the flow. There is no disclosure in Thomason of the kind of intelligent
`
`management performed by the recited centralized transform object architecture as
`
`disclosed in the ’389 patent.” SE1017, 1339 (emphasis added).
`
`As described throughout this petition, Platform SDK describes a system with
`
`a centralized transform object that intelligently controls the flow data. SE1003,
`
`¶¶98-116. As shown below, Platform SDK’s transform object (transform filter)
`
`controls flow by regulating buffer passing with a source object (source filter) and a
`
`sink object (rendering filter). SE1003, ¶¶101-115. Indeed, the transform object
`
`self-regulates flow by working with a filter graph manager to “automatically
`
`handle[] data flow for you.” SE1004, 142.
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`2
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`SE1004, 143 (annotated). These and all elements of claims 31 and 61 are taught
`
`
`
`by Platform SDK.
`
`II. REQUIREMENTS FOR IPR
`
`A. Grounds for Standing
`Petitioner certifies that the ’389 patent is available for IPR. This petition is
`
`being filed within one year of service of a complaint filed against Petitioner on
`
`9/8/2015. Petitioner is not barred or estopped from requesting review of the
`
`Challenged Claims.
`
`B. Challenge and Relief Requested
`Petitioner requests IPR of the Challenged Claims on the grounds in the table
`
`below, as explained in this petition and in SE1003, the Declaration of John M.
`
`3
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`
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`Strawn, Ph.D. See generally, SE1003, ¶¶1-158.
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`Attorney Docket No. 39843-0037IP2
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`Ground
`Ground 1
`
`Basis
`’389 Claims
`31 and 61 Anticipated by Platform SDK
`
`Ground 2
`
`31 and 61 Obvious over Platform SDK
`
`The earliest proclaimed priority date of the ’389 patent is July 30, 1998 (the
`
`“Critical Date”). As shown below, each reference pre-dates this and qualifies as
`
`prior art:
`
`
`
`Reference
`
`Date
`
`Section
`
`Platform SDK
`
`January 1998 (published)
`
`102(a)
`
`Platform SDK was publicly distributed by January 1998. A PDF of a scan
`
`of the Platform SDK disc label is shown at SE1005, and a PDF of excerpts of the
`
`contents digitally printed on the disc is shown at SE1004. See SE1004; SE1005;
`
`SE1003, ¶¶ 26-27. The January 1998 publication date of Platform SDK is shown
`
`on the label of the Platform SDK disc. SE1005, 1. Additionally, the contents of
`
`Platform SDK contains copyright notices indicating that Platform SDK was
`
`published in “1997” and “1997-1998.” SE1004, 1-2, 2229-2230; Ford Motor Co.
`
`v. Cruise Control Techs. LLC, IPR2014-00291, Paper 44 at p. 8 (PTAB June 29,
`
`2015) (citing Joseph S. Dubin, The Universal Copyright Convention, 42 Cal. L.
`
`4
`
`
`
`
`Rev. 89, 103 (1954)) (“a copyright notice bearing the symbol ‘©’ provides some
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`evidence of a date of publication . . . [because] such markings generally indicate
`
`the ‘first year of publication.’”); SE1003, ¶¶7-8. Public distribution of Platform
`
`SDK by or before January 1998 is supported by Thomas, showing that “the
`
`platform SDK, which is also available in the MSDN Library” was already being
`
`referenced in patents by the end of 1997. SE1006, 39:59-61.
`
`The January 1998 publication date for Platform SDK is further confirmed by
`
`testimony evidence of Rohan Coelho, who confirmed that “this Microsoft disc
`
`appears to be a true and correct copy of Disc 6 Platform SDK that was publicly
`
`distributed by January of 1998 by Microsoft.” SE1009, ¶5. Mr. Coelho testifies
`
`based on personal knowledge, as his work at Intel Corp. “involved researching and
`
`developing technologies based on Microsoft ActiveMovie, DirectShow, and
`
`Broadcast Architecture” which are part of Platform SDK, and he “regularly
`
`received Microsoft’s SDK releases (including ActiveMovie, DirectShow, DirectX,
`
`and Platform)” as part of that work. SE1009, ¶¶2-3; see also SE1020-SE1023.
`
`Mr. Coelho also had personal knowledge of the publication of Platform SDK
`
`because he “had a subscription to it on the Microsoft Developer’s Network
`
`Library” and he “would have received a copy of the Microsoft Platform SDK disc
`
`shown in Exhibit SE1005” as part of that subscription. SE1009, ¶4. Mr. Coelho
`
`reviewed both Exhibit SE1005 and the contents of the disc shown in SE1005
`
`5
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`
`
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`(which includes those portions reproduced in this record as SE1004), and
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`specifically confirmed that the Platform SDK disc appears authentic, that the
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`January 1998 publication date is consistent with his recollection, and that the
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`January 1998 publication date is consistent with other relevant evidence of
`
`publication. SE1009, ¶5; see also SE1007, 3 (a November 1997 article in CNET
`
`(“CNET”), confirming that the “software development kit for Microsoft's
`
`broadcast architecture” was publicly distributed at an earlier conference); SE1008,
`
`1 (Microsoft’s own press release stating that the DirectShow SDK (a section of
`
`Platform SDK relied on herein), was publicly distributed on December 10, 1997);
`
`SE1010, 1, 4, 28, 103-104 (Mr. Coelho’s book describing and referencing
`
`DirectShow SDK, with a December 1997 first printing); SE1020-SE1023 (white
`
`papers dated 1997 from Microsoft relating to the same subject matter as in
`
`Platform SDK). Indeed, Mr. Coelho’s book reproduces and discusses the same
`
`filter graph from Platform SDK that is repeatedly shown and discussed in this
`
`Petition. SE1010, 133, see also 95-152.
`
`6
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`SE1009, 133 (left); SE1004, 143 (right).
`
`
`
`
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`Accordingly, the testimony of Mr. Coelho and the other evidence are
`
`credible. Platform SDK (SE1004 and 1005) was publicly distributed by January
`
`1998.
`
`III. BACKGROUND
`A. Overview of the ’389 Patent
`The ’389 patent “relates to the real time capture, storage, and display of
`
`television broadcast signals.” SE1001, 1:6-9; SE1003, ¶¶17-25. FIG. 1
`
`(reproduced below) provides a “high level view” of the ’389 patent’s system.
`
`SE1001, 2:44-45.
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`7
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`Attorney Docket No. 39843-0037IP2
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`
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`SE1001, FIG. 1.
`
`As shown, Input Module 101 receives an input stream (e.g., an analog
`
`television signal), converts the input stream into an MPEG format, and outputs an
`
`MPEG stream to Media Switch 102. SE1001, 2:10-14, 3:30-65.
`
`Media Switch 102 “parses the stream looking for MPEG distinguished
`
`events including the start of video, audio or private data segments.” SE1001, 5:3-6.
`
`When video or audio segments are found, Media Switch 102 indexes the segments
`
`in memory 104 and stores the segments in storage device 105. SE1001, 5:6 to 6:7.
`
`Output Module 103 reads the stored segments from storage device 105, decodes
`
`the segments into an analog signal, and outputs the analog signal. SE1001, 4:5-9.
`
`Within that high level framework, claims 31 and 61 are directed to
`
`operations that control movement of data through the ’389 patent’s system. As
`
`8
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`
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`illustrated in Fig. 8 below, the operations are performed by three conceptual
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`Attorney Docket No. 39843-0037IP2
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`components - Sources, Transforms, and Sinks.
`
`
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`SE1001, FIG. 8.
`
`Sources 801 accept data from an encoder and package the data in buffers
`
`acquired from transforms 802. Sources 801 then push the buffers to transform 802.
`
`SE1001, 7:58-61. Transforms 802 write the buffers to a file on the storage
`
`medium or hard disk 804. At a later time, transforms 802 pull out the buffers from
`
`hard disk 804 and sequence them with the stream - i.e., perform a temporal
`
`transform. SE1001, 8:3-8. Sinks 803 then take the buffers from transforms 802
`
`and send, to a decoder, video/audio data from the buffers.
`
`9
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`The ’389 patent describes the use of an object-oriented programming
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`language (e.g., C++) to implement the program logic illustrated conceptually in
`
`Fig. 8 above. Specifically, as shown in FIG. 9 (reproduced below), the ’389 patent
`
`describes the use of a “source object” 901, a “transform object” 902, and a “sink
`
`object” 903, which correspond to sources 801, transforms 802, and sinks 803.
`
`SE1001, 8:9-18, FIG. 9. A “control object” 917 accepts user commands. SE1001,
`
`9:25-32.
`
`SE1001, FIG. 9 (annotated); SE1003, ¶23.
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`10
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`The source, transform, and sink objects operate in conjunction with the
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`Attorney Docket No. 39843-0037IP2
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`components described above in Fig. 1. For instance, the source object “takes data
`
`out of a physical data source, such as the Media Switch [102 of Fig. 1].” SE1001,
`
`8:43-45. The ’389 patent describes that the source object calls the transform object
`
`for a buffer to fill. SE1001, 8:45-48. The transform object provides the empty
`
`buffer to the source object and then takes the full buffer from the source object and
`
`stores it on hard disk or storage device 105 in Fig. l. SE1001, 9:2-9. The sink
`
`object calls the transform object for a full buffer and then sends the data to a
`
`decoder in Output Module 103 of Fig. 1. SE1001, 9:10-16. It then releases the
`
`empty buffer to the transform object for use again by the source object. SE1001,
`
`8:55-59.
`
`Under this system, the source object waits for the transform object to
`
`provide an empty buffer. Similarly, the sink object also waits for the transform
`
`object to provide a full buffer. According to the ’389 patent, “[t]his means that the
`
`pipeline is self-regulating; it has automatic flow control.” SE1001, 8:48-49.
`
`B.
`Prior Art
`The “objects” claimed in the ’389 patent, including their functions, were
`
`explicitly taught in the prior art, such as in Platform SDK. SE1003, ¶¶26-34.
`
`Platform SDK is a software development kit (aka “SDK”) by Microsoft
`
`Corporation that contains compilers, tools, documentations, header files, libraries
`
`11
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`and samples needed for software development. SE1003, ¶26. The documentation
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`for Platform SDK explained how developers could create applications using
`
`Platform SDK, and divided that explanation into different sections. SE1003, ¶¶26-
`
`29. Exhibit SE1004 contains selected portions of Platform SDK. See SE1004.1
`
`Exhibit SE1004 includes the portion of Platform SDK titled “Broadcast
`
`Architecture Programmer’s Guide,” which is directed to developing applications
`
`allowing computers to be used as broadcast clients and broadcast servers. See
`
`SE1004, 2230-2919. Exhibit SE1004 also includes the portion of Platform SDK
`
`titled “Microsoft DirectShow SDK,” which is directed to developing video
`
`streaming services on computers using Microsoft DirectShow. See SE1004, 1-
`
`2229. In these sections, Platform SDK describes systems for storage and playback
`
`of multimedia data, with the Broadcast Architecture section describing details of
`
`the relevant hardware and the DirectShow section describing details of the relevant
`
`software. SE1004, 2260 (“The DirectShow filter graph is a Broadcast Architecture
`
`component that tells direct show what filters to use and how they are connected to
`
`each other.”), 2233; SE1003, ¶27.
`
`
`1 For the sake of brevity given the length of Platform SDK, other sections of
`
`Platform SDK have been omitted from SE1004 as they are not relevant (or at least
`
`less relevant) for the patentability analysis.
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`12
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`In particular, the “Broadcast Architecture” section of Platform SDK
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`“enables personal computers to serve as broadcast clients for digital data networks
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`and for analog broadcast networks.” SE1004, 2232. The Broadcast Architecture
`
`section teaches “how to develop software for the broadcast client” including
`
`“Streaming Video Services, documenting the streaming video services of
`
`Broadcast Architecture in the sections Video Control, Enhancement Video Control,
`
`and DirectShow Filter References.” SE1004, 2233. Platform SDK provides an
`
`illustration that “shows how the data flows through the various components of the
`
`broadcast client hardware.”
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`13
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`SE1004, 2266-2267 (annotated). The above figure has been annotated to show the
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`hardware in Platform SDK corresponding to hardware claimed in claims 31 and 61
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`of the ’389 patent. SE1003, ¶28.2
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`
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`As noted above, the Broadcast Architecture section of Platform SDK refers
`
`to the DirectShow section of Platform SDK for streaming video services. SE1004,
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`2233, 2260. “DirectShow services [] provide playback multimedia streams from
`
`local files or Internet servers, and capture of multimedia streams from devices,”
`
`which “enables playback of video and audio content compressed in various
`
`formats.” SE1004, 1. DirectShow processes streamed data using objects called
`
`“filters.” SE1004, 142. Platform SDK explains:
`
`The DirectShow architecture defines how to control and process
`streams of multimedia data using modular components called filters.
`The filters have input or output pins, or both, and are connected to
`each other in a configuration called a filter graph. Applications use an
`object called the filter graph manager to assemble the filter graph and
`move data through it. SE1004, 142 (emphasis added).
`
`
`2 Platform SDK’s video card, which is labeled “MPEG decoder SVGA adapter” is
`
`used for both capture and playback, and consequently, is both the decoder and the
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`physical data source as claimed. SE1004, 2273 (describing video card
`
`requirements), 38; SE1003, ¶28.
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`14
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`The following illustration shows using a filter graph to play back media.
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`
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`SE1004, 143 (annotated). The above figure has been annotated to show the objects
`
`disclosed in Platform SDK that correspond to the source, transform, sink, and
`
`control objects claimed in claims 31 and 61 of the ’389 patent. SE1003, ¶29. The
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`control object can be used to play media by accessing DirectShow COM interfaces
`
`directly, or through either of the ActiveMovie Control or media control interfaces
`
`(MCI). SE1004, 142-143. For comparison, the above figure from Platform SDK
`
`and Figure 9 from the ’389 patent have been presented below with color-coding to
`
`illustrate common features with the same color annotations.
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`SE1001, FIG. 9 (top, annotated); SE1004, 143 (bottom, annotated); SE1003, ¶¶31-
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`32 (Dr. Strawn providing and testifying regarding the annotated figures).
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`16
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`Platform SDK’s transform object (the transform filter) performs automatic
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`flow control, including automatic flow control of both the source filter (source
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`object) and the renderer filter (sink object). SE1004, 142-143, 160-165. In
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`addition to automatic flow control, Platform SDK also teaches the filter objects of
`
`DirectShow performing the other functional elements found in claims 31 and 61, as
`
`further described below in Section IV of this petition. SE1003, ¶¶41-138.
`
`To the extent that Platform SDK is found to not explicitly describe one or
`
`more claim elements as being combined in the manner set forth in claims 31 and
`
`61, such claim elements covered conventional features and functionality that were
`
`at least taught by Platform SDK and their combination would have been
`
`predictable and obvious to a POSITA in light of the teachings of Platform SDK.
`
`SE1003, ¶¶139-149. For example, Platform SDK repeatedly stresses the
`
`“flexibility” of its “modular software components” and includes explicit cross-
`
`references showing the reader where to find teachings to combine features. See
`
`SE1004, 2250-2252, see also 2235-2236, 2260, 2252, 2814-2815. Accordingly,
`
`even if Platform SDK is found to not anticipate claims 31 and 61 (which it does),
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`the teachings of Platform SDK at least render claims 31 and 61 obvious. SE1003,
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`¶¶139-149.
`
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`The broadest reasonable construction/interpretation (“BRI”) is applied
`
`17
`
`
`
`
`herein.3 SE1003, ¶¶37-40. In prior court proceedings to which Petitioner was not
`
`Attorney Docket No. 39843-0037IP2
`IPR of U.S. Patent No. 6,233,389
`
`a party, Patent Owner proposed and a district court adopted constructions on over
`
`twenty terms from claims 31 and 61 of the ’389 patent. See SE1011-SE1014;
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`(construing some terms and applying plain meaning for others); see also TiVo, Inc.
`
`v. EchoStar Commc'ns Corp., 516 F.3d 1290, 1307 (Fed. Cir. 2008) (endorsing the
`
`constructions of the appealed terms of the ’389 patent as being “soundly based”).
`
`Accordingly, the BRI for these claim terms is at least as broad as the constructions
`
`proposed by Patent Owner and adopted—Patent Owner cannot credibly dispute
`
`this point. These terms include:
`
`Claim Term
`
`BRI Construction
`
`Preamble
`
`Not limiting.
`
`SE1014, 82; SE1001, 14:53-54, 17:3-4; SE1003, ¶38.
`
`
`3 The claim construction standard for district court (“ordinary and customary
`
`meaning”) is different than the BRI standard applied in IPR. Due to the different
`
`standards, disclosure of the references identified by Petitioner as teaching a claim
`
`term of the ’389 patent is not an admission that the claim term is met by any
`
`disclosure for infringement purposes, or that the claim term is enabled or meets the
`
`requirements for written description.
`
`
`
`18
`
`
`
`
`
`Attorney Docket No. 39843-0037IP2
`IPR of U.S. Patent No. 6,233,389
`
`“Object”
`
`“a collection of data and operations.”
`
`SE1014, 91-98; SE1001, 8:39-65, 9:23-47; SE1003, ¶38.
`
`“source object”
`
`“a collection of data and operations that (1) extracts video
`
`and audio data from a physical data source, (2) obtains a
`
`buffer [memory where data can be temporarily stored for
`
`transfer] from a transform object, (3) converts video data into
`
`data streams, and (4) fills the buffer [memory where data can
`
`be temporarily stored for transfer] with the streams.”
`
`SE1014, 91-98; SE1001, 8:39-51; SE1003, ¶38.
`
`“sink object”
`
`“a collection of data and operations that (1) obtains data
`
`stream buffers [memory where data can be temporarily
`
`stored for transfer] from a transform object and (2) outputs
`
`the streams to a video and audio decoder.”
`
`SE1014, 91-98; SE1001, 8:52-65; SE1003, ¶38.
`
`“control object”
`
`“a collection of data and operations that receives commands
`
`from a user that control the flow of broadcast data.”
`
`SE1014, 91-98; SE1001, 9:23-47; SE1003, ¶38.
`
`“buffer”
`
`“memory where data can be temporarily stored for transfer”
`
`SE1014, 9; SE1001, 2:16-17, 4:55-6:15; SE1003, ¶38.
`
`19
`
`
`
`
`
`Attorney Docket No. 39843-0037IP2
`IPR of U.S. Patent No. 6,233,389
`
`“transform
`
`“a collection of data and operations that transforms the form
`
`object”
`
`of data upon which it operates.”
`
`SE1014, 101-106; SE1001, 7:48-8:65; SE1003, ¶38.
`
`“automatically
`
`“self-regulated”
`
`flow
`
`SE1014, 101-106; SE1001, 8:19-65; SE1003, ¶38.
`
`controlled”
`
`“wherein said
`
`“wherein said source object is self-regulated by said
`
`source object is
`
`transform object”
`
`automatically
`
`SE1014, 101-106; SE1001, 8:39-51; SE1003, ¶38.
`
`flow controlled
`
`by said transform
`
`object”
`
`“wherein said
`
`“wherein said sink object is self-regulated by said transform
`
`sink object is
`
`object”
`
`automatically
`
`SE1014, 101-106; SE1001, 8:52-65; SE1003, ¶38.
`
`flow controlled
`
`by said transform
`
`object”
`
`20
`
`
`
`
`
`Attorney Docket No. 39843-0037IP2
`IPR of U.S. Patent No. 6,233,389
`
`“wherein said
`
`“wherein the source object obtains video and audio data from
`
`source object
`
`said physical data source”
`
`extracts video
`
`SE1014, 98-101; SE1001, 8:43-45; SE1003, ¶38.
`
`and audio data
`
`from said
`
`physical data
`
`source”
`
`“control the flow
`
`“control the flow of the broadcast data within the system”
`
`of the broadcast
`
`SE1014, 109-111; SE1001, 8:19-65; SE1003, ¶38.
`
`data through the
`
`system”
`
`“wherein said
`
`“the control object sends information relating to a change of
`
`control object
`
`condition in the flow of the broadcast data to the source,
`
`sends flow
`
`transform and sink objects.”
`
`command events
`
`SE1013, 16-17; SE1001, 9:22-47; SE1003, ¶38.
`
`to said source,
`
`transform, and
`
`sink objects”
`
`“parses”
`
`“analyzes”
`
`21
`
`
`
`Attorney Docket No. 39843-0037IP2
`IPR of U.S. Patent No. 6,233,389
`
`SE1014, 82-88; SE1001, 5:3-9, 6:37-46; SE1003, ¶38.
`
`“parses video and
`
`“analyzes video and audio data from the broadcast data”
`
`audio data from
`
`SE1014, 82-88; SE1001, 5:3-9, 6:37-46; SE1003, ¶38.
`
`said broadcast
`
`data”
`
`“physical data
`
`“hardware and software that parses video and audio data
`
`source”
`
`from said broadcast data”
`
`SE1014, 109-111; SE1001, 8:43-45; SE1003, ¶38.
`
`“accepts
`
`“accepts data that was transmitted”
`
`broadcast data”
`
`SE1014, 109-111, 3:30-61; SE1003, ¶38.
`
`
`
`
`
`Claim terms not specifically construed above were interpreted under the
`
`BRI. SE1003, ¶40.
`
`IV. APPLICATION OF PRIOR ART TO CHALLENGED CLAIMS
`As detailed above (incorporated herein) and below, this request shows a
`
`reasonable likelihood that Petitioner will prevail on the Challenged Claims.
`
`As mentioned above at Section II.A., claims 31 and 61 are primarily directed
`
`to software objects (i.e., source, sink, transform, and control objects) that control
`
`movement of data. Platform SDK discloses each of these claimed software objects
`
`in the form of “filters” for the source, sink, and transform object and in the form of
`
`22
`
`
`
`
`an application for the control object. Platform SDK also discloses these objects
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`Attorney Docket No. 39843-0037IP2
`IPR of U.S. Patent No. 6,233,389
`
`being combined as claimed. Accordingly, Ground 1 shows anticipation of claims
`
`31 and 61 by Platform SDK. SE1003, ¶¶41-138. To the extent that Platform SDK
`
`is interpreted to not explicitly teach one or more elements of claims 31 and 61
`
`combined as claimed, Ground 2 shows obviousness of claims 31 and 61 over the
`
`teachings of Platform SDK. SE1003, ¶¶139-149.
`
`Claims 31 and 61 are identical, except that claim 31 is a process claim,
`
`which adds the word “providing” for five claim elements and also modifies the
`
`preamble slightly. Accordingly, claims 31 and 61 will be considered at the same
`
`time, with corresponding elements addressed together.
`
`A. GROUND 1: Claims 31 and 61 are Anticipated under §
`102(a) by Platform SDK
`[31.Pre] A process for the simultaneous storage and play back of multimedia
`data, comprising the steps of:
`
`[61.Pre] An apparatus for the simultaneous storage and play back of multimedia
`data, comprising:
`The preamble of claims 31 and 61 are not limiting. A preamble is limiting
`
`only “when read in the context of the entire claim, recites limitations of the claim,
`
`or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to the
`
`claim.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.
`
`Cir. 1999). In this case, the preamble of claim 31 does not recite limitations of the
`
`claim and is not necessary to give life, meaning, or vitality to the claim—claim 31
`
`23
`
`
`
`
`can be understood without the preamble. Indeed, none of the claim elements have
`
`Attorney Docket No. 39843-0037IP2
`IPR of U.S. Patent No. 6,233,389
`
`antecedents in the preamble. Moreover, Patent Owner has already “agreed that the
`
`preambles of Claims 31 and 61 of the ’389 patent are not limiting.” SE1014, 82.
`
`Accordingly, the preamble of claims 31 and 61 are not limiting.
`
`Even if the preamble were limiting, Platform SDK discloses an apparatus
`
`and a process for the simultaneous storage and play back of multimedia data.
`
`SE1004, 144 (“play video or audio files over the Internet while the file is
`
`downloading”); see also 277 (“Microsoft® DirectShow™ provides the capability
`
`to capture and preview both video and audio data from an application”), 201
`
`(“user-mode DirectShow filters for simultaneous preview and capture of video to
`
`disk”). SE1003, ¶45.
`
`While the preamble of claim 61 refers to “[a]n apparatus,” the term
`
`“apparatus” does not exclude an electrically-connected system. For example,
`
`claim element [61.n] refers to “the system”—showing that claim 61 uses the terms
`
`“apparatus” and “system” interchangeably. See also SE1014, 109-111 (construing
`
`that claim el
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