`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`Google LLC
`
`Petitioner
`
`v.
`
`UNILOC 2017 LLC
`
`Patent Owner
`
`U.S. Patent No. 8,407,609
`Filing Date: August 21, 2009
`Issue Date: March 26, 2013
`
`____________________
`
`Case No. IPR2020-00115
`
`
`
`DECLARATION OF DR. JEFFREY CHASE, Ph.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF UNITED
`STATES PATENT NO. 8,407,609
`
`
`
`
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`Page 1 of 244
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`GOOGLE EXHIBIT 1003
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`
`TABLE OF CONTENTS
`
`INTRODUCTION ......................................................................................... 1
`I.
`II. BACKGROUND AND QUALIFICATIONS .............................................. 2
`III. MATERIALS REVIEWED .......................................................................... 6
`IV. LEGAL STANDARDS .................................................................................. 7
`A. Anticipation ........................................................................................... 8
`B. Obviousness ........................................................................................... 9
`LEVEL OF ORDINARY SKILL IN THE ART ........................................13
`V.
`VI. THE ’609 PATENT ......................................................................................15
`A. Overview of the ’609 Patent ................................................................15
`B.
`Challenged Claims ..............................................................................19
`C.
`Claim Construction..............................................................................21
`VII. OVERVIEW OF PRIOR ART REFERENCES .......................................22
`A. Hayward ..............................................................................................22
`B. Middleton .............................................................................................29
`C.
`Ryan .....................................................................................................31
`VIII. CLAIMS 1–3 OF THE ’609 PATENT ARE UNPATENTABLE ...........35
`A. Ground 1: Hayward anticipates claim 1 ..............................................35
`1.
`Claim 1 ......................................................................................35
`B. Ground 2: Hayward and Middleton render obvious claim 1 ..............62
`1.
`Claim 1 ......................................................................................62
`C. Ground 3: Hayward, or Hayward and Middleton, and Ryan
`render obvious claims 2 and 3 .............................................................74
`
`
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`1.
`
`2.
`
`[2] “The method of claim 1, wherein the storing
`comprises incrementing a stored value dependently upon
`the receiving.” ...........................................................................74
`[3] “The method of claim 2, wherein the received data is
`indicative of a temporal cycle passing.” ...................................77
`IX. CONCLUSION ............................................................................................77
`
`
`
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`ii
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`I, Dr. Jeffrey Chase, Ph.D., declare as follows:
`Introduction
`
`I.
`
`1. My name is Dr. Jeffrey Chase. I have been asked to submit this
`
`declaration on behalf of Google LLC (“Google” or “Petitioner”) in connection with
`
`a petition for inter partes review of U.S. Patent No. 8,407,609 (“the ’609 patent”),
`
`which I understand is being submitted to the Patent Trial and Appeal Board of the
`
`United States Patent and Trademark Office by Google.
`
`2.
`
`I have been retained as a technical expert by Google to study and
`
`provide my opinions on the technology claimed in, and the patentability or non-
`
`patentability of, claims 1–3 of the ’609 patent (“the Challenged Claims”).
`
`3.
`
`This declaration is directed to the Challenged Claims of the ’609
`
`patent and sets forth certain opinions I have formed, the conclusions I have
`
`reached, and the bases for each.
`
`4.
`
`Based on my experience, knowledge of the art at the relevant time,
`
`analysis of prior art references, and the understanding a person of ordinary skill in
`
`the art would have of the claim terms, it is my opinion that each of the Challenged
`
`Claims of the ’609 patent is unpatentable over the prior art references discussed
`
`below.
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`II. Background and Qualifications
`
`
`
`5.
`
`I am a Professor at Duke University in the Computer Science
`
`Department. I have studied and practiced in the field of computer science for over
`
`35 years. During this time, I have worked as a software developer, computer
`
`systems researcher, and computer science professor. I have been teaching
`
`Computer Science at Duke since 1995.
`
`6.
`
`I received my Doctor of Philosophy (Ph.D.) degree in the field of
`
`Computer Science from the University of Washington in Seattle in 1995. I
`
`received my Masters of Science (M.S.) degree in Computer Science from the
`
`University of Washington in 1989. As a graduate student at the University of
`
`Washington, I conducted research on new operating system models for secure data
`
`sharing. I earned my Bachelor of Arts (B.A.) degree as a double major in
`
`Mathematics and Computer Science from Dartmouth College.
`
`7.
`
`From 1985 through 1994 (before and during graduate school), I
`
`worked as a software design engineer at Digital Equipment Corporation (“DEC”),
`
`earning the title Senior Software Engineer in 1987. While at DEC, I developed
`
`operating system kernel software for networked file services in DEC’s Unix
`
`operating system product, Ultrix.
`
`8.
`
`Upon receiving my Ph.D. degree, I joined the faculty of Duke
`
`University in the Department of Computer Science as an Assistant Professor.
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`
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`Since becoming a professor, I have conceived and led a number of research
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`projects and published widely in leading research forums in the areas of operating
`
`systems and network services including high-performance Web systems and cloud
`
`computing. I earned tenure at Duke University in 2002, and was promoted to Full
`
`Professor in 2006. I teach courses for undergraduate and graduate students at
`
`Duke on various related subjects: operating systems, networking and networked
`
`systems, distributed systems, and Internet technology and society. I have
`
`supervised the research of fourteen completed Ph.D. dissertations in the field of
`
`Computer Science. I have also supervised the research of twenty students who
`
`earned Master’s degrees at Duke.
`
`9. My work has focused on software systems for efficient, secure, and
`
`reliable sharing of resources and information in computer networks ranging from
`
`clusters (e.g., cloud computing services) to the global Internet. I have conducted
`
`research and developed software relating to networked data sharing including
`
`cloud computing and high-performance Web systems and storage. I am a named
`
`inventor on eleven U.S. patents and a co-author of over 100 published research
`
`papers on related topics in peer-reviewed technical publications or conferences in
`
`the field of Computer Science.
`
`10.
`
`I have served on editorial program committees for leading annual
`
`academic conferences in networked computer systems, cloud computing, storage,
`
`
`
`3
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`Web technologies, and related areas. For example, I was invited to serve on the
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`editorial program committee for the Association for Computing Machinery (ACM)
`
`Symposium on Cloud Computing (SoCC) multiple times (most recently in 2019)
`
`and co-chaired the SoCC committee in 2011. SoCC and other related venues are
`
`sponsored by the ACM, a leading professional society, of which I am a lifetime
`
`member. I have had similar roles in other related academic venues.
`
`11.
`
`I conducted research in various Web technologies early in the Web
`
`computing era (mid-1990s) and up until the time the provisional application
`
`leading to the ’609 patent was filed (2008). I have taught certain Web technologies
`
`in my courses, including Web service technologies based on the Java programming
`
`language, and I developed Java-based Web application software as part of my
`
`research (e.g., the Web interface for Shirako, an early cloud computing system, in
`
`2005-2007). Much of my research during this period focused on technologies for
`
`high-performance Web services and led into my later research on cloud computing.
`
`12.
`
`I have also participated in a number of industry collaborations. I am a
`
`named co-inventor of patents relating to Web caching and resource management in
`
`Web services resulting from these collaborations. While a collaborator at AT&T
`
`Corporation in 1996, I developed early technology for Web caching, patented as
`
`U.S. Patent No. 5,944,780 entitled “Network with Shared Caching.” In
`
`collaboration with IBM Corporation from 2000–2003, I developed technology
`
`
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`covered by seven patents relating to adaptive resource management and request
`
`routing for hosted Web services.
`
`13.
`
`In the course of my research, I have gained exposure to client-side
`
`Web technologies used to build these Web services. For example, the ’609 patent
`
`describes Java applet technology and its use to add programmatic functions—such
`
`as tracking—that run in a user computer’s browser as it displays a Web page.
`
`When the Java applet technology was first coming into use (around 1996–1998), I
`
`collaborated with IBM Corporation to develop a tool that could “instrument” or
`
`inject new code elements directly into compiled Java “bytecode” as it loads into a
`
`browser or other process. This collaboration was described in, for example:
`
`• G. Cohen, J. Chase & D. Kaminsky, Automatic Program
`
`Transformation with JOIE, USENIX TECHNICAL CONFERENCE (June
`
`1998); and
`
`• G. Cohen & J. Chase, An Architecture for Safe Bytecode Insertion,
`
`available at https://www2.cs.duke.edu/ari/joie/.
`
`14. Additional details about my employment history, fields of expertise,
`
`awards, publications, and other activities are further included in my curriculum
`
`vitae (which I have been told is Ex. 1004 to Google’s petition).
`
`15.
`
`I am being compensated for services provided in this matter at my
`
`customary rate, plus travel expenses. My compensation is not conditioned on the
`
`
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`conclusions I reach as a result of my analysis or on the outcome of this matter.
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`Similarly, my compensation is not dependent upon and in no way affects the
`
`substance of my statements in this declaration.
`
`16.
`
`I have no financial interest in Petitioner or any of its subsidiaries. I
`
`also do not have any financial interest in Patent Owner Uniloc 2017 LLC. I do not
`
`have any financial interest in the ’609 patent and have not had any contact with the
`
`named inventor of the ’609 patent (Tod C. Turner).
`
`III. Materials Reviewed
`
`17.
`
`In forming my opinions regarding the ’609 patent, I reviewed the
`
`following materials:
`
`• The ’609 patent (which I have been told is Ex. 1001 to Google’s
`
`petition);
`
`• U.S. Patent App. Pub. No. 2004/0045040 to Hayward (“Hayward,”
`
`which I have been told is Ex. 1005 to Google’s petition);
`
`• U.S. Patent App. Pub. No. 2002/0111865 to Middleton (“Middleton,”
`
`which I have been told is Ex. 1006 to Google’s petition);
`
`• U.S. Patent No. 6,421,675 to Ryan (“Ryan,” which I have been told is
`
`Ex. 1007 to Google’s petition);
`
`
`
`6
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`• Defendant Google LLC’s Claim Term Disclosure in Uniloc 2017 LLC
`
`v. Google LLC, No. 2:18-cv-00502 (E.D. Tex. Sep. 24, 2019) (which I
`
`have been told is Ex. 1008 to Google’s petition);
`
`• Plaintiffs’ Preliminary Claim Constructions and Identification of
`
`Extrinsic Evidence Pursuant to P.R. 4-2 in Uniloc 2017 LLC v. Google
`
`LLC, No. 2:18-cv-00502 (E.D. Tex. Sep. 24, 2019) (which I have been
`
`told is Ex. 1009 to Google’s petition);
`
`• DAVID FLANAGAN, JAVASCRIPT: THE DEFINITIVE GUIDE 255 (5th ed.
`
`2006) (attached as Appendix A); and
`
`• CLARK S. LINDSEY ET AL., JAVATECH (2005) (attached as Appendix B);
`
`• Aleksander Malinowski & Bogdan Wilamowski, Internet Technology
`
`as a Tool for Solving Engineering Problems, PROCEEDINGS OF
`
`IECON’01: THE 27TH ANNUAL CONFERENCE OF THE IEEE INDUSTRIAL
`
`ELECTRONICS SOCIETY 1622 (2001) (attached as Appendix C).
`
`IV. Legal Standards
`
`18.
`
`I am not an attorney and have not been asked to offer my opinion on
`
`the law. However, as an expert offering an opinion on whether the claims in the
`
`’609 patent are patentable, I have been told that I am obliged to follow existing
`
`law.
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`
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`A. Anticipation
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`19.
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`I have been told the following legal principles apply to analysis of
`
`patentability pursuant to 35 U.S.C. § 102, a provision in the patent law regarding
`
`anticipation. I have been told that, in an inter partes review proceeding, patent
`
`claims may be deemed unpatentable if it is shown by preponderance of the
`
`evidence that they were anticipated by one or more prior art patents or
`
`publications.
`
`20.
`
`I have been told that for a claim to be anticipated under § 102, every
`
`limitation of the claimed invention must be disclosed by a single prior art
`
`reference, viewed from the perspective of a person of ordinary skill in the art.
`
`21.
`
`I have been told that a claim is unpatentable as anticipated under
`
`§ 102(b) if the claimed invention was “patented or described in a printed
`
`publication in this or a foreign country or in public use or on sale in this country,
`
`more than one year prior to the date of the application for patent in the United
`
`States.”
`
`22.
`
`I have been told that a claim is unpatentable as anticipated under
`
`§ 102(e) if “the invention was described in (1) an application for patent, published
`
`under section 122(b), by another filed in the United States before the invention by
`
`the applicant for patent or (2) a patent granted on an application for patent by
`
`another filed in the United States before the invention by the applicant for patent,
`
`
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`except that an international application filed under the treaty defined in section
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`351(a) shall have the effects for the purposes of this subsection of an application
`
`filed in the United States only if the international application designated the United
`
`States and was published under Article 21(2) of such treaty in the English
`
`language.”
`
`B. Obviousness
`I have been told the following legal principles apply to analysis of
`23.
`
`patentability pursuant to 35 U.S.C. § 103(a), a provision in the patent law
`
`regarding obviousness that reads “[a] patent may not be obtained although the
`
`invention is not identically disclosed or described as set forth in section 102, if the
`
`differences between the subject matter sought to be patented and the prior art are
`
`such that the subject matter would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art to which said subject matter
`
`pertains.” I have been told that, in an inter partes review proceeding, patent claims
`
`may be deemed unpatentable if it is shown by a preponderance of the evidence that
`
`they were rendered obvious by one or more prior art patents or publications.
`
`24. When considering the issues of obviousness, I have been told that I
`
`am to do the following:
`
`a.
`
`Determine the scope and content of the prior art;
`
`
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`b.
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`Ascertain the differences between the prior art and the claims at
`
`issue;
`
`c.
`
`d.
`
`Resolve the level of ordinary skill in the pertinent art; and
`
`Consider evidence of secondary indicia of non-obviousness (if
`
`available).
`
`25.
`
`I have been told that the relevant time for considering whether a claim
`
`would have been obvious to a person of ordinary skill in the art is the time of
`
`alleged invention, which I have assumed is shortly before the provisional
`
`application leading to the ’609 patent was filed.
`
`26.
`
`I have been told that obviousness is a determination of law based on
`
`underlying determinations of fact. I have been told that these factual
`
`determinations include the scope and content of the prior art, the level of ordinary
`
`skill in the art, the differences between the claimed invention and the prior art, and
`
`secondary considerations of non-obviousness.
`
`27.
`
`I have been told that any assertion of secondary indicia must be
`
`accompanied by a nexus between the merits of the invention and the evidence
`
`offered.
`
`28.
`
`I have been told that a reference may be combined with other
`
`references to disclose each element of the invention under § 103. I have been told
`
`that a reference may also be combined with the knowledge of a person of ordinary
`
`
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`skill in the art and that this knowledge may be used to combine multiple
`
`references. I have also been told that a person of ordinary skill in the art is
`
`presumed to know the relevant prior art. I have been told that the obviousness
`
`analysis may account for the inferences and creative steps that a person of ordinary
`
`skill in the art would employ.
`
`29.
`
`In determining whether a prior art reference could have been
`
`combined with another prior art reference or other information known to a person
`
`having ordinary skill in the art, I have been told that the following principles may
`
`be considered:
`
`a. A combination of familiar elements according to known methods is
`
`likely to be obvious if it yields predictable results;
`
`b. The substitution of one known element for another is likely to be
`
`obvious if it yields predictable results;
`
`c. The use of a known technique to improve similar items or methods in
`
`the same way is likely to be obvious if it yields predictable results;
`
`d. The application of a known technique to a prior art reference that is
`
`ready for improvement, to yield predictable results;
`
`e. Any need or problem known in the field and addressed by the
`
`reference can provide a reason for combining the elements in the
`
`manner claimed;
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`f. A person of ordinary skill often will be able to fit the teachings of
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`multiple references together like a puzzle; and
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`g. The proper analysis of obviousness requires a determination of
`
`whether a person of ordinary skill in the art would have a “reasonable
`
`expectation of success”—not “absolute predictability” of success—in
`
`achieving the claimed invention by combining prior art references.
`
`30.
`
`I have been told that whether a prior art reference renders a patent
`
`claim unpatentable as obvious is determined from the perspective of a person of
`
`ordinary skill in the art. I have been told that there is no requirement that the prior
`
`art contain an express suggestion to combine known elements to achieve the
`
`claimed invention, but a suggestion to combine known elements to achieve the
`
`claimed invention may come from the prior art, as filtered through the knowledge
`
`of one skilled in the art. In addition, I have been told that the inferences and
`
`creative steps a person of ordinary skill in the art would employ are also relevant to
`
`the determination of obviousness.
`
`31.
`
`I have been told that, when a work is available in one field, design
`
`alternatives and other market forces can prompt variations of it, either in the same
`
`field or in another. I have been told that if a person of ordinary skill in the art can
`
`implement a predictable variation and would see the benefit of doing so, that
`
`variation is likely to be obvious. I have been told that, in many fields, there may
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`be little discussion of obvious combinations, and in these fields market demand—
`
`not scientific literature—may drive design trends. I have been told that, when
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`there is a design need or market pressure and there are a finite number of
`
`predictable solutions, a person of ordinary skill in the art has good reason to pursue
`
`those known options.
`
`32.
`
`I have been told that there is no rigid rule that a reference or
`
`combination of references must contain a “teaching, suggestion, or motivation” to
`
`combine references. But I also understand that the “teaching, suggestion, or
`
`motivation” test can be a useful guide in establishing a rationale for combining
`
`elements of the prior art. I have been told that this test poses the question as to
`
`whether there is an express or implied teaching, suggestion, or motivation to
`
`combine prior art elements in a way that realizes the claimed invention, and that it
`
`seeks to counter impermissible hindsight analysis.
`
`V. Level of Ordinary Skill in the Art
`
`33.
`
`I have been asked to provide a definition for the level or ordinary skill
`
`in the art. I have been informed that several factors are considered in assessing the
`
`level of ordinary skill in the art, including: (1) the types of problems encountered
`
`in the art; (2) the prior art solutions to those problems; (3) the rapidity with which
`
`innovations are made; (4) the sophistication of the technology; and (5) the
`
`educational level of active workers in the field. Based on my experience and
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`
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`considering these factors, my opinion is that a person of ordinary skill in the art
`
`(“POSA”) at the time of the filing of the provisional application leading to the ’609
`
`patent would have had either (a) a Master’s or doctoral degree in computer science,
`
`electrical engineering, or a similar discipline involving relevant experience; or
`
`(b) a Bachelor’s degree in computer science, electrical engineering, or a similar
`
`discipline and at least two years additional relevant experience. Working in the
`
`design and implementation of networked computing systems constitutes relevant
`
`work experience. Examples of such work in networked computing systems could
`
`include work in networked computing communication and data streaming.
`
`34.
`
`I have not analyzed the priority date of the ’609 patent, but I note that
`
`the earliest claim of priority listed on the face of the ’609 patent is August 21,
`
`2008, the filing date of U.S. Provisional Patent Application No. 61/090,672.
`
`Because all of the prior art discussed in this declaration pre-dates August 21, 2008,
`
`I have assumed for simplicity that August 21, 2008, is the priority date for the ’609
`
`patent. I have therefore also treated this date as the date from which to assess the
`
`knowledge available to a person of ordinary skill in the art. I note that I was at least
`
`a person or ordinary skill in the art as of this date.
`
`
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`VI. The ’609 Patent
`A. Overview of the ’609 Patent
`
`35. The ’609 patent describes a method for tracking digital media
`
`presentations delivered to a user’s computer. ’609 patent, Abstract. The method is
`
`carried out by the system shown in annotated Figure 1, below, which includes a
`
`user computer 20, a content or web server 34 and database server 32, and a file
`
`server 36, all of which are connected by a network 40.
`
`36. The ’609 patent teaches that “a user of a device 20 may request [a
`
`web] page 200 from content server 34 using a browser application,” “[s]erver 34
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`may provide page 200 to the requesting computer 20,” and “[a] user may enter a
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`search term.” Id. at 4:57–61, 5:29–34. “Responsively thereto,” the ’609 patent
`
`explains, “content server 34 may request database server 32 to identify which
`
`presentations should be used to populate page 200 according to the entered search
`
`term(s).” Id. at 5:34–37.
`
`37.
`
`“Server 34 may then provide such a populated page 200 to the
`
`requesting user computer 20.” Id. at 5:37–39. An example web page 200 showing
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`“aggregate[d] . . . video content for presentation to users of computers 20” is
`
`shown in Figure 2, below.
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`38. As Figure 2 illustrates, “presentations 265, 270, 275” may be shown.
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`Id. at 4:38–40. Then, “a user may select a populated presentation (e.g., 265, 270,
`
`or 275, FIG. 2)” and, “[i]n response thereto, server 34 may request file server 36 . .
`
`. stream . . . the selected presentation to the requesting user’s computer 20, such as
`
`via web page 200 in a conventional manner.” Id. at 5:20–25.
`
`39. A “[w]eb page 900,” shown in Figure 9 below, “may be provided to
`
`user’s computer [20] responsively to user selection of a presentation shown on a
`
`populated web page 200.” Id. at 11:61–64. On the web page 900, a “portion 930
`
`[green] may be utilized to playback the selected presentation in a conventional
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`manner, e.g., by . . . streaming the content to a media player application or plug-
`
`in.” Id. at 12:1–5.
`
`40. The ’609 patent states “it may be desirable to know . . . how long a
`
`user actually watched, and/or listened, to a presented program.” Id. at 11:47–52.
`
`For example, where advertisements are displayed in the web page alongside the
`
`presentation, “it may be desirable to be able to reliable [sic] identify how long the
`
`media was actually . . . played, in order to appropriately value portions [of the web
`
`page] as available advertising billboard space.” Id. at 12:5–10.
`
`41. But while Hayward discloses tracking how a user views a media file,
`
`including how long the media file was played, the ’609 patent claims “[s]uch
`
`knowledge is not conventionally available.” Id. at 13:47–48. The ’609 patent
`
`tracks how the user views the digital media presentation using a “timer applet.” Id.
`
`at 12:66–67.
`
`42. As shown in Figure 10, below right, the timer applet “may be used to
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`indicate each time some temporal time period, such as 10, 15, or 30 seconds,
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`elapses.” Id. at 13:6–9. “[W]hen the applet determines the predetermined
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`temporal period has elapsed, . . . system 30 may log receipt of this indication, such
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`as by using database server 32.” Id. at
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`13:10–13. In some embodiments, the
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`applet may cause “identifying data” to be
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`transmitted with the indication. Id. at
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`13:14–16. The identifying data may be
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`“logged, such as by using database
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`server 32.” Id. at 13:22–23.
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`43. Based on the logged data, it
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`may be determined “that a viewer began
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`viewing a particular show at a certain
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`time,” as well as “when a user began
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`viewing a different page, or show, thereby providing knowledge of how long a
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`particular viewer spent on a particular page.” Id. at 13:43–48.
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`44. The ’609 patent recognizes the value of this information to
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`advertisers. Using this information, the ’609 patent envisions, “an increasing scale
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`of payments for advertising displayed on a given page” could be determined,
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`“correspondent to how long a viewer or viewers remain, or typically remain, on
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`that particular page.” Id. at 13:49–14:2.
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`B. Challenged Claims
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`45. Google challenges claims 1–3.
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`46. For convenience, the Challenged Claims are reproduced below. I
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`have added reference numerals for ease of reference:
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`Claim
`
`Claim Language
`1[a]. A method for tracking digital media presentations delivered
`from a first computer system to a user’s computer via a network
`comprising:
`
`1
`
`[1b]. providing a corresponding web page to the user’s
`computer for each digital media presentation to be
`delivered using the first computer system;
`
`[1c]. providing identifier data to the user’s computer using
`the first computer system;
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`[1d]. providing an applet to the user’s computer for each
`digital media presentation to be delivered using the first
`computer system, wherein the applet is operative by the
`user’s computer as a timer;
`
`[1e]. receiving at least a portion of the identifier data from
`the user’s computer responsively to the timer applet each
`time a predetermined temporal period elapses using the
`first computer system; and
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`[1f]. storing data indicative of the received at least portion
`of the identifier data using the first computer system;
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`
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`Claim
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`2
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`3
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`
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`
`
`Claim Language
`[1g]. wherein each provided webpage causes
`corresponding digital media presentation data to be
`streamed from a second computer system distinct from the
`first computer system directly to the user’s computer
`independent of the first computer system;
`
`[1h]. wherein the stored data is indicative of an amount of
`time the digital media presentation data is streamed from
`the second computer system to the user’s computer; and
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`[1i]. wherein each stored data is together indicative of a
`cumulative time the corresponding web page was
`displayed by the user’s computer.
`
`[2] The method of claim 1, wherein the storing comprises
`incrementing a stored value dependently on the receiving.
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`[3] The method of claim 2, wherein the received data is
`indicative of a temporal cycle passing.
`
`C. Claim Construction
`
`47.
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`I have been told that claim terms in inter partes review proceedings
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`are to be given their ordinary and accustomed meaning as understood by a person
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`of ordinary skill in the art. In my analysis of the Challenged Claims, I have
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`therefore applied the plain and ordinary meaning as understood by a person of
`
`ordinary skill in the art. I understand that Petitioner and Patent Owner have
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`offered various constructions in related litigation. Ex. 1008; Ex. 1009. For
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`purposes of this proceeding, it is my opinion that the Board does not need to
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`expressly construe the claims because it is my opinion that the Challenged Claims
`
`are unpatentable under both parties’ constructions.
`
`VII. Overview of Prior Art References
`A. Hayward
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`48.
`
`I note that Hayward was published on March 4, 2004, which was
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`more than one year before August 21, 2008. I am told that makes Hayward prior
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`art to the ’609 patent under § 102(b).
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`49. Hayward teaches “a method of displaying video data using an
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`embedded media player page.” Hayward, Abstract. As shown in annotated
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`Figure 1A above, Hayward’s method is carried out by a system including a
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`client 110, a customer system 118 and media file index and log system 122, and a
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`media file source 116, all of which are connected by the Internet 114. While
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`customer system 118 and media file index and log system 122 are shown
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`separately, Hayward explains that these systems may be “combined physically
`
`within one . . system[]” in some embodiments. Id. ¶0030.
`
`50.
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`In Hayward, “[a] user of client 110 accesses customer system 118
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`through Internet 114,” and “customer system 118 transmits a web page to
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`client 110 through Internet 114.” Id. ¶0025. The transmitted web page includes “a
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`media file search prompt” where the user may enter a search request, such as
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`“Pearl Harbor” and “movie trailer.” Id. ¶¶0026, 0028. “The search request is
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`received by customer system 118 and is transmitted to media file index and log
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`system 122 . . . .” Id. ¶0028.
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`51. The media file index and log system 122 “includes a database having
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`indexed therein a plurality of media files,” each of which is identified by “a unique
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`identifier for the media file.” Id. ¶0027. When the search request is transmitted by
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`the customer system 118, the media file index and log system 122 searches “for
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`indexed media files that satisfy the search request” and “transmits the results to
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`customer system 118.” Id. ¶0028. The search results include “the playing length
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`of each video file, the URI address of each video file, encoding bit rate of the video
`
`file, file format, a database identifier unique to each video file, frame dimensional
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`data for each video file, or any other information contained within the database.”
`
`Id.
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`52. The customer system 118 transmits the search results to client 110 “as
`
`a Web page that preferably includes a list of links to media files located at media
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`file sources 116.” Id. The client 110 displays the web page with the search results
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`to the user. Id.
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`53. The user may “view the video data contained within a video file listed
`
`in the search results displayed to the user by clicking a link to one of the video
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`files.” Id. ¶0029. When the user clicks a link for a selected media file, “the
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`customer system 122 instructs the client to request [an] embedded media player
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`page from the customer system 122.” Id.
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`54. Figure 2, annotated below, shows an embedded media player
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`page 200.
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`55. The embedded media player pag