Contemporary Display LLC

Patent Trials and Appeals Board

Dec 18, 2020

IPR2019-01168 (P.T.A.B. Dec. 18, 2020)

Trials@uspto.gov Paper 26
571.272.7822 Date: December 18, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

DISH NETWORKS L.L.C.,
Petitioner,

v.

CONTEMPORARY DISPLAY LLC,
Patent Owner.

____________

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Patent 6,492,997 B1
____________

Before MICHAEL R. ZECHER, SHEILA F. McSHANE, and
MICHAEL T. CYGAN, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
Petitioner, DISH Network L.L.C. (“Dish”), filed a Petition requesting
an inter partes review of claims 1–43 of U.S. Patent No. 6,492,997 B1
(Ex. 1001, “the ’997 patent”). Paper 2 (“Pet.”). Patent Owner,
Contemporary Display LLC (“Contemporary”), filed a Preliminary
Response. Paper 6 (“Prelim. Resp.”). Taking into account the arguments
presented in Contemporary’s Preliminary Response, we determined that the
information presented in the Petition established that there was a reasonable
likelihood that Dish would prevail with respect to at least one challenged
claim. Pursuant to 35 U.S.C. § 314, we instituted this inter partes review on
January 7, 2020, as to all of the challenged claims and all grounds raised in
the Petition. Paper 9 (“Institution Decision”).
During the course of trial, Contemporary filed a Patent Owner
Response (Paper 11, “PO Resp.”), Dish filed a Reply to the Patent Owner
Response (Paper 14, “Pet. Reply”), and Contemporary filed a Sur-Reply to
the Reply (Paper 17, “PO Sur-Reply”). An oral hearing was held on
October 6, 2020, and a transcript of the hearing is included in the record.
Paper 25 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
Written Decision under 35 U.S.C. § 318(a) as to the patentability of
claims 1–43 of the ’997 patent. For the reasons we identify below, we hold
that Dish has demonstrated by a preponderance of the evidence that all
challenged claims are unpatentable under § 103(a).
A. Related Matters
The parties indicate that the ’997 patent is the subject of the following
two district court cases: (1) Contemporary Display LLC v. DISH Network
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L.L.C., No. 1-18-cv-00476 (W.D. Tex. filed June 4, 2018); and (2)
Contemporary Display LLC v. LG Electronics USA, Inc., No. 2-18-cv-00152
(E.D. Tex. terminated Dec. 13, 2018). Pet. 1; Paper 3, 2.1
B. The ’997 Patent
The ’997 patent, titled “Method and System for Providing Selectable
Programming in a Multi-Screen Mode,” issued from U.S. Patent Application
No. 09/103,315, filed on June 24, 1998. Ex. 1001, codes (54), (45), (21),
(22). The ’997 patent is a continuation-in-part of U.S. Patent Application
No. 09/018,541, filed on February 4, 1998. Id. at code (63).
The ’997 patent generally relates to “delivering television
programming” that is categorized in domains and “delivering navigational
tools” that provide information about, and access to, multiple television
channels or programs. Ex. 1001, 1:28–32. According to the ’997 patent, the
early days of television offered viewers very few channels and a limited
number of programs. Id. at 1:35–36. However, “[t]he advent of cable and
satellite television broadcast systems increased the number of channels being
delivered.” Id. at 1:44–45. On the one hand, this increase in channel
capacity provided an “opportunity and need to offer a greater number and
variety of programming of different types.” Id. at 1:55–57. On the other
hand, this increase in channel capacity created “more difficult[y] for viewers
to identify programming choices at any time by channel surfing.” Id. at
2:4–7. The ’997 patent further discloses that new technological

1 Contemporary’s Mandatory Notices filed in accordance with 37 C.F.R.
§ 42.8 do not include page numbers. Paper 3. We consider the Title page as
page 1 and then proceed from there in numerical order.
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advancements, such as digital video, high definition television, video on
demand, and Internet or online services, provided even more accessible
television channels or programs. Id. at 2:16–23.
The ’997 patent purportedly addresses problems associated with
channel surfing by providing “a viewing audience with content organized
and presented to facilitate navigation through the content in an efficient and
intuitive manner.” Ex. 1001, 2:35–38. Figure 15 of the ’997 patent,
reproduced below, illustrates an exemplary screen in a multi-screen browser
that aims to achieve this goal. Id. at 4:18–19, 20:60.

Figure 15, reproduced above, illustrates television receiver screen 380 “with
six reduced sized video displays 382 each displaying a different reduced size
video signal.” Id. at 20:61–63. “Each reduced size video display [382]
includes a designated area for displaying indicia 384 of the reduced sized
display provided, such as a channel logo for the channel on which the
program featured in the window is available.” Id. at 20:63–67.
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Figure 17 of the ’997 patent, reproduced below, illustrates one
embodiment of a video source and grid overlay for a multi-screen browser
tool. Ex. 1001, 4:24–26, 21:23–24, 21:27–30.

Figure 17, reproduced above, illustrates video source 500 for a multi-screen
browser tool. Id. at 21:23–24. The set top box for video source 500 (not
shown in Figure 17) generates grid graphic 502. Id. at 21:24–26. The set
top box then overlays grid graphic 502 and video source 500 to create multi-
screen browser tool windows 504. Id. at 21:26–27. The ’997 patent further
discloses that a prospective user navigates multi-screen browser tool
windows 504 by pressing direction keys 75–80 on remote control unit 68
(also not shown in Figure 17). Id. at 21:64–66.
C. Challenged Claims
Of the challenged claims, claims 1, 17, 29, 30, and 37 are independent
claims. Each of independent claims 1, 17, and 29 is directed to “[a] system
for presenting an interactive multi-window video display.” Ex. 1001,
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35:45–46, 36:51–52, 37:48–49. Each of independent claims 30 and 37 is
directed to “[a] method for presenting an interactive multi-window video
display.” Id. at 38:3–4, 38:43–44. Claims 2–16 directly or indirectly
depend from independent claim 1; claims 18–28 directly or indirectly
depend from independent claim 17; claims 31–36 directly or indirectly
depend from independent claim 30; and claims 38–43 directly or indirectly
depend from independent claim 37. Independent claims 1 and 17 are
illustrative of the challenged claims and they are reproduced below:
1. A system for presenting an interactive multi-
window video display, the system comprising:
a receiver for receiving a multi-window real time video
signal representing a multi-window corresponding to channels
selected by a user in accordance with a category, comprising one
or more reduced size video displays, and receiving a cell quantity
data value corresponding to the number of reduced size video
displays in the multi[-]window video signal;
a generator, coupled to the receiver, for generating an
overlay grid having a number of cells based on the cell quantity
data value;
presentation means for presenting the multi-window video
display within the cells of the overlay grid on a display device;
and
selection means for allowing selection of one of the one or
more reduced size video displays.
Id. at 35:44–61.
17. A system for presenting an interactive multi-window
video display, the system comprising:
a receiver for receiving a plurality of multi-window real
time video signals representing a plurality of multi-window
video displays each comprising a plurality of reduced size video
displays, wherein each multi-window video display is associated
with a programming category and the reduced size video displays
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contained in different multi-window video displays are in
different categories respectively;
a generator coupled to the receiver for generating an
overlay grid having a number of cells based on the number of
reduced size video displays of the selected multi-window video
signal;
presenting means for presenting the multi-window display
together with the overlay grid so that the reduced size video
displays are visible within the cells means for allowing selection
of one of the plurality of multi-window video signals, and
wherein the presenting means presents the multi-window video
display of the selected multi-window video signal on the display
device.
Id. at 36:51–37:5.
D. Asserted Prior Art References
Dish relies on the prior art references set forth in the table below:
Inventor2 U.S. Patent No. Relevant Dates Exhibit No.
Niijima

5,926,230 issued July 20, 1999;
filed Jan. 25, 1996
1005
Devaney 6,357,045 B1 issued Mar. 12, 2002;
filed Mar. 31, 1997
1006
Matthews 5,815,145 issued Sept. 29, 1998;
filed Aug. 21, 1995
1007
Schein 6,002,394 issued Dec. 14, 1999;
filed Apr. 11, 1997
1008

E. Asserted Grounds of Unpatentability
Dish challenges claims 1–43 of the ’997 patent based on the asserted
grounds of unpatentability set forth in the table below. Pet. 3, 10–84.

2 For clarity and ease of reference, we only list the first named inventor.
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Claims Challenged 35 U.S.C. § Reference(s)
1–9, 12, 16, 30–36 103(a)3 Niijima
10, 11, 13–15, 17–29, 37–43 103(a) Niijima, Devaney
30, 32–36 103(a) Matthews, Schein

II. ANALYSIS
A. Claim Construction
In an inter partes review proceeding based on a petition filed on or
after November 13, 2018, such as here, claim terms are construed using the
same claim construction standard as in a civil action under 35 U.S.C.
§ 282(b). See 37 C.F.R. § 42.100(b) (2019). That is, claim terms generally
are construed in accordance with their ordinary and customary meaning, as
understood by one of ordinary skill in the art, and the prosecution history
pertaining to the patent at issue. Id.
The U.S. Court of Appeals for the Federal Circuit has explained that
the use of the term “means” is central to the analysis of whether a claim
limitation should be interpreted in accordance with 35 U.S.C. § 112 ¶ 6.
Flo Healthcare Sols., LLC v. Kappos, 697 F.3d 1367, 1373 (Fed. Cir. 2012);
Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696,
703–04 (Fed. Cir. 1998). Use of the word “means” creates a rebuttable
presumption that the patentees intended to invoke § 112 ¶ 6, whereas failure

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the ’997 patent issued from an application that was filed
before this date, the pre-AIA version of § 103 applies. Ex. 1001, codes (21)
and (22).
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to use the word “means” creates a rebuttable presumption that the patentees
did not intend to invoke § 112 ¶ 6. Id. The presumption is not rebutted if
the word “means” is modified by functional language and is not modified by
recital of sufficient structure in the claim to perform the claimed function.
Sage Prods. v. Devon Indus., Inc., 126 F.3d 1420, 1427–28 (Fed. Cir. 1997).
In its Petition, Dish contends that the claim term “overlay grid” should
be construed as a “graphical pattern of horizontal and vertical lines, forming
cells, displayed over the multi-window display.” Pet. 6. To support its
proposed construction, Dish directs us to Figure 17 of the ’997 patent and its
corresponding description, the supporting testimony of its declarant,
Anthony Wechselberger, and the prosecution history of the ’997 patent. Id.
at 6–7 (citing Ex. 1001, 21:25–30, Fig. 17; Ex. 1003 ¶¶ 53–56; Ex. 1002,
70).
Dish also contends that certain limitations recited in each independent
claim use the word “means” and, as a result, there is a rebuttable
presumption they are means-plus-function limitations that should be
governed by § 112 ¶ 6. See Pet. 7. Dish then identifies the claimed function
and corresponding structure for each means-plus-function limitation. Id. at
8–10. For convenience, the claimed function and corresponding structure
for each means-plus-function limitation identified by Dish are set forth in the
table below.
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Means-Plus-Function
Limitation
Claimed Function Corresponding
Structure
“presentation means”
(claim 1)/“presenting
means” (claims 17 and
29
“presenting the
multi-window video
display within the
cells of the overlay
grid on a display
device” (claim
1)/“presenting the
multi-window
display together with
the overlay grid so
that the reduced size
video displays are
visible within the
cells” (claims 17 and
29)
graphics component and
programmed processor
(Ex. 1001, 21:45–47
(“[T]he set top box sends
the overlaid graphic and
video source . . . to the
television receiver for
display.”), 27:19–34
(describing use of
graphics chip to present
graphic images))
“selection means”
(claims 1 and 29)
“allowing selection
of one of the one or
more reduced size
video displays”
remote control/associated
set top box input
(Ex. 1001, 8:46–48 (“An
infrared remote unit 68 . . .
sends signals input by a
viewer to an infrared input
of the set top box.”),
19:33–39 (describing that
a viewer presses the
“gimme button” on remote
to display the associated
full size video))
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Means-Plus-Function
Limitation
Claimed Function Corresponding
Structure
“means for receiving
one or more audio
signals” (claim
4)/“means for
receiving a plurality of
audio signals” (claim
19)
“receiving one or
more audio signals”
(claim 4)/“receiving
a plurality of audio
signals” (claim 19)
tuner and programmed
processor (Ex. 1001,
21:53–54 (“[F]or each
program the head end
transmits the audio data
separately from but linked
to the video data.”),
21:16–19, 27:6–8 (“A
processor in the set top
box controls the tuner to
tune to a desired
frequency band.”))
“means for
automatically
presenting an audio
signal” (claims 5 and
20)
“automatically
presenting an audio
signal corresponding
to a selected reduced
size video display”
programmed processor
(Ex. 1001, 21:50–52
(“[T]he system plays the
audio stream associated
with the video stream in
the currently selected
cell.”))
“means for receiving a
video signal” (claims
6 and 21)
“receiving a video
signal representing a
full size video
display
corresponding to at
least one of the
reduced size video
displays”
tuner and programmed
processor (Ex. 1001,
21:16–19 (“The set top
box receives a Video
Source from the head-end
containing the Videos to
be reduced.”), 27:6–8(“A
processor . . . controls the
tuner to tune to a desired
frequency band.”))
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Means-Plus-Function
Limitation
Claimed Function Corresponding
Structure
“means for
automatically
presenting a full size
video display” (claim
7)/“means for
displaying the full size
video display” (claim
22)
“automatically
presenting a full size
video display
corresponding to a
selected reduced size
video display”
(claim 7)/“displaying
the full size video
display
corresponding to a
selected reduced size
video display”
(claim 22)
programmed processor
(Ex. 1001, 19:33–39
(“If the viewer presses the
gimme key 92 on a given
program choice, step 324,
the system determines
whether the selected
program choice is
currently available for
viewing, step 325” and, if
so, “the program is
displayed.”), 8:28–33)
“means for indicating”
(claims 8 and
23)/“means for
visually indicating”
(claims 9 and 24)
“indicating [in the
overlay grid] which
of the one or more
reduced size video
displays is selected”
(claims 8 and
23)/“visually
indicating the
selected reduced size
video display on the
display device”
(claims 9 and 24)
graphics component and
programmed processor
(Ex. 1001, 21:12–14 (“A
graphic highlight is
displayed around the
viewer’s selected reduced
sized image 382.”),
21:45–47 (“[T]he set top
box sends the overlaid
graphic and video source
. . . to the television
receiver for display.”),
27:19–34 (describing use
of graphics chip to present
graphic images))
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Means-Plus-Function
Limitation
Claimed Function Corresponding
Structure
“means for allowing a
user to select” (claim
13)/“means for
allowing selection”
(claim 17)
“allowing a user to
select one of the
plurality of multi-
window video
signals” (claim
13)/“allowing
selection of one of
the plurality of
multi-window
signals” (claim 17)
remote control (Ex. 1001,
21:7–9 (“The viewer
selects the desired channel
by making a category
selection in the pick menu
or by using the channel
selection button 74.”))
In its Patent Owner Response, Contemporary essentially repeats
verbatim the arguments it initially presented in the Preliminary Response.
Compare PO Resp. 2–3, with Prelim. Resp. 2–3. That is, Contemporary
disagrees with Dish’s proposed construction of the claim term “overlay
grid,” and asserts that this term should be construed according to its plain
and ordinary meaning in light of the ’997 patent, as a whole. PO Resp. 2.
Turning to the means-plus-function limitations, Contemporary contends that,
“[t]o the extent that [Dish’s] constructions are non-all-inclusive of the
supporting structures in the specification,” Contemporary asserts that each
means-plus-function limitation should be construed according to its plain
and ordinary meaning in light of the ’997 patent, as a whole, and should
include all supporting structures in the specification and their equivalents.
Id. at 2–3.
Although Contemporary appears to dispute Dish’s proposed
constructions of the claim term “overlay grid” and the means-plus-function
limitations identified above, Contemporary does not explain what it believes
to be their plain and ordinary meaning in the context of the ’997 patent. In
any event, we need not construe the claim term “overlay grid” and the
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means-plus-function limitations identified above because, when evaluating
the merits of Dish’s Petition in light of the arguments and evidence
presented by Contemporary during trial, the scope and meaning of the claim
term “overlay grid” and the means-plus-function limitations are not in
controversy. Accordingly, it is not necessary to reach these particular issues
for purposes of deciding whether Dish has met its burden of demonstrating
by a preponderance of the evidence that the challenged claims are
unpatentable. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe
terms ‘that are in controversy, and only to the extent necessary to resolve the
controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999))).
In our obviousness evaluation below, we address the scope and
meaning of the claim term “cell quantity data value,” as this term pertains to
the teachings of Niijima contested by the parties. More specifically, we
address below whether Niijima’s electronic program guide (“EPG”) data that
includes, among other things, positions on a multi-screen and numbers of
picture elements of reduced screens, teaches or suggests the claim term “cell
quantity data value” as that term is used in the context of the ’997 patent.
B. Obviousness Over the Teachings of Niijima
Dish contends that claims 1–9, 12, 16, and 30–36 of the ’997 patent
are unpatentable under § 103(a) as obvious over the teachings of Niijima.
Pet. 10–50. Dish explains how Niijima teaches or suggests the subject
matter of each challenged claim, and provides reasoning as to why one of
ordinary skill in the art would have been prompted to modify the teachings
of this reference. Pet. 12–50; Pet. Reply 1–18. Dish relies on the
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Declaration of Mr. Wechselberger accompanying the Petition and the
Rebuttal Declaration of Mr. Wechselberger accompanying the Reply to
support its positions. Ex. 1003 ¶¶ 90–244; Ex. 1028 ¶¶ 9–40.
During trial, Contemporary presents a number of arguments, most of
which focus on whether Niijima teaches or suggests “receiving a cell
quantity data value corresponding to the number of reduced size video
displays in the multi[-]window video signal,” as recited in each of
independent claims 1 and 30. See PO Resp. 4–17; PO Sur-reply 1–16.
Contemporary relies upon the Declaration of Dr. Michael C. Brogioli, Ph.D.,
to support its positions. Ex. 2001 ¶¶ 40–78.
We begin our analysis with the principles of law that generally apply
to an obviousness ground, an assessment of the level of skill in the art,
followed by a brief overview of Niijima, and then we address the parties’
contentions with respect to the challenged claims.
1. Principles of Law
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, 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.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) when in evidence, objective indicia of non-obviousness
(i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1,
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17–18 (1966). We analyze the asserted grounds based on obviousness with
the principles identified above in mind.
2. Level of Skill in the Art
In determining the level of skill in the art, various factors may be
considered, including the “type of problems encountered in the art; prior art
solutions to those problems; rapidity with which innovations are made;
sophistication of the technology; and educational level of active workers in
the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation
omitted). Relying on the testimony of Mr. Wechselberger, Dish contends
that a person of ordinary skill in the art at the time of the ’997 patent would
have been an individual who possessed “at least a Bachelor of Science
degree in Electrical Engineering, Computer Engineering, Computer Science,
or equivalent as well as at least two years of relevant academic or industry
experience in digital television broadcasting systems and electronic program
guides.” Pet. 5 (citing Ex. 1003 ¶ 77). Contemporary does not dispute
Dish’s assessment of the level of skill in the art because “it is not
dispositive.” PO Resp. 2. Based on the fully developed trial record, we
adopt Mr. Wechselberger’s assessment and apply it to our obviousness
evaluation below because it is consistent with the ’997 patent and the
asserted prior art.
3. Overview of Niijima
Niijima recognizes that, with the advent of cable television systems
and digital direct broadcasting systems, there has been a dramatic increase in
the number of available broadcasting channels that has made it more
difficult for a viewer to find a desired program. Ex. 1005, 1:12–21. As a
result, Niijima states that one of its objectives is “to provide an electrical
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program guide system and method by which a desired program can be
selected rapidly with certainty, intuitively and directly from among a large
number of programs.” Id. at 1:60–64.
Niijima purportedly achieves this objective through the use of a
broadcasting system illustrated in Figure 3, reproduced below. Ex. 1001,
4:22–23.

Figure 3, reproduced above, illustrates a broadcasting station having an
archiving section 52 that combines a plurality of programs received from
digitization section 51 and other broadcasting stations, and that reduces
those programs to a plurality of channels that form an image of a multi-
screen with nine reduced screens (i.e., archived data).4 Id. at 7:40–63. After
some additional processing, video server 53 transmits this archived data to

4 Niijima discloses that “the terminology ‘archive’ is a computer
terminology signifying to combine data of a plurality of files into one file.”
Ex. 1005, 8:31–33.
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the viewer side in one of the following three ways: (1) through transmission
section 54 via artificial satellite 61; (2) through a wire transmission line,
such as cable; or (3) through some other suitable signal distribution method.
Id. at 8:40–9:6. Depending on how the archived data is transmitted from the
broadcasting station, receiver 2 performs the necessary processing of data
and then supplies a video signal to monitor 4. Id. at 9:18–22, 9:36–42.
Figure 5 of Niijima, reproduced below, illustrates one example of
arranging and displaying the multi-screen with nine reduced screens on
monitor 4. Ex. 1005, 4:26–27; 10:1–5.

Figure 5, reproduced above, illustrates a 3x3 matrix that includes three
categories of reduced screens (i.e., News, Movie, and Music), each of which
includes a single, horizontal row of three programs that fall within the
purview of that category. Id. at 10:5–13.
4. Claims 1 and 30
Beginning with independent claim 1, the preamble recites “[a] system
for presenting an interactive multi-window video display.” Ex. 1001,
35:45–46. To the extent the preamble is treated as limiting, Dish contends
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that Niijima teaches or suggests the features recited in the preamble because
it discloses a single screen on which nine reduced size screens are displayed
and arranged in a 3x3 matrix. Pet. 12–13 (citing Ex. 1005, 6:34–37, 19:42–
44, Fig. 20; Ex. 1003 ¶¶ 90, 93). Dish further argues that Niijima’s multi-
window display is interactive because one of the nine reduced size screens
may be selected manually using remote commander 5. Id. at 13 (citing
Ex. 1005, 13:30–32, 21:13–34; Ex. 1003 ¶¶ 91, 92).
Independent claim 1 recites “a receiver for receiving a multi-window
real time video signal representing a multi-window corresponding to
channels selected by a user in accordance with a category,” wherein the
multi-window real time video signal further includes “one or more reduced
size video displays.” Ex. 1001, 35:47–51. Dish contends that Niijima’s
receiver 2, which includes reception section 2a controlled by processing
section 2b, teaches the “receiver.” Pet. 14–15 (citing Ex. 1005, 9:14–18,
12:47–58, Figs. 3, 8; Ex. 1003 ¶¶ 94, 95). Dish argues that the data signal
transmitted from Niijima’s broadcasting station to receiver 2, which includes
multi-screens and currently available programming, teaches the “multi-
window real time video signal.” Id. at 17–18 (citing Ex. 1005, 9:14–18,
12:50–54, 13:57–61; Ex. 1003 ¶ 102). Dish further argues that the
customization of the content of the multi-window display performed by
Niijima’s broadcasting station and receiver 2, along with the selection of
channels that comprise the 3x3 preview screen, teach the “multi-window real
time video signal” that corresponds to “channels selected by a user in
accordance with a category.” Id. at 20–26 (citing Ex. 1005, 9:59–67,
19:49–57, 20:8–17, 20:38–40, 27:4–11; Ex. 1003 ¶¶ 108, 110, 114, 116,
117, 120, 121). Lastly, Dish argues that Niijima’s data signal transmitted
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from the broadcasting station to receiver 2 includes six multi-screens, each
with nine reduced size screens arranged in a 3x3 matrix to construct one
multi-screen as a screen for program selection and, therefore, teaches “a
multi-window real time video signal” that includes “one or more reduced
size video displays.” Id. at 26–27 (citing Ex. 1005, code (57), 7:14–30,
10:52–54, 10:62–66; Ex. 1003 ¶¶ 122–124).
Independent claim 1 further recites that the “receiver” also “receiv[es]
a cell quantity data value corresponding to the number of reduced size video
displays in the multi[-]window video signal.” Ex. 1001, 35:51–53. Dish
contends that Niijima teaches or suggests this limitation because it discloses
that the broadcasting station also transmits EPG data associated with each
multi-screen, which includes, among other things, “positions on a multi-
screen” and “numbers (for example, 240x160 pieces) of picture elements of
reduced [size] screens,” to receiver 2. Pet. 27–28 (quoting Ex. 1005, 11:18–
23) (citing Ex. 1005, 11:11–38); see also id. at 30 (arguing that Niijima’s
receiver 2 receives the EPG data and stores it in memory) (citing Ex. 1005,
15:54–56; Ex. 1003 ¶ 129). Dish argues that the resulting multi-screen
display “is formed from 720x480 picture elements” and it includes a 3x3
matrix of nine reduced size picture images, each with 240x160 pixels. Id. at
28 (quoting Ex. 1005, 10:63–67) (citing Ex. 1003 ¶¶ 125, 207). According
to Dish, because the “size of the received multi-screen frame is known, a
[person of ordinary skill in the art] would [have understood] that the
‘position on a multi-screen’ and numbers of picture elements of reduced size
included in the EPG for the multi-screen ‘correspond[] to the number of
reduced size video displays in the multi[-]window video signal.’” Id.
(emphasis omitted). Relying on the testimony of its declarant, Mr.
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Wechselberger, Dish asserts that Niijima’s positions on the multi-screen that
are provided with the EPG data constitute the “cell quantity data value”
because they are indicative of the number of reduced size screens displayed.
Id. at 28–29 (citing Ex. 1003 ¶¶ 126, 127).
Alternatively, Dish contends that, to the extent that the use of the EPG
data to define the selection area and preview screen format is not explicit or
inherent in Niijima, “a [person of ordinary skill in the art] would have been
motivated to use ‘the position in the multi-screen’ values to define the
number of reduced screens in the selection area and resulting preview screen
because it is based on the size of the reduced screen.” Pet. 29–30 (citing
Ex. 1003 ¶ 128). As one example, Dish argues that, “for a monitor with
720x480 resolution, nine pieces of content at 240x160 arranged in a 3x3
matrix is displayed.” Id. at 30.
Independent claim 1 next recites “a generator, coupled to the receiver,
for generating an overlay grid having a number of cells based on the cell
quantity data value.” Ex. 1001, 35:54–56. Dish contends that Niijima
teaches the “generator” because it discloses that receiver 2 includes
processing apparatus 2b that uses a central processing unit (“CPU”) and
associated components to generate an On-Screen Display (“OSD”), such as
the 3x3 preview screen illustrated in Figure 20. Pet. 35 (citing Ex. 1003
¶ 138). Dish argues that the components that make up Niijima’s processing
apparatus 2b are coupled to reception section 2a (i.e., the “receiver”). Id.
Dish further argues that Niijima’s Figure 20 serves as one example of
“generating an overlay grid having a number of cells based on the cell
quantity data value,” because Niijima discloses using the EPG data, which
includes, among other things, “the position in the multi-screen” and
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“numbers (for example, 240x160 pieces) of picture elements of reduced
screens,” to generate a multi-screen display having a 3x3 matrix of nine
reduced size screens. Id. at 31–32 (citing Ex. 1005, code (57), 6:56–58,
32:35–39, Fig. 20; Ex. 1003 ¶ 132).
Independent claim 1 further recites a “presentation means for
presenting the multi-window video display within the cells of the overlay
grid on a display device.” Ex. 1001, 35:57–59. Dish contends that this
limitation is a means-plus-function limitation where the claimed function is
“presenting the multi-window video display within the cells of the overlay
grid on a display device” and the corresponding structure is a graphics
component and programmed processor, which Dish asserts is taught by
Niijima’s receiver 2. Pet. 36. More specifically, Dish argues that Niijima’s
receiver 2 includes processing apparatus 2b, which uses a CPU and a
component that produces OSD graphics to produce a multi-screen display
having a 3x3 matrix of nine reduced size screens, such as the one illustrated
in Figure 20. Id. at 36–37 (citing Ex. 1005, 13:10–17, 15:36–37, 16:12–17,
18:19–21, Fig. 20; Ex. 1003 ¶¶ 129–141)
Lastly, independent claim 1 recites a “selection means for allowing
selection of one of the one or more reduced size video displays.” Ex. 1001,
35:60–61. Dish contends that this limitation is a means-plus-function
limitation where the claimed function is “allowing selection of one of the
one or more reduced size video displays” and the corresponding structure is
a remote control and associated set top box input, which Dish asserts is
taught by remote commander 5 and infrared (“IR”) reception section 39 of
receiver 2. Pet. 38 (citing Ex. 1005, 13:9–20, 13:49–50, 16:25–17:34, Figs.
11A, 12; Ex. 1005 ¶ 142). Dish argues that Niijima’s remote commander 5
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and IR reception section 39 of receiver 2 together perform the function of
“allowing selection of one of the one or more reduced size video displays”
because a viewer manually operates selection button 131 on remote
commander 5 to move cursor 201 to a desired reduced screen. Id. at 38–39
(citing Ex. 1005, 22:35–38). After selecting a desired reduced screen, Dish
argues that CPU 29 of receiver 2 “sends an instruction to the front end
circuit 20 to receive the program of a channel linked to the selected reduced
screen.” Id. at 39 (quoting Ex. 1005, 22:38–44) (citing Ex. 1005, 13:31–33).
Apart from being a method claim, independent claim 30 includes
essentially the same limitations as independent claim 1. Compare Ex. 1001,
35:44–61, with id. at 38:3–20. Dish presents essentially the same arguments
and evidence identified above with respect to independent claim 1 to support
its explanation as to how the teachings of Niijima render the subject matter
of independent claim 30 obvious. See Pet. 12–39; Ex. 1003 ¶¶ 173–225.
During trial, Contemporary presents arguments that fall within one of
the following three groupings: (1) Dish does not point to any number in
Niijima that corresponds to the number of displays in a multi-window video
signal (i.e., the “cell quantity data value” limitation); (2) Dish’s
characterization of Niijima is incomplete and inaccurate; and (3) even if we
were to accept Dish’s characterization of Niijima, the modification to
Niijima proposed by Dish’s declarant, Mr. Wechselberger, is unfeasible
technically. See PO Resp. 4–17; PO Sur-reply 1–16. We address these
argument groupings in turn.
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a. “receiving a cell quantity data value corresponding to the number of
reduced size video displays in the multi[-]window video signal”
In its Patent Owner Response, Contemporary contends that a person
of ordinary skill in the art would have understood that the plain and ordinary
meaning of the claim term a “cell quantity data value corresponding to the
number of reduced size video displays in the multi[-]window video signal”
requires that “the ‘cell quantity data value’ must be related to the total
number of reduced size video displays in the video signal”—not just the
number of reduced size video displays shown on a screen. PO Resp. 7
(citing Ex. 2001 ¶ 44). Contemporary argues that claim differentiation
makes this clear by directing us to claim 11, which indirectly depends from
independent claim 1, and further recites “wherein the cell quantity data value
is equal to the number of reduced size video displays contained in the multi-
window video display.” Id. (quoting Ex. 1001, 36:20–27).
Contemporary further contends that Niijima’s EPG data fails to
disclose a number that corresponds to the number of displays contained in a
multi-window video signal because this EPG data only indicates the
positions on a multi-screen display and the size of picture elements.
PO Resp. 7–8. Contemporary asserts that, even if Niijima’s system could
use this EPG data “to calculate [the] number of screens to be displayed by
looking to the largest position value,” “this number does not correspond to
the number of displays in the signal.” Id. at 8 (emphasis omitted).
Contemporary also argues that Dish’s reliance on Niijima’s transmitted
signal that includes six multi-screens to teach the claimed “multi-window
video signal” is “flawed” because this transmitted signal “includes more
images than can be displayed at any one time.” Id. at 8–9.
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In its Reply, Dish counters that Contemporary’s argument that
Niijima’s EPG data fails to teach or suggest the claimed “cell quantity data
value corresponding to the number of reduced size video displays in the
multi[-]window video signal” is predicated on an erroneous claim
interpretation. Pet. Reply 3. Dish contends that the “generating” and
“presenting” steps recited in each of independent claims 1 and 30 “tie the
‘cell quantity data value’ to the overlay grid presented on the display and the
number of reduced size video displays in the multi-window [signal].” Id. at
3–4 (emphasis omitted). Dish argues that, contrary to Contemporary’s
argument, dependent claim 11 reinforces this interpretation because claim
differentiation dictates that independent claim 1 must encompass the
embodiment covered by dependent claim 11. Id. at 4. Dish also argues that
Contemporary’s argument would exclude the only embodiment of a “cell
quantity data value” in the specification of the ’997 patent. Id. at 5 (citing
Ex. 1001, 21:19–23). Dish asserts that, when considering the plain language
of independent claims 1 and 30, along with the only embodiment in the
specification, “the cell quantity data value must relate to the number of cells
in the multi[-]window video display and in the signal.” Id. (emphasis
omitted) (citing Ex. 1028 ¶ 16).
Dish maintains that, based on its claim interpretation discussed above,
Niijima’s EPG data that include, among other things, positions on a multi-
screen and the size of picture elements, teaches or suggests a “cell quantity
data value” that “correspond[s] to the number of reduced sized video
displays in the multi-window video signal,” as recited in each of
independent claims 1 and 30. Pet. Reply 6–7 (emphasis omitted) (citing
Ex. 1005, 11:18–24; Ex. 1003 ¶ 127). Dish reiterates that interpreting the
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“cell quantity data value” in this way is consistent with the only embodiment
of the “cell quantity data value” disclosed in the specification of the ’997
patent. Id. at 7–8 (citing Ex. 1001, 21:19–23; Ex. 1028 ¶ 14). Dish further
argues that, in its Petition, it demonstrated how Niijima’s EPG data
“correspond[s] to” or “relate[s] to” the number of reduced size videos in the
signal because Niijima’s transmitted signal may contain a number of multi-
screens and the number of reduced size video displays in the transmitted
signal is directly proportional to the number of reduced size displays in a
multi-screen. Id. at 8 (citing Pet. 31; Ex. 1003 ¶¶ 130, 211; Ex. 1028 ¶ 19).
Dish also argues that, in its Petition, it also demonstrated how Niijima
discloses transmitting each individual multi-screen in the transmitted signal,
which, according to Dish, Contemporary does not dispute. Id. at 8–9
(Pet. 49; Ex. 1003 ¶¶ 167, 168; Ex. 1028 ¶ 20).
Lastly, Dish disagrees with the arguments presented by Contemporary
for the following three reasons: (1) “[Contemporary] is consistently unable
to articulate why the number of reduced size [video] displays in the multi[-
]window display is not ‘related to’ . . . the number of reduced size [video]
displays in the signal”; (2) the Petition made clear that Niijima’s “EPG data
is the cell quantity data value and it corresponds to the number of [reduced
size video] displays in the signal,” which is exactly what is required by
independent claims 1 and 30; and (3) to the extent Contemporary takes the
position that “the only ‘cell quantity data value’ is an integer received with
the reduced program whose sole purpose is to inform the receiver of the
number of reduced [size video] screens in the signal,” Contemporary’s
declarant, Dr. Brogioli, undermines this position because he testified during
his deposition that the claimed “cell quantity data value” is not limited to an
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integer. Pet. Reply 9–10 (citing Pet. 28–30; Ex. 1027, 81:6–11; Ex. 1028
¶ 25).
In its Sur-reply, Contemporary contends that Dish’s insistence that
Niijima’s EPG data is the “cell quantity data value” “is baffling” because it
is not clear what portion of this EPG data purportedly corresponds to the cell
quantity data value. Sur-reply 2. Contemporary argues that, although the
Board in its Institution Decision understood Dish’s declarant, Mr.
Wechselberger, to testify that “the number of the highest position cell in
Niijima’s multi-screen” amounts to the “cell quantity data value,” Mr.
Wechselberger actually requires performing operations or calculations on a
variety of additional variables to determine the “cell quantity data value.”
Id. at 2–3. According to Contemporary, Mr. Wechselberger’s testimony
with respect to determining the “cell quantity data value” contradicts Dish’s
argument that Niijima teaches “receiving . . . cell quantity data value,” as
recited in each of independent claims 1 and 30. Id. at 3.
Contemporary further argues that it never made the argument that an
integer value with direct equivalence to the number of reduced sized video
programs in the multi-window display amounts to the “cell quantity data
value,” but rather argues that the plain language of independent claim 1
requires an equivalence between the cell quantity data value and the number
of reduced sized video displays in the multi-window video signal—not in
the multi-window video display. PO Sur-reply 3; see also id. at 5 (arguing
that independent claim 1 requires “an equivalence between the cell quantity
data value and the number of reduced size videos in the signal, not the
display”). To highlight this purported distinction, Contemporary argues that,
although Niijima discloses that the number of reduced size video screens in
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the multi-window video display is nine (e.g., Niijima’s Figure 5 illustrates a
3x3 matrix of nine reduced size video screens), the number of reduced size
video screens in the multi-window video signal is actually fifty-four because
the signal includes six multi-screens each with nine reduced sized video
screens. See id. at 5–6 (citing Ex. 1005, Fig. 6; Pet. 16–17). Contemporary
asserts that, in such a scenario, the cell quantity data value is actually fifty-
four and not nine. Id. at 6; see also id. at 7 (arguing the same).
The parties’ dispute centers on the scope and meaning of the claim
term “cell quantity data value.” We begin our analysis with the plain
language of independent claims 1 and 30, each of which recites “receiving a
cell quantity data value corresponding to the number of reduced size video
displays in the multi[-]window video signal.” Ex. 1001, 35:51–53, 38:10–12
(“the ‘cell quantity data value’ limitation”). Based on the explicit language
of these two independent claims, the “cell quantity data value” need only
correspond to, in some way, the number of reduced size video displays in the
multi-window video signal.
As mentioned in our claim construction section above, neither party
offers an explicit construction of the claim term “corresponding to.” See
supra Section II(A). Contemporary provides various characterizations of the
meaning of “corresponding to,” such as “related to” or “an equivalence
between.” PO Resp. 7; PO Sur-reply 3. However, Contemporary indicates
that its characterizations “do nothing more than point out the claim language
itself.” PO Sur-reply 7. Moreover, neither party points to language in the
specification of the ’997 patent that clarifies the meaning of “corresponding
to.”
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As noted by both parties, the doctrine of claim differentiation provides
a useful indication of the scope of the “cell quantity data value” limitation.
See PO Resp. 7; Pet. Reply 4–5. Where possible, we presume that “an
interpretation of a claim should be avoided if it would make the claim read
like another one.” Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538
(Fed. Cir. 1991) (internal quotation omitted). Such a presumption is
applicable where one party is urging that an independent claim should be
interpreted to be read as its dependent claim. See SunRace Roots Enterprise
Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003). The term
“equal to” is used in claim 11, which indirectly depends from independent
claim 1 and, therefore, further limits independent claim 1. Ex. 1001, 36:25–
27 (reciting “wherein the cell quantity data value is equal to the number of
reduced size video displays contained in the multi-window video display.”).
Where dependent claim 11 recites “equal to,” independent claim 1 only
requires “corresponding to.” The term “corresponding to” has a broader
meaning than the term “equal to.” Consequently, the cell quantity data value
need not be a value that is equal to the number of reduced size displays in
the multi-window video signal.
The specification of the ’997 patent also supports interpreting the “cell
quantity data value” limitation in this way. The claim terms “corresponding
to” and “cell quantity data value” do not appear together in the specification
outside the claims. The only embodiment of the “cell quantity data value” in
the specification is disclosed in relation to the process of displaying and
navigating through the multi-screen browser tool (“MSB”) illustrated by the
flowcharts in Figures 16A and 16B. The relevant disclosure states the
following: “The data received from the head end specifies the number of
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cells to be placed in a given MSB screen. In some embodiments, the data
specifying the number of cells for each MSB display is sent in advance with
the program guide information.” Ex. 1001, 21:19–23. Notably, this
disclosure does not require that the “cell quantity data value” be equal to the
number of reduced size video displays in the program guide information
received from the head end (i.e., the multi-window video signal), but instead
only requires that the “cell quantity data value” be used, in some undisclosed
way, to specify the number of reduced sized video displays. This is
consistent with interpreting the “cell quantity data value” as corresponding
to, in some way, the number of reduced size video displays in the multi-
window video signal. With this interpretation of the “cell quantity data
value” limitation in mind, we turn to the merits of Dish’s position.
Based on the fully developed trial record, we agree with Dish that
Niijima teaches or suggests “a cell quantity data value corresponding to the
number of reduced size video displays in the multi[-]window video signal,”
as recited in each of independent claims 1 and 30. As illustrated in Figure 3
of Niijima, the broadcasting station includes archiving section 52, which, in
turn, includes EPG data production apparatus 204 that produces EPG data
from programs supplied to the broadcasting stations. Ex. 1005, 11:10–18.
Niijima discloses that the EPG data includes, among other things, “positions
on a multi-screen” and “numbers (for example, 240x160 pieces) of picture
elements of reduced screens.” Id. at 11:18–23. Relying on these teachings
in Niijima, Dish’s declarant, Mr. Wechselberger, testifies—and we agree—
that the position on the multi-screen display provided with the EPG data for
each multi-screen corresponds to the “cell quantity data value” because it is
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indicative of the number of reduced size screens actually displayed.
Ex. 1003 ¶ 127.
Niijima further discloses that front end circuit 20 located within
receiver 2 receives a signal containing the EPG data on transmission channel
and then stores the EPG data in data buffer memory 35. Ex. 1005, 15:54–
56. Relying on this teaching in Niijima, Mr. Wechselberger testifies that
receiver 2 receives the signal containing the EPG data for each multi-screen
that includes the “positions on a multi-screen” and “numbers (for example,
240x160 pieces) of picture elements of reduced screens” and, therefore,
teaches or suggests “receiving a cell quantity data value corresponding to the
number of reduced size video displays in the multi[-]window video signal.”
Ex. 1003 ¶¶ 125, 129 (emphases omitted). We agree with the conclusion
reached by Mr. Wechselberger because the data value in the EPG data that
represents the number of the highest position cell for each multi-screen
corresponds to, in some way, the number of reduced size video displays in
the signal. See id. ¶¶ 126–129. We note that these teachings in Niijima also
are consistent with the disclosure in the specification of the ’997 patent of
receiving data specifying the number of cells for each MSB display. See
Ex. 1001, 21:19–23.
We are not persuaded by Contemporary’s argument that Dish’s
reliance on Niijima’s transmitted signal to teach the claimed “multi-window
video signal” is flawed because this transmitted signal includes six multi-
screens, each with nine reduced size screens arranged in a 3x3 matrix,
thereby totaling fifty-four reduced size screens that correspond to the “cell
quantity data value.” See PO Resp. 8–9; PO Sur-reply 5–7. Although
Contemporary is correct that Niijima discloses that archiving section 52
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combines EPG data for six multi-screens into a single signal for transmission
to receiver 2 (see Ex. 1001, 8:21–9:6), Contemporary fails to account for the
breadth of a “cell quantity data value” required by independent claims 1 and
30.
As we explained above, the “cell quantity data value” corresponds to,
in some way, the number of reduced size video displays in the multi-window
video signal. In both his declaration accompanying the Petition and his
rebuttal declaration accompanying the Reply, Mr. Wechselberger testifies
that Niijima’s transmitted signal includes EPG data for six multi-screens.
See Ex. 1003 ¶¶ 100, 101; Ex. 1028 ¶ 19. Mr. Wechselberger, however,
further testifies that the number of reduced size video displays in Niijima’s
transmitted signal “is . . . directly proportional (and therefore corresponds or
relates to) the number of reduced size [video] displays in a multi-screen.”
Ex. 1028 ¶ 19 (citing Ex. 1003 ¶ 130). We understand Mr. Wechselberger to
testify that Niijima’s signal transmitted from the broadcasting station to
receiver 2 that includes EPG data for each of the six multi-screens provides a
six to one correspondence of reduced size video screens because the six
multi-screens include fifty-four total reduced sized video screens that, for
purposes of program selection and display, distill down to six individual
multi-screens each with nine reduced size screens arranged in a 3x3 matrix.
This six to one correspondence present in Niijima’s transmitted signal,
which includes EPG data for each of the six multi-screens, properly accounts
for the “cell quantity data value” required by independent claims 1 and 30.
We credit Mr. Wechselberger’s testimony in this regard because it is
consistent with Niijima’s Figure 18 and its corresponding description.
Figure 18, reproduced below, illustrates a diagrammatic view of a condition
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wherein reduced size screens are stored in a matrix array in a virtual frame.
Ex. 1001, 4:58–60.

Figure 18, reproduced above, illustrates the process of demultiplexer 24 (not
shown above) receiving six multi-screens transmitted in a single signal and
storing these six multi-screens as a 6x9 matrix array of reduced size screens
in virtual frame memory 49. Id. at 19:14–37. Although Figure 18 illustrates
six multi-screens totaling fifty-four reduced size screens, the user only
selects a single preview screen with nine reduced size screens arranged in a
3x3 matrix at any given moment for display on monitor 4. Id. at 21:3–6,
Fig. 19 (illustrating a range of reduced size screens to be displayed on
monitor 4).
b. Dish’s Characterization of Niijima
Contemporary contends that Dish relies on a chart created by its
declarant, Mr. Wechselberger that “represents a simplified version of
Niijima” and “ignores large swaths of Niijima’s disclosure.” PO Resp. 10
(citing Ex. 1003 ¶ 126). Contemporary argues that Mr. Wechselberger’s
chart “is incomplete and inaccurate” and, “[a]s a result, the ‘position’ of
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each picture element fails to disclose or suggest a ‘cell quantity data value.’”
Id. at 10–11.
More specifically, Contemporary argues that the positions of each
picture element in Mr. Wechselberger’s chart “is not indicative of the
number of reduced sized video displays.” PO Resp. 11 (emphasis omitted).
To support this argument, Contemporary asserts that, “in a scenario where
there is a total of three picture elements and there are nine positions for
picture elements, the position of the picture element is not indicative of the
number of reduced sized video displays if the three picture elements are in
random positions” (e.g., positions 1, 4, and 7). Id. (underlying omitted).
According to Contemporary, “Niijima expressly considers such a situation”
because, “[i]n order to view the additional channels, a customer would be
required to scroll across to the additional channels.” Id. at 12–14 (emphasis
omitted) (citing Ex. 1005, 13:18–30, 21:54–65, Fig. 21; Ex. 2001 ¶ 53).
Contemporary argues that Niijima’s disclosure of changing the multi-screen
in response to the user scrolling either (1) results in changing the position
value associated with each program in order to maintain a single multi-
screen with nine reduced size screens arranged in a 3x3 matrix; or (2) the
receiver does not receive the position value from the content provider, but
rather the server determines the position value dynamically. Id. at 14–15
(citing Ex. 2001 ¶¶ 56–59). In either case, Contemporary asserts that “the
‘position’ value does not equate to the claimed ‘cell quantity data value
corresponding to the number of reduced size video displays.’” Id. at 15.
Dish counters that it is actually Contemporary and its declarant, Dr.
Brogioli, who “confuse and conflate the operation of Niijima’s broadcasting
station and receiver [2].” Pet. Reply 11. Dish argues that Niijima discloses
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“a sophisticated programming guide system” where the “broadcasting
station generates a set of multi-screens that each contained reduced size
[video] programs for display in a multi-window program guide display,” a
multi-screen production circuit at the broadcasting station transmits EPG
data “specifying the position of a [video] program on a multi-screen” to
receiver 2, and it is “the position data included in the EPG data . . . [that]
indicates the total number of reduced size [video] programs in the multi-
screen.” Id. at 11–12 (emphasis omitted) (citing Ex. 1005, 7:43–65, 8:21–
41, 11:18–23; Ex. 1003 ¶¶ 126, 208; Pet. 16–17, 27–28). Dish further
argues that Niijima’s receiver 2 then “arranges the set of six multi-screens
received from the broadcasting station in a . . . ‘matrix array’ in a virtual
memory” and, as illustrated in Niijima’s Figure 18, “uses a selection area . . .
to identify the multi-window display to display on the screen.” Id. at 12
(citing Ex. 1005, 4:57–59, 19:35–37, Fig. 18; Pet. 24, 29–31).
Dish also contends that Contemporary’s proposed hypothetical where
the picture elements are arranged in Niijima’s 3x3 matrix array only in
positions 1, 4, and 7, and the remainder of the cells (i.e., positions 2, 3, 5, 6,
8, and 9) might be empty, is not supported by Niijima because “[n]owhere
does Niijima teach or suggest to a [person of ordinary skill in the art] that a
multi-screen generated at the broadcasting station would have empty
positions.” Pet. Reply 13 (citing Ex. 1027, 103:5–22; Ex. 1028 ¶ 30). Dish
also argues that Contemporary’s argument that “a user’s ability to scroll
between multi-screens means the positions of the screens must change” is
“irrelevant” because “[t]here is no requirement in the claims that the ‘cell
quantity data value’ equals the position of the program on the displayed
screen as a user scrolls.” Id. at 13–15. Dish asserts that, even “where the
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user scrolls to the right by one position, the selection area still has the same
number of cells [(i.e., the 3x3 matrix)], the multi-screens in the virtual frame
have the same size and arrangement, and the displayed programs retain their
positions in their respective multi-screens.” Id. at 15 (citing Ex. 1028 ¶ 34).
In its Sur-reply, Contemporary maintains that Niijima discloses a
scenario where empty cells may be transmitted from the broadcasting station
to receiver 2 because “a given multi-screen will be full if and only if the total
number of channels is divisible by the number of cells in the multi-screen.”
PO Sur-reply 10–11. Contemporary argues that “Niijima . . . expressly
contemplates handling ‘100 or more’ programs” and, therefore, the
broadcasting station could prepare channels for transmission to receiver 2
that are not readily divisible by nine to create a 3x3 matrix array. Id. at 11
(quoting Ex. 1005, 26:48–53) (citing Ex. 1005, 13:18–30). Contemporary
also argues that Niijima contemplates a scenario where empty cells may be
transmitted from the broadcasting station to receiver 2 by disclosing that the
broadcasting station is capable of arranging programs in an excessive
number of categories, or arranging an excessive number of programs of a
particular category, prior to transmission to receiver 2. Id. (citing Ex. 1005,
10:14–21, 10:29–33).
Based on the fully developed trial record, we agree with Dish that it
provides a fair and accurate characterization of Niijima. Contemporary’s
arguments in this regard initially focus on a chart cited in the Petition that
was created by Mr. Wechselberger. See PO Resp. 10–11. For convenience,
this chart is reproduced below.
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Pet. 29 (citing Ex. 1003 ¶ 126). Based on our independent assessment of
Niijima, this chart, reproduced above, is nothing more than a visual
illustration of Niijima’s disclosure that “EPG data includes broadcasting
start times, broadcasting channel numbers, program categories, program
names, positions on a multi-screen, and numbers (for example, 240x160
pieces) of picture elements of reduced screens.” Ex. 1005, 11:18–23. More
specifically, this chart merely illustrates a single multi-screen with nine
reduced size screens arranged in a 3x3 matrix that may be displayed on
monitor 4, such as the preview screen illustrated in Niijima’s Figures 18 and
21. Id. at Figs. 18 (illustrating virtual frame memory 49 containing fifty-
four reduced size video screens, but only displaying a single multi-screen
with nine reduced size screens arranged in a 3x3 matrix at any given
moment), 21 (illustrating the same).
We are not persuaded by Contemporary’s argument that the highest
position value of the picture elements in Mr. Wechselberger’s chart does not
constitute a “cell quantity data value” because Niijima purportedly discloses
a scenario where the broadcasting station transmits EPG data that includes
empty screens to receiver 2 so that, for a single multi-screen, there is a total
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of three picture elements in positions 1, 4, and 7, and the picture elements in
positions 2, 3, 5, 6, 8, and 9 are empty. See PO Resp. 11–14; PO Sur-reply
10–11. As support for this proposed hypothetical, Contemporary and its
declarant, Dr. Brogioli, direct us to numerous disclosures in Niijima.
However, upon reviewing each of these disclosures in Niijima, we were
unable to locate a teaching or suggestion that supports finding that Niijima’s
programming guide system operates in this way. We address each of
Niijima’s disclosures relied on by Contemporary and Dr. Brogioli in turn.
First, as support for its proposed hypothetical, Contemporary and
Dr. Brogioli rely on Niijima’s ability to change the multi-screen in response
to a user scrolling. See PO Resp. 12–14 (citing Ex. 1005, 13:18–30, 21:54–
65, Fig. 21; Ex. 2001 ¶ 53). Figure 21, reproduced below, illustrates a
schematic view showing reduced size screens displayed on the monitor as a
result of scrolling. Ex. 1001, 4:65–67.

Although Figure 21, reproduced above, illustrates six multi-screens totaling
fifty-four reduced size screens, the user scrolling through these fifty-four
reduced size screens only selects a single preview screen with nine reduced
size screens arranged in a 3x3 matrix at any given moment for display on
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monitor 4. Even when the user scrolls downward so that the 3x2 reduced
size screens in the lowermost and second lowermost rows surrounded by
dotted lines and the 3x1 reduced size screens in the uppermost row
surrounded by dotted lines constitute the 3x3 matrix that actually is
displayed on monitor 4, there is no indication in Niijima that any of these
nine reduced size screens arranged in this particular 3x3 matrix would be
empty or otherwise would include missing frames. Id. at 21:61–65.
Second, as support for its proposed hypothetical, Contemporary also
relies on Niijima’s disclosure that its programming guide system is capable
of handling 100 or more programs and, in particular, how the broadcasting
station is capable of arranging programs in an excessive number of
categories, or arranging an excessive number of programs of a particular
category, prior to transmission to receiver 2. See PO Sur-reply 10–11 (citing
Ex. 1005, 10:14–21, 10:29–33, 13:18–30, 26:48–53). Although
Contemporary is correct that Niijima’s programming guide system is
capable of handling 100 or more programs of various categories, these cited
disclosures in Niijima simply reinforce its stated objective—namely, “to
provide an electrical program guide system and method by which a desired
program can be selected rapidly with certainty, intuitively and directly from
among a large number of programs.” Ex. 1005, 1:60–64. Niijima
accomplishes this objective by taking the 100 or more programs of various
categories and distilling them down to a single multi-screen with nine
reduced size screens arranged in a 3x3 matrix for display on monitor 4 at
any given moment. See, e.g., id. at Fig. 5 (illustrating one example of
arranging and displaying the multi-screen with nine reduced size screens
arranged in a 3x3 matrix on monitor 4). When disclosing how Niijima
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achieves this objective, Contemporary does not direct us to, nor are we
aware of, a single disclosure that teaches or suggests the broadcasting station
actually generates EPG data that includes empty screens for transmission to
receiver 2.
The testimonial evidence of record further supports our understanding
that Niijima does not contemplate a scenario that involves the broadcasting
station transmitting EPG data that includes empty screens to receiver 2.
During the deposition of Dr. Brogioli, counsel for Dish inquired whether
Niijima’s Figure 6 and its corresponding description support
Contemporary’s hypothetical regarding whether the broadcasting station
actually transmits EPG data that includes empty screens to receiver 2. The
relevant exchange is reproduced below.
Q. So does Niijima in this section say that any of the nine
screens received by the production circuit can be blank or empty?
A. I don’t know that this paragraph that we’re referring to
speaks to that one way or the other.
Q. All right. Does Niijima anywhere say that any of the
programs’ input to its production circuit can be empty or blank?
A. I don’t know that I’ve seen that Niijima uses the word
“empty” one way or the other.
Q. Okay. Do you have an opinion on whether any of the input
video signals to these 201-1 through 201-9 production circuits
can be blank or empty in Niijima?
A. I don’t know that Niijima contemplates that. I don’t think
I performed that exercise.
Ex. 1027, 103:5–22; see also Ex. 1028 ¶ 30 (Mr. Wechselberger testifying
that he does not find support in Niijima for the “Dr. Brogioli’s hypothetical
of empty cells in the displayed multi-window display”). Based on the
exchange between counsel for Dish and Dr. Brogioli, and further reinforced
by Mr. Wechselberger’s testimony accompanying Dish’s Reply, Niijima
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does not disclose explicitly that the broadcasting system transmits EPG data
that includes empty screens to receiver 2.
During the oral argument, the panel proposed essentially the same
question to counsel for Contemporary and he stated that Niijima was “silent”
as to whether Niijima contemplates the broadcasting station transmitting
EPG data that includes empty screens to receiver 2. See Tr. 47:9–17
(“JUDGE CYGAN: . . . In your response, you have presented a hypothetical
that Niijima may have some empty screens. . . . Could you explain how
Niijima would describe having empty screens as part of the reduced screens?
MR. BRUNELLI: I’m not sure. I think that, I think Niijima’s silent on
that.” (emphasis added)).
In conclusion, because there is no basis in the teachings of Niijima,
nor is there testimonial evidence of record, that supports finding that the
broadcasting station actually transmits EPG data that includes empty screens
to receiver 2, we decline to speculate or assume how Niijima’s programming
guide system would react if presented with this hypothetical scenario.
c. Whether Dish’s Purported Modifications to Niijima are
Feasible Technically
In its Patent Owner Response, Contemporary argues that a person of
ordinary skill in the art would not have modified Niijima in the manner
proposed by Dish because it would “require[] a number of challenges,”
including, among other things, “additional DRAM [Dynamic Random-
Access Memory], additional compute time, more CPU power, and additional
executable code on the CPU which requires instruction memory and power
consumption.” PO Resp. 16 (citing Ex. 2001 ¶¶ 76, 77). Relying on the
testimony of Dr. Brogioli, Contemporary argues that “[a]dding more
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computation tasks to a (near) real-time system . . . would be highly
problematic, even if it were possible.” Id. at 16–17 (citing Ex. 2001 ¶¶ 77,
78). More specifically, Contemporary asserts that Dish and its declarant,
Mr. Wechselberger, “have not pointed to any portion of Niijima that would
teach or suggest how any additional computation could or would be added to
Niijima’s [programming guide] system in order to ‘determine’ the cell
quantity [data value].” Id. at 18 (emphases omitted).
In its Reply, Dish counters that Contemporary’s argument that a
person of ordinary skill in the art would not have modified Niijima in the
manner proposed by Dish is “baseless” because “Niijima’s ‘cell quantity
data value’ is sent in the EPG data . . . just like the ’997 patent’s value,”
without the need for the MPEG decoder to run to decode the EPG data. Pet.
Reply 16–17 (comparing Ex. 1005, 11:18–23, with Ex. 1001, 21:21–23)
(citing Ex. 1005, 14:47–48, 15:54–56, Figs. 11A, 11B; Ex. 1028 ¶ 39). Dish
also asserts that Contemporary’s argument in this regard lacks support
because it only relies on Dr. Brogioli’s testimony, which lacks corroboration
and, as a result, should be entitled to little weight. Id. at 17. Lastly, Dish
argues that, even if we were to assume that its proposed modification to
Niijima has a “‘number of challenges,’ including a need for additional
‘DRAM’ and ‘more CPU power,’ those challenges are irrelevant to the
patentability of [the challenged claims of the ’997 patent].” Id. at 17–18.
As an initial matter, Contemporary does not explain adequately what
specific modifications to Niijima would be required to address the number of
challenges identified by both Contemporary and Dr. Brogioli. At best, this
argument is predicated on the notion that the “cell quantity data value”
required by independent claims 1 and 30 amounts to a single integer value.
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See PO Resp. 16 (arguing that “the ’997 [p]atent simply requires an integer
value in the stream to indicate the number of [reduced size] screens to be
displayed” (emphasis added)); Ex. 2001 ¶ 76 (testifying that the steps
involved in the process disclosed in the ’997 patent involve “[r]eceiving an
integer value indicating the cell quantity data value” (emphasis added)).
With this in mind, we understand both Contemporary and Dr. Brogioli to
argue that Niijima would need to be modified to properly account for a
single integer value because a person of ordinary skill in the art would have
understood that, based on the EPG data contained in the signal sent from the
broadcasting station, receiver 2 requires some sort of additional processing
to calculate a data value that represents the number of reduced size screens
to be displayed. See PO Resp. 16; Ex. 2001 ¶ 76.
We disagree with Contemporary’s argument because, as we explained
above, the “cell quantity data value” is not necessarily limited to a single
integer value, but rather corresponds to, in some way, the number of reduced
size video displays in the multi-window video signal. See supra Section
II.B.4.a. We agree with Dish that Niijima teaches receiving a cell quantity
data value, such as a single integer data value in the EPG data that represents
the number of the highest position cell for each multi-screen, corresponding
to the number of reduced size video displays in the multi-window video
signal, as required by independent claim 1 and 30. See id. Therefore, no
additional teaching of determining the cell quantity data value is required by
Niijima to account for the disputed language of these two independent
claims.
Contemporary’s argument in this regard also is undermined by Dr.
Brogioli’s deposition testimony and statements by counsel for Contemporary
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during oral argument, both of which appear to confirm our understanding
that the “cell quantity data value” is not limited to a single integer value.
During Dr. Brogioli’s deposition, he was asked whether independent “claim
30 required that the cell quantity data value be an integer” and, in response,
he stated “I don’t believe it does.” Ex. 1027, 81:6–15. Counsel for
Contemporary was presented with essentially the same question during the
oral argument and, in response, he stated “[i]t doesn’t need to be an integer,
. . . [b]ut it does need to be a single data value.” Tr. 30:10–18.
In any event, even if we were to assume that a person of ordinary skill
in the art would have understood that, based on the EPG data contained in
the signal sent from the broadcasting station, Niijima’s receiver 2 requires
some sort of additional processing to calculate a data value that represents
the number of reduced sized screens to be displayed, this additional
processing at the receiver side, by itself, would not preclude a conclusion of
obviousness. See PO Resp. 16–17; Ex. 2001 ¶¶ 76–78. Dish’s declarant,
Mr. Wechselberger, testifies that the additional processing issues, such as
“additional compute time, more CPU power, and additional executable code
on the CPU[,] . . . are well within the skill of a [person of ordinary skill in
the art] to solve—these are issues of any real-time system, and Dr. Brogioli
does not cite to any special concern in Niijima . . . to support any argument
that these issues could not be overcome by a [person of ordinary skill in the
art].” Ex. 1028 ¶ 40. We credit Mr. Wechselberger’s testimony in this
regard, especially because there is insufficient evidence in the record
developed during trial that indicates some additional processing on the
receiver side would result in changing Niijima’s principle of operation or
otherwise render it inoperable for its intended purpose.
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d. Summary
In summary, Dish has demonstrated by a preponderance of the
evidence that the subject matter of independent claims 1 and 30 would have
been obvious over the teachings of Niijima.
5. Claims 2–9, 12, 16, 31–36
Dish also contends that dependent claims 2–9, 12, 16, and 31–36 of
the ’997 patent are unpatentable under § 103(a) as obvious over the
teachings of Niijima. Pet. 39–50. Dish explains how Niijima teaches or
suggests the subject matter of each dependent claim, and provides reasoning
as to why one of ordinary skill in the art would have been prompted to
modify the teachings of this reference. Pet. 39–50; Ex. 1003 ¶¶ 144–171,
226–244.
As one example, claim 2 depends directly from independent claim 1,
and further recites “wherein the receiver receives the cell qua[nt]ity5 data
value as part of the multi-window video signal.” Ex. 1001, 35:62–64. Dish
contends that Niijima teaches or suggests this limitation because it discloses
that the broadcasting station converts the EPG data into packets and
multiplexes them “so that they must be transmitted via one transmission
channel” to receiver 2. Pet. 39 (quoting Ex. 1005, 11:24–33) (citing
Ex. 1005, 15:54–56). As another example, claim 16 depends directly from

5 Dish assumes that the “cell quality data value,” as recited in dependent
claim 2, is a typographical error and, instead, should be treated as “cell
quantity data value.” Pet. 39 n.6. Contemporary has not provided an
alternate explanation or construction that would distinguish these two terms
from each other, and finding no clear support in the specification of the ’997
patent, we treat these two terms as being equivalent in scope.
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independent claim 1, and further recites “wherein the display device is a
television receiver.” Ex. 1001, 36:49–50. Dish contends that Niijima
teaches or suggests this limitation because it discloses that monitor 4 “may
be, for example, a television receiver.” Pet. 50 (quoting Ex. 1005, 9:18–21).
During the course of trial, Contemporary does not address separately
Dish’s explanations and supporting evidence as to how the teachings of
Niijima account for the additional limitations of dependent claims 2–9, 12,
16, and 31–36. See PO Resp. 4–17; PO Sur-reply 1–16. We have reviewed
Dish’s explanations and supporting evidence as to how Niijima teaches the
additional limitations of these dependent claims, and we agree with and
adopt Dish’s analysis. See Pet. 39–50. Accordingly, Dish has demonstrated
by a preponderance of the evidence that the subject matter of dependent
claims 2–9, 12, 16, and 31–36 would have been obvious over the teachings
of Niijima.
C. Obviousness Over the Combined Teachings of Niijima and Devaney
Dish contends that claims 10, 11, 13–15, 17–29, and 37–43 of the
’997 patent are unpatentable under § 103(a) as obvious over the combined
teachings of Niijima and Devaney. Pet. 50–70. In support of its
contentions, Dish explains how this proposed combination teaches or
suggests the subject matter of each challenged claim, and provides reasoning
as to why one of ordinary skill in the art would have been prompted to
modify the teachings of Niijima with those of Devaney. Id. Dish also relies
on the Declaration of Mr. Wechselberger to support its positions. Ex. 1003
¶¶ 250–427.
During trial, Contemporary’s only argument is that Devaney fails
teach or suggest that each of its surfing channels includes a “multi-window
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video display,” as recited in independent claim 17, and similarly recited in
independent claims 29 and 37. See PO Resp. 17–19; PO Sur-reply 17.
We begin our analysis with a brief overview of Devaney, and then we
address the parties’ contentions with respect to the challenged claims.
1. Overview of Devaney
Devaney generally relates to digital television and, in particular, “to a
method and apparatus that generates a time-multiplexed channel surfing
signal at television head-end sites.” Ex. 1006, code (57), 2:34–36. Devaney
discloses that “segments from a number of different channel feeds are
combined to generate a surfing channel for transmission to the user.” Id. at
3:38–40. The surfing channel is displayed in a matrix screen format so “the
user can view scenes from a number of different channels at one time.” Id.
at 3:45–46. Devaney further discloses that the head-end may produce
“[m]ultiple channel surfing channels . . . by providing two or more channel
surfing channels.” Id. at 7:5–7. For example, “there may be a news channel
surfing channel, sports channel surfing channel, a children’s channel surfing
channel, and/or an education channel surfing channel.” Id. at 6:63–66.
2. Claims 17, 29, and 37
Dish contends that Niijima teaches or suggests all of the limitations of
independent claim 17, except “wherein each multi-window display is
associated with a programming category and the reduced size video displays
contained in different multi-window video displays are in different
categories respectively.” Pet. 54–62. Dish contends that, although Niijima
discloses one embodiment where the broadcasting station arranges the
reduced size screens into “individual categories of programs,” Devaney’s
disclosure of a head-end that produces multiple category-based surfing
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channels more clearly teaches or suggests this limitation. Id. at 56
(emphasis omitted) (quoting Ex. 1005, 9:64–67) (citing Ex. 1006, 6:63–66,
7:5–6). Dish also provides several reasons as to why one of ordinary skill in
the art would have been prompted to modify the teachings of Niijima with
those of Devaney. Id. at 51–54.
Beginning with independent claim 17, the preamble recites “[a]
system for presenting an interactive multi-window video display.” Ex. 1001,
36:51–52. Dish contends that Niijima teaches or suggests this limitation for
the same reasons discussed above with respect to the preamble of
independent claim 1. Pet. 54 (citing Ex. 1003 ¶¶ 274–277). That is, to the
extent the preamble is treated as limiting, Dish contends that Niijima teaches
or suggests the features recited in the preamble because it discloses a single
screen on which nine reduced size screens are displayed and arranged in a
3x3 matrix. Id. at 12–13 (citing Ex. 1005, 6:34–37, 19:42–44, Fig. 20;
Ex. 1003 ¶¶ 90, 93). Dish further argues that Niijima’s multi-window
display is interactive because one of the nine reduced size screens may be
selected manually using remote commander 5. Id. at 13 (citing Ex. 1005,
13:30–32, 21:13–34; Ex. 1003 ¶¶ 91, 92).
Independent claim 17 further recites “a receiver for receiving a
plurality of multi-window real time video signals representing a plurality of
multi-window video displays each comprising a plurality of reduced size
video displays.” Ex. 1001, 36:53–56. For the same reasons discussed above
with respect to the “receiver” limitation of independent claim 1, Dish
contends that Niijima’s receiver 2, which includes reception section 2a
controlled by processing section 2b, teaches the “receiver.” Pet. 55 (citing
Ex. 1003 ¶¶ 278, 279). Relying on the testimony of Mr. Wechselberger,
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Dish argues that, “[i]n the combined system of Niijima and Devaney, each
category-based preview channel is transmitted via a different transmission
channel.” Id. (citing Ex. 1003 ¶ 281). Dish further argues that Niijima’s
receiver 2 receives the data on each transmission channel, which includes
multi-screens, EPG data, and programs. Id. (citing Ex. 1005, 13:57–61).
According to Dish, after reception section 2a located within Niijima’s
receiver 2 “receiv[es] a plurality of multi-window real time video signals
representing a plurality of multi-window displays,” receiver 2 displays the
associated preview screens (i.e., “the multi-window video displays”) on
monitor 4. Id. at 55–56 (citing Ex. 1003 ¶¶ 280, 281). For the same reasons
discussed above with respect to the “receiver” limitation of independent
claim 1, Dish contends that each of Niijima’s multi-screens includes a
plurality of reduced sized screens. Id. at 56 (citing Ex. 1005, 10:41–54).
Dish, therefore, asserts that the combined system of Niijima and Devaney
also teaches or suggests “a plurality of multi-window real time video signals
. . . each comprising a plurality of reduced size video displays.” Id. (citing
Ex. 1003 ¶¶ 282–284).
Independent claim 17 further recites that “wherein each multi-window
video display is associated with a programming category and the reduced
size video displays contained in different multi-window video displays are in
different categories respectively.” Ex. 1001, 36:56–60. Dish contends that
Niijima discloses one embodiment where the broadcasting station arranges
the reduced size screens into “individual categories of programs.” Pet. 56
(emphasis omitted) (quoting Ex. 1005, 9:64–67). Dish, however, argues that
Niijima does not disclose explicitly that “each multi-window display is
associated with a programming category.” Id. Dish argues that Devaney
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teaches or suggests this limitation because it discloses a head-end that
produces multiple category-based surfing channels. Id. (citing Ex. 1006,
6:63–66, 7:5–6). According to Dish, in the combined system of Niijima and
Devaney, it would have been obvious to a person of ordinary skill in the art
to modify Niijima’s broadcasting station so that it generates sets of multi-
screens based on different categories, as taught by Devaney. Id. For
example, relying on the testimony of Mr. Wechselberger, Dish asserts that
“one multi-screen set contains reduced screens associated with a first
category (e.g., news), one multi-screen set contains reduced screens
associated with a second category (e.g., sports), and so on based on the
number of available category-based preview channels.” Id. at 56–57
(emphasis omitted) (citing Ex. 1003 ¶ 287).
Independent claim 17 next recites “a generator coupled to the receiver
for generating an overlay grid having a number of cells based on the number
of reduced size video displays of the selected multi-window video signal.”
Ex. 1001, 36:61–64. For the same reasons discussed above with respect to
the “generator” limitation of independent claim 1, Dish contends that
Niijima teaches this limitation because it discloses “generat[ing] an overlay
grid having the number of cells based on the cell quantity data value which
determines the number of reduced size video displays in a given multi-
window video display.” Pet. 57–58 (citing Ex. 1003 ¶¶ 288–295).
Independent claim 17 recites “presenting means for presenting the
multi-window video display together with the overlay grid so that the
reduced size video displays are visible within the cells.” Ex. 1001,
36:65–67. Similar to the “presentation means” limitation recited in
independent claim 1, Dish contends that this limitation is a means-plus-
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function limitation where the claimed function is “presenting the multi-
window video display together with the overlay grid so that the reduced size
video displays are visible within the cells” and the corresponding structure is
the graphics component and programmed processor, which Dish asserts is
taught by Niijima’s receiver 2. See Pet. 58. For the same reasons discussed
above with respect to the “presentation means” limitation of independent
claim 1, Dish contends that Niijima’s receiver 2 includes processing
apparatus 2b, which uses a CPU and a component that produces OSD
graphics to produce a multi-screen display having a 3x3 matrix of nine
reduced size screens, such as the one illustrated in Figure 20. Id. at 36–37
(citing Ex. 1005, 13:10–17, 15:36–37, 16:12–17, 18:19–21, Fig. 20;
Ex. 1003 ¶¶ 129–141), 58.
Independent claim 17 further recites that “presenting means presents
the multi-window video display of the selected multi-window video signal
on the display device.” Ex. 1001, 37:2–5. Once again, similar to the
“presentation means” limitation recited in independent claim 1, Dish
contends that this limitation is a means-plus-function limitation where the
claimed function is “present[ing] the multi-window video display of the
selected multi-window video signal on the display device” and the
corresponding structure is the graphics component and programmed
processor, which Dish asserts is taught by Niijima’s receiver 2. See Pet. 58.
For the same reasons discussed above with respect to the “presentation
means” limitation of independent claim 1, Dish contends that Niijima
presents the multi-screen display together with the overlay grid on monitor
4. Id. at 58–59 (citing Ex. 1003 ¶ 300). According to Dish, in the combined
system of Niijima and Devaney, “the multi-screen presented for display is
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associated with the selected multi-window video signal (e.g., sports preview
channel, movies preview channel, etc.).” Id. at 59. For example, Dish
asserts that, “if the viewer selects the news preview channel, the news
preview screen is displayed on” Niijima’s monitor 4. Id.
Lastly, independent claim 17 recites “means for allowing selection of
one of the plurality of multi-window video signals.” Ex. 1001, 36:66–37:2.
Similar to the “selection means” recited in independent claim 1, Dish
contends that this limitation is a means-plus-function limitation where the
claimed function is “allowing selection of one of the plurality of multi-
window video signals” and the corresponding structure is a remote control,
which Dish asserts is taught by Niijima’s remote commander 5. See Pet. 59.
More specifically, Dish contends that Niijima’s remote commander 5
includes “preview button 143 [that] is manually operated in order to cause
the monitor apparatus 4 to display a preview screen.” Id. (quoting Ex. 1005,
17:9–11). According to Dish, when modifying Niijima’s receiver 2 with the
teachings of Devaney, this receiver allows the preview screen to display a
menu of available category-based preview channels selectable by the user.
Id. (citing Ex. 1003 ¶ 301). Dish also argues that Niijima discloses that “it is
otherwise possible to change over the screen, for example, in a page turning
manner so that all data for program selection may be observed.” Id. (quoting
Ex. 1005, 30:29–34). Relying on the testimony of Mr. Wechselberger, Dish
asserts that, in the combined system of Niijima and Devaney, a user would
be capable of turning from one category-based preview channel (e.g., news)
to another category-based preview channel (e.g., movies). Id. (citing
Ex. 1003 ¶ 301).
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Turning to the rationale to combine, Dish contends that a person of
ordinary skill in the art would have combined “Devaney’s teachings
regarding the generation of multiple category-based preview channels” with
Niijima’s EPG data. Pet. 51 (Ex. 1003 ¶¶ 250–254). Based on these
combined teachings of Niijima and Devaney, Dish asserts that “a [person of
ordinary skill in the art] would have been motivated to generate a set of
multi-screens for a first programming category and transmit these multi-
screens and their associated EPG data on a first transmission channel, to
generate multi-screens for a second programming category and transmit
these multi-screens and their associated EPG data on a second transmission
channel, and so on based on the desired number of preview channels.” Id. at
52 (citing Ex. 1003 ¶¶ 250, 251). According to Dish, in the combined
system of Niijima and Devaney, “the viewer identifies the specific category-
based preview channel she desires to view (e.g., news preview channel,
movie preview channel, etc.)” using Niijima’s monitor 4 and remote
commander 5. Id. at 53 (citing Ex. 1003 ¶ 253). Dish then asserts that,
“[w]hen the viewer selects one of the preview channels, . . . receiver [2]
tunes to the specific channel, processes the multi-screens, and displays the
category-based preview channel on [a] monitor,” such as Niijima’s monitor
4. Id. In addition, Dish contends that a person of ordinary skill in the art
would have been motivated to combine the teachings of Niijima with those
of Devaney to “simplif[y] the process of finding a desired program by
separating programs by category” and “permit a viewer to more easily and
conveniently navigate through the large number of programming choices.”
Id. at 54 (Ex. 1005, 1:12–58; Ex. 1003 ¶ 254).
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54
Independent claim 29 includes essentially the same limitations as
independent claim 17. Compare Ex. 1001, 36:51–37:5, with id. at 37:48–
38:2. Apart from being a method claim, independent claim 37 also includes
essentially the same limitations as independent claim 17. Compare id. at
36:51–37:5, with id. at 38:42–64. Dish presents essentially the same
arguments and evidence above with respect to independent claim 17 to
support its explanation as to how the combined teachings of Niijima and
Devaney render the subject matter of independent claims 29 and 37 obvious.
See Pet. 54–62; Ex. 1003 ¶¶ 345–381, 383–405.
During trial, the only limitation that Contemporary disputes is
“wherein each multi-window video display is associated with a
programming category and the reduced size video displays contained in
different multi-window video displays are in different categories
respectively,” which we address below. See PO Resp. 17–19; PO Sur-reply
17.
a. “wherein each multi-window video display is associated with a
programming category and the reduced size video displays contained in
different multi-window video displays are in different categories
respectively”
In its Patent Owner Response, Contemporary essentially repeats
verbatim the arguments it initially presented in the Preliminary Response.
Compare PO Resp. 17–19, with Prelim. Resp. 10–12. That is,
Contemporary recognizes that Devaney discloses multiple category-based
surfing channels (i.e., news, sports, kids, education, etc.), but argues that
Devaney fails to teach or suggest that each surfing channel includes “a
multi-window video display.” PO Resp. 18 (emphasis omitted) (citing
Ex. 1006, 6:63–66). As a result, Contemporary asserts that Devaney fails to
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teach or suggest “wherein each multi-window video display is associated
with a programming category and the reduced size video displays contained
in different multi-window video displays are in different categories
respectively,” as recited in independent claim 17. Id. at 18–19; see also id.
at 19 (further arguing that “[i]ndependent claim 37 includes features that are
analogous to the features of independent claim 1[7]” and Dish “has failed to
meet its burden . . . for independent claim 37”).
In its Reply, Dish contends that we should disregard Contemporary’s
argument because “it is solely attorney argument, unsupported by any expert
testimony; it attacks the references in isolation, ignoring what the [person of
ordinary skill in the art] would have considered obvious in the combination
of [Niijima and Devaney]; and is technically incorrect.” Pet. Reply 19.
Dish argues that it explained, in its Petition, how “the multi-window display
corresponds to the application of Devaney’s category-based preview to the
multi-screens of Niijima.” Id. at 19–20 (citing Pet. 51–52; Ex. 1003 ¶¶ 250–
254). Dish argues that Contemporary does not dispute that Niijima’s display
of multi-screens teaches or suggests a “multi-window display” and,
therefore, “it is irrelevant whether Devaney alone discloses a ‘multi-window
display’ because” the combined teachings of Niijima and Devaney account
for this feature. Id. at 20. Alternatively, Dish contends that Devaney’s
multiple category-based surfing channels are capable of being displayed in a
“matrix format.” Id. at 20–21 (quoting Ex. 1006, 3:45–46) (citing Pet. 51;
Ex. 1006, 7:59–63, Fig. 3). Dish argues that Contemporary fails to explain
how Devaney’s matrix of programs associated with a particular category
does not teach or suggest a “multi-window display.” Id. at 21.
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Based on the fully developed trial record, there are two reasons we
agree with Dish that the combined teachings of Niijima and Devaney
account for “wherein each multi-window video display is associated with a
programming category and the reduced size video displays contained in
different multi-window video displays are in different categories
respectively,” as recited in each of independent claim 17, 29, and 37. First,
Contemporary’s argument that Devaney fails to teach or suggest that each
surfing channel includes “a multi-window video display” amounts to an
individual attack on Devaney. See PO Resp. 18–19. It is well-settled that
“non-obviousness [cannot be established] by attacking references
individually,” when, as here, the asserted ground of obviousness is based
upon the combined teachings of Niijima and Devaney. In re Keller, 642
F.2d 413, 426 (CCPA 1981). Instead, the test is what the combined
teachings of these references would have taught or suggested to one with
ordinary skill in the art. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
Dish’s asserted obviousness ground relies on Niijima—not Devaney—to
teach or suggest a “multi-window video display.”
That is, Dish contends that each of Niijima’s multi-screens includes a
plurality of reduced size screens arranged in a 3x3 matrix and, therefore,
teaches or suggests the “reduced size video displays contained in . . . [a]
multi-window video display.” Pet. 56 (citing Ex. 1005, 10:41–54). Dish
turns to Devaney’s disclosure of multiple category-based surfing channels to
teach or suggest the “programming categories.” Id. (citing Ex. 1006, 6:63–
66, 7:5–6). Dish then asserts that, in the combined system of Niijima and
Devaney, it would have been obvious to a person of ordinary skill in the art
to modify Niijima’s broadcasting station to generate sets of multi-screens
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based on different categories, as taught by Devaney. Id. For example,
relying on the testimony of Mr. Wechselberger, Dish asserts that “one multi-
screen set contains reduced screens associated with a first category
(e.g., news), one multi-screen set contains reduced screens associated with a
second category (e.g., sports), and so on based on the number of available
category-based preview channels.” Id. at 56–57 (emphasis omitted) (citing
Ex. 1003 ¶ 287). We credit Mr. Wechselberger’s testimony in this regard
because it is consistent with the teachings of Niijima and Devaney. See
Ex. 1005, 10:41–54; Ex. 1006, 6:63–66, 7:5–6.
Second, Figure 3 of Devaney and its corresponding description serve
as additional evidence supporting Mr. Wechselberger’s testimony that it
would have been obvious to a person of ordinary skill in the art to combine
Niijima’s multi-screen video display with Devaney’s category-based
preview channels to account for the “multi-window video display” required
by independent claims 17, 29, and 37. See Pet. Reply 20–21; see also
Pet. 51 (arguing that Devaney’s “surfing channel displays each channel
segment in a matrix format so that ‘the user can view scenes from a number
of different channels at one time’”). When providing a general overview of
its channel surfing process, Devaney discloses that “the user can view scenes
from a number of different channels at one time” “using a matrix screen
format.” Ex. 1006, 3:45–46. Devaney’s Figure 3, reproduced below,
illustrates an exemplary screen format. Id. at 2:65–67, 7:58–59.
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Figure 3, reproduced above, illustrates display 1000 that includes surfing
channels displayed in “a matrix of four programs 1010 through 1040
simultaneously providing program information 1050a through 1050d for
each of the four programs.” Id. at 7:59–63. Based on these disclosures in
Devaney, we agree with Dish that Devaney’s matrix of programs associated
with a particular category (e.g., news, sports, kids, education, etc.) also
teaches or suggests the “multi-window video display,” as recited in each of
independent claims 17, 29, and 37.
b. Summary
In summary, Dish has demonstrated by a preponderance of the
evidence that the subject matter of independent claims 17, 29, and 37 would
have been obvious over the combined teachings of Niijima and Devaney.
3. Claims 10, 11, 13–15, 18–28, and 38–43
Dish also contends that dependent claims 10, 11, 13–15, 18–28, and
38–43 of the ’997 patent are unpatentable under § 103(a) as obvious over the
combined teachings of Niijima and Devaney. Pet. 62–70. Dish explains
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how this proposed combination teaches or suggests the subject matter of
each dependent claim, and provides reasoning as to why one of ordinary
skill in the art would have been prompted to modify the teachings of Niijima
with those of Devaney. Pet. 62–70; Ex. 1003 ¶¶ 255–272, 304–343, 406–
426.
As one example, claim 10 depends from independent claim 1, and
further recites “a plurality of multi-window video signals and wherein the
multi-window video displays are organized by programming category and
wherein the reduced size video displays contained in the multi-window
video display are in one category.” Ex. 1001, 36:20–24. Dish contends that
the combined system of Niijima and Devaney teaches or suggests this
limitation because it would have been obvious to a person of ordinary skill
in the art to modify Niijima’s broadcasting station to generate sets of multi-
screens based on different categories, as taught by Devaney. Pet. 62 (citing
Ex. 1003 ¶¶ 246–254). For example, relying on the testimony of Mr.
Wechselberger, Dish asserts that “one multi-screen set contains reduced
screens associated with a first category (e.g., news), one multi-screen set
contains reduced screens associated with a second category (e.g., sports),
and so on based on the desired number of preview channels.” Id. (citing
Ex. 1003 ¶ 256). Dish then asserts that “[e]ach of these sets of multi-screens
is transmitted on a separate transmission channel” (i.e., the “multi-window
video signal”) and “displayed as a separate preview screen” (i.e., the “multi-
window display”). Id.
As another example, claim 11 depends indirectly from independent
claim 1, and further recites “wherein the cell quantity data value is equal to
the number of reduced size video displays contained in the multi-window
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video display.” Ex. 1001, 36:25–27. Dish contends the combined system of
Niijima and Devaney teaches or suggests this limitation because Niijima’s
Figure 20 illustrates that “the reduced screens of the multi-screen preview
are displayed within the cells of the overlay grid.” Pet. 63 (citing Ex. 1005,
Fig. 20). Dish argues that “Niijima provides EPG data associated with a
multi-screen on the same transmission channel carrying the multi-screen.”
Id. (citing Ex. 1005, 11:18–23; Ex. 1003 ¶¶ 129, 145, 260). Relying on the
testimony of Mr. Wechselberger, Dish further argues that, “[i]n the
combined system of Niijima and Devaney, each category-based multi-screen
is provided on a different transmission channel.” Id. at 63–64 (citing
Ex. 1003 ¶¶ 251, 252, 260). Dish then argues that “[e]ach category-based
multi-screen therefore also has its own EPG data including the position
data.” Id. at 64 (citing Ex. 1005, 11:18–23; Ex. 1003 ¶ 260). Lastly, Dish
asserts that, “because the selection area does not change during viewer
interaction with the preview channels, each multi-screen displayed on a
preview channel has the same number of reduced size screens and that
number corresponds to the received ‘cell quantity data value.’” Id.
(emphasis omitted) (citing Ex. 1003 ¶ 261).
During the oral argument, Dish clarified that it is relying on a more
narrow teaching from Niijima to account for the limitation of dependent
claim 11. More specifically, Dish argues that, in Niijima, the largest
position value is “the cell quantity data value that is equal to the number of
reduced size video displays contained in the multi-window video display.”
See Tr. 54:19–22 (explaining that Dish is relying on Niijima’s disclosure of
“the position in the multi-screen” for purposes of dependent claim 11).
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As yet another example, claim 14 depends indirectly from
independent claim 1, and further recites “wherein the multi-window video
displays are organized by programming category, and wherein the reduced
size video displays contained in different multi-window video display are in
different categories.” Ex. 1001, 36:36–39. Dish presents essentially the
same arguments and evidence cited above with respect to dependent claim
10 to explain how the combined teachings of Niijima and Devaney render
the subject matter of dependent claim 14 obvious. Compare Pet. 62, with id.
at 65.
During the course of trial, Contemporary does not address separately
Dish’s explanations and supporting evidence as to how the combined
teachings of Niijima and Devaney account for the additional limitations of
dependent claims 10, 11, 13–15, 18–28, and 38–43. See PO Resp. 17–19;
PO Sur-reply 17. We have reviewed Dish’s explanations and supporting
evidence as to how the combined teachings of Niijima and Devaney account
for the additional limitations of these dependent claims, and we agree with
and adopt Dish’s analysis. See Pet. 62–70. Accordingly, Dish has
demonstrated by a preponderance of the evidence that the subject matter of
dependent claims 10, 11, 13–15, 18–28, and 38–43 would have been obvious
over the combined teachings of Niijima and Devaney.
D. Obviousness Over the Combined Teachings of Matthews and Schein
Dish contends that claims 30 and 32–36 of the ’997 patent are
unpatentable under § 103(a) as obvious over the combined teachings of
Matthews and Schein. Pet. 70–83. In support of its contentions, Dish
explains how this proposed combination teaches or suggests the subject
matter of each challenged claim, and provides reasoning as to why one of
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ordinary skill in the art would have been prompted to modify the teachings
of Matthews with those of Schein. Id. Dish also relies on the Declaration of
Mr. Wechselberger accompanying the Petition and the Rebuttal Declaration
of Mr. Wechselberger accompanying the Reply to support its positions.
Ex. 1003 ¶¶ 444–476; Ex. 1028 ¶¶ 41–54.
During trial, Contemporary presents a number of arguments, most of
which focus on whether the combined teachings of Matthews and Schein
account for “receiving a multi-window real time video signal representing a
multi-window video display,” and “receiving a cell quantity data value
corresponding to the number of reduced size video displays in the multi[-
]window video signal,” as recited independent claim 30. See PO Resp. 19–
32; PO Sur-reply 18. Contemporary relies upon the Declaration of Dr.
Brogioli to support its positions. Ex. 2001 ¶¶ 79–96.
We begin our analysis with brief overviews of Matthews and Schein,
and then we address the parties’ contentions with respect to the challenged
claims.
1. Overview of Matthews
Matthews generally relates to “providing programming information to
viewers of an interactive television . . . system” and, in particular, to
“programming information [that] includes . . . a multi-frame video segment
of or relating to the programming on at least one channel.” Ex. 1007,
2:6–11. Figure 1 of Matthews, reproduced below, illustrates a block
diagram of one embodiment of the interactive television system. Id. at 2:48–
49.
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Figure 1, reproduced above, illustrates interactive television system 10 that
includes central control node 12 transmitting programming information over
network 14 to multiple viewer stations 16. Id. at 3:16–19. Each viewer
station 16 includes video display set 18 (e.g., a television receiver) and
interactive controller 20 (e.g., set-top box). Id. at 3:24–27.
Figure 4 of Matthews, reproduced below, illustrates a video program
guide rendered on a video display screen. Ex. 1007, 2:56–57.

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Figure 4, reproduced above, illustrates video program guide 100 rendered on
display screen 98 of at least one video display set 18. Id. at 4:44–46. Video
program guide 100 includes multiple video programing tiles 102 each
corresponding to programming available on a selected channel during a
scheduled period. Id. at 4:46–49; see also id. at 9:66–10:3 (“Video
programming tiles 102 corresponding only to a few (e.g., six) of the
potentially hundreds of tiles 102 in video programming guide space 150 can
be rendered simultaneously on the video display screen 98.”). Each video
programming tile 102 includes single frame images 104 relating to available
programming on a selected channel and channel identification panel 106 that
identifies the corresponding channel. Id. at 4:52–58. For example, video
programming tile 102a includes multi-frame video segment 104a relating to
available programming and channel identification panel 106a (i.e., CBS).
Id. at 4:49–52.
2. Overview of Schein
Schein generally relates to “providing information to television
viewers” and, in particular, to “allowing [a] viewer to retrieve, search, select
and interact with television schedule information located in a remote
database.” Ex. 1008, 1:19–25. According to Schein, “[a] powerful feature
of the database is the ability to group shows by theme[s].” Id. at 10:61–62.
The database stores television information according to a category, one
example being movies. Id. at 10:66–11:1. When a viewer initiates a search
for a particular type of show according to a theme (e.g., comedy movie),
Schein discloses that it inspects each channel and compares it against the
selected theme. Id. at 11:15–20. Information about shows matching the
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selected theme are then stored in the database and, subsequently, displayed
in time order. Id. at 11:20–22, 11:45–46.
3. Claim 30
Dish contends that Matthews teaches or suggests all of the limitations
of independent claim 30, except that the user selects channels “in accordance
with a category.” Pet. 71–80. Dish turns to Schein as teaching or suggesting
this limitation. Id. at 76 (citing Ex. 1008, 10:60–11:5; Ex. 1003 ¶¶ 456–
459). Dish also provides several reasons as to why one of ordinary skill in
the art would have been prompted to modify the teachings of Matthews with
those of Schein. Id. at 70–71.
The preamble of independent claim 30 recites “[a] method for
presenting an interactive multi-window video display.” Ex. 1001, 38:3–4.
To the extent the preamble is treated as limiting, Dish contends that
Matthews teaches or suggests the features recited in the preamble because
Matthews’s Figure 4 illustrates video program guide 100 that includes
multiple video programming tiles 102. Pet. 71–72 (citing Ex. 1007, 1:7–9,
4:46–52, 9:56–61, Fig. 4). Dish asserts that Matthews’s video program
guide 100 amounts to the “multi-window video display.” Id. at 72 (Ex. 1003
¶¶ 446, 447). Dish further argues that Matthews’s video program guide 100
is interactive because a viewer navigates between and selects video
programming tiles 102 using directional control keypad 90 on interactive
controller 20. Id. (citing Ex. 1007, 4:62–64; Ex. 1003 ¶¶ 448–450).
Independent claim 30 recites “receiving a multi-window real time
video signal representing a multi-window video display corresponding to
channels selected by a user in accordance with a category,” wherein the
multi-window real time video signal further includes “one or more reduced
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size video displays.” Ex. 1001, 38:6–10. Dish contends that Matthews
teaches or suggests “receiving a multi-window real time video signal”
because it discloses that interactive controller 20 “receive[s] programming
from central control node 12 and control[s] the associated video display sets
18 in accordance with the programming.” Pet. 73 (quoting Ex. 1007, 3:31–
33). Dish relies on an annotated version of Figure 2 of Matthews,
reproduced below, to explain how interactive controller 20 generates and
sends a multi-window video signal to video display set 18. Id.

Id. at 74. According to Dish, the annotated version of Figure 2, reproduced
above, illustrates how various components located within interactive
controller 20, including CPU 66, graphics subsystem 72, video processor
subsystem 74, and mixer 76, work together to generate and send a multi-
window video signal to video display set 18. Id. at 73. Dish asserts that the
signal received by mixer 76 and the signal sent by mixer 76 to video display
set 18 are both “multi-window” signals because they include multiple
reduced size video programming tiles 102, and these signals are “real time”
because each reduced size video programming tile 102 relates to live
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programming available on the associated channel. Id. at 74–75 (citing
Ex. 1007, 4:44–49, Fig. 4; Ex. 1003 ¶¶ 454, 455); see also id. at 77 (arguing
that Matthews’s Figure 4 illustrates reduced size video programming tiles
102 and, therefore, teaches or suggests “one or more reduced size video
displays” (citing Ex. 1007, 4:22–25, Fig. 4; Ex. 1003 ¶ 460)).
Dish further argues that, although Matthews teaches or suggests the
“multi-window display corresponding to channels selected by a user”
because it discloses allowing a viewer to “select which channels are
displayed and, in a preferred embodiment, control which channels are
displayed together,” Matthews does not disclose explicitly that the viewer
selects channels “in accordance with a category.” Pet. 75–76 (quoting
Ex. 1007, 2:35–40) (citing Ex. 1007, 6:6–9, 10:42–46). Relying on the
testimony of Mr. Wechselberger, Dish argues that a person of ordinary skill
in the art would have recognized that, based on Matthews’s teaching alone,
it would have been obvious for a viewer to select channels “in accordance
with a category.” Id. at 76 (Ex. 1003 ¶ 457). Alternatively, Dish relies on
Schein’s disclosure of selecting programs by category to teach this
limitation. Id. (citing Ex. 1008, 10:60–11:11). For example, Dish argues
that Schein states that “a viewer may want to see a listing of all comedy
movies.” Id. (quoting Ex. 1008, 10:64–65).
Independent claim 30 further recites “receiving a cell quantity data
value corresponding to the number of reduced size video displays in the
multi[-]window video signal.” Ex. 1001, 38:10–12. Dish contends that
Matthews teaches or suggests this limitation because numeric keypad 92 on
control unit 71 permits a viewer to modify the number of reduced size video
programming tiles 102 in video programming guide space 150. Pet. 77
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(citing Ex. 1007, 10:42–46, 10:53–55; Ex. 1003 ¶ 461). Dish further argues
that CPU 66 located within interactive controller 20 “receiv[es] a cell
quantity data value” because CPU 66 retrieves video guide format
information that includes, “for example, an array format indicating the
number and arrangement of video programming tiles 102 in video program
guide 100.” Id. at 78 (emphasis omitted) (quoting Ex. 1007, 5:62–6:6)
(citing Ex. 1003 ¶ 462).
Independent claim 30 next recites “generating an overlay grid having
a number of cells equal to the cell quantity data value.” Ex. 1001, 38:13–14.
Dish contends that Matthews teaches or suggests this limitation because it
discloses that the number and arrangement of video programming tiles 102
in video program guide 100 constitute the claimed “cell quantity data value”
received by interactive controller 20 and retrieved by CPU 66 during
operation. Pet. 78–79 (citing Ex. 1007, 4:46–57, 5:62–6:6, 7:37–39, Fig. 4).
More specifically, Dish argues that Matthews’s CPU 66 provides
information to graphics subsystem 72 that results in “generating an overlay
grid having a number of cells equal to the cell quantity data value.” Id. at 79
(citing Ex. 1007, 4:19–21; Ex. 1003 ¶¶ 463, 464).
Lastly, independent claim 30 recites “presenting the multi-window
display together with the overlay grid so that the reduced size video displays
are visible within the cells allowing selection of one of the plurality of the
reduced size video displays.” Ex. 1001, 38:16–19. Dish contends that
Matthews teaches or suggests “presenting the multi-window display together
with the overlay grid so that the reduced size video displays are visible
within the cells” because it discloses that “video program guide 100 is
rendered by cooperation between [CPU] 66, graphics subsystem 72, and
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video processor subsystem 74, which functions to size and position the
display imagery within each of the video programming tiles 102.” Pet. 79–
80 (quoting Ex. 1007, 7:9–14). Dish argues that Matthews’s mixer 76
receives a video display signal from video processor subsystem 74 and
graphics image signals from graphics subsystem 72, and then delivers a
composite signal to video display set 18 resulting in, for example, video
program guide 100 illustrated in Figure 4. Id. (citing Ex. 1007, 4:22–29;
Ex. 1003 ¶ 465). Dish also contends that Matthews teaches or suggests
“allowing selection of one of the plurality of the reduced size video
displays” because it discloses that a viewer uses directional control keypad
90 on control unit 71 to navigate between and select one of the reduced size
video programming tiles 102 in video program guide 100. Id. at 80 (citing
Ex. 1007, 4:11–13, 4:38–40, 4:62–64; Ex. 1003 ¶ 466).
Turning to the rationale to combine, Dish contends that a person of
ordinary skill in the art would have been motivated “to integrate Schein’s
category/theme based selection into Matthews to provide a more efficient
technique for selecting channels for display in” Matthews’s video program
guide 100. Pet. 71 (citing Ex. 1003 ¶¶ 445, 446). According to Dish, a
person of ordinary skill in the art would have recognized that “the
integration of this type of selection permits a viewer to more efficiently
review and select programs because the viewer can narrow the viewing
options to those associated with a specific type of program.” Id.
During trial, Contemporary contends that Matthews does not teach or
suggest “receiving a multi-window real time video signal representing a
multi-window video display” and “receiving a cell quantity data value . . . in
the multi[-]window video signal,” as recited in independent claim 30,
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because (1) there is no indication in Matthews that any of the components
that make up its interactive controller 20 ever combine reduced-size images
into a multi-window video signal; and (2) Dish’s declarant, Mr.
Wechselberger, creates an annotated version of Matthews’s Figure 2 that is
not supported by Matthews’s actual disclosure nor the knowledge of a
person of ordinary skill in the art. See PO Resp. 23–32; PO Sur-reply 18.
We address these arguments below.
a. “receiving a multi-window real time video signal representing a
multi-window video display” and “receiving a cell quantity data
value . . . in the multi[-]window video signal”
Contemporary disagrees with Dish’s position that the components that
make up Matthews’s interactive controller 20 illustrated in Figure 2, such as
graphics subsystem 72, video processor subsystem 74, and mixer 76, receive
a multi-window video signal. PO Resp. 23–24. More specifically,
Contemporary takes issue with Dish’s argument that Matthews’s video
process subsystem 74 generates the 2x3 matrix of reduced size screens
illustrated in Figure 4 by, among other things, “sizing and positioning a
video display window.” Id. at 24 (quoting Ex. 1007, 4:22–25) (citing
Ex. 1003 ¶ 452). According to Contemporary, the “sizing and positioning”
discussed in relation to Matthews’s video process subsystem 74 only applies
to an individual frame or programming tile and not the entire 2x3 array of
reduced size screens illustrated in Figure 4. Id. at 24–25 (citing Ex. 1007,
4:9–5:56; Ex. 2001 ¶¶ 79, 80).
Contemporary further contends that Matthews teaches away from
receiving a multi-window video signal because the method of providing a
video program guide illustrated in Matthews’s Figure 5 only discloses
examining “one [programming] tile of the video program guide at a time to
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determine whether to retrieve a new video segment and/or new static images
to populate that specific [programming] tile of the video program guide.”
PO Resp. 25–26 (emphasis omitted) (citing Ex. 1007, 2:58–59, 5:23–28,
5:37–39; Ex. 2001 ¶¶ 81, 82). Contemporary asserts that “[t]here is nothing
in Matthews to suggest that images intended for multiple [programming]
tiles are somehow combined and communicated” in a multi-window video
signal. Id. (citing Ex. 2002 ¶ 83).
Lastly, Contemporary contends Dish relies on an annotated version of
Matthews’s Figure 2 created by its declarant, Mr. Wechselberger, that is not
supported by Matthews’s actual disclosure nor the knowledge of a person of
ordinary skill in the art. PO Resp. 27. To support this argument,
Contemporary identifies multiple disclosures in Matthews cited in the
Petition and proceeds to argue how each of these disclosures does not
support the annotations to Matthews’s Figure 2 added by Mr.
Wechselberger. Id. at 28–30 (citing Ex. 1007, 2:8–11, 3:60–64, 4:21–29,
9:56–61). Contemporary then reiterates that Matthews’s Figure 5 and its
corresponding description disclose an interactive program guide that “just
updates the individual [programming] tiles whenever a user indicates that
the channel associated with the individual [programming] tile is one of
interest to the user,” and this provisioning of video to an individual
programming tile is not a multi-window video signal. Id. at 30–31
(emphasis added) (citing Ex. 1007, 5:23–28; Ex. 2001 ¶¶ 91, 92).
In its Reply, Dish counters that Contemporary recognizes that
Matthews’s Figure 4 illustrates a “multi-window video display” that is
rendered on video display set 18, but disputes whether Matthews teaches or
suggests the existence of any signal that carries this multi-window video
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display. Pet. Reply 24. Dish contends that, contrary to Contemporary’s
argument that programming tiles 102 illustrated in Figure 4 are only updated
one at a time, Matthews’s Figure 5 explicitly teaches that, “after retrieving a
video segment, the system must render the entire video program guide for
display.” Id. at 24–25 (citing Ex. 1028 ¶ 52). According to Dish,
Matthews’s Figure 5 and its corresponding description teach or suggest that
“video program guide 100, including all of the programming tiles [102], is
rendered into a single signal for display on the screen.” Id. at 26 (citing
Ex. 1007, 4:46–49, 7:9–14, Fig. 5). Dish further contends that rendering a
video program guide with multiple programming tiles into a single signal for
display on a screen was known to a person of ordinary skill in the art, as
evidenced by the disclosure in the ’997 patent. Id. at 27 (citing Ex. 1001,
27:23–34).
In its Sur-reply, Contemporary contends the claimed “multi-window
video signal” “must be something other than a standard television signal”
and “[n]othing in [Dish’s] Reply changes . . . that Matthews does not
disclose a multi-window video signal.” Sur-reply 18 (emphasis omitted).
Based on the fully developed trial record, we agree with Dish that
Matthews teaches or suggests “receiving a multi-window real time video
signal representing a multi-window video display” and “receiving a cell
quantity data value . . . in the multi[-]window video signal,” as recited in
independent claim 30. Beginning with “receiving a multi-window real time
video signal representing a multi-window video display,” Matthews’s
Figure 2 illustrates interactive controller 20 that includes CPU 66, which
controls, among other things, graphics subsystem 72 and video processor
subsystem 74. See Ex. 1007, 4:9–25. Graphics subsystem 72 “form[s]
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graphic images, including interactive system user interface images, on video
display set 18,” whereas video process subsystem 74 “provides control in the
rendering of video imagery, including decompressing digital video signals
and sizing and positioning a video display window.” Id. at 4:19–25.
Interactive controller 20 also includes mixer 76 that “receives a video
display signal from video processing subsystem 74 and graphics image
signals from graphics subsystem [72]6 and delivers a mixed image signal to
video display set 18,” which, in turn, displays “video program guide 100”
with “multiple programming tiles 102,” as illustrated in Figure 4 of
Matthews. Id. at 4:26–29, 4:44–49.
Based on these cited disclosures in Matthews, we agree with Dish that
CPU 66 controls the operations of video processor subsystem 74 to generate
a video signal that is received by mixer 76, which, in turn, combines the
video signal received from video processor subsystem 74 and the graphics
image signal received from graphics subsystem 72 to generate a composite
signal that it transmits to video display set 18 to create a multi-window
display and overlay graphics. See Pet. 73–75. Mr. Wechselberger testifies
that the signal received by mixer 76 and the composite signal sent by mixer
76 to video display set 18 both teach or suggest “‘a multi-window . . . video
signal’ because both signals contain multiple videos (referred to in Matthews
as [programming] tiles) that have been reduced in size by video processor
subsystem 74.” Ex. 1003 ¶ 454. Mr. Wechselberger further testifies that

6 At column 4, lines 26 through 29, Matthews identifies graphics subsystem
as item “70.” We understand this to be a typographical error because
graphics subsystem corresponds to item 72, whereas infrared input and
decoder corresponds to item 70. Ex. 1007, Fig. 2.
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video programming tiles 102 in video program guide 100, as illustrated in
Matthews’s Figure 4, amounts to “a ‘multi-window video display’” because
“the [video] signal received by mixer 76 and the [composite] signal received
by” video display set 18 represent a multi-window video display. Id. ¶ 455.
We credit Mr. Wechselberger’s testimony in this regard because it is
consistent with the disclosures in Matthews identified above.
Matthews’s Figure 5 and its corresponding description further
supports our understanding of how mixer 76 and video display set 18 both
receive a multi-window video signal representing a multi-window video
display. Figure 5, reproduced below, illustrates a method of providing a
video program guide on video display set 18. Ex. 1007, 2:58–59, 5:46–49.

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Figure 5, reproduced above, illustrates steps 120 through 146 that, when
followed, render a video program guide on a selected video display set based
on programming that is available on interactive television system 10. See id.
at 5:46–7:20. Notably, Matthews discloses that, at step 142, “video program
guide 100 is rendered by cooperation between [CPU] 66, graphics subsystem
72, and video processor subsystem 74, which functions to size and position
the display imagery within each of the video programming tiles 102.” Id. at
7:9–14. This description of Figure 5 and, in particular, step 142 supports our
view that the multiple programming tiles 102 of video programming guide
100 illustrated in Figure 4 are rendered on video display set 18 based on the
composite signal it receives from mixer 76.
Turning to “receiving a cell quantity data value . . . in the multi[-]
window video signal,” Matthews discloses that a viewer may use numeric
keypad 92 on control unit 71 to “modify video programming guide space
150 to include different numbers of rows (e.g., 1, 3, or 4) or video program
tiles 102.” Ex. 1007, 10:53–55. When describing the method of providing a
video program guide on video display set 18 illustrated in Figure 5,
Matthews discloses that CPU 66 retrieves video guide format information
that includes, “for example, an array format indicating the number and
arrangement of video programming tiles 102 in video program guide 100.”
Id. at 5:62–6:6. Based on these disclosures in Matthews, we agree with Dish
that a viewer is capable of using numeric keypad 92 on control unit 71 to
modify the video programming tiles 102 in video program guide 100 by
entering an array format with a different number of rows and, therefore,
Matthews teaches or suggests “receiving a cell quantity data value” that
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ultimately is incorporated “in the multi-window video signal” generated, at
least in part, by CPU 66. See Pet. 77–78; Ex. 1003 ¶¶ 461, 462.
We do not agree with Contemporary’s argument that the signal
generated by the various components of Matthews’s interactive controller 20
(i.e., graphics subsystem 72, video processor subsystem 74, and mixer 76)
applies only to one of the multiple programming tiles 102 in video program
guide 100. See PO Resp. 23–25, 30–31. Contemporary’s argument in this
regard is misplaced because it conflates how Matthews’s interactive
controller 20 transmits a multi-window video signal to video display set 18
to render multiple programming tiles 102 in video program guide 100 for
display, with how a user specifically focuses on only one programming tile
102 after video program guide 100 has been rendered.
As we explained above, Matthews discloses that the components of
interactive controller 20 first generate and then transmit a multi-window
video signal to video display set 18 and, upon receipt of the multi-window
video signal, video display set 18 uses that signal to render multiple
programming tiles 102 in video program guide 100 for display. Ex. 1007,
4:9–29, 4:44–49. Only after video display set 18 uses the multi-window
video signal to render multiple programming tiles 102 in video program
guide 100 for display may a user employ cursor 108 to select or focus on one
individual video programming tile 102. Id. at 5:6–15. Matthews discloses
that “[t]he video programming tile 102 focused upon by a [user] is referred
to herein as the focused video programming tile 102a for which a multi-
frame video segment 104a is rendered, if available.” Id. at 5:16–19. Stated
differently, Matthews does not disclose that video display set 18 receives a
video display signal for only one programming tile 102 in video program
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guide 100 at a time and then constructs video program guide 100, but rather
Matthews discloses that video display set 18 receives a multi-window video
signal that allows it to render multiple individual programming tiles 102 in
video program guide 100 together at the same time, thereby permitting a
user to select focused video programming tile 102a.
We also do not agree with Contemporary’s argument that Matthews
teaches away from receiving a multi-window video signal, which, similar to
Contemporary’s first argument discussed above, is predicated on the notion
that Matthews receives a video signal for only one programming tile 102 of
the video program guide 100 at a time. See PO Resp. 25–26. It is well-
settled that a reference teaches away from a claimed invention if it
“criticize[s], discredit[s], or otherwise discourage[s]” modifying the
reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). We will not, however, “read into a reference a
teaching away from a process where no such language exists.” DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1364 (Fed. Cir. 2006). As we explained above, contrary to
Contemporary’s teaching away argument, Matthews discloses that video
display set 18 receives a multi-window video signal that allows it to render
multiple individual programming tiles 102 in video program guide 100
together at the same time—the video display set 18 does not receive a video
display signal for only one programming tile 102 at a time and then
construct video program guide 100. In essence, Contemporary attempts to
read into Matthews a teaching away where no such language exists. See
DyStar, 464 F.3d at 1364.
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Finally, we do not agree with Contemporary’s argument that Dish’s
reliance on an annotated version of Matthews’s Figure 2 created by its
declarant, Mr. Wechselberger, is not supported by Matthews’s actual
disclosure nor the knowledge of a person of ordinary skill in the art. See PO
Resp. 27–31. As we explained above, there is a sufficient basis in the
teachings of Matthews to support the annotations to Figure 2 added by Mr.
Wechselberger. See Ex. 1007, 3:58–63, 4:9–29, 4:44–49.
b. Summary
In summary, Dish has demonstrated by a preponderance of the
evidence that the subject matter of independent claim 30 would have been
obvious over the combined teachings of Matthews and Schein.
4. Claims 32–36
Dish also contends that dependent claims 32–36 of the ’997 patent are
unpatentable under § 103(a) as obvious over the combined teachings of
Matthews and Schein. Pet. 80–84. Dish explains how this proposed
combination teaches or suggests the subject matter of each dependent claim,
and provides reasoning as to why one of ordinary skill in the art would have
been prompted to modify the teachings of Matthews with those of Schein.
Pet. 80–84; Ex. 1003 ¶¶ 467–474.
As one example, claim 33 depends from independent claim 30, and
further recites “automatically presenting an audio signal corresponding to a
selected reduced size video display.” Ex. 1001, 38:29–31. Dish contends
that Matthews teaches or suggests this limitation because it discloses
retrieving a digitized audio segment “from the EPG database” and playing
that digitized audio segment “with each digital video segment or still
image.” Pet. 80 (quoting Ex. 1007, 7:21–23). Dish further argues that the
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digitized audio segment includes an audio portion of the selected
programming. Id. (citing Ex. 1007, 7:23–27).
As another example, claim 36 depends from independent claim 30,
and further recites “indicating on the overlay grid which one of the plurality
of reduced size video displays is selected.” Ex. 1001, 38:39–41. Dish
contends that Matthews teaches or suggests this limitation because it
discloses changing “the graphic characteristics of the video programming
tiles 102 where the cursor is positioned.” Pet. 83 (Ex. 1007, 5:6–9). Dish
also directs us to Matthews’s Figure 4 as one exemplary technique for
indicating that reduced size video programming tile 102a has been selected.
Id. at 83–84 (citing Ex. 1007, Fig. 4; Ex. 1003 ¶ 474).
During the course of trial, Contemporary does not address separately
Dish’s explanations and supporting evidence as to how the combined
teachings of Matthews and Schein account for the additional limitations of
dependent claims 32–36. See PO Resp. 19–32; PO Sur-reply 18. We have
reviewed Dish’s explanations and supporting evidence as to how the
combined teachings of Matthews and Schein account for the additional
limitations of these dependent claims, and we agree with and adopt Dish’s
analysis. See Pet. 80–84. Accordingly, Dish has demonstrated by a
preponderance of the evidence that the subject matter of dependent claims
32–36 would have been obvious over the combined teachings of Matthews
and Schein.

III. CONCLUSIONS
Dish has demonstrated by a preponderance of the evidence that
(1) claims 1–9, 12, 16, and 30–36 are unpatentable under § 103(a) as
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obvious over the teachings of Niijima; (2) claims 10, 11, 13–15, 17–29, and
37–43 are unpatentable under § 103(a) as obvious over the combined
teachings of Niijima and Devaney; and (3) claims 30 and 32–36 are
unpatentable under § 103(a) as obvious over the combined teachings of
Matthews and Schein. A summary of our conclusions is set forth in the table
below.
Claims 35 U.S.C. § Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–9, 12,
16, 30–36
103(a) Niijima 1–9, 12, 16,
30–36

10, 11, 13–
15, 17–29,
37–43
103(a) Niijima,
Devaney
10, 11, 13–15,
17–29, 37–43

30, 32–36 103(a) Matthews,
Schein
30, 32–36
Overall
Outcome
1–43

IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1–43 of the ’997 patent are held to be
unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONER:
Lori Gordon
Steven Peters
Mikaela Stone
KING & SPALDING LLP
lgordon@kslaw.com
speters@kslaw.com
mikaela.stone@kslaw.com

For PATENT OWNER:

Aakash Parekh
aakashparekh@gmail.com

Daniel Ford
dford@tlgiplaw.com

Benjamin Johnson
McDONNELL BOEHNEN HULBERT & BERGHOFF LLP
bjohnson@mbhb.com