Rovi Guides, Inc.

Patent Trials and Appeals Board

Jun 29, 2020

IPR2019-00299 (P.T.A.B. Jun. 29, 2020)

Trials@uspto.gov Paper No. 45
571-272-7822 Date: June 29, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

COMCAST CABLE COMMUNICATIONS, LLC,
Petitioner,

v.

ROVI GUIDES, INC.,
Patent Owner.
____________

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____________

Before KARL D. EASTHOM, LYNNE E. PETTIGREW, and
BARBARA A. PARVIS, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

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

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I. INTRODUCTION
Comcast Cable Communications, LLC (“Petitioner”) filed a Petition
pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
claims 1–28 (the “challenged claims”) of U.S. Patent No. 9,294,799 B2 (Ex.
1001, “the ’799 Patent”). Paper 2 (“Pet.”). Rovi Guides, Inc. (“Patent
Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). Upon
consideration of the parties’ contentions and supporting evidence, we
instituted an inter partes review pursuant to 35 U.S.C. § 314, as to the
challenged claims of the ’799 Patent. Paper 13 (“Inst. Dec.”).
After institution, Patent Owner filed a Patent Owner Response (Paper
18, “PO Resp.”); Petitioner filed a Reply (Paper 23, “Pet. Reply”); and
Patent Owner filed a Sur-Reply (Paper 32, “PO Sur-Reply”). A transcript of
the hearing held on April 1, 2020 has been entered into the record as Paper
44 (“Tr.”).
This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
For the reasons that follow, we determine that Petitioner has demonstrated
by a preponderance of evidence that claims 1–28 of the ’799 Patent are
unpatentable.
II. BACKGROUND
A. Real Parties-in-Interest
Petitioner identifies as the real parties-in-interest the following:
Comcast Corp.; Comcast Business Communications, LLC; Comcast Cable
Communications Management, LLC; Comcast Cable Communications,
LLC; Comcast Financial Agency Corp.; Comcast Holdings Corp.; Comcast
Shared Services, LLC; Comcast STB Software I, LLC; Comcast of Santa
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Maria, LLC; and Comcast of Lompoc, LLC. Pet. 1. Patent Owner names as
the real parties-in-interest Rovi Guides, Inc. and Rovi Corp. Paper 4, 1.
B. Related Matters
As required by 37 C.F.R. § 42.8(b)(2), each party identifies a judicial
matter that would affect, or be affected by, a decision in this proceeding. In
particular, the parties inform us that the ’799 Patent is asserted in Rovi
Guides, Inc. v. Comcast Corp., No. 2-18-cv-00253 (C.D. Cal. filed Jan. 10,
2018). Pet. 1; Paper 4, 1; Paper 6, 1. The parties also inform us that the
’799 Patent previously was asserted, but no longer is asserted, in Digital
Video Receivers and Related Hardware and Software Components, Inv. No.
337-TA-1103 (ITC filed Feb. 8, 2018) (“related ITC proceeding”). Pet. 1–2;
Paper 6, 1.
Additionally, Petitioner filed five petitions, each requesting inter
partes review of claims 1–28 of the ’799 Patent, including the instant
Petition. We exercised our discretion under 35 U.S.C. § 314 and denied
institution of inter partes review in the other proceedings. See, e.g.,
Comcast Cable Communications, LLC v. Rovi Guides, Inc., IPR2019-00300,
Paper 13 (PTAB July 1, 2019) (Decision Denying Institution).
C. The ’799 Patent
The ʼ799 Patent is directed to on-demand media delivery systems.
Ex. 1001, 1:28–30. Figure 2 of the ’799 Patent is reproduced below.
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Figure 2 of the ’799 Patent, above, illustrates network topology 200
including user equipment 260 and 265, remote server network 210, and
communications network 270. Id. at 6:1–6.
User equipment 260 and 265 may include input devices 261 and 266,
display devices 262 and 267, set-top boxes 263 and 268, and communication
devices 264 and 269 respectively. Id. at 6:14–17. Remote server network
210 stores on-demand media content and on-demand media data at a remote
location. Id. at 7:8–10. Communications network 270 provides a
communications hub and communications media for user equipment 260 and
265. Id. at 6:62–63.
D. Illustrative Claim
Petitioner challenges claims 1–28 of the ’799 Patent. Pet. 1. Claims
1, 10, 19, and 28 are independent claims. Claims 2–9, 11–18, and 20–27
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depend directly from claims 1, 10, and 19, respectively. Independent claim
1, reproduced below, is illustrative of the claimed subject matter.
1. A first user equipment configured to:
receive, using control circuitry, a selection of a media asset
identifier corresponding to media content, wherein the media
content was previously accessed by second user equipment,
wherein a request to pause access to the media content was
received by the second user equipment when the media
content was previously accessed by the second user
equipment, and wherein a position, in the media content, that
corresponds to a pause point, was stored in a data structure of
a profile of a user in a storage device remote from the first
user equipment when the request to pause access to the media
content was received by the second user equipment;
access the data structure of the profile of the user;
access, from the data structure, the position that corresponds to
the pause point;
retrieve the position that corresponds to the pause point from the
data structure;
determine, based on information in the data structure, that the
media content was previously accessed by the second user
equipment;
based on the receiving:
cause to be simultaneously displayed a first option and a
second option;
determine whether the first option or the second option is
selected by the user; and
when it is determined that the first option is selected by the
user:
generate a request including a position identifier that
identifies the retrieved position that corresponds to the
pause point,
transmit the request, and
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receive, from the position that corresponds to the pause
point, based on the position identifier included in the
request, the media content; and
when it is determined that the second option is selected by the
user:
access the media content starting from a second point in
the media content which is prior to the position.
Ex. 1001, 17:55–18:27.
E. Evidence Relied Upon
Petitioner relies on the following references:
U.S. Patent No. 7,127,735 B1, filed May 19, 2000, issued October 24,
2006 (Ex. 1003, “Lee”);
U.S. Patent No. 6,501,902 B1, filed January 27, 1999, issued
December 31, 2002 (Ex. 1004, “Wang”);
U.S. Patent No. 6,769,127 B1, filed June 16, 2000, issued July 27,
2004 (Ex. 1005, “Bonomi”);
U.S. Patent No. 6,622,148 B1, filed October 23, 1996, issued
September 16, 2003 (Ex. 1006, “Noble”);
U.S. Patent No. 6,956,833 B1, filed April 4, 2000, issued October 18,
2005 (Ex. 1007, “Yukie”); and
U.S. Patent No. 7,036,738 B1, filed May 3, 1999, issued May 2, 2006
(Ex. 1018, “Vanzini”).
Additionally, Petitioner relies on the Declaration of Dr. Gary Tjaden.
(Ex. 1002) and the Second Declaration of Dr. Tjaden. (Ex. 1025). Patent
Owner relies on the Declaration of Dr. Andrew Wolfe (Ex. 2005).
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F. Grounds Asserted
Petitioner asserts the grounds of unpatentability below. Pet. 8.
Claims Challenged 35 U.S.C. § Reference(s)/Basis
1–4, 6 103(a) Lee, Wang
5, 9 103(a) Lee, Wang, Bonomi
7 103(a) Lee, Wang, Noble
8, 10–13, 15, 17,
19–22, 24, 26, 28
103(a) Lee, Wang, Yukie
14, 18, 23, 27 103(a) Lee, Wang, Yukie, Bonomi
16, 25 103(a) Lee, Wang, Yukie, Noble
1–4, 6 103(a) Lee, Wang, Vanzini
5, 9 103(a) Lee, Wang, Vanzini, Bonomi
7 103(a) Lee, Wang, Vanzini, Noble
8, 10–13, 15, 17,
19–22, 24, 26, 28
103(a) Lee, Wang, Vanzini, Yukie
14, 18, 23, 27 103(a) Lee, Wang, Vanzini, Yukie, Bonomi
16, 25 103(a) Lee, Wang, Vanzini, Yukie, Noble
Table 1 of this Decision, above, summarizes the grounds in the instant
proceeding.
The ’799 Patent was filed October 29, 2015 and claims priority to a
series of continuation applications to at least October 9, 2001 and to
provisional applications having earlier filing dates. Ex. 1001, codes (22),
(63), and (60). Because the challenged claims of the ’799 Patent have an
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effective filing date before March 16, 2013, the 35 U.S.C. §§ 102 and 103
provisions of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No.
112-29, §§ 3(b)–3(c), 3(n)(1), 125 Stat. 284, 285–87, 293 (2011), do not
apply and we apply the pre-AIA versions of these statutes.
III. DISCUSSION
A. Principles of Law Relating to Obviousness
A patent claim is unpatentable 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.
35 U.S.C. § 103(a). 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) objective evidence of
nonobviousness, i.e., secondary considerations. 1 See Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966). When evaluating a combination of
teachings, we also “determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at issue.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We analyze the
grounds in accordance with the above-stated principles.
B. Level of Ordinary Skill
Petitioner contends, relying on the testimony of Dr. Tjaden, that a
person having ordinary skill in the art would have had a bachelor’s degree in

1 No objective indicia have been argued or cited in this case.
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electrical engineering, computer engineering, computer science, or a similar
discipline, and at least two years of experience or familiarity with control of
media playback in networked media devices or would have had equivalent
experience either in industry or research. Pet. 14 (citing Ex. 1002 ¶¶ 29–31).
Dr. Tjaden testifies as follows:
29. I understand that obviousness is determined from
the vantage point of a person of ordinary skill in the relevant art
at the time of the alleged invention [person of ordinary skill in
the art (POSA).2] Thomas [the ’799 Patent] states that the
invention “relates to on-demand media delivery systems and
more particularly, to on-demand media delivery systems that
have user-related memory tor [sic] providing system
enhancements” (Ex. 1001 to the Petition at 1:28–31), and I agree
that this represents the relevant field of art. I understand that a
POSA is one who is presumed to be aware of all pertinent art,
thinks along conventional wisdom in the art, and is a person of
ordinary creativity.
30. I believe that a POSA of Thomas at the time of the
alleged invention of Thomas would have a bachelor’s degree in
computer science, electrical engineering, computer engineering,
or a similar discipline, and two years of experience with or
familiarity with control of media playback in networked media
devices for delivering video-on-demand content over
communication networks, such as a cable system, a local-area
network, or the Internet. In the alternative, a POSA of Thomas
could have equivalent experience either in industry or research,
such as designing, developing, evaluating, testing, or
implementing the aforementioned technologies. I worked in the
relevant field with such persons at, and leading up to, the time of
the alleged invention of Thomas, and thus I am familiar with the
knowledge that such persons had at the time (i.e., 2000–2001).

2 Throughout this Decision “POSA” stands for person of ordinary skill in the
art or person having ordinary skill in the art, which have the same meaning
and are used interchangeably.
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Ex. 1002 ¶¶ 29–30.
Relying on the testimony of Dr. Wolfe, Patent Owner asserts
[b]ased on the technologies disclosed in the ’799 patent, a
person having ordinary skill in the art (“POSA”) would have at
least a bachelor’s degree in electrical or computer engineering or
computer science plus two years of industry experience in remote
data storage, on-demand media delivery, and digital video
recording (DVR) technology. See EX2005, ¶28. A higher level
of education or skill might make up for less experience and vice
versa. Id.
PO Resp. 24. Dr. Wolfe’s testimony (Ex. 2005 ¶ 28) is the same as Patent
Owner’s assertion above.
In determining the level of ordinary 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). The level of ordinary skill in the art is also reflected by
the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
Cir. 2001).
Both parties assert that a person having ordinary skill in the art would
have had a bachelor’s degree in electrical engineering, computer
engineering, or computer science. Pet. 14; Ex. 1002 ¶ 30; PO Resp. 24;
Ex. 2005 ¶ 28. Petitioner asserts as an alternative that a person having
ordinary skill in the art would have “a similar discipline” (Pet. 14), whereas
Patent Owner asserts that “[a] higher level of education or skill might make
up for less experience and vice versa.” PO Resp. 24.
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Considering the subject matter of the ’799 Patent, the background
technical field, and the asserted prior art, we agree with Petitioner’s
proposed qualifications for an acceptable educational background. Our view
is that degrees in electrical engineering, computer engineering, computer
science, or a similar discipline, would have provided sufficient educational
background in light of the technology at issue in the’799 Patent and asserted
prior art. Patent Owner’s proposal is the same except it omits Petitioner’s
proposed alternative “or a similar discipline” (Pet. 14) without explanation.
We determine Petitioner’s proposal more accurately encompasses other
similar disciplines that do not have the precise titles set forth in the proposals
by both parties, but which would have been understood by a person having
ordinary skill in the art as being sufficiently similar.
We also agree with Dr. Tjaden’s testimony that two years of
experience with control of media playback in networked media devices for
delivering video-on-demand content over communication networks, such as
a cable system, a local-area network, or the Internet (Ex. 1002 ¶ 30) is
appropriate. Patent Owner’s proposal also is that two years of experience is
appropriate and that the experience includes “on-demand media delivery.”
PO Resp. 24; Ex. 2005 ¶ 28. Both are consistent with Petitioner’s proposal,
as is Patent Owner’s contention regarding experience in remote data storage,
because Patent Owner agrees data stored remotely is accessed through a
communications link (see, e.g., PO Resp. 12) and Petitioner’s level of skill
includes experience with control of media playback in networked media
devices (Pet. 14).
We do not adopt Petitioner’s proposal that “familiarity” with the
aforementioned technologies is sufficient as mere familiarity may
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encompass consumers of the technologies that would not have had sufficient
technical knowledge, for example, of delivering video-on-demand content.
Also, we clarify that “experience” must have been experience in either
industry or research.
Consistent with Petitioner’s proposal and Dr. Tjaden’s testimony, the
’799 Patent describes “[t]he present invention relates to on-demand media
delivery systems and more particularly, to on-demand media delivery
systems that have user-related memory [f]or providing system
enhancements.” Ex. 1001, 1:28–31. Also consistent with Petitioner’s
proposal is Figure 1, which describes “a network topology of an on-demand
media delivery system.” Id. at 2:59–60. Other figures and description in the
’799 Patent describe on-demand media delivery systems and navigation
displays, as well as other features of such systems. See, e.g., id. at 2:62–
3:62, 6:1–3, 8:19–22, 9:8–10.
The parties’ proposals differ in that Patent Owner’s proposal requires
industry experience in DVR technology. PO Resp. 24; Ex. 2005 ¶ 28. To
the extent that a person having two years of experience with or familiarity
with control of media playback in networked media devices for delivering
video-on-demand content over communication networks also would have
had industry experience using DVR technology in an on-demand delivery
system, Patent Owner’s proposal overlaps Petitioner’s proposal and is at best
redundant. Patent Owner’s inclusion of DVR technology, however, in the
context of the ’799 Patent is vague and encompasses knowledge beyond the
technologies of the ’799 Patent. For instance, Patent Owner asserts
“knowledge of the digital video industry or its players” is appropriate. PO
Resp. 25. We disagree as such knowledge encompasses business, rather
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than technical, knowledge and is vague as to what entities constitute
“players” in the video industry.
Patent Owner asserts that its proposal is “[b]ased on the technologies
disclosed in the ’799 patent,” but Patent Owner does not identify specific
portions of the ’799 Patent that support Patent Owner’s proposal. Id. at 24.
Indeed, Patent Owner does not dispute (see, e.g., PO Sur-Reply) Petitioner’s
assertions that “‘DVR’ never appears in the ’799 patent specification or
claims, and ‘digital video recorder’ appears only once in the specification,
but not the claims.” Pet. Reply 25–26. Furthermore, Dr. Wolfe testified
during his deposition that claim 1 need not include a digital video recorder.
Ex. 1026, 43:1–7. Patent Owner also does not identify portions of the
asserted prior art in support of its proposal and, instead, relies entirely on a
paragraph of Dr. Wolfe’s Declaration that does not include citations to the
record.
We adopt Petitioner’s and Dr. Tjaden’s level of skill with slight
modifications. In particular, we adopt as the level of skill the following: a
person having ordinary skill in the art would have had a bachelor’s degree in
computer science, electrical engineering, computer engineering, or a similar
discipline, and two years of industry or research experience with control of
media playback in networked media devices for delivering video-on-demand
content over communication networks, such as a cable system, a local-area
network, or the Internet. We also agree with Patent Owner’s proposal (PO
Resp. 24) that a higher level of education or skill might make up for less
experience and vice versa.
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C. Dr. Tjaden’s Experience
Patent Owner argues that Dr. Tjaden is not an expert in the relevant
art and “did not have the right experience or knowledge of this field to opine
on what a POSA would understand in this time frame.” PO Resp. 25–26.
Although Patent Owner does not file a Motion to Exclude, Patent Owner
argues that because of the asserted deficiencies, Dr. Tjaden’s opinions
should be given “little weight, especially as they relate to the Lee reference,
which relates to DVR, and the Wang reference, which relates to a VCD.”
Id. at 26 (emphasis added).
Patent Owner’s arguments are based on its proposed level of skill in
the art, which we decline to adopt for the reasons given. See supra § III.B.
We, therefore, do not agree that Dr. Tjaden’s experience is deficient even if
he was not an expert in digital video recorders.
Furthermore, Patent Owner’s assertions are based on
mischaracterizations of Dr. Tjaden’s deposition testimony. For instance, Dr.
Tjaden testified during his deposition that the ’799 Patent “mentions the
term ‘digital video recorder’” and in that context it is relevant to the field of
art. Ex. 2004, 32:10–33:2. Also, Dr. Tjaden testified during his deposition
that he is not familiar with certain details regarding Patent Owner and
predecessor companies such as when its first products were introduced
(26:5–27:14), but Dr. Tjaden was employed by several of the relevant
participants in the industry including Cox Cable Communications (Ex. 1002
¶ 8).
Patent Owner also mischaracterizes certain of Dr. Tjaden’s testimony
as relating to his own experience. PO Resp. 25–26. Instead, Dr. Tjaden
testifies that a person having ordinary skill in the art would not necessarily
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know “major players” because that is not an issue of technology. Ex. 2004,
40:12–18.
Dr. Tjaden testifies regarding his experience as follows:
I have over thirty-five years of experience working with
telecommunication systems and information technology
services, with a significant portion of that experience in the fields
of interactive program guides, set-top boxes, and techniques for
delivering content or program guide data over a cable system or
the Internet. I have held various design, leadership, and
executive positions in, for example, technology research,
engineering, operations, sales and marketing, and product
management at leading companies, such as the Center for
Enterprise Systems at the Georgia Institute of Technology,
NYNEX Corporation, Burroughs/Unisys, Sperry Corporation,
Cox Cable Communications, and Bell Telephone Laboratories.
Ex. 1002 ¶ 8. Dr. Tjaden testifies regarding further details of his experience
including his research experience at the Georgia Institute of Technology and
Sperry Corporation, his position as Senior Vice President of Engineering and
Technology for Cox Cable Communications, as well as his professional
affiliations including serving as Chairman of the Cable Television (CATV)
Trade Association Engineering Committee. See, e.g., id. ¶¶ 9–16.
We have considered Patent Owner’s arguments and evidence, as well
as Dr. Tjaden’s qualifications. We are satisfied with Dr. Tjaden’s
qualifications to testify and with the relevance of his opinions presented.
Patent Owner’s arguments go to the weight that should be given to Dr.
Tjaden’s testimony, which we have weighed with the evidence of record as
discussed herein.
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D. Claim Construction
1. Overview
In this inter partes review, we construe claim terms according to their
broadest reasonable construction in light of the specification of the patent in
which they appear. 37 C.F.R. § 42.100(b) (2018).3 Petitioner provides
claim construction contentions for various terms recited in the claims
including “storage device remote from the first user equipment” recited in
each independent claim. Pet. 11–14. Patent Owner identifies three disputed
claim terms “storage device remote from the first user equipment,”
“determine [determining] based on information in the data structure, that the
media content was previously accessed by the second [first] user
equipment,” and “pause point.” PO Resp. 11–12.
We conclude that we need not address Petitioner’s arguments (Pet.
Reply 1–5) relating to “storage device remote from the first user equipment”
or Patent Owner’s arguments (see, e.g., PO Resp. 11–17) relating to “pause
point” because in light of our analysis (see infra §§ III.E) further
determinations regarding construction of those terms are not needed to
resolve a dispute between the parties. See Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that
“we need only construe terms ‘that are in controversy, and only to the extent

3 The claim construction standard to be employed in an inter partes review
changed. See Changes to the Claim Construction Standard for Interpreting
Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). At the
time of the filing of the Petition in this proceeding, however, the applicable
claim construction standard was set forth in 37 C.F.R. § 42.100(b) (2018).
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necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci.
& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We maintain our
determination at the institution stage that the ordinary and customary
meaning of “remote” is not in the immediate vicinity and accessible through
a communications network.
2. “determine [determining] based on information in the data structure,
that the media content was previously accessed by the second [first]
user equipment”
The term “determine [determining] based on information in the data
structure, that the media content was previously accessed by the second
[first] user equipment” is recited in each independent claim. Petitioner
contends the broadest reasonable interpretation of this term encompasses
“determining whether a pause point (‘information in the data structure’)
associated with user selected media content is stored in the data structure.”
Pet. 12 (citing Ex. 1002 ¶¶ 42–44).
Patent Owner disputes Petitioner’s proposed construction and, instead,
proposes the following: “[d]etermining that information in the data structure
indicates that the media content was previously accessed by a second [first]
user equipment.” PO Resp. 11. Patent Owner’s proposed construction is
almost identical to the actual language in the claim, except Patent Owner’s
construction omits the words “based on” and includes the word “indicates.”
Id. Patent Owner’s arguments pertain to why Petitioner’s proposed
construction is incorrect, but do not provide support for Patent Owner’s own
proposed construction. See, e.g., id. at 13–15; PO Sur-Reply 5–7; see also
Ex. 2005 ¶¶ 61–63 (testifying that Petitioner’s proposed construction is
incorrect).
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Although the parties propose constructions, both parties make
arguments indicating that no express construction is needed. For instance,
Petitioner asserts “the references teach this limitation under any proposed
construction.” Pet. Reply 7. Patent Owner asserts that the term “is largely
self-explanatory” and provides a proposed construction restating that
language almost in its entirety. PO Resp. 13.
Starting with the language of the claim, the recitation is clear and self-
explanatory. Patent Owner does not explain why it proposes a construction
that modifies the claim language by removing “based on” and adding
“indicates.” The claim language “based on” is clear. Also, “indicates” does
not have a meaning that is identical to “based on” in all contexts and Patent
Owner does not argue otherwise. Furthermore, Patent Owner’s proposal
requires a rearrangement of the claim language, rather than simple
substitution, without explanation.
Petitioner asserts “Patent Owner’s arguments fail to include any
citation to the ’799 patent specification.” Pet. Reply 6 (citing PO Resp. 13–
15). We agree that Patent Owner’s Response does not point to the ’799
Patent Specification for support. Patent Owner responds that its proposed
“construction is simply the plain language of the claim term” (PO Sur-Reply
6) even though Patent Owner’s proposed construction modifies the claim
recitation, for example, interjecting “indicates” into the claim.
For the first time in its Sur-Reply, Patent Owner points to the ’799
Patent’s description of the relocation feature. Id. at 6–7 (citing Ex. 1001,
11:52–12:9). That description, however, is of the user supplying identifying
information. In particular, the ’799 Patent Specification describes
identifying a current user on the first user equipment “which may include
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prompting the user for an identification and/or password.” Ex. 1001, 11:52–
56. The ’799 Patent Specification also describes “[i]f the user was identified
in step 771, process 760 may store any data relevant to the operation of the
relocate feature in storage space associated with the user.” Id. at 11:66–
12:2. The ’799 Patent further describes “when a user selects to resume
media using the relocate feature” identifying the user on the second user
equipment, which again “may include prompting the user for an
identification and/or password.” Id. at 12:2–12. The portions of the ’799
Patent Specification relied upon by Patent Owner support the original claim
language, not Patent Owner’s proposed rewrite.
Accordingly, upon consideration of both parties contentions and
evidence (see, e.g., Pet. 12; Ex. 1002 ¶¶ 42–44; PO Resp. 11–15; Ex. 2005
¶¶ 61–63; PO Sur-Reply 5–7) based on the complete record now before us,
we conclude that “determine [determining] based on information in the data
structure, that the media content was previously accessed by the second
[first] user equipment” requires no express construction.
E. Obviousness—Independent Claim 1
Petitioner contends independent claim 1 of the ’799 Patent is
unpatentable, under 35 U.S.C. § 103(a), as obvious over (1) Lee and Wang;
and (2) Lee, Wang, and Vanzini. Pet. 8, 16–41. Patent Owner opposes.
See, e.g., PO Resp. 27–30, PO Sur-Reply 8–10. In our discussion below, we
first provide a brief overview of Lee, Wang, and Vanzini, and then we
address the parties’ contentions in turn.
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1. Overview of Lee
Lee is directed to a user oriented video-on-demand (VOD) system that
enables a user to resume viewing of a video after an interruption. Ex. 1003,
1:7–10. Lee describes an “object of the present invention” is to provide a
VOD system that enables a user to resume viewing, “regardless of the video
server.” Id. at 2:40–44. Figure 2 of Lee is reproduced below.

Figure 2 of Lee, above, illustrates a VOD system including video server 1
connected to user terminal 2. Id. at 4:6–9. Video server 1 includes video
database 3, which manages the video programs, and control unit 4, which
sends a video program for a user to view upon request. Id. at 4:10–13.
Video data are transmitted from video server 1 to user terminal 2. Id. at
4:17–19. Then, in user terminal 2, the video data are stored in stream buffer
6, decoded by decoder 7, and displayed by video display 8. Id. at 4:17–21.
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User terminal 2 also includes profile card 9, resume pointer receiver
10, profile writer 11, profile reader 12, and user profile sender 13. Id. at
4:21–30. If a user interrupts viewing of the video program, control unit 4 in
video server 1 transmits to user terminal 2 user profile information,
including the identifier and the interrupted position of the video program.
Id. at 4:50–53. The resume pointer receiver 10 receives and transfers to
profile writer 11 the user profile information. Id. at 4:53–56. Then, the
identifier and the interrupted position are written on profile card 9, which is
inserted in profile writer 11. Id. at 4:56–58. When the user wishes to
resume viewing the interrupted video program, user terminal 2 reads the
identifier and the interrupted position from user profile card 9 through
profile reader 12, and transmits that information to video server 1 through
user profile sender 13. Id. at 5:24–29.
2. Overview of Wang
Wang is directed to a method for browsing and replaying a selected
picture by a multimedia player. Ex. 1004, 1:7–8. Wang describes a
multimedia player having a display and a controlling interface. Id. at 1:63–
67, Fig. 2. The user can select by the controlling interface one of the
subpictures corresponding to the selected picture to be replayed, and then the
selected picture will be shown on the display. Id. at 2:7–11.
3. Overview of Vanzini
Vanzini is directed to a profile carrier that stores and securely
transports a user’s profile and personal user data files from one computer to
the next. Ex. 1018, 2:20–22. Figure 2 of Vanzini is reproduced below.
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Figure 2 of Vanzini, above, illustrates computer system 50 having computer
52 and portable profile carrier 54. Id. at 3:29–30. Computer 52 includes
Personal Computer Memory Card Interface Association (PCMCIA) device
reader 58. Id. at 3:30–34. Profile carrier 54 stores a user’s profile in a
secured medium that can be conveniently transported. Id. at 3:41–42.
4. Claim 1
We start by summarizing our determinations at the institution stage
regarding claim 1. In our Decision to Institute, after determining that
Petitioner had shown a reasonable likelihood of prevailing on its assertion
that claims 8 and 10–28 are unpatentable, we instituted trial on all
challenged claims and all grounds raised in the Petition, including grounds
relating to claims 1–7 and 9. Inst. Dec. 21 (citing SAS Inst., Inc. v. Iancu,
138 S. Ct. 1348, 1359–60 (2018); USPTO, Guidance on the Impact of SAS
on AIA Trial Proceedings (April 26, 2018) (available at
https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
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board/trials/guidance-impact-sas-aia-trial)). Importantly, claim 8 depends
directly from claim 1 and, by way of its dependency, includes all recitations
of claim 1. As noted above, Petitioner asserts obviousness over (1) Lee and
Wang; and (2) Lee, Wang, and Vanzini in its challenge of claim 1, and
Petitioner adds Yukie to both grounds in its challenge of claim 8. In making
the determination regarding claim 8, which depends from claim 1, we
implicitly determined that Petitioner’s challenges to dependent claim 8 also
sufficiently supported obviousness for institution purposes with respect to
claim 8’s limitations recited in independent claim 1.
To the extent our present decision on claim 1 differs from our
preliminary discussion at institution, this decision is based on the full trial
record including, inter alia, all the parties’ argument and evidence
addressing the full scope of Lee’s teachings as understood by a person
having ordinary skill in the art. In its Reply, Petitioner addressed issues
discussed in the Decision, including our claim construction, as Petitioner is
permitted to do. See Consolidated Trial Practice Guide (“Consolidated
Practice Guide”) 73 (guidance for Replies to Patent Owner Responses and
Sur-Replies);4 see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). For the
reasons discussed below (see infra § III.E.4.d), we determine Petitioner has
shown persuasively that the asserted prior art teaches all the recitations in
claim 1 based on the complete record now before us.

4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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a) “A first user equipment configured to: receive, using control circuitry,
a selection of a media asset identifier corresponding to media
content,”
Petitioner asserts that this recitation is taught by Lee’s user terminal 2,
which is configured to receive a request to view a specific video program
from a user, and Petitioner submits Dr. Tjaden’s testimony in support of its
position. Pet. 24–25 (citing, e.g., Ex. 1003, 1:7–10, 1:21–27, 1:54–56, 1:65–
2:11, 2:40–44, 2:57–3:3, 3:12–25, 4:16–33, 4:36–38, 5:24–37, 7:1–11, Fig.
2; Ex. 1002 ¶¶ 98–99). Dr. Tjaden testifies that Lee describes user terminal
2 configured to receive a request to view a specific video program from a
user. Ex. 1002 ¶ 98.5
We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden (see, e.g., Ex. 1002 ¶¶ 98–
99) because Petitioner’s contentions and Dr. Tjaden’s testimony are
consistent with the evidence of record. For instance, Lee describes “a video-
on-demand (VOD) system” (Ex. 1003, 1:7–10) comprising a video server,
user terminals, and “a network for providing a communication path between
the video server and [the] plurality of user terminals.” Id. at 2:56–66. Lee
describes that “[t]he operation of the VOD system” begins “[w]hen a user
terminal 2 receives a request to view a specific program from a user.” Id. at
4:36–38. Lee further describes that “the user can resume viewing of a
specific video program from the portion at which it was interrupted by the

5 Regarding the preamble, i.e., “[a] first user equipment configured to,” we
determine that the preamble is limiting because it recites structure that
provides antecedent basis to the term “the first user equipment.” Ex. 1001,
17:55–65. We also determine Petitioner has shown that the asserted prior art
teaches the preamble based on the complete record now before us.
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user by requesting the viewing of the interrupted video program.” Id. at
7:1–4 (emphasis added). Also supportive of Petitioner’s contentions, Lee
describes “set-top box (STB) 100,” which “processes a signal from a
subscriber through an input device such as a remote control and performs a
network connection function.” Id. at 1:49–56.
For the reasons given, we determine that Petitioner’s unopposed
arguments and evidence show that Lee teaches “[a] first user equipment
configured to: receive, using control circuitry, a selection of a media asset
identifier corresponding to media content.”
b) “wherein the media content was previously accessed by second user
equipment,”
Petitioner asserts Lee teaches this recitation by describing resuming a
program on a first user terminal 2 that was previously accessed and paused
by another user terminal 2, and Petitioner submits Dr. Tjaden’s testimony in
support of its position. Pet. 16–19, 26 (citing, e.g., Ex. 1003, 3:12–25, 4:48–
60, 5:5–7, 5:24–37, 7:1–11, 8:1–50, Fig. 2; Ex. 1002 ¶¶ 68–76, 100–101).
Dr. Tjaden testifies that “Lee describes examples of the particular
components of each of these user terminals and the video server.” Ex.
1002 ¶ 70. Dr. Tjaden also testifies
[a]ccordingly, because multiple user terminals 2 are part
of the video-on-demand system in Lee, a POSA would
understand that each of these user terminals 2 shown in Fig. 2
may be similarly configured to operate in the same manner as
part of the same network. Therefore Lee teaches a POSA that a
user may interrupt viewing of a program on a first user terminal
and then resume viewing of the program on a different user
terminal at a later time.”
Id. ¶ 72.
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Dr. Tjaden provides an annotated version of Figure 2 showing two
user terminals, which is reproduced below.

Figure 2 of Lee, above, illustrates a VOD system including video server 1
connected to user terminal 2 (Ex. 1003, 4:6–9), which includes Dr. Tjaden’s
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red textual annotation of “Playback User Terminal” next to user terminal 2,
as well as Dr. Tjaden’s annotation of a reproduction of user terminal 2 with a
corresponding red textual annotation of “Pause User Terminal.”
Ex. 1002 ¶ 72.
Patent Owner does not dispute that Lee teaches pausing by a user
terminal. See generally PO Resp.; Tr. 43:12–16. Patent Owner argues
“Petitioner has not adequately shown . . . how the combination of references
teach or suggest that delivery of media content is paused at a first user
equipment and resumed at a second user equipment.” PO Resp. 28–29; see
id. at 1–4, 41–48; see also PO Sur-Reply 1, 15–16 (arguing that Lee does not
teach a relocation feature).
After consideration of Patent Owner’s arguments and evidence (id.),
we agree with Petitioner’s contentions and we credit and give significant
weight to the testimony of Dr. Tjaden (see, e.g., Ex. 1002 ¶¶ 68–76, 100–
101) because Petitioner’s contentions and Dr. Tjaden’s testimony are
consistent with the evidence of record. For instance, Lee describes “a VOD
system comprises a user terminal interrupting viewing of a specific video
program provided from a video server of a VOD system in the middle of the
video program” and “the user terminal requesting resumption of the
interrupted viewing of the same video program using the user profile
information.” Ex. 1003, 3:12–25. Lee also describes “if the user wishes to
resume viewing an interrupted video program, the user terminal 2 reads the
identifier and the interrupted position information of the video program from
the user profile card 9.” Id. at 5:24–27. Lee further describes “a video
server can recognize that a video program ‘P13 (RED)’ has already been
viewed by the user up to the position ‘#10325.’” Id. at 5:5–7.
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We also are not persuaded by Patent Owner’s arguments and Dr.
Wolfe’s testimony (PO Resp. 1–4, 28–29, 41–48; PO Sur-Reply 1, 15–16;
Ex. 2005 ¶¶ 70–73, 84, 90, 115–126) because both are based on an overly
narrow reading of the prior art without sufficient consideration of the
knowledge of a person having ordinary skill in the art. Cf. In re Paulsen, 30
F.3d 1475, 1480 (Fed. Cir. 1994) (rejecting an argument that “fails to
recognize that a prior art reference must be ‘considered together with the
knowledge of one of ordinary skill in the pertinent art.’”) (citing In re
Samour, 571 F.2d 559, 562, (CCPA 1978)). For instance, Patent Owner’s
arguments and Dr. Wolfe’s testimony do not take into account Lee’s
disclosure of “a network for providing a communication path between the
video server and a plurality of user terminals” and Lee’s disclosure of “the
plurality of user terminals connected to the network for respectively
requesting the video server to transmit specific video programs and for
displaying the video program transmitted from the video server.” Ex. 1003,
2:64–3:3 (emphasis added). Lee describes that “profile card 9 may be any
type of portable storage such as a magnetic card, an IC card, or a smart
card.” Id. at 4:59–60 (emphasis added). Lee further describes “every user
subscribed to the VOD system has a profile information of a same structure,
regardless of the video server.” Id. at 4:65–67 (emphases added).
Consistent with Petitioner’s contentions and Dr. Tjaden’s testimony
(see, e.g., Pet. 16–19, 26; Ex. 1002 ¶¶ 68–76, 100–101) and contrary to
Patent Owner’s arguments and Dr. Wolfe’s testimony (see, e.g., PO Resp. 1–
4, 28–29, 41–48; PO Sur-Reply 1, 15–16; Ex. 2005 ¶¶ 70–73, 84, 90, 115–
126), Lee further expressly describes “interrupting the transmission to the
user terminal of the selected video program,” writing the interrupted position
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in a profile card, “removing the profile card from the user terminal,” and
“inserting the user profile card in a second user terminal.” Id. at 8:1–50
(recited steps in claim 5 of Lee) (emphasis added). Although claim 5 was
not part of the original disclosure of Lee, the Examiner found in the
reexamination proceeding of a related case that claim 5 of Lee is supported
by the originally filed specification. Ex. 1010, 421–422.6 We agree with the
Examiner’s finding based on the evidence in the complete record before us.
Petitioner also asserts “[t]o the extent that Patent Owner argues that
Lee fails to teach two user equipment that can each access the same portable
profile card 9,” Vanzini “teaches this feature.” Pet. 28 (citing Ex. 1018,
code (57), 2:12–15, 2:20–22, 3:14–17, 3:29–40, Fig. 2; Ex. 1002 ¶¶ 107–
108). We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden (see, e.g., Ex. 1002
¶¶ 107–108) because Petitioner’s contentions and Dr. Tjaden’s testimony are
consistent with the evidence of record. For instance, Vanzini describes a
profile carrier that is a two-component assembly comprising a smart card
and a PCMCIA smart card reader, which enables access to the user profile
on flash memory when the smart card is present and the user is
authenticated. Ex. 1018, code (57); see also id. at 2:20–22 (“This invention
concerns a portable profile carrier that stores and securely transports a user's
profile and personal user data files from one computer to the next”), 3:14–17

6 During the reexamination of the ’799 Patent’s parent, the Examiner found
that claim 5 of Lee is supported by the original disclosure of Lee. See, e.g.,
Ex. 1010, 123. Although the Examiner’s finding was discussed during an
interview and “[n]o agreement was reached” (id. at 28), the claims were
amended to overcome Lee. Id. at 10.
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(describing a portable profile carrier “for transporting a user profile from one
computer to the next in order to configure each computer according to user
preferences”).
For the reasons given, we determine that Petitioner’s arguments and
evidence show that Lee teaches “wherein the media content was previously
accessed by second user equipment.” We determine that Patent Owner’s
arguments and evidence do not undermine Petitioner’s showing.
c) “wherein a request to pause access to the media content was received
by the second user equipment when the media content was previously
accessed by the second user equipment, and”
Petitioner asserts Lee teaches this recitation because it “discloses the
ability of a user to pause a specific program at a user terminal 2 (‘Pause User
Terminal’ in annotated Fig. 2 above) when viewing (‘accessing’) the
program.” Pet. 26 (citing, e.g., Ex. 1003, 2:40–44, 3:12–25, 4:17–33, 4:48–
53, 5:24–37, 7:1–11, 8:1–50, Fig. 2; Ex. 1002 ¶ 103). Dr. Tjaden testifies “a
POSA would understand interrupting a video program of Lee to equate to
pausing a program.” Ex. 1002 ¶ 103.
Patent Owner’s dispute for this recitation is the same as Patent
Owner’s argument that Petitioner has not shown that delivery of media
content is paused at a first user equipment and resumed at a second user
equipment. PO Resp. 28–29. We address Patent Owner’s argument above.
See supra § III.E.4.b.
We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden (see, e.g., Ex. 1002 ¶ 103)
because Petitioner’s contentions and Dr. Tjaden’s testimony are consistent
with the evidence of record. For instance, Lee describes if a user interrupts
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viewing of the video program, control unit 4 in video server 1 transmits to
user terminal 2 the identifier and interrupted position of the video program,
which is written on profile card 9 inserted in profile writer 11. Ex. 1003,
4:50–58. Patent Owner does not dispute that Lee teaches pausing by a user
terminal. See generally PO Resp.; Tr. 43:12–16.
For the reasons given, we determine that Petitioner’s arguments and
evidence show that Lee teaches “wherein a request to pause access to the
media content was received by the second user equipment when the media
content was previously accessed by the second user equipment.” We
determine that Patent Owner’s arguments and evidence do not undermine
Petitioner’s showing.
d) “wherein a position, in the media content, that corresponds to a pause
point, was stored in a data structure of a profile of a user in a storage
device remote from the first user equipment when the request to pause
access to the media content was received by the second user
equipment”
For this recitation, in the Petition, Petitioner points to Lee’s disclosure
of a user interrupting or pausing a program and the user terminal storing the
position of interruption in the user profile. Pet. 27–28 (citing, e.g., Ex. 1003,
2:45–49, 3:12–19, 3:26–37, 4:17–33, 4:48–60, 4:64–5:37, Figs. 2, 3A, 3B;
Ex. 1002 ¶¶ 104–106). Petitioner also points to its annotated Figure 2 (id.),
discussed above (see supra § III.E.4.b), which is introduced in the Petition in
the background discussion of Lee (Pet. 19).
We start with Petitioner’s assertions regarding “wherein a position, in
the media content, that corresponds to a pause point, was stored in a data
structure of a profile of a user in a storage device” recited in claim 1 (see,
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e.g., Pet. 27–28; Ex. 1002 ¶¶ 104–106), which are not disputed. See
generally PO Resp.; Tr. 43:12–16.
We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden (see, e.g., Ex. 1002 ¶¶ 68–
76, 104–108) because Petitioner’s contentions and Dr. Tjaden’s testimony
are consistent with the evidence of record. For instance, Lee describes
if the user stops viewing the video program before the end of the
program, i.e. interrupts viewing of the video program, the control
unit 4 transmits the ID and the interrupted position of the video
program to the user terminal 2, preferably and for convenience,
as part of the user profile information. The resume pointer
receiver 10 receives and transfers to the profile writer 11 the user
profile information, which includes the ID and the interrupted
position information. At this time, the ID and the interrupted
position information of the video program is written on the
profile card 9 inserted in the profile writer 11.
Ex. 1003, 4:48–58.
Lee provides further details regarding user profile information with
respect to Figure 3A of Lee, which is reproduced below.
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Figure 3A of Lee, above, is a view illustrating a user profile structure
including a video program identifier field and position information field of
an interrupted video program. Id. at 3:57–58, 5:1–7.
Lee describes further details regarding the user profile shown in
Figure 3A as follows:
In the preferred embodiment of the present invention, every user
subscribed to the VOD system has a profile information of a
same structure, regardless of the video server. FIGS. 3A and 3B
are examples of user profile structures according to the present
invention. The user profile as shown in FIG. 3A may be
composed of a video program identifier field (video ID;
P13_RED) and a position information field (POSITION;
#10325) of an interrupted video program. Namely, a video
server can recognize that a video program “P13 (RED)” has
already been viewed by the user up to the position “#10325.”
Ex. 1003, 4:64–5:7.
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The dispute between the parties centers on whether Lee teaches that
the “storage device” is “remote from the first user equipment when the
request to pause access to the media content was received by the second user
equipment” as recited in claim 1. At the institution stage, we stated as
follows:
[A]t this preliminary stage in the proceeding, we are not
persuaded that “remote from” means “located outside of” as
Petitioner contends. See supra § III.D.2. Instead, we apply the
ordinary and customary meaning, namely that “remote” means
not in the immediate vicinity and accessible through a
communications network. Id. Accordingly, at this juncture,
regarding storing “in a data structure of a profile of a user in a
storage device remote from the first user equipment when the
request to pause access to the media content was received by the
second user equipment” (Ex. 1001, 17:55–67 (emphases added)),
we are not persuaded by Petitioner’s pointing to “a storage device
outside of” the first user equipment, i.e., Lee’s profile card 9,
because Petitioner relies on its proposed construction. Pet. 27.
Inst. Dec. 19–20. We also stated regarding Lee, Wang, and Vanzini, “[a]t
this preliminary stage, we determine Petitioner’s alternative assertion also is
based on Petitioner’s proposed construction for ‘remote,’ which we decline
to adopt for the reasons set forth in Section III.D.2.” Id.
In its Reply, Petitioner asserts that the Petition shows that Lee teaches
the disputed recitation under any construction, as understood by a person
having ordinary skill in the art. Pet. Reply 11–15 (citing, e.g., Ex. 1003,
2:59–3:3, 4:21–33; Ex. 1007, 2:7–18; Ex. 1025 ¶¶ 42–47; Ex. 1026, 30:1–
17; Exs. 1029–1041). Petitioner also points to reasoning to combine Lee’s
teachings with the knowledge of the skilled artisan and responds to Patent
Owner’s contentions regarding deficiencies with that reasoning. Id. at 13–
17.
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For instance, in its Reply, Petitioner asserts
[a] POSA would understand that Lee’s pause terminal and
playback terminal are connected to each other via video server 1
because each is connected to the video server 1 via “a network
for providing a communication path.” Ex. 1003, 2:59–3:3;
Ex. 1025, ¶ 43. Lee teaches that its pause terminal can read from
and write to the profile card 9. Ex. 1003, 4:21–33; Ex. 1025,
¶ 46. As Patent Owner’s expert testified, a first computer
connected to a second computer could share data to that second
computer using commonly known technology, such as FTP.
Ex. 1026, 30:1–17; Ex. 1025, ¶ 46. A POSA would have
understood that Lee’s pause terminal (connected to profile card
9) could share profile card 9’s data to the connected playback
terminal using such a network or other types of communications
links. Ex. 1025 ¶¶ 42–47. A POSA would have known that
Lee’s storage devices were accessible from other devices via
communications links. Ex. 1007, 2:7–18.
Pet. Reply 13–14. Petitioner also refers to its contentions in the Petition
regarding claim 8, which depends from claim 1, and provides responsive
contentions to arguments in the Patent Owner Response. Id. at 14–17
(citing, e.g., Ex. 1025 ¶¶ 47–56).
Regarding whether a person having ordinary skill in the art would
have known of sharing data between a first computer and a second computer
through a network (see, e.g., Pet. Reply 14), we agree with Petitioner’s
contentions and we credit and give significant weight to the testimony of Dr.
Tjaden (see, e.g., Ex. 1002 ¶¶ 68–76, 104–108; Ex. 1025 ¶¶ 42–47) that such
knowledge was known because Petitioner’s contentions and Dr. Tjaden’s
testimony are consistent with the evidence of record. Indeed, consistent with
Petitioner’s arguments in its Reply that it was known to share data in a
network, in the Petition, Petitioner points to Lee’s description of transmitting
data between video server 1 and user terminal 2 and that shared data
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includes the video program identifier and position information. See, e.g.,
Pet. 17–18, 27 (citing, e.g., Ex. 1003, 4:20–27, 4:48–63, 5:24–29, 5:33–37,
Fig. 2; Ex. 1003 ¶ 74). Additionally, Dr. Tjaden’s testimony refers to Lee’s
description of receiving the position information of an interrupted video
program transmitted from the video server 1 and Dr. Tjaden testifies “Lee’s
profile writer 11 is configured to write an identifier (ID) of an interrupted
video program and the position information of the interrupted video program
in a profile card 9 which is external from Lee’s user terminal 2.” Ex. 1002
¶ 105 (citing Ex. 1003, 4:24–30). Dr. Tjaden also testifies “a POSA would
understand that Lee’s user profiles sender 13 in the Playback User Terminal
in annotated Fig. 2 above transmits video program ID and position
information to video server 1 for any user profile card 9 inserted into the
profile reader 12.” Ex. 1002 ¶ 74 (citing Ex. 1003, 4:64–5:23, Figs. 2, 3A,
3B). In the Petition, Petitioner also explains that “[i]n Lee, a plurality of
user terminals 2 may be communicatively coupled to the video server 1 via a
network to provide requests to video server 1 to transmit specific video
programs, and may display the programs received from the server.” Pet. 16
(citing Ex. 1003, 2:57–3:3).
Lee’s disclosures are consistent with Petitioner’s contentions and Dr.
Tjaden’s testimony above. For instance, Lee describes video server 1
transmitting the video program identifier and position information to the
user terminal. Ex. 1003, 4:21–24 (describing “a resume pointer receiver 10
which receives the position information of an interrupted video program
transmitted from the video server 1, if the user interrupts viewing of a video
program” (emphasis added)), 4:48–53 (describing “if the user stops viewing
the video program before the end of the program, i.e. interrupts viewing of
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the video program, the control unit 4 [in video server 1] transmits the ID and
the interrupted position of the video program to the user terminal 2,
preferably and for convenience, as part of the user profile information”).
Lee also describes user terminal 2 transmitting the same information to
video server 1 to resume viewing. See, e.g., id. at 5:24–29 (describing “if
the user wishes to resume viewing an interrupted video program, the user
terminal 2 reads the identifier and the interrupted position information of the
video program from the user profile card 9 through the profile reader 12, and
transmits the information to the video server 1 through the user profile
sender 13” (emphasis added)). Also consistent with Petitioner’s contentions
and Dr. Tjaden’s testimony, Lee describes multiple user terminals sharing
information with an exemplary video server. Id. at 2:57–3:3.7
We turn to whether the Petition shows that a person having ordinary
skill in the art would have understood that a data structure of a user profile
including a pause point could have been shared using a communications
network, as Petitioner asserts. Pet. Reply 13–14 (citing, e.g., Ex. 1025
¶¶ 41–47). Petitioner asserts in the Petition “Lee’s system includes a video
server, a plurality of user terminals, and a network for providing a
communication path,” and cites to Dr. Tjaden’s testimony as support. Pet.
16, 21 (citing Ex. 1003, 2:57–3:3; Ex. 1002 ¶¶ 68–76). In connection with

7 Although not necessary, we agree with Petitioner that Dr. Wolfe
acknowledged during his deposition that at the time it would have been
known to share data from one computer to another. Ex. 1026, 30:1–17.
Furthermore, Vanzini describes a user terminal that may be “networked to
other computers.” Ex. 1018, 3:37–40. Vanzini describes its portable profile
carrier as an alternative to accessing data in a networked environment. Id. at
1:35–2:16.
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Petitioner’s arguments in the Petition relating to annotated Figure 2,
Petitioner also points to Lee’s description of related art including prior VOD
systems. See, e.g., id. at 24–25, 27 (citing, e.g., Ex. 1003, 1:7–10, 1:21–27,
1:54–56, 1:65–2:11, 2:57–3:3; Ex. 1002 ¶¶ 97–99, 104–106). Petitioner
asserts that in Lee, “a plurality of user terminals 2 may be communicatively
coupled to the video server 1” via the network to transmit data. Id. at 16
(citing Ex. 1003, 2:57–3:3) (emphasis added). Petitioner also generally
asserts that Lee describes when a user wishes to view a summary before
“resuming playback of a program. . . . ‘the user can select a level using a
user interface,’” and video server 1 transmits the digest information. See id.
at 21 (quoting Ex. 1003, 6:5–12).
Dr. Tjaden testifies in support of the Petition that “Lee describes that
the system includes a plurality of user terminals as part of the overall
system,” “[t]hereafter, Lee describes examples of the particular components
of each of these user terminals and the video server,” and a person having
ordinary skill in the art would have understood that each user terminal would
have been “part of the same network.” Ex. 1002 ¶¶ 70–72. Dr. Tjaden also
testifies “[p]rofile card 9 is described as including a data structure that
includes a video program identifier and a position information field
representative of a particular program that a user has paused at a particular
point.” Ex. 1003 ¶ 74 (citing Ex. 1003, 4:64–5:23, Figs. 3A and 3B)
(emphasis added). Dr. Tjaden testifies that his annotation of Lee’s Figure 2
shows “the operation of two different user terminals, a pause user terminal
and a playback user terminal, which are part of the same video-on-demand
system” (id. ¶ 73) and that “the general area of technology of Lee is the
same as that of Thomas, which is that of video-on-demand systems, set-top
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boxes, and techniques for delivering content over communications networks,
such as a cable system, a local-area network, and the Internet.” Id. ¶ 76. Dr.
Tjaden also testifies that storing user profile data in a network and
downloading it was known prior art. Id. ¶¶ 181, 182.
We agree with Petitioner’s contentions and we credit and give Dr.
Tjaden’s testimony (see, e.g., Ex. 1002 ¶¶ 68–76, 97–99, 104–106, 180–183;
Ex. 1025 ¶¶ 42–47) substantial weight because Petitioner’s contentions and
Dr. Tjaden’s testimony are consistent with the evidence of record. For
instance, consistent with Petitioner’s contentions and Dr. Tjaden’s testimony
(id.), Lee discloses the following:
Generally, when a user wishes to [view] a certain program,
the user can view the program by connecting to the VOD system
and selecting the program. If the user cannot view the whole
program at one time, the VOD allows the user to view the
program in multiple sittings. For example, U.S. Pat. No.
5,818,439 discloses a VOD system including a video server that
manages users as subscribers and stores a position at which a user
stops viewing a program. Thereafter, if the same user requests
viewing of the same program, the video server displays the
program from the position at which the viewing of the program
has been interrupted. At this time, the VOD system may also
display the contents of the previously viewed portion of the
program by a summary using still images.
Ex. 1003, 1:65–2:11 (cited in Pet. 24–25). Lee, therefore, describes
expressly a related prior art system storing user profile data including a
pause point remotely on a video server, which is connected to the network to
communicate with other user terminals using communications links.
Additionally, Lee describes in the Summary of the Invention the
following:
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To achieve the objects and in accordance with the
purposes of the invention, as embodied and broadly described
herein, the VOD system comprises a video server for managing
a plurality of video programs, transmitting a specific video
program in response to a request from a user terminal, producing
and transmitting to the user terminal user profile information if
viewing of the specific video program is interrupted by the user;
a network for providing a communication path between the video
server and a plurality of user terminals; and the plurality of user
terminals connected to the network for respectively requesting
the video server to transmit specific video programs and for
displaying the video program transmitted from the video server.
Ex. 1003, 2:57–3:3.
As set forth above, Lee describes that the user terminals are connected
to each other via the same network. Also consistent with Petitioner’s
contentions and Dr. Tjaden’s testimony (see, e.g., Ex. 1002 ¶¶ 68–76, 97–
99, 104–106, 180–183; Ex. 1025 ¶¶ 42–47), Lee’s description indicates that
the user terminal described in detail is exemplary. See, e.g., Ex. 1003, 3:4–
11 (describing components of “each user terminal” (emphasis added)), 4:64–
67 (describing that “every user subscribed to the VOD system has a profile
information of a same structure” (emphasis added)).8
In its Reply, Petitioner asserts “[a] POSA would have known that
Lee’s storage devices were accessible from other devices via
communications links.” Pet. Reply 14 (citing, e.g., Ex. 1025 ¶¶ 42–47;
Ex. 1007, 2:7–18). Petitioner also points to Yukie, but only as providing

8 Storing user profile data on both the video server, even if temporarily, and
on profile card 9 is encompassed in Lee’s disclosures and is consistent with
Petitioner’s contentions and Dr. Tjaden’s testimony that a person having
ordinary skill in the art would have understood that Lee teaches sharing data
from profile card 9 inserted in pause terminal with a playback terminal. Pet.
Reply 14; Ex. 1025 ¶¶ 42–47.
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additional evidentiary support for its assertion that the skilled artisan would
have known of accessing a data structure of a user profile including a pause
point through a communications network. Id.; see also Tr. 23:7–25
(asserting that Petitioner is relying on the skilled artisan’s understanding of
networking). Indeed, Lee expressly describes as related art a VOD system
including a video server that manages users and itself stores the interrupt
position so “if the same user requests viewing of the same program” they are
able to do so. Ex. 1003, 2:2–8. Additionally, Petitioner refers to its
arguments and Dr. Tjaden’s testimony in the Petition regarding why a
person having ordinary skill in the art would have combined Lee’s teachings
such that a data structure of a user profile including a pause point would
have been accessed by Lee’s playback terminal through a communication
network. Pet. Reply 14–15 (citing, e.g., Pet. 8, 55–58; 60–61; Ex.
1025 ¶¶ 47–49; Ex. 1007, 2:7–10, 2:18–28; 2:49–52).
Patent Owner asserts that “Petitioner’s Reply presents a new theory of
invalidity not presented in the Petition.” PO Sur-Reply 9 (citing Pet. Reply
9, 12). We disagree. The arguments in Petitioner’s Reply are fully
supported by arguments and evidence presented in the Petition with respect
to claim 1, including knowledge of the skilled artisan of networking and
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sharing data in a network, as set forth in Lee.9 See Pet. Reply 14. Petitioner
in the Reply also relies on the same grounds set forth in the Petition,
specifically, that claim 1 would have been obvious over Lee and Wang or
Lee, Wang, and Vanzini. See generally Pet. Reply.
Although in its Reply Petitioner points to additional arguments and
evidence that are set forth in the Petition with respect to claim 8 (see Pet.
Reply 14–15), claim 8 depends from claim 1 and Patent Owner had full
opportunity and responded to the arguments presented for dependent claim
8. Furthermore, we agree with Petitioner that the construction set forth in
the Decision to Institute was not available to Petitioner at the time the
Petition was filed. We, therefore, determine that Petitioner’s arguments
properly address issues discussed in the Decision to Institute and do not
impermissibly introduce new evidence or argument that it could have
presented earlier, for example, to make out a prima facie case of
unpatentability. See Consolidated Practice Guide, 73.
We turn to whether Petitioner’s submission of Dr. Tjaden’s Reply
Declaration including citations to Yukie was improper. We determine such

9 Indeed, we should consider all arguments and evidence in Petitioner’s
limitation-by-limitation analysis presented for claim 1. Cf. Polygroup Ltd.
MCO v. Willis Electric Co., 759 Fed. Appx. 934, 942–943 (unpublished)
(explaining explicit arguments in Petitioner’s limitation-by-limitation
analysis based on a single reference should be considered irrespective of
whether the Petition sets forth the ground as based on three references);
Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1372–73 (Fed. Cir. 2019)
(affirming the Board’s obviousness finding based on a single reference
where the petitioner’s primary argument was that all of the elements were
disclosed in a single reference, and the petitioner also argued, in the
alternative, that some of the elements were disclosed by a second reference).
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responsive evidence is not improper. See 37 C.F.R. § 42.23(b). We find Dr.
Tjaden’s testimony in his Reply Declaration (Ex. 1025) simply provides
further details to support that his testimony in his initial Declaration
(Ex. 1002) is correct regarding the knowledge of the skilled artisan and
Lee’s disclosures. The Petition and Dr. Tjaden’s testimony in his first
Declaration (Ex. 1002) set forth the disclosures of Lee that Petitioner relies
on in full and include a detailed element-by-element analysis identifying the
portions of Lee that teach the elements of claim 1. Dr. Tjaden’s Reply
Declaration testimony does no more than fairly and directly respond to
Patent Owner’s Response and Dr. Wolfe’s testimony. See 37 C.F.R.
§ 42.23(b); see also Belden Inc., v. Berk-Tek LLC, 805 F.3d 1064, 1078−80
(Fed. Cir. 2015) (holding that the Board may rely on new evidence
submitted with a reply because the evidence was legitimately responsive to
patent owner’s arguments and not needed for a prima facie case of
obviousness).
We turn to Patent Owner’s arguments and Dr. Wolfe’s testimony that
the Petition fails to show that the combined teachings of the asserted prior
teach “storage device remote from the first user equipment” recited in claim
1. See, e.g., PO Resp. 27–30; Ex. 2005 ¶¶ 85, 100–101; PO Sur-Reply 15–
16. Patent Owner, more specifically, argues that Petitioner’s position is
based on its unreasonable broad claim construction, even after consideration
of Petitioner’s Reply. See, e.g., PO Resp. 28; PO Sur-Reply 2–5, 8–10; Ex.
2005 ¶¶ 82–83, 85. We disagree. Petitioner’s Reply addresses issues raised
at the institution stage regarding claim construction. See supra § III.D. As
discussed above (id.), we maintain our determination at the institution stage
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that the ordinary and customary meaning of “remote” is not in the immediate
vicinity and accessible through a communications network.
Using that construction, we are not persuaded that Patent Owner’s
arguments undermine Petitioner’s showing. For instance, consistent with
Petitioner’s contentions and Dr. Tjaden’s testimony (Ex. 1002 ¶¶ 68–76, 97–
99, 104–106, 180–183; Ex. 1025 ¶¶ 42–47), Lee’s VOD system includes a
video server that manages a network of user terminals and includes
components that are remote from one another. Ex. 1003, 2:57–3:3; see also
id. at 1:12–2:11 (describing as related art a VOD system that transmits
between a video server and user equipment, such as set-top boxes, for
example, over existing “coaxial cable and optical fiber” (emphasis added)).
Additionally, Lee’s disclosures of data transmissions over a network are
between devices that are not in the immediate vicinity of each other. Ex.
1003, 4:21–24 (describing user terminal 2 receiving “the position
information of an interrupted video program transmitted from the video
server 1” (emphasis added)), 4:48–53 (describing video server 1 transmitting
“the ID and the interrupted position of the video program to the user
terminal 2”). Lee also describes exemplary user terminal 2 transmitting the
same information to video server 1 to resume viewing. See, e.g., id. at 5:24–
29.
Also, we are not persuaded by Patent Owner’s arguments and Dr.
Wolfe’s testimony (PO Resp. 27–30; Ex. 2005 ¶¶ 82–83, 85, 100–101; PO
Sur-Reply 8–10, 15–16) because both are based on an overly narrow reading
of the prior art without sufficient consideration of the knowledge of a person
having ordinary skill in the art. Cf. In re Paulsen, 30 F.3d at 1480 (rejecting
an argument that “fails to recognize that a prior art reference must be
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‘considered together with the knowledge of one of ordinary skill in the
pertinent art.’”) (citing In re Samour, 571 F.2d 559, 562, (CCPA 1978)).
For instance, Patent Owner’s arguments and Dr. Wolfe’s testimony do not
take into account Lee’s disclosure of related prior art VOD systems. Ex.
1003, 1:25–29, 2:2–5, Fig. 1A. Patent Owner’s arguments and Dr. Wolfe’s
testimony also do not take into account Lee’s disclosure in the Summary of
the Invention that the VOD system includes “a network for providing a
communication path between the video server and a plurality of user
terminals,” as well as Lee’s disclosure that the plurality of terminals are
“connected to the network for respectively requesting the video server to
transmit specific video programs and for displaying the video program
transmitted from the video server.” Id. at 2:57–3:3 (emphases added). Also,
Lee’s description indicates that the user terminal described in detail is
exemplary. See, e.g., id. at 3:4–11 (describing components of “each user
terminal” (emphasis added)), 4:64–67 (describing that “every user
subscribed to the VOD system has a profile information of a same structure”
(emphasis added)).
We turn to Petitioner’s reasoning to combine. Regarding Petitioner’s
articulated reasoning as to why one of ordinary skill in the art would have
modified and combined the teachings of the asserted art in the manner
recited in claim 1, we agree with Petitioner’s contentions and we credit and
give significant weight to the testimony of Dr. Tjaden (see, e.g., Ex. 1002
¶¶ 68–76, 104–108; Ex. 1025 ¶¶ 42–50) because Petitioner’s contentions
and Dr. Tjaden’s testimony are consistent with the evidence of record.
As an initial matter, Lee itself explains that the determination of
whether to store pause point data in a network, in particular in the related
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system in a video server, depends on whether the system has more than one
video server. Ex. 1003, 2:40–44. Lee, therefore, provides a reason for using
one alternative or the other. Cf. SightSound Techs., LLC v. Apple Inc., 809
F.3d 1307, 1318−19 (Fed. Cir. 2015) (affirming the Board’s obviousness
determination that was based on the “[f]inding that the reason to combine
was manifested by the references themselves”).
Petitioner also asserts that a person having ordinary skill in the art
would have known that local, internal storage would have been
inconvenient, expensive, and unreliable, as compared to remote storage.
See, e.g., Pet. Reply 14–15; Ex. 1002 ¶¶ 187–188; Ex. 1025 ¶¶ 47–48.
Petitioner submits Yukie only as further evidence supporting Dr. Tjaden’s
testimony regarding knowledge of the skilled artisan and reasoning to
combine. Yukie supports Petitioner’s assertions and Dr. Tjaden’s testimony
that the skilled artisan would have known of problems with local storage.
For instance, Yukie describes
[s]ince internal memory or external storage devices are not
unlimited in capacity, the tapes, disks, etc. eventually need to be
changed to continue recording images. This presents an element
of inconvenience, particularly when storage capacity is reached
at a critical time, an element of expense since it is generally
necessary to purchase multiple storage devices for extended use
of the camcorder, and an element of unreliability since the
storage devices can fail. This holds true with any device that
relies on data storage and uses a form of local data storage media.
Ex. 1007, 2:18–28 (emphases added); see also id. at 2:49-52 (describing
providing “an alternative to local data storage” and further enabling “the
development of a myriad of consumer devices with wireless access to data”).
Patent Owner argues that Petitioner’s proposal does not take into
account “Lee’s teachings against using remote storage.” PO Sur-Reply 10–
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14; see also PO Resp. 31–35 (asserting that a person having ordinary skill in
the art would not have combined Lee and Yukie because Lee teaches away
from using remote storage); Ex. 2005 ¶¶ 45, 110–115 (testifying a person
having ordinary skill in the art would not have combined Lee and Yukie).
Upon consideration of Patent Owner’s argument and evidence (PO Resp.
31–35; PO Sur-Reply 10–14; Ex. 2005 ¶¶ 45, 110–115), we determine that
Lee does not teach away from combining remotely stored data with Lee’s
other disclosures relied upon by Petitioner. See Depuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A
reference does not teach away, however, if it merely expresses a general
preference for an alternative invention but does not ‘criticize, discredit, or
otherwise discourage’ investigation into the invention claimed.”). The
portion of Lee that Patent Owner relies on for its argument that Lee “teaches
away from storing user profile information on a remote server” (PO Resp.
31) teaches, instead, that a VOD system that is the subject of U.S. Patent No.
5,818,439 stores in the network, in particular, on a remote video server, the
user profile information including a pause point. Ex. 1003, 1:25–29, 2:2–5,
Fig. 1A. That teaching is described by Lee as “[r]elated” and also as an
approach that is used “[g]enerally.” Id. at 1:11, 1:65–2:5. We determine
that Lee’s description of the disadvantages is at most expressing a general
preference and pertains to the particular system in that is the subject of U.S.
Patent No. 5,818,439. Ex. 1003, 2:1–34. Lee does not criticize, discredit, or
otherwise discourage investigation into the claimed subject matter of simply
storing user profile data in a communications network so that it is accessible
through that communications network. Additionally, as our reviewing court
explains, the existence of better alternatives “does not mean that an inferior
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combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d
1322, 1334 (Fed. Cir. 2012) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994)).
Patent Owner asserts that Dr. Tjaden conceded that Lee’s discussion
of video servers was to identify their deficiencies. See, e.g., PO Sur-Reply
13 (citing Ex. 2004, 97:15–98:16). Dr. Tjaden testifies that Lee does not
teach away from storing user profile information on a remote server.
Ex. 1025 ¶¶ 51–57. Dr. Tjaden’s deposition testimony is consistent with Dr.
Tjaden’s declaration testimony and shows that Dr. Tjaden understands
teaching away, but that in Dr. Tjaden’s opinion teaching away does not
apply in the instant proceeding. Ex. 2004, 143:23–144:21.
Regarding Dr. Wolfe’s testimony, as an initial matter, the testimony
acknowledges that Lee describes remote storage for pause points. See, e.g.,
Ex. 2005 ¶ 110.10 Dr. Wolfe’s testimony (id. ¶¶ 45, 110–114) does not take
into account that Lee’s discussion relates to one particular system, which
Lee states is disclosed in United States Patent No. 5,818,439. Ex. 1003,
2:2–5. Dr. Wolfe’s testimony also is conclusory and contradicted by
evidence in this record as explained. Ex. 2005 ¶¶ 45, 110–114. We have
considered Lee’s disclosures identified by Dr. Wolfe and we determine that
those disclosures do not criticize, discredit, or otherwise discourage
investigation into the claimed subject matter.
Furthermore, on this record, Petitioner has provided evidence that
shows that storing remotely and sharing a data structure of a user profile

10 Indeed, regarding Patent Owner’s argument that Dr. Tjaden relies on
hindsight (PO Sur-Reply 11), here Dr. Tjaden is discussing disclosures in
Lee that are described by Lee as related. Ex. 1003, 1:11, 1:65–2:5.
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including a pause point to the connected playback terminal using a
communications network would not have been “uniquely challenging or
difficult for one of ordinary skill in the art” at the time of the invention.
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418).
For the reasons given, we determine that Petitioner’s arguments and
evidence show that Lee alone or in combination with Vanzini teaches
wherein a position, in the media content, that corresponds to a
pause point, was stored in a data structure of a profile of a user
in a storage device remote from the first user equipment when
the request to pause access to the media content was received by
the second user equipment.
Ex. 1001, 17:62–68. Also, we determine that Petitioner has offered
articulated reasoning with a rational underpinning as to why one of ordinary
skill in the art would have modified and combined the teachings of the
asserted art in the manner recited in claim 1. We also are persuaded that
Petitioner has demonstrated that such person would have had a reasonable
expectation of success. We determine Patent Owner’s arguments and
evidence do not undermine Petitioner’s showing.
e) “access the data structure of the profile of the user”
Petitioner asserts that Lee teaches this recitation because Lee discloses
that all user terminals 2 include a profile reader 12 which accesses the data
structure of the user’s profile. Pet. 29 (citing Ex. 1003, 3:26–37, 4:17–33,
4:56–58, 5:24–37, 8:1–50, Figs. 2, 3A, 3B; Ex. 1002 ¶¶ 110–111). We
agree with Petitioner’s contentions and we credit and give significant weight
to the testimony of Dr. Tjaden (see, e.g., Ex. 1002 ¶¶ 110–111) because
Petitioner’s contentions and Dr. Tjaden’s testimony are consistent with the
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evidence of record. For instance, Lee describes that “user terminal 2 reads
the identifier and the interrupted position information of the video program
from the user profile card 9 through the profile reader 12.” Ex. 1003, 5:24–
29.
For the reasons given, we determine that Petitioner’s unopposed
arguments and evidence show that Lee teaches “access the data structure of
the profile of the user.”
f) “access, from the data structure, the position that corresponds to the
pause point”
Petitioner points to Lee’s description of a user resuming viewing of an
interrupted video program and Lee’s user terminal 2 reading position
information. See, e.g., Pet. 29 (citing, e.g., Ex. 1003, 3:26–37, 4:17–33,
4:56–58, 5:24–37, 8:1–50, Figs. 2, 3A, 3B; Ex. 1002 ¶¶ 112–113). Dr.
Tjaden’s testimony includes annotated Figure 3A of Lee below showing that
the position that corresponds to the pause point is accessed from the data
structure.

Annotated Figure 3A of Lee, above, illustrates a user profile comprising a
video program identifier field including “P13 (RED)” and a position
information field including “#10325” (Ex. 1003, 5:1–4), and further
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annotated Figure 3A, above, includes Dr. Tjaden’s annotation of a red box
around “POSITION #10325.” Ex. 1002 ¶ 113 (citing Ex. 1003, Fig. 3A).
We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden (see, e.g., Ex. 1002
¶¶ 112–113) because Petitioner’s contentions and Dr. Tjaden’s testimony are
consistent with the evidence of record. For instance, Lee describes that the
second user terminal reads “the identifier and the interrupted position
information of the video program” from storage through the profile reader
12 and then “transmits the information to the video server 1 through the user
profile sender 13.” Ex. 1003, 5:24–29. Also, Lee describes that control unit
4 in video server 1 “identifies the corresponding video program stored in the
video database 3 by using the identifier and the position information of the
interrupted video program in the profile, and transmits the remaining portion
of the interrupted video program to the user terminal 2.” Id. at 5:29–37; see
also id. at 8:42–50 (describing “transmitting the user profile information to a
second video server of the video server terminal” and “resuming
transmission to said user of remaining portions of the selected video
program”).
For the reasons given, we determine that Petitioner’s unopposed
arguments and evidence show that Lee teaches “access, from the data
structure, the position that corresponds to the pause point.”
g) “retrieve the position that corresponds to the pause point from the
data structure”
Petitioner asserts that Lee teaches this recitation because Lee discloses
that all user terminals 2 include a profile reader 12 which separately decodes
the position information of the interrupted program identifier written in
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storage. Pet. 30 (citing Ex. 1003, 3:26–45, 4:17–33, 4:56–58, 5:24–37, 8:1–
50, Figs. 2, 3A, 3B; Ex. 1002 ¶¶ 114–115). Dr. Tjaden testifies when “the
user selects to resume viewing a video program, the position that
corresponds to the pause point is retrieved from the data structure.”
Ex. 1002 ¶ 115 (citing, e.g., Ex. 1003, 5:24–37).
We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden (see, e.g., Ex. 1002
¶¶ 114–115) because Petitioner’s contentions and Dr. Tjaden’s testimony are
consistent with the evidence of record. For instance, Lee teaches that
exemplary user terminal 2 comprises, among other things, “a profile reader
12 which reads and decodes the identifier and the position information of
the interrupted video program written in the profile card 9.” Ex. 1003,
4:27–33 (emphasis added). Lee further describes
[t]he video server 1 then analyzes the user profile
information and transmits to the user terminal 2 the
corresponding video program from the interrupted position of the
video program. Specifically, the control unit 4 identifies the
corresponding video program stored in the video database 3 by
using the identifier and the position information of the
interrupted video program in the profile, and transmits the
remaining portion of the interrupted video program to the user
terminal 2.
Id. at 5:29–37 (emphases added).
For the reasons given, we determine that Petitioner’s unopposed
arguments and evidence show that Lee teaches “retrieve the position that
corresponds to the pause point from the data structure.”
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h) “determine, based on information in the data structure, that the media
content was previously accessed by the second user equipment”
Petitioner asserts that a person having ordinary skill in the art would
have understood that Lee’s disclosure of profile reader 12 in user terminal 2
reading and decoding the interrupted program identifier and position
information written in storage Lee teaches this recitation. Pet. 30 (citing Ex.
1003, 3:26–45, 4:17–33, 4:56–58, 5:5–7, 5:24–37, Figs. 2, 3A, 3B; Ex. 1002
¶¶ 116–118; Ex. 1014 ¶ 296). Dr. Tjaden testifies “when a user inserts
profile card 9 into profile reader 12 of the playback user terminal and data
exists indicating a pause position of a particular program, Lee has
determined, based on information in the profile card 9, that the media
content (Video ID) was previously accessed by the pause user equipment.”
Ex. 1002 ¶ 118 (citing, e.g., Ex. 1003, 5:24–37, Figs. 2, 3A).
Patent Owner argues that the combination of asserted prior art does
not teach this recitation. See, e.g., PO Resp. 28–29, 41 (citing, e.g., Ex.
2005 ¶¶ 115–116, 118). Patent Owner’s arguments (id.) are premised on
Patent Owner’s proposed construction for this recitation, which we decline
to adopt. See supra § III.D.2. As discussed above (id.), we conclude that
“determine [determining] based on information in the data structure, that the
media content was previously accessed by the second [first] user equipment”
requires no express construction.
As an additional reason, Patent Owner’s arguments and Dr. Wolfe’s
testimony also are based on an overly narrow characterization of Lee’s
teachings. See, e.g., PO Resp. 28–29, 41–48; Ex. 2005 ¶¶ 115–122. Patent
Owner asserts “Lee undisputedly does not expressly disclose a relocation
feature at all.” PO Resp. 41 (citing Ex. 2004, 78:7–15); see also Ex. 2005
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¶ 115 (testifying “the combination of Lee, Wang, and Yukie does not
disclose a relocation feature”). Patent Owner’s reliance on Dr. Tjaden’s
deposition testimony is misplaced. For instance, Dr. Tjaden testified during
his deposition as follows:
Q. Okay.· You say -- on page 55, it says, Therefore Lee
teaches a POSA that a user may interrupt viewing of a program
on a first user terminal and then resume viewing of the program
on a different user terminal at a later time. Do you see that?
A. I see that.
Q. Okay. Does Lee explicitly state that or that’s just
what it teaches to a POSA?
MS. PATEL: Object to form.
THE WITNESS: (Reviews document.) Lee does not
explicitly teach that, but it teaches it to a POSA, would be
obvious and well understood by a POSA based on what Lee
explicitly teaches.
Ex. 2004, 78:7–21. We determine that Dr. Tjaden’s deposition testimony
(see, e.g., id.) is consistent with his declaration testimony discussed above
that Lee teaches a person having ordinary skill in the art that a user may
interrupt viewing of a program on a first user terminal and then resume
viewing of the program on a different user terminal at a later time (see supra
§§ III.E.4.a–g).
Upon consideration of Patent Owner’s arguments and evidence,
including Dr. Wolfe’s testimony (see, e.g., PO Resp. 28–29, 41–46; PO Sur-
Reply 15–16; Ex. 2005 ¶¶ 115–122), we agree with Petitioner’s contentions
and we credit and give significant weight to the testimony of Dr. Tjaden
(see, e.g., Ex. 1002 ¶¶ 116–118) over the testimony of Dr. Wolfe (see, e.g.,
Ex. 2005 ¶¶ 115–122) because Petitioner’s contentions and Dr. Tjaden’s
testimony are consistent with the evidence of record. For instance, in
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addition to the reasons given (see supra §§ III.E.4.e–g) upon completion of
the steps discussed above (see supra id.), Lee describes that video server 1
“transmits the remaining portion of the interrupted video program to the user
terminal 2.” Ex. 1003, 5:29–37. Also consistent with Petitioner’s
contentions and Dr. Tjaden’s testimony, Petitioner submits Patent Owner’s
expert report from the related ITC proceeding stating that “when a user
selects media content, if a pause point is in existence and associated with
that media content and that user is present, the determining step is
performed.” Ex. 1014 ¶ 296.
For the reasons given, we determine that Petitioner’s arguments and
evidence show that Lee teaches “determine, based on information in the data
structure, that the media content was previously accessed by the second user
equipment.” We determine Patent Owner’s arguments and evidence do not
undermine Petitioner’s showing.
i) “based on the receiving: cause to be simultaneously displayed a first
option and a second option”
Petitioner asserts that the combination of Lee and Wang teaches this
feature, and cites Dr. Tjaden’s testimony as support. Pet. 31–36 (citing, e.g.,
Ex. 1003, 2:41–49, 3:37–45, 5:51–67, 6:1–12, 6:26–33; Ex. 1004, code
(57), 1:19–22, 1:44–46, 4:1–5, 4:49–58, Figs. 1, 3; Ex. 1002 ¶¶ 120–128).
Dr. Tjaden testifies that Lee’s digest information “may be in the form of
multiple choices, each with a different degree of detail in summarizing the
program (e.g., more segments of the program included for higher levels)”
and, therefore, “a POSA would understand that Lee describes a user
interface (e.g., display), which provides multiple options to a user.”
Ex. 1002 ¶ 120. Dr. Tjaden also testifies a person having ordinary skill in
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the art would have known that a user interface “providing multiple options at
one time was commonly known and practiced in the art to allow for a better
user experience in selecting programs and content to watch” and Wang
“describes such an illustrative user interface.” Id. ¶ 121. Dr. Tjaden further
testifies as follows:
124. It is my opinion that a POSA would have understood
each of the selectable bookmarks in Wang, whether by time
parameters or by subpictures, as disclosing one of the claimed
“option[s],” and would have understood the simultaneous
display of multiple selectable bookmarks (illustrated in Figs. 1
and 3 of Wang above) to disclose simultaneous display of a first
option and a second option. It is also my opinion that a POSA
would have been motivated to modify Lee’s system for pause
and playback including a user interface allowing a user to select
where to resume playback with that of Wang disclosing a user
interface that allows for multiple bookmark options to be
simultaneously displayed for a user to select from to achieve the
claimed subject matter.
125. A POSA would have known to combine Lee’s system
with a system capable of displaying multiple bookmarks on one
page (Wang’s Fig. 1 or 3) to provide enhanced functionality with
respect to choice for the user. With the enhancement of Wang’s
user interface, a user can have all options with which to choose
from displayed at once without having to select one option or
another option using individually displayed pages. Thus, a single
page with multiple options is made available for selection so the
user can get to desired playback more quickly.
Id. ¶¶ 124–125.
Dr. Tjaden’s testimony also characterizes the proposed modification
as a combination of “well-known elements” and asserts that making the
modification would have been “a task routinely performed by skilled
artisans” that would have yielded a predictable result. Id. ¶¶ 126–127. Dr.
Tjaden also testifies that the skilled artisan “would have had a reasonable
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expectation of success in combining” the teachings in the manner proposed.
Id. ¶ 128.
Patent Owner asserts “the Petition also fails to establish that Lee and
Wang could be combined to arrive at the challenged claims” and “[e]ven if
they could, the combination would not disclose a relocation feature that
allows a user to pause media access on one device and resume access on
another device from the pause point or a point prior to the pause point.” PO
Resp. 28 (citing, e.g., Ex. 2005 ¶ 85); see also PO Sur-Reply 16–20
(asserting that Dr. Tjaden adjusted his testimony in his supplemental
declaration). Patent Owner’s contentions do not take into account the full
teachings of Lee and Wang, as would be understood by the person having
ordinary skill in the art, and as set forth by way of example below. Also,
Patent Owner’s contentions and Dr. Wolfe’s testimony are based on
mischaracterizations of the asserted prior art and Dr. Tjaden’s testimony
provided in support of the Petition (Ex. 1002 ¶¶ 120–121, 124–125).
We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden (see, e.g., Ex. 1002
¶¶ 120–128; Ex. 1025 ¶¶ 66–77) because Petitioner’s contentions and Dr.
Tjaden’s testimony are consistent with the evidence of record. For instance,
Lee describes providing the user “with digest information on the previously
viewed portion of the corresponding video program from the VOD system.”
Ex. 1003, 3:37–45. More specifically, Lee describes that “a video digest
information of the contents of the previously viewed video program is
displayed by sequentially connecting the important sections from the
beginning to the interrupted position of the video program.” Id. at 6:16–25.
In connection with the display of digest information, Lee describes
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providing multiple options to a user as follows: “FIG. 4 shows a digest
information structure with three levels of detail. . . . [A]s the level increases
from 01 to 03, the detail of the summary in each segment rises. . . . [I]f there
are multiple levels, the user can select a level using a user interface.” Id. at
6:1–12.
Also supportive of Petitioner’s contentions and Dr. Tjaden’s
testimony, Wang describes “[w]hen a user is watching a program, he can
randomly set a bookmark spot as a starting point for being browsed or
replayed.” Ex. 1004, 1:19–22 (emphasis added). Wang further describes as
background showing “a list of bookmark numbers with corresponding time
parameters on the display.” Id. at 1:44–46. Wang’s process “is not
modified greatly” and shows “a plurality of subpictures corresponding to the
fullscale pictures.” Id. at 4:1–5. More detail is shown in Figure 3 of Wang,
which is reproduced below.
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Figure 3 of Wang, above, illustrates a page on a display with four
subpictures A, B, C, and D corresponding to four different bookmark spots.
Ex. 1004, 4:46–52. Wang teaches that the subpictures are small pictures
corresponding to full-scale pictures, “so it is very convenient for a user to
select a picture to be replayed by the [video compact disc] (VCD) player.”
Id. at 4:52–55.
We turn to Patent Owner’s assertion that the Petition does not
establish that Lee and Wang could be combined to arrive at the challenged
claims. PO Resp. 28 (citing, e.g., Ex. 2005 ¶ 85). Patent Owner, more
specifically, asserts that the bookmarks of Wang are intended to be long-
term structures stored in local hardware for browsing and replaying multiple
times. Id. at 38 (citing Ex. 2005 ¶85). Patent Owner also asserts that the
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problems and solutions faced by a person having ordinary skill in the art
“related to DVR technology are distinct from what a POSA might face in
VCD technology such as Wang.” Id. at 38 (citing, e.g., Ex. 2005 ¶ 91).
Upon consideration of Patent Owner’s arguments and Dr. Wolfe’s testimony
(see, e.g., PO Resp. 4–6, 36–39; PO Sur-Reply 16–20; Ex. 2005 ¶¶ 67, 69,
74–90, 127–131), we agree with Petitioner’s contentions and we credit and
give significant weight to the testimony of Dr. Tjaden over the testimony of
Dr. Wolfe that Lee and Wang are analogous. See, e.g., Pet. 16–22, 31–36;
Ex. 1002 ¶¶ 68–82, 119–128; Ex. 1025 ¶ 60. For instance, based on the
complete record now before us, consistent with Dr. Tjaden’s testimony (see,
e.g., Ex. 1002 ¶ 124) we are persuaded that Wang’s bookmarks teach
options for a user to resume playing media content. Wang teaches that the
subpictures are small pictures corresponding to full-scale pictures, “so it is
very convenient for a user to select a picture to be replayed by the [video
compact disc] (VCD) player.” See, e.g., Ex. 1004, 4:52–55 (emphasis
added); see also id. at 1:19–22 (describing that “[w]hen a user is watching a
program, he can randomly set a bookmark spot as a starting point for being
browsed or replayed” (emphasis added)).11

11 Even using Patent Owner’s proposed construction of pause point (see,
e.g., PO Resp. 12, 15–17; Ex. 2005 ¶ 64–65), and even assuming Wang’s
bookmarks are created in bookmark mode while the movie continues to
play, i.e., without a pause in displaying the media content, as Dr. Wolfe
testifies (Ex. 2005 ¶ 80), Wang’s bookmarks are options displayed on a user
interface that when selected resume or begin playing the media content at a
point selected by the user, which is not the beginning (Ex. 1004, 1:19–22,
4:52–55) and are at least analogous to Lee’s teaching of pause points, which
is not disputed by Patent Owner. See generally PO Resp.; Ex. 2005 ¶ 67; Tr.
43:12–16.
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Also, Patent Owner’s arguments and Dr. Wolfe’s testimony (see, e.g.,
PO Resp. 4–6, 36–39; PO Sur-Reply 16–20; Ex. 2005 ¶¶ 67, 69, 74–90,
127–131) do not take into account that Dr. Tjaden’s testimony does not
require bodily incorporation of Wang’s entire system into Lee’s, but instead
Dr. Tjaden testifies that one having ordinary skill in the art would have
enhanced Lee’s user interface to display multiple resume options, as taught
by Wang. See, e.g., Ex. 1002 ¶¶ 124–125. Even if we accept Patent
Owner’s arguments and Dr. Wolfe’s testimony that a bookmark in Wang
differs from a pause point in the ’799 Patent, as well as Patent Owner’s
asserted differences in DVD versus VCD technology, we are persuaded by
Dr. Tjaden’s testimony that a person having ordinary skill in the art would
have known that a user interface “providing multiple options at one time was
commonly known and practiced in the art to allow for a better user
experience in selecting programs and content to watch” and Wang describes
such a user interface. Ex. 1002 ¶ 121.
Regarding Patent Owner’s assertion that Dr. Tjaden relies on
hindsight (see, e.g., PO Sur-Reply 1, 18), Dr. Tjaden testifies regarding
Lee’s disclosure of displaying multiple options on a user interface (Ex. 1002
¶¶ 120–121(citing, e.g., Ex. 1003, 6:1–12, 6:17–38)), as well as Wang’s
disclosures (Ex. 1002 ¶¶ 122–128 (citing, e.g., Ex. 1004, 1:19–22, 1:34–50,
4:1–5, 4:48–52, Figs. 1, 3); Ex. 1025 ¶¶ 67–77). Furthermore, Patent
Owner’s assertion regarding hindsight is conclusory and contradicted by
evidence in this record as explained. PO Sur-Reply 1, 11, 18. The Petition
and Dr. Tjaden’s testimony offer articulated reasoning with a rational
underpinning as to why one of ordinary skill in the art would have modified
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and combined the teachings of the asserted art in the manner recited in claim
1 that is well-supported by the evidence of record.
We turn to Patent Owner contention that even if Lee and Wang could
be combined, “the combination would not disclose a relocation feature that
allows a user to pause media access on one device and resume access on
another device from the pause point or a point prior to the pause point.” PO
Resp. 28 (citing, e.g., Ex. 2005 ¶ 85). Patent Owner, more specifically,
asserts that Wang does not teach a “pause point.” PO Resp. 37, 49–51. As
discussed above (see supra §§ III.E.4.c–d), however, Petitioner asserts that
Lee discloses the pause point. See, e.g., Pet. 26 (citing, e.g., Ex. 1003, 2:40–
44, 3:12–25, 4:17–33, 4:48–53, 5:24–37, 7:1–11, 8:1–50, Fig. 2; Ex. 1002
¶ 103). Patent Owner does not dispute that Lee teaches pause points. See
generally PO Resp.; Tr. 43:12–16. Patent Owner’s contentions and Dr.
Wolfe’s testimony (see, e.g., PO Resp. 4–6, 29, 36–39, 59–51; PO Sur-
Reply 1–3, 16–20; Ex. 2005 ¶¶ 67, 69, 74–90, 100, 127–131) are based on
each of Lee and Wang considered alone, rather than considering the
combined teachings of the asserted prior art. See In re Keller, 642 F.2d 413,
426 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references.”).
Patent Owner also asserts “[n]one of the cited references teaches
displaying anything ‘based on receiving’ a media asset identifier or
communication from a first (or second) user equipment.” PO Resp. 52–54
(citing, e.g., Ex. 2005 ¶132). Patent Owner’s contentions and Dr. Wolfe’s
testimony (PO Resp. 52–54; Ex. 2005 ¶¶ 107, 132; PO Sur-Reply 20) do not
take into consideration that Lee describes displaying based on receiving user
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requests. Ex. 1003, 1:7–10 (“The present invention relates to a video-on-
demand (VOD) system, and more particularly to a user oriented VOD
system which enables a user to resume viewing of a specific video program
after an interruption.”), 1:21–27 (“Thus, the VOD service enables a user to
view a program selected according to the individual taste, regardless of the
time, as well as allow users, to play, rewind, pause and record the
program . . . .”), 1:54–56 (“Thereafter, the [set top box (STB)] 100 processes
a signal from a subscriber through an input device such as a remote control
and performs a network connection function.”), 1:65–67 (“Generally, when
a user wishes to [view] a certain program, the user can view the program by
connecting to the VOD system and selecting the program.”), 2:5–8 (“[I]f the
same user requests viewing of the same program, the video server displays
the program from the position at which the viewing of the program has been
interrupted.”), 2:40–44 (“An object of the present invention is to provide a
user oriented VOD system and method which enables a user to resume
viewing a specified program from a portion at which the viewing was
interrupted by the user, regardless of the video server.”), 4:36–38 (“When a
user terminal 2 receives a request to view a specific video program from a
user, the request is transferred to the video server 1.”), 5:24-37 (describing
“if the user wishes to resume viewing an interrupted video program” then
user terminal 2 reads the video program identifier and position information
and “transmits the information to the video server 1 through the user profile
sender 13”), 6:11–33 (describing “if there are multiple levels, the user can
select a level using a user interface” and “if the user selects one of the
multiple levels predetermined by the VOD system, the VOD system
provides a highlight stream from the corresponding level”).
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We turn to Patent Owner’s reliance on Dr. Tjaden’s deposition
testimony. In addition to the specific examples above (see supra
§§ III.E.4.a–i), we further agree with Petitioner and Dr. Tjaden (see, e.g.,
Pet. Reply 17–22; Ex. 1025 ¶¶ 57–77) that Dr. Tjaden’s deposition is taken
out of context and mischaracterized in Patent Owner’s arguments and Dr.
Wolfe’s testimony. See, e.g., PO Resp. 36–39, 49–51; Ex. 2005 ¶¶ 69, 70,
74, 84, 86. Upon consideration, we agree with Petitioner’s responsive
contentions and Dr. Tjaden’s responsive testimony (see, e.g., Pet. Reply 17–
22; Ex. 1025 ¶¶ 57–78) as providing the correct characterization of Dr.
Tjaden’s deposition testimony relied upon by Patent Owner (see, e.g., Ex.
2004, 78:7–80:21, 89:12–91:4, 94:22–97:3, 119:20–120:21, 121:5–122:13),
which is consistent with his declaration testimony that supports Petitioner’s
positions.
For the reasons given, we determine that Petitioner’s arguments and
evidence show that the combination of Lee and Wang teaches “based on the
receiving: cause to be simultaneously displayed a first option and a second
option.” Also, we determine that Petitioner has offered articulated reasoning
with a rational underpinning as to why one of ordinary skill in the art would
have modified and combined the teachings of the asserted art in the manner
recited in claim 1. We also are persuaded that Petitioner has demonstrated
that such person would have had a reasonable expectation of success. We
determine Patent Owner’s arguments and evidence do not undermine
Petitioner’s showing.
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j) “determine whether the first option or the second option is selected by
the user; and”
Petitioner asserts that the combination of Lee and Wang teaches this
feature. Pet. 36. More specifically, Petitioner points to Lee’s user interface
for selecting one of multiple levels of the video digest information or
playback from the pause point. Id. at 36–37 (citing Ex. 1003, 2:57–3:3,
5:24–37, 5:51–6:12, 6:17–33, 7:1–5; Ex. 1002 ¶¶ 129–130). Petitioner also
points to Wang’s description of the user selecting a particular bookmark
using the remote control. Id. (citing, e.g., Ex. 1004, 2:7–15, 4:32–35, 4:40–
45, 5:6–9). Petitioner provides articulated reasoning to combine relying on
Dr. Tjaden’s testimony. Id. at 37 (citing Ex. 1002 ¶ 130).
Dr. Tjaden testifies
[a] POSA would thus understand that by receiving a
selection in Lee’s user interface or of a particular bookmark
when combined with Wang, the system determines which of
multiple options has been selected. A POSA would appreciate
that such a combination provides enhanced functionality with
respect to receiving selection by a user since any options of a user
interface can be selected by a user in a single user interface in
order to allow the user to quickly determine which of a plurality
of positions the user wants to resume playback. Once again, such
a modification to Lee would to do nothing more than combine
well known elements (Lee’s pause and resume playback system
and Wang’s multiple bookmark user interface functionality)
according to known methods (integrating Wang’s multiple
bookmark user interface with Lee’s user interface for user
selection for playback) to yield predictable results (determining
which of the several options presented at once was selected). A
POSA would understand that by receiving a selection of one of
two options in Lee’s user interface or of a particular bookmark
when combined with Wang, the system determines which of
multiple options has been selected.
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Ex. 1002 ¶ 130.
Patent Owner’s disputes for this recitation are the same as Patent
Owner’s arguments that Petitioner has not shown that the asserted art
teaches “based on the receiving: cause to be simultaneously displayed a first
option and a second option.” PO Resp. 28, 37, 49–54. We address Patent
Owner’s arguments above. See supra § III.E.4.i.
We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden (see, e.g., Ex. 1002
¶¶ 129–130) because Petitioner’s contentions and Dr. Tjaden’s testimony are
consistent with the evidence of record. For instance, Wang describes that
“[t]he user can select by the controlling interface one of the subpictures
corresponding to the selected picture to be replayed, and then the selected
picture will be shown on the display.” Ex. 1004, 2:7–11; see also id. at 5:6–
9 (describing that “the user can easily distinguish the bookmark spots by a
plurality of subpictures and correctly select a picture to replay”). Wang
describes further detail including microprocessor 24 executing commands
from controlling interface 26 to replay selected pictures. Id. at 4:32–35,
4:40–45.
For the reasons given, we determine that Petitioner’s arguments and
evidence show that the combination of Lee and Wang teaches “determine
whether the first option or the second option is selected by the user.” Also,
we determine that Petitioner has offered articulated reasoning with a rational
underpinning as to why one of ordinary skill in the art would have modified
and combined the teachings of the asserted art in the manner recited in claim
1. We determine Patent Owner’s arguments and evidence do not undermine
Petitioner’s showing.
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k) “when it is determined that the first option is selected by the user:
generate a request including a position identifier that identifies the
retrieved position that corresponds to the pause point, transmit the
request, and”
Petitioner asserts that Lee teaches this recitation because Lee discloses
that if a user wishes to resume viewing an interrupted video program, the
playback user terminal reads the identifier and interrupted position
information of the video program from storage and generates and transmits
the identifier and interrupted position information to the video server 1
though user profile sender 13. Pet. 38 (citing Ex. 1003, 2:45–49, 3:37–45,
4:10–16, 5:24–37, 5:51–65, 6:26–33, 7:1–11, 8:1–50, Fig. 2; Ex. 1002
¶¶ 131–133). Patent Owner does not argue separately regarding Petitioner’s
showing for this recitation. See generally PO Resp.
We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden (see, e.g., Ex. 1002
¶¶ 131–133) because Petitioner’s contentions and Dr. Tjaden’s testimony are
consistent with the evidence of record. For instance, Lee describes user
terminal 2 transmitting an exemplary request to video server 1 with the
video identifier and position information. See, e.g., Ex. 1003, 5:24–37; see
also id. at 8:1–50 (describing “transmitting the user profile information to a
second video server of the video server terminal”). Lee further describes
that user selections of options presented in the user interface are transmitted
from the user terminal to video server 1. See, e.g., id. at 6:26–33 (describing
“if a user selects one of a multiple levels predetermined by the VOD system,
the VOD system provides a highlight stream from the corresponding level”).
For the reasons given, we determine that Petitioner’s unopposed
arguments and evidence show that Lee teaches “when it is determined that
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the first option is selected by the user: generate a request including a position
identifier that identifies the retrieved position that corresponds to the pause
point, transmit the request.”
l) “receive, from the position that corresponds to the pause point, based
on the position identifier included in the request, the media content;
and”
Petitioner asserts that Lee teaches this recitation because Lee’s video
server 1 uses the transmitted user profile information, which includes the
identifier and interrupted position information of the video program to
identify the corresponding video program and transmits the video program
from the interrupted position based on the received position information.
Pet. 38–39 (citing Ex. 1003, 2:40–49, 3:37–45, 4:10–16, 5:29–37, 6:26–33,
7:1–11, 8:1–50, Fig. 2; Ex. 1002 ¶¶ 134–136). Dr. Tjaden testifies “Lee’s
video server 1 transmits the remaining portion ‘based on the position
identifier included in the request.’” Ex. 1002 ¶ 136 (citing, e.g., Ex. 1003,
2:40–44, 5:29–37).
Patent Owner does not argue separately Petitioner’s showing for this
recitation. See generally PO Resp.
We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden (see, e.g., Ex. 1002
¶¶ 134–136) because Petitioner’s contentions and Dr. Tjaden’s testimony are
consistent with the evidence of record. For instance, Lee describes that
video server 1 identifies the media content “by using the identifier and the
position information of the interrupted video program in the profile.” Ex.
1003, 5:29–37. Lee describes that transmitted user selections are received.
See, e.g., id. at 6:26–33 (describing “if a user selects one of a multiple levels
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predetermined by the VOD system, the VOD system provides a highlight
stream from the corresponding level”).
For the reasons given, we determine that Petitioner’s unopposed
arguments and evidence show that Lee teaches “receive, from the position
that corresponds to the pause point, based on the position identifier included
in the request, the media content.”
m) “when it is determined that the second option is selected by the user:
access the media content starting from a second point in the media
content which is prior to the position.”
Petitioner asserts that the combination of Lee and Wang teaches this
recitation. Pet. 39–41. Petitioner points to Lee’s disclosure of presenting a
user interface for selecting among multiple options. Pet. 39 (Ex. 1003,
5:51–6:12, 6:17–33; Ex. 1002 ¶¶ 137–139). Petitioner also points to Wang’s
disclosure of multiple bookmarks and argues a person having ordinary skill
in the art would have been motivated to modify Lee’s disclosure with
Wang’s to present a single user interface that would have allowed the user to
quickly select from the options to resume playback. Id. at 39–41 (citing Ex.
1004, 2:7–15, 4:32–35, 4:40–45, 4:59–60, 5:6–9; Ex. 1002 ¶¶ 140–142).
Patent Owner disputes Petitioner’s showing that a person having
ordinary skill in the art would have combined the teachings of Lee and
Wang in the manner recited in claim 1. See, e.g., PO Resp. 36–41. We
address Patent Owner’s argument above. See supra § III.E.4.i.
We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden (see, e.g., Ex. 1002
¶¶ 137–142) because Petitioner’s contentions and Dr. Tjaden’s testimony are
consistent with the evidence of record. For instance, Lee teaches resuming
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viewing based on user input (Ex. 1003, 5:24–37) and providing a digest
stream based on user input (id. at 5:51–6:12). Furthermore, Petitioner has
shown that a person having ordinary skill in the art would have understood
that a user would have had the option of viewing a program from earlier
points, including the beginning, based on the combined teachings of Lee and
Wang. See supra § III.E.4.i. In particular, each of the options displayed,
when selected, resumes playing at the selected point. Id.
For the reasons given, we determine that Petitioner’s arguments and
evidence show that the combination of Lee and Wang teaches “when it is
determined that the second option is selected by the user: access the media
content starting from a second point in the media content which is prior to
the position.” Also, we determine that Petitioner has offered articulated
reasoning with a rational underpinning as to why one of ordinary skill in the
art would have modified and combined the teachings of the asserted art in
the manner recited in claim 1. We determine Patent Owner’s arguments and
evidence do not undermine Petitioner’s showing.
n) Conclusion—Claim 1
In summary, upon consideration of the contentions and evidence
presented by both parties in the complete record now before us, we
determine that Petitioner has shown that all recitations in claim 1 are taught
by (1) Lee and Wang; and (2) Lee, Wang, and Vanzini. Also, we are
persuaded that Petitioner has articulated reasoning with a rational
underpinning as to why one of ordinary skill in the art would have modified
and combined the teachings of the asserted art in the manner recited in claim
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1. We also are persuaded that Petitioner has demonstrated that such person
would have had a reasonable expectation of success.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that claim 1 would have been obvious over (1) Lee and Wang; and
(2) Lee, Wang, and Vanzini.
F. Obviousness—Independent Claims 10, 19, and 28 and Dependent
Claims 8, 17, and 26
Petitioner contends each of claims 8, 10, 17, 19, 26, and 28 of the
’799 Patent is unpatentable, under 35 U.S.C. § 103(a), as obvious over
(1) Lee, Wang, and Yukie; and (2) Lee, Wang, Vanzini, and Yukie. Pet. 8,
55–67. In our discussion below, we first provide a brief overview of Yukie,
and then we address the parties’ contentions in turn.
1. Overview of Yukie
Yukie is directed to providing for remote storage and retrieval of data
that otherwise would be provided locally. Ex. 1007, 2:8–11. Yukie
describes addressing “limitations associated with relying on local data
storage media by employing a wireless communications link to a remote
data server.” Id. at 2:31–33. More specifically, Yukie discloses the
following:
The data would be saved on the remote server for subsequent
retrieval through, for example, the Internet or a wireless
connection to the server. In addition, the user can download data
from the server that did not originate from the user such as, for
example, commercially available audio files, video files, images,
and the like. Data retrieval can be manual where the user
specifies data to be downloaded, or can be automated through the
use of a personal user profile stored on the server which defines
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what data will be downloaded, as well as how and when the data
will be downloaded. Therefore, the invention not only provides
an alternative to local data storage, but further enables the
development of a myriad of consumer devices with wireless
access to data.
Id. at 2:39–52.
2. Claim 10
For claim 10, Petitioner contends
[c]laim 10 is substantially similar to independent claim 1,
discussed above, and differs from claim 1 only on two points.
First, claim 10 is directed to a system including the first and
second user equipment of claim 1 with the nomenclature of the
two user equipment being swapped, i.e., “first user equipment”
in claim 1 is the “second user equipment” in claim 10, and vice
versa. Ex. 1002, ¶¶ 65, 184. Second, the claimed “storage device
remote from the first user equipment” in claim 10 means the
storage device is remote from the pause user equipment, as
opposed to the playback user equipment in claim 1.
Pet. 58. Petitioner identifies one recitation in claim 10 that Petitioner asserts
differs from claim 1 and requires further discussion, specifically, “cause to
be stored, in a data structure of a profile of a user in a storage device remote
from the first user equipment.” Id. at 58–59.12 Petitioner contends that all
other recitations of claim 10 correspond to limitations in claim 1 and
Petitioner, therefore, relies on the same teachings discussed with respect to
claim 1. Id. at 58–59.
We agree with Petitioner that its identified recitations in claim 10 are
similar to the corresponding recitations identified by Petitioner in claim 1,
with the exception that claim 10 is directed to a system including the first

12 Petitioner refers to this recitation as “limitation [10B].” Id. at 59.
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and second user equipment of claim 1 with the nomenclature of the two user
equipment being swapped, i.e., “first user equipment” in claim 1 is the
“second user equipment” in claim 10. Id. With respect to those recitations
in claim 10, upon review of the evidence in the complete record and the
parties’ contentions, we agree with Petitioner and credit and give significant
weight to the testimony of Dr. Tjaden. Pet. 16–41, 58–59; Ex. 1002 ¶¶ 65–
67, 97–142, 184–188. We determine, for the reasons given by Petitioner as
well as those discussed above with respect to claim 1 (see supra
§§ III.E.4.a–m), that Petitioner has shown how the asserted prior art teaches
each recitation in independent claim 10. We also are persuaded that
Petitioner has offered articulated reasoning with a rational underpinning as
to why one of ordinary skill in the art would have modified and combined
the teachings of the asserted art in the manner proposed by Petitioner. Id.
We turn to the limitation [10B], i.e., “cause to be stored, in a data
structure of a profile of a user in a storage device remote from the first user
equipment” (Ex. 1001, 19:10–16 (emphasis added)). Regarding “remote,”
Petitioner points to Yukie’s description of providing for remote storage and
retrieval of data and relies on the testimony of Dr. Tjaden regarding
reasoning to combine Yukie with Lee and Wang. Pet. 59–61 (citing, e.g.,
Ex. 1003, 4:56–60, 5:24–37; Ex. 1007, 2:7–10, 2:18–28, 2:49–52;
Ex. 1002 ¶¶ 74, 185–188). Dr. Tjaden testifies it would have been obvious
to a person having ordinary skill in the art to allow users to access a user
interface via different devices based upon a remotely stored user profile. Ex.
1002 ¶ 188. Dr. Tjaden testifies a person having ordinary skill in the art
would have made the proposed combination because
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[a] POSA would appreciate that such a system would ensure that
a user need not carry a physical storage device with her to use on
a different playback device. The user experience is thus
improved with user profile data of a pause point of a program
being accessible through a network by different devices. In
addition, a POSA would appreciate that such a combination
would provide enhanced security in a situation where a user lost
her user profile card, and further that the system operator would
not need to mail out a new physical user profile card in response.
Id.
Patent Owner asserts that Lee teaches away from using remote storage
and, therefore, a person having ordinary skill in the art would not have
combined Lee and Yukie. PO Resp. 31–35; PO Sur-Reply 12–14. For the
same reasons discussed above with respect to claim 1 (see supra § III.E.4.d),
we are not persuaded by Patent Owner’s argument that Lee teaches away
from combining storing user profile data remotely with Lee’s other
disclosures including the data structure of the user profile data. See Depuy,
567 F.3d at 1327 (“A reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed.”). We agree with Petitioner’s contentions and Dr. Tjaden’s
testimony (see, e.g., Ex. 1002 ¶¶ 185–188; Ex. 1025 ¶¶ 50–56) that Lee does
not discourage, discredit, or criticize modifying and combining the teachings
of Lee and Yukie in the manner proposed by Petitioner. Also, Petitioner has
shown that modifying Lee to use Yukie’s networked storage would have
improved a user’s experience. See, e.g., Pet. 58–61; Ex. 1002 ¶¶ 65, 74,
184–188.
Patent Owner’s arguments and Dr. Wolfe’s testimony (PO Resp. 31–
35, 39–41; PO Sur-Reply 12–14; Ex. 2005 ¶¶ 85–94, 110–114) are based on
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a mischaracterization of the references and also do not take into account
Petitioner’s proposed combination or reasoning to combine. For instance,
Dr. Wolfe’s testimony (see, e.g., Ex. 2005 ¶¶ 85–91, 110–114) does not
address the specific proposed modification or improvements set forth in Dr.
Tjaden’s testimony (see, e.g., Ex. 1002 ¶¶ 64–67, 74, 76, 180–188). Also,
Dr. Wolfe’s testimony that Petitioner relies on “three very different
references” (Ex. 2005 ¶ 94) mischaracterizes the references that are at least
related and analogous as they all pertain to media delivery including Lee’s
video-on-demand system which undisputedly stores a pause position in a
user profile (Ex. 1003, code (57), 2: 45–49, 4:10–33, 4:48–58) and Wang’s
method and system for browsing and replacing a selected picture by a
multimedia player including bookmarks set by the user for browsing or
replaying (Ex. 1004, code (57), 1:19–22, 4:1–5). Yukie’s method and
system for remotely storing data on a server specified by a user according to
a user profile (see, e.g., Ex. 1007, code (57), 2:7–10, 2:18–28, 2:49–52),
rather than Lee’s profile card 9, are relied on to support Dr. Tjaden’s
testimony (Ex. 1002 ¶¶ 74, 185–188) regarding storing data remotely. We
determine that Yukie’s data storage, including a user profile (Ex. 1007, code
(57), 2:7–10, 2:18–28, 2:49–52), is similar to the user profile data stored on
Lee’s profile card 9 (see, e.g., Ex. 1003, 4:48–60, 5:5–7, Fig. 3A) because
both Yukie’s and Lee’s data are used by end user equipment, are specific to
a user, and include user profile data.
Upon consideration of Patent Owner’s arguments and Dr. Wolfe’s
testimony (PO Resp. 31–35, 39–41; PO Sur-Reply 12–14; Ex. 2005 ¶¶ 85–
94, 110–114), we agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Dr. Tjaden (see, e.g., Ex. 1002 ¶¶ 64–
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67, 74, 76, 180–188) over the testimony of Dr. Wolfe (see, e.g., Ex. 2005
¶¶ 85–91, 110–114) because Petitioner’s contentions and Dr. Tjaden’s
testimony are consistent with the evidence of record. As discussed above
with respect to claim 1, we are persuaded by Petitioner’s showing based on
the teachings of Lee. See supra § III.E.4.d. Additionally, Yukie describes
“[t]his invention pertains generally to data storage methods and devices, and
more particularly to a method, system and devices that provide for remote
storage and retrieval of data that would otherwise be provided locally.” Ex.
1007, 2:7–10. Furthermore, Yukie describes
[s]ince internal memory or external storage devices are not
unlimited in capacity, the tapes, disks, etc. eventually need to be
changed to continue recording images. This presents an element
of inconvenience, particularly when storage capacity is reached
at a critical time, an element of expense since it is generally
necessary to purchase multiple storage devices for extended use
of the camcorder, and an element of unreliability since the
storage devices can fail. This holds true with any device that
relies on data storage and uses a form of local data storage media.
Id. at 2:18–28. Yukie also describes “the invention not only provides an
alternative to local data storage, but further enables the development of a
myriad of consumer devices with wireless access to data.” Id. at 2:49–52.
Yukie further describes that the remotely stored data is accessible by two
different devices. In particular, Yukie describes “[d]ata can also be supplied
to data server 16 by a first user device 10 to be accessed by a second user
device (not shown).” Ex. 1007, 18:5–7 (emphasis added).
We determine that Patent Owner’s arguments and Dr. Wolfe’s
testimony that none of the three references teach the disputed recitation (see,
e.g., PO Resp. 41–48; Ex. 2005 ¶¶ 44, 73, 98, 115–126; PO Sur-Reply 15–
16) do not take into account either Lee’s teachings as understood by a person
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having ordinary skill in the art or Petitioner’s proposed combination of
teachings. In addition to Lee itself describing storing a pause point in a
network and user terminals being connected to video servers and each other
by a network (Ex. 1003, 1:65–2:11, 2:57–3:3), Yukie specifically teaches
providing “for remote storage and retrieval of data that would otherwise be
provided locally.” Ex. 1007, 2:7–11 (emphasis added); see also id. at 2:44–
49, 17:36–41 (describing storing user profile data on a server). Patent
Owner’s contentions and Dr. Wolfe’s testimony are based on each of Lee
and Yukie considered alone, rather than considering the combined teachings.
See Keller, 642 F.2d at 426 (CCPA 1981) (“[O]ne cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.”).
Upon consideration of the parties’ contentions and the evidence based
on the complete record now before us, we determine that Petitioner’s
arguments and evidence show that the combination of Lee, Wang, and Yukie
teaches limitation [10B].
We note that Petitioner provides alternative contentions adding
Vanzini to the combination of Lee, Wang, and Yukie. We determine that
Vanzini provides additional evidentiary support for Petitioner’s position that
Lee teaches resuming viewing from a different user terminal for the same
reasons discussed with respect to claim 1. See supra § III.E.4.b.
Upon consideration of the contentions and evidence presented by both
parties in the complete record now before us, we determine that Petitioner
has shown that all recitations in claim 10 of the ’799 Patent are taught by the
asserted prior art. Also, we determine that Petitioner has articulated
reasoning with a rational underpinning as to why one of ordinary skill in the
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art would have modified and combined the teachings of the asserted art in
the manner recited in claim 10. We also determine that Petitioner has
demonstrated that such person would have had a reasonable expectation of
success.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that claim 10 of the ’799 Patent is unpatentable, under 35
U.S.C. § 103(a), as obvious over (1) Lee, Wang, and Yukie; and (2) Lee,
Wang, Vanzini, and Yukie.
3. Claims 19 and 28
Independent claims 19 and 28 of the ’799 Patent are similar to
independent claims 1 and 10. For each of claims 19 and 28, Petitioner relies
on the same teachings discussed with respect to claims 1 and 10. Pet. 62–64,
66–67 (citing, e.g., Ex. 1002 ¶¶ 65–67, 194–201, 207–211). Petitioner
accounts sufficiently for all differences in the claims. For instance,
regarding “a server configured to” perform functions similar to those recited
in claim 10, i.e., “determine . . . that the media content was previously
accessed” and “cause to be simultaneously displayed . . . a first option and a
second option,” Petitioner relies on the testimony of Dr. Tjaden regarding
the server in the preamble of claim 19 and the contentions discussed in
Section III.F.2 relating to Lee’s teaching of video server 1 using the
identifier and position information in the user profile to resume transmission
of the video program, as well as Wang’s teaching of simultaneous display of
multiple options for a user to resume playing media content and Yukie’s
teaching of storing user information remotely. Id. at 62–64 (citing, e.g., Ex.
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1002 ¶¶ 65–67, 194–201). Dr. Tjaden testifies “Lee’s video server 1 is
configured to operate in the same manner as described” in claim 19. Ex.
1002 ¶ 201 (emphasis added). Claim 28 recites a method with steps
corresponding to functions performed in claim 10, and Petitioner provides
contentions showing a mapping of the steps in claim 28 with the contentions
we found persuasive as discussed in Section III.F.2 with respect to claim 10.
Pet. 66–67; Ex. 1002 ¶¶ 65, 207–211.
For independent claims 19 and 28, Patent Owner relies on the same
arguments discussed above in Sections III.E.4 and III.F.2 with respect to
claims 1 and 10. See generally PO Resp. For the reasons discussed above in
with respect to claims 1 and 10, we are persuaded by Petitioner’s showing
that the asserted prior art teaches each element of claims 19 and 28. Also,
we are persuaded that Petitioner has offered articulated reasoning with a
rational underpinning as to why one of ordinary skill in the art would have
modified and combined the teachings of the asserted art in the manner
proposed by Petitioner. We determine that Patent Owner’s arguments do not
undermine Petitioner’s showing.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that each of claims 19 and 28 of the ’799 Patent are unpatentable,
under 35 U.S.C. § 103(a), as obvious over (1) Lee, Wang, and Yukie; and
(2) Lee, Wang, Yukie, and Vanzini.
4. Claims 8, 17, and 26
Claim 8 recites “wherein receiving the selection of the media asset
identifier corresponding to media content” requires “receiving user input that
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identifies the user” and “in response to receiving the user input,
automatically configuring the first user equipment to generate for display the
first option and the second option.” Ex. 1001, 18:65–19:4 (emphasis added).
Claims 17 and 26 recite similar recitations. Id. at 20:18–24, 21:36–41.
Petitioner contends
Yukie describes a system for remotely storing data on a
server that would otherwise be provided locally on a consumer
device. Ex. 1007, 2:7–10; Ex. 1002, ¶180. A user profile stored
on a data server allows a user to configure specific media content
(the claimed “option[s]”) to be automatically transmitted from a
remote server to a user device. Ex. 1007, Abstract, 2:44–52,
17:31–16:7; Ex. 1002, ¶180. The user profile defines how and
when the data will be downloaded. Ex. 1007, 2:44–52. The
retrieved media content may then be automatically displayed on
the user device. Ex. 1007, 20:19–65. Such data retrieval has
multiple benefits, including allowing end user equipment to be
automatically configured to generate data from a networked user
profile in response to receiving user input. Ex. 1002, ¶181.
Pet. 56; see also id. at 62, 65 (relying on the same teachings for claims 17
and 26). Petitioner also points to the same teachings in Yukie relied upon
for claim 10. Pet. 56, 62, 65 (citing, e.g., Ex. 1007, (57), 2:44–52, 17:31–
18:7, 20:19–65; Ex. 1002, ¶180).
Dr. Tjaden testifies
Yukie “pertains generally to data storage methods and
devices, and more particularly to a method, system and devices
that provide for remote storage and retrieval of data that would
otherwise be provided locally.” (Ex. 1007 to the Petition at 2:7–
10). Yukie “addresses the limitations associated with relying on
local data storage media by employing a wireless
communications link to a remote data server.” (Id. at 2:31–33).
Yukie teaches that data retrieval “can be automated through the
use of a personal user profile stored on the server which defines
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what data will be downloaded, as well as how and when the data
will be downloaded.” (Id. at 2:46–49, emphasis added).
Ex. 1002 ¶ 180. Dr. Tjaden also testifies that “during playback the user
equipment that a user is operating can be automatically configured based
upon the identification of the user and data in the user profile” and “[s]uch
data retrieval processes have multiple benefits, including allowing end-user
equipment to be automatically configured to generate user displays based
upon data from a networked user profile in response to receiving user input.”
Id. ¶ 181.
Dr. Tjaden further testifies
[a]ccordingly it would have been obvious to use Yukie’s
teachings (including user specified automated configuration of
end user equipment data) to implement enhancements of the
selectable multiple bookmark user interface capabilities of the
Lee/Wang system, particularly to allow users to have the user
interface of the multiple selectable bookmarks automatically
configured once the user has been recognized by the system as
selecting a particular program. The combination system of Lee
and Wang would be thereby improved by the teachings of Yukie
by explicitly adding the ability to allow a user to automatically
configure end user equipment in response to selection of a
program. Such an improvement improves the user experience by
allowing users more options, preferences, and flexibility for what
data is presented to them in addition to how and when it is
provided automatically. Thus when a user wants to have a
preference for the most recently paused programs presented first
as options, a POSA would appreciate that the combination of
Lee, Wang, and Yukie provides such.
Id. ¶ 183.
Patent Owner argues that “[n]othing in Yukie teaches anything about
pausing and resuming media content, much less does Yukie teach
automatically generating and displaying multiple options for resuming
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delivery of media content.” PO Resp. 54–56 (citing Ex. 2005 ¶¶ 138–140,
180–181); see also PO Sur-Reply 21–22 (repeating the same arguments).
Patent Owner also argues “[n]one of the other cited references teach this
automatic configuration of multiple resume options.” Id. Dr. Wolfe testifies
that he disagrees with Dr. Tjaden’s testimony that Yukie teaches
automatically configuring data in response to user input. Ex. 2005 ¶ 139.
Dr. Wolfe also testifies that “Wang’s bookmarks are not automatically
configured, nor do they correspond to the first and second options claimed”
and “Lee doesn’t have multiple resume options.” Id. ¶¶ 139–140.
Patent Owner’s arguments and Dr. Wolfe’s testimony (PO Resp. 54–
56; Ex. 2005 ¶¶ 138–140, 180–181; PO Sur-Reply 21–22) pertain to each of
Lee, Wang, and Yukie considered alone, rather than Petitioner’s proposed
combination of the references. See Keller, 642 F.2d at 426 (CCPA 1981)
(“[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references.”).
Additionally, Dr. Wolfe’s testimony regarding Dr. Tjaden’s testimony is
simply “I disagree,” which is conclusory and lacks explanation relating to
the point of disagreement. Ex. 2005 ¶ 139. Dr. Wolfe’s testimony that
Wang’s bookmarks do not “correspond to the first and second options
claimed” also is conclusory and contradicted by evidence in this record as
explained. Id. ¶ 140.
We agree with Petitioner’s contentions and credit and give significant
weight to Dr. Tjaden’s testimony (see, e.g., Ex. 1002 ¶¶ 179–183) over the
testimony of Dr. Wolfe (see, e.g., Ex. 2005 ¶¶ 137–140) because Petitioner’s
contentions and Dr. Tjaden’s testimony are consistent with the evidence for
record. For instance, as discussed with respect to claim 1 (see supra
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§§ III.E.4.b, III.E.4.i), the parties do not dispute that Lee teaches pausing
(see, e.g., PO Resp.; Tr. 43:12–16) and we are persuaded of the following:
(1) Lee teaches displaying multiple options to a user (see, e.g., Ex. 1003,
6:1–12); (2) Wang’s bookmark is set as a starting point for replaying (see,
e.g., Ex. 1004, 1:19–22); and (3) Wang teaches displaying multiple options
for replaying content (see, e.g., id. at 4:46–52, Figs. 1, 3). Also, Yukie
describes that “data server 16 can automatically send such information to
user device 10.” Ex. 1007, 17:36–37 (emphasis added); see also id. at 2:44–
49 (“Data retrieval can be manual where the user specifies data to be
downloaded, or can be automated through the use of a personal user profile
stored on the server which defines what data will be downloaded, as well as
how and when the data will be downloaded.” (emphasis added)).
Additionally, Yukie teaches “remote storage” (Ex. 1007, 2:9) and data server
16 transmitting data to user device 10 “according to the user profile.” Id. at
17:46–47.
In summary, upon consideration of the complete record now before
us, we determine that Petitioner has shown that all recitations in claims 8,
17, and 26 are taught by the asserted art. Also, we are persuaded that
Petitioner has articulated reasoning with a rational underpinning as to why
one of ordinary skill in the art would have modified and combined the
teachings of the asserted art in the manner recited in those claims. We also
are persuaded that Petitioner has demonstrated that such person would have
had a reasonable expectation of success.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that each of claims 8, 17, and 26 of the ’799 Patent are
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unpatentable, under 35 U.S.C. § 103(a), as obvious over (1) Lee, Wang, and
Yukie; and (2) Lee, Wang, Yukie, and Vanzini.
G. Obviousness—Dependent Claims 2–4, 6, 11–13, 15, 20–22, and 24
Each of claims 2–4 and 6 depends directly from claim 1. Petitioner
contends each of dependent claims 2–4 and 6 of the ’799 Patent is
unpatentable, under 35 U.S.C. § 103(a), as obvious over (1) Lee and Wang;
and (2) Lee, Wang, and Vanzini. Pet. 8, 41–46.
Claims 11–13 and 15 depend directly from claim 10. Claims 20–22
and 24 depend directly from claim 19. Petitioner contends each of claims
11–13, 15, 20–22, and 24 of the ’799 Patent is unpatentable, under 35
U.S.C. § 103(a), as obvious over (1) Lee, Wang, and Yukie; and (2) Lee,
Wang, Vanzini, and Yukie. Pet. 8, 62, 65.
1. Claims 2, 3, 11, 12, 20, and 21
Claims 2 and 3 recite “wherein the first user equipment is further
configured to generate an instruction to display the media content from the
first point in the media content when it is determined that the first option
was selected” and “wherein the first user equipment is further configured to
generate an instruction to display the media content from the second point in
the media content when it is determined that the second option was
selected,” respectively. Ex. 1001, 18:28–38. Claims 11 and 12 are similar
to claims 2 and 3, respectively, and further recite “wherein the second user
equipment is further configured to generate an instruction to display the
media content at the second user equipment from [the first point (claim
11)/the second point (claim 12)] in the media content when it is determined
that the first option was selected.” Id. at 19:48–57. Claims 20 and 21
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include recitations that are substantially the same as claims 11 and 12,
respectively, except claims 20 and 21 each require that the server is further
configured to generate the instruction because claims 20 and 21 depend
directly from claim 19. Id. at 20:65–21:7.
Petitioner asserts that Lee teaches the further recitations in claims 2,
11, and 20 because Lee describes that user terminal 2 generates an
instruction to display the program from the pause point, when it is
determined that the first option is selected. Pet. 41, 62, 65 (citing, e.g., Ex.
1003, 2:41–49, 3:4–11, 3:37–45, 4:17–33, 5:24–29, 5:32–37, 5:51–65, 6:26–
33, 7:1–5, 8:1–50, Fig. 2; Ex. 1002 ¶¶ 143–144). For claims 3, 12, and 21,
Petitioner relies on Lee and Wang and points to Lee’s description that user
terminal 2 generates an instruction to display the program from a prior point
to the pause point via the selected summary level and Wang’s description of
a user selecting a particular bookmark (of multiple bookmarks) and having
the program displayed from the bookmark point. Id. at 42, 62, 65 (citing,
e.g., Ex. 1003, 3:4–11, 4:17–33, 5:32–37, 5:51–57, 6:13–16, Fig. 2; Ex.
1004, code (57), 1:65–66, 2:7–11, 4:32–35, 4:40–45, 4:59–60, 5:6–9, 5:51–
65, 6:26–33; Ex. 1002 ¶¶ 145–147). Dr. Tjaden testifies that Lee teaches
that a user may resume viewing using playback user terminal 2 and his
testimony references the same teaches discussed above regarding the
combination of Lee and Wang with respect to displaying multiple options.
Ex. 1002 ¶¶ 143–147.
Patent Owner’s arguments and evidence for claims 2, 3, 11, 12, 20,
and 21 are substantively the same as the arguments and evidence presented
for the independent claims. PO Resp. 56–57; PO Sur-Reply 22; Ex. 2005
¶¶ 141–142. We discuss Patent Owner’s contentions in full with respect to
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the independent claims. See supra §§ III.E, III.F. We agree with
Petitioner’s contentions and we credit and give significant weight to Dr.
Tjaden’s testimony because Petitioner’s contentions and Dr. Tjaden’s
testimony (see, e.g., Ex. 1002 ¶¶ 143–147) are consistent with the teachings
of the asserted prior art. For instance, Lee describes “user profile sender
13,” which “sends the identifier and the position information of the
interrupted video program decoded by the profile reader 12 to the video
server 1.” Ex. 1003, 4:17–33; see also id. at 5:24–37 (describing “if the user
wishes to resume viewing an interrupted video program, the user terminal 2
. . . transmits the information to the video server 1 through the user profile
sender 13), 8:1–50 (describing “transmitting the user profile information to a
second video server of the video server terminal, wherein the second video
server is different from the first video server, and resuming transmission to
said user of remaining portions of the selected video program”). For the
reasons given with respect to the independent claims (see supra §§ III.E,
III.F), we are persuaded that Lee describes displaying multiple options and
Wang describes displaying multiple bookmarks, which when selected allow
a user to replay.
For the reasons given, we determine that Petitioner’s arguments and
evidence show that the asserted prior art teaches the further recitations of
claims 2, 3, 11, 12, 20, and 21. Additionally, we are persuaded that
Petitioner has articulated reasoning with a rational underpinning as to why
one of ordinary skill in the art would have combined the teachings of the
asserted art in the manner recited and has shown that the skilled artisan
would have had a reasonable expectation of success. See supra §§ III.E,
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III.F. We determine Patent Owner’s arguments and evidence do not
undermine Petitioner’s showing.
2. Claims 4, 13, and 22
Claim 4 depends directly from claim 1 and further recites “wherein
the second point is selected by the user using the first user equipment.” Ex.
1001, 18:39–40. Claims 13 and 22 depend directly from claims 10 and 19,
respectively, and each further recites “wherein the second point is selected
by the user using the second equipment.” Id. at 19:58–59, 21:8–9.
Petitioner asserts that Lee teaches the further recitations in claims 4, 13, and
22 because Lee describes a user interface for selecting a point to resume
display. Pet. 43 (citing, e.g., Ex. 1003, 3:4–11, 4:17–33, 5:32–37, 5:51–57,
6:11–16; Ex. 1002 ¶¶ 149–151).
Patent Owner’s arguments and evidence for claims 4, 13, and 22 are
substantively the same as the arguments and evidence presented for the
independent claims. PO Resp. 56–57; PO Sur-Reply 22; Ex. 2005 ¶¶ 141–
142. We discuss Patent Owner’s contentions in full with respect to the
independent claims. See supra §§ III.E, III.F. We agree with Petitioner’s
contentions and we credit and give significant weight to Dr. Tjaden’s
testimony because Petitioner’s contentions and Dr. Tjaden’s testimony (see,
e.g., Ex. 1002 ¶¶ 149–151) are consistent with the teachings of the asserted
prior art. For instance, Lee describes that “each user terminal” includes “a
video display for displaying the decoded data.” Ex. 1003, 3:4–11; see also
id. at 4:17–21 (describing that user terminal 2 comprises video display 8).
Lee also describes “if there are multiple levels, the user can select a level
using a user interface.” Id. at 6:11–16. Petitioner’s contentions and Dr.
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Tjaden’s testimony (see, e.g., Ex. 1002 ¶¶ 149–151) also are consistent with
the teachings of the asserted art discussed with respect to the independent
claims, for example, regarding displaying multiple options. See supra
§§ III.E, III.F.
For the reasons given, we determine that Petitioner’s arguments and
evidence show that the asserted prior art teaches the further recitations of
claims 4, 13, and 22. Additionally, we are persuaded that Petitioner has
articulated reasoning with a rational underpinning as to why one of ordinary
skill in the art would have combined the teachings of the asserted art in the
manner recited and has shown that the skilled artisan would have had a
reasonable expectation of success. We determine Patent Owner’s arguments
and evidence do not undermine Petitioner’s showing.
3. Claims 6, 15, and 24
Claim 6 depends directly from claim 1 and further recites “wherein
the first user equipment is further configured to generate for display a third
option that causes, responsive to user selection, the first user equipment to
display the media content from a point in the media content that is after the
position.” Ex. 1001, 18:54–58. Claims 15 and 24 depend directly from
claims 10 and 19, respectively, and each further recites “wherein [the second
user equipment/server] is further configured [to display/to generate for
display, on the second user equipment,] a third option that causes,
responsive to user selection, the second user equipment to display the media
content from a point in the media content that is after the position.” Id. at
20:6–10, 21:23–27.
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Petitioner asserts that the combination of Lee and Wang teaches the
further recitations in claims 6, 15, and 24. Pet. 43–46, 62, 65 (citing, e.g.,
Ex. 1003, 5:51–6:12, Fig. 2; Ex. 1004, code (57), 1:65–66, 2:7–15, 4:32–35,
4:40–45, 4:59–60, 5:6–9, Figs. 1, 3; Ex. 1002 ¶¶ 152–160). Regarding
generating for display “a third option” recited in claims 6, 15, and 24,
Petitioner asserts “Wang teaches that the user can select a particular
bookmark among a plurality of bookmarks using the remote control and, in
response to that selection, have the program displayed from the bookmark
point” and, relying on the testimony of Dr. Tjaden, Petitioner asserts that a
person having ordinary skill in the art would have been motivated to
combine the teachings of Lee and Wang in the manner recited in claims 6,
15, and 24. Id.
Dr. Tjaden testifies “Wang describes prior art user interfaces for
bookmarked programs as time parameters entries that are simultaneously
displayed to a user, allowing the user to select a particular one with which to
play back the program.” Ex. 1002 ¶ 154 (citing Ex. 1004, 1:44–50, Fig. 1).
Dr. Tjaden also testifies “Wang also describes showing the time parameter
bookmarks as subpictures of content of the program that was bookmarked.”
Id. ¶ 155 (citing Ex. 1004, 4:1–5, Fig. 3). Dr. Tjaden’s testimony (id. ¶ 159)
includes annotations to Figures 1 and 3 of Wang, which are reproduced
below.
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Pet. 45.
Annotated Figures 1 and 3 of Wang, above, are schematic diagrams of a
general bookmark mode and four subpictures contained in one page of the
display, respectively, and include red textual annotations to both figures
identifying point 2 as the pause point, a red textual annotation to Figure 1
identifying point 3 as after the pause point, and red textual annotations to
Figure 3 identifying sub-pictures C 3 and D 4 as after the pause point.
Ex. 1004, 3:14–22, Figs. 1, 3; Ex. 1002 ¶ 159.
Dr. Tjaden further testifies
a POSA would have known to combine Lee’s system with a
system capable of displaying multiple bookmarks on one page
(Wang’s Fig. 1 or 3) to provide enhanced functionality with
respect to choice for the user. Furthermore, such a modification
to Lee would . . . do nothing more than combine well-known
elements in a way that would yield the predictable result of
simultaneously providing a user with several bookmark options
to select as described above.
Ex. 1002 ¶ 157.
Patent Owner’s arguments and evidence for claims 6, 15, and 24 are
substantively the same as the arguments and evidence presented for the
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independent claims. PO Resp. 56–57; PO Sur-Reply 22; Ex. 2005 ¶¶ 141–
142. We discuss Patent Owner’s contentions in full with respect to the
independent claims. See supra §§ III.E, III.F. We agree with Petitioner’s
contentions and we credit and give significant weight to Dr. Tjaden’s
testimony because Petitioner’s contentions and Dr. Tjaden’s testimony (see,
e.g., Ex. 1002 ¶¶ 152–160) are consistent with the teachings of the asserted
prior art. For instance, Wang describes “[t]he user can select by the
controlling interface one of the subpictures corresponding to the selected
picture to be replayed, and then the selected picture will be shown on the
display.” Ex. 1004, 2:7–15. Wang also describes “[t]he microprocessor 24
will execute a command received from a controlling interface 26 to replay a
selected picture represented by a bookmark number or execute
pageup/pagedown.” Id. at 4:32–35. Wang further describes that “[t]he
controlling interface 26 can be a remote controller or a keyboard.” Id. at
4:59–60. Wang also describes benefits, in particular, “[t]he user can easily
distinguish the bookmark spots by a plurality of subpictures and correctly
select a picture to replay.” Id. at code (57); see also id. at 5:6–9 (“In
accordance with the above-described method and device, the user can easily
distinguish the bookmark spots by a plurality of subpictures and correctly
select a picture to replay.”).
For the reasons given, we determine that Petitioner’s arguments and
evidence show that the asserted prior art teaches the further recitations of
claims 6, 15, and 24. Additionally, we are persuaded that Petitioner has
articulated reasoning with a rational underpinning as to why one of ordinary
skill in the art would have combined the teachings of the asserted art in the
manner recited and has shown that the skilled artisan would have had a
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reasonable expectation of success. We determine Patent Owner’s arguments
and evidence do not undermine Petitioner’s showing.
4. Conclusion
In summary, upon consideration of the complete record now before
us, we determine that Petitioner has shown that all recitations in claims 2–4,
6, 11–13, 15, 20–22, and 24 are taught by the asserted art. Also, we are
persuaded that Petitioner has articulated reasoning with a rational
underpinning as to why one of ordinary skill in the art would have modified
and combined the teachings of the asserted art in the manner recited in those
claims. We also are persuaded that Petitioner has demonstrated that such
person would have had a reasonable expectation of success.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that each of claims 2–4 and 6 of the ’799 Patent are unpatentable,
under 35 U.S.C. § 103(a), as obvious over (1) Lee and Wang; and (2) Lee,
Wang, and Vanzini. Also, we determine that Petitioner has demonstrated by
a preponderance of the evidence that each of claims 11–13, 15, 20–22, and
24 of the ’799 Patent would have been unpatentable, under 35
U.S.C. § 103(a), as obvious over (1) Lee, Wang, and Yukie; and (2) Lee,
Wang, Yukie, and Vanzini.
H. Obviousness—Dependent Claims 5, 9, 14, 18, 23, and 27
Petitioner contends each of dependent claims 5 and 9 of the
’799 Patent is unpatentable, under 35 U.S.C. § 103(a), as obvious over
(1) Lee, Wang, and Bonomi; and (2) Lee, Wang, Vanzini, and Bonomi. Pet.
8, 46–52. Petitioner contends each of claims 14, 18, 23, and 27 of the
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’799 Patent is unpatentable, under 35 U.S.C. § 103(a), as obvious over
(1) Lee, Wang, Yukie, and Bonomi; and (2) Lee, Wang, Yukie, Vanzini, and
Bonomi. Pet. 8, 67–69. We address the parties’ contentions below.
1. Overview of Bonomi
Bonomi describes centrally managed storage for paused or recorded
media. Ex. 1005, 2:44–46. The media delivery system may be restricted
differently for different users of a common subscriber account. Id. at 5:57–
61. Vault module 718 provides personal storage for subscribers for content
recorded or paused either by the owner of the account or other designated
subscribers. Id. at 21:34–37. Authentication is checked based on username
and password. Id. at 22:42–44.
2. Claims 5, 9, 14, 18, 23, and 27
Claims 5 and 9, claims 14 and 18, and claims 23 and 27 of the
’799 Patent depend directly from claims 1, 10, and 19, respectively. Each of
claims 5, 14, and 23 recites
wherein the [first user equipment/second user equipment/server]
is further configured, when accessing the data structure of the
profile of the user, to:
generate a login option to be displayed to the user
[using/at/using] the [first/second] user equipment;
receive a communication including login identification and
associated password information from the user;
generate a request for authorization;
transmit the request for authorization; and
receive, based on a determination that the login identification and
associated password information are valid, authorization to
access the data structure of the profile of the user.
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Ex. 1001, 18:41–53, 19:60–20:5, 21:9–22. Each of claims 9, 18, and 27
recites “wherein the position is associated with an account associated with
the user of the [first/second] user equipment, the [second/first] user
equipment, or user-specific data.” Id. at 19:5–8, 20:25–27, 22:1–3.
For the further recitations of claims 5, 14, and 23, Petitioner points to
Bonomi’s description of authorizing a user by checking a username and
password, as well as Bonomi’s description of each user account having its
own bookmark list of indexed programs reserved by a user. Pet. 46–49, 67–
69 (citing, e.g., Ex. 1005, 21:52–22:11, 22:35–49, 33:1–29, Figs. 7C, 15A;
Ex. 1002 ¶¶ 161–166, 212–218). Regarding reasoning to combine,
Petitioner relies on the testimony of Dr. Tjaden that a person having ordinary
skill in the art would have used Bonomi’s passwords to improve security.
Id. Dr. Tjaden testifies that a person having ordinary skill in the art would
have “readily” understood that “being a subscriber commonly would involve
conventional authentication steps” and that the skilled artisan would have
“readily” turned to “disclosures such as Bonomi to improve the subscriber
based system of Lee with login authentication.” Ex. 1002 ¶ 161. Dr. Tjaden
testifies that “Bonomi describes a username and password for a media
delivery center’s bookmark list.” Id. ¶ 162 (citing, e.g., Ex. 1005, 21:65–
22:11, 22:35–45) (emphasis added). Dr. Tjaden also testifies as follows:
As a preliminary matter, in my opinion, a POSA would
readily recognize the benefits of an authentication system such
as that described in Bonomi. Authentication of a user prior to
providing such a user with user-specific information has the
obvious benefit of protecting that information from unauthorized
access. In the context of a content delivery system, authenticating
users not only prevents users from improperly accessing other
users’ content (e.g., their bookmark lists, as described in
Bonomi), but also ensures that the correct content (e.g., the
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bookmark list corresponding to a particular user) is provided. As
such, the benefits of authentication as disclosed by references
such as Bonomi are manifest, and would readily be sought out
by a POSA implementing the disclosure of Lee in combination
with Wang.
Ex. 1002 ¶ 163; see also id. ¶ 164 (testifying regarding additional reasoning
as to why one having ordinary skill in the art would have made the proposed
combination including that a person having ordinary skill in the art would
have recognized that “password-authenticated systems, like the bookmarks
system of Bonomi, would improve Lee by protecting subscribers’ user
profile data from access by other users”), ¶¶ 212–215, 216 (testifying further
regarding reasons why a person having ordinary skill in the art would have
made the proposed combination including Yukie).
For the further recitations of claims 9, 18, and 27, Petitioner points to
Bonomi’s description of a vault module that provides personal storage for
subscribers of the content recorded or paused either by the owner or other
designated subscribers who have limited access to the owner's account. Pet.
50–52, 67–69 (citing, e.g., Ex. 1005, 2:43–46, 2:49–51, 5:52–61, 21:35–64,
22:35–49; Ex. 1002 ¶¶ 167–170). Regarding reasoning to combine,
Petitioner relies on the testimony of Dr. Tjaden that a person having ordinary
skill in the art would have recognized that Petitioner’s proposed combination
would have had a benefit in allowing adult supervision of a child’s viewing.
Id. Dr. Tjaden testifies a person having ordinary skill in the art would have
understood that a subscriber would have had “an account associated with the
content delivery system for many purposes.” Ex. 1002 ¶ 167. Dr. Tjaden
testifies that “Bonomi discloses a vault module 718, e.g., an account for a
subscriber that maintains the subscriber’s pause point data for later access.”
Id. ¶ 169 (citing, e.g., Ex. 1005, 21:34–39).
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Dr. Tjaden further testifies as follows:
It would have been obvious to combine Lee and Wang
with Bonomi at least because the combination would be of
known prior art elements (Lee’s subscriber-based pause and
resume playback system, Wang’s multiple bookmark user
interface functionality, and Bonomi’s account association
features in a content delivery system) according to known
methods (Bonomi’s association of pause point data (e.g., a
bookmark) with a subscriber’s account) to yield predictable
results (allowing for a user’s pause point data (e.g., a minor) to
be accessible by a user of a user equipment (e.g., a parent) due to
the associated account). A POSA would recognize that
subscriber account systems, like the system of Bonomi, would
improve Lee by allowing subscribers’ user profile data that has
pause point data included therein to be associated with an
account for others in the account to access, use, and/or check the
data including the pause point data. A POSA would appreciate
that having an account to maintain a subscriber’s pause data as
part of a general account with multiple sub-accounts would be
“particular useful to a family with one or more minors.” (Ex.
1005 to the Petition at 36:21-22). Not only would a POSA have
recognized that a combination of Lee and Wang and Bonomi was
capable of implementation based upon the combination of
known techniques but a POSA would further have recognized a
reasonable expectation of success in combining such features of
Lee, Wang, and Bonomi to allow for parental control on a child’s
access to media content.
Id. ¶ 170; see also id. at ¶¶ 216, 218 (testifying further regarding reasons
why a person having ordinary skill in the art would have made the proposed
combination including Yukie).
Patent Owner argues that Petitioner does not provide a reason to
combine the references. PO Resp. 57. Patent Owner also characterizes the
references as “divergent” and asserts that Bonomi does not relate to delivery
of on-demand media from a remote server, recording multiple position
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identifiers, or displaying multiple options for resuming paused media
delivery. Id. at 57–58 (citing Ex. 2005 ¶¶ 145–146). Similar to Patent
Owner’s contentions, Dr. Wolfe testifies “Petitioner identifies no reason a
POSA would combine the disparate teaching from each of the four/five
references on which it relies for these claims,” without further explanation.
See, e.g., Ex. 2005 ¶ 144. Dr. Wolfe also testifies that Bonomi does not
relate to delivery of on-demand media from a remote server, recording
multiple position identifiers, or displaying multiple options for resuming
paused media delivery. Id. ¶ 145.
Patent Owner’s contentions and Dr. Wolfe’s testimony are conclusory
and do not take into account Petitioner’s contentions, Dr. Tjaden’s
testimony, or the teachings of the references and are contradicted by
evidence in this record as explained. We, therefore, give Dr. Wolfe’s
testimony little to no weight. See 37 C.F.R. § 42.65(a) (“Expert testimony
that does not disclose the underlying facts or data on which the opinion is
based is entitled to little or no weight.”).
Patent Owner also argues that Bonomi does not overcome deficiencies
in the other references. PO Resp. 57–58; PO Sur-Reply 22–23. For the
reasons given for the independent claims, we determine Patent Owner’s
arguments regarding those deficiencies do not undermine Petitioner’s
showing. See supra §§ III.E.4, III.F.2.
We agree with Petitioner’s contentions and we credit and give
significant weight to Dr. Tjaden’s testimony because Petitioner’s contentions
and Dr. Tjaden’s testimony (see, e.g., Ex. 1002 ¶¶ 161–170) are consistent
with the teachings of the asserted prior art. For instance, Bonomi describes a
“media delivery system” that “provides subscribers with centrally managed
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storage for paused or recorded media.” Ex. 1005, 2:43–46 (emphasis
added). Bonomi describes further that “services provided by the media
delivery system can be restricted differently for different users of a common
subscriber account.” Id. at 2:49–51; see also id. at 5:52–61 (describing that
“the media delivery system can provide different level of services to
designated accounts in a general account so that [minors] assigned to the
designated accounts will access only appropriate services while adults under
the general account receive full services and possibly monitor the designated
accounts”).
Bonomi also describes
[t]he vault module 718 serves to provide personal storage
for subscribers of the content recorded or paused either by the
owner thereof or other designated subscribers who have limited
access to the owner's account. In addition, the vault module 718
can provide a mechanism to facilitate a personal library and a
bookmark.
Id. at 21:35–39 (emphasis added). Although not necessary for Petitioner’s
contentions, which rely on Bonomi for authentication, we note that contrary
to Patent Owner’s assertions and Dr. Wolfe’s testimony characterizing the
asserted references including Bonomi as “divergent” and “disparate,”
Bonomi’s system for storing paused material in a media delivery system
(id.) is similar in nature to Lee’s video on-demand system, which
undisputedly stores a pause point (see supra § III.E.4). Bonomi and Lee are
not “divergent” or “disparate,” as Patent Owner contends (PO Resp. 57–58;
Ex. 2005 ¶¶ 145–146), but instead are at least related, consistent with Dr.
Tjaden’s testimony (Ex. 1002 ¶¶ 59–64, 83–85, 161–170).
Bonomi also describes allowing a user to make updates before
determining “whether a subscriber associated with a client device is
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authenticated” (id. at 22:37–38) and that “[i]n one embodiment, the
authentication is checked based on username and password” (id. at 22:41–
43). Bonomi itself describes that its features are “particularl[y] useful to a
family with one or more minors.” Id. at 36:21–22.
In summary, upon consideration of the complete record now before
us, we determine that Petitioner has shown that all recitations in claims 5, 9,
14, 18, 23, and 27 are taught by the asserted art. Also, we are persuaded that
Petitioner has articulated reasoning with a rational underpinning as to why
one of ordinary skill in the art would have modified and combined the
teachings of the asserted art in the manner recited in those claims. We also
are persuaded that Petitioner has demonstrated that such person would have
had a reasonable expectation of success.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that each of claims 5 and 9 of the ’799 Patent would have been
obvious over (1) Lee, Wang, and Bonomi; and (2) Lee, Wang, Vanzini, and
Bonomi. Also, we determine that Petitioner has demonstrated by a
preponderance of the evidence that each of claims 14, 18, 23, and 27 of the
’799 Patent are unpatentable, under 35 U.S.C. § 103(a), as obvious over
(1) Lee, Wang, Yukie, and Bonomi; and (2) Lee, Wang, Yukie, Vanzini, and
Bonomi.
I. Obviousness—Dependent Claims 7, 16, and 25
Petitioner further contends that claim 7 of the ’799 Patent is
unpatentable, under 35 U.S.C. § 103(a), as obvious over (1) Lee, Wang, and
Noble; and (2) Lee, Wang, Vanzini, and Noble. Pet. 8, 52–55. Petitioner
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contends that claims 16 and 25 of the ’799 Patent are unpatentable, under
35 U.S.C. § 103(a), as obvious over (1) Lee, Wang, Yukie, and Noble; and
(2) Lee, Wang, Yukie, Vanzini, and Noble. Id. at 8, 69–70. We address the
parties’ contentions below.
1. Overview of Noble
Noble is directed to a system and method for issuing search
commands so a user can interactively choose a selection from a media
database. Ex. 1006, code (57). Noble describes movie finder service 313,
which is a text-driven search scheme. Id. at 5:51–53. Figure 7 is reproduced
below.

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Figure 7 illustrates a display on a user’s television when movie finder
service 313 is selected, which includes virtual keyboard 511, title entry
window 513, and title display window 512. Id. at 5:54–57. The user
highlights letters on virtual keyboard 511 for entry in title entry window 513.
Id. at 5:56–60. After an initial letter is entered, a partial listing of movies
starting with that letter is displayed in title display window 512. Id. at 5:63–
65.
2. Claims 7, 16, and 25
Claims 7, 16, and 25 depend directly from claims 1, 10 and 19, and
each of claims 7, 16, and 25 recites
wherein the [first user equipment/second user equipment/server]
is further configured to:
receive[, at the second user equipment,] either (1) an indication
of program type, or (2) a text string; and
in response to the receiving of either the indication of program
type or the text string, receive [at the second user equipment,]
search results including the previously accessed media
content.
Ex. 1001, 18:59–64, 20:11–17, 21:27–35. Petitioner points to Lee’s
database 21 and Noble’s text-search of movie titles or genre. Pet. 52–55,
69–70 (citing, e.g., Ex. 1003, 1:32–38; Ex. 1006, 5:51–6:8, Figs. 8A, 8B).
Regarding reasoning to combine, Petitioner relies on the testimony of Dr.
Tjaden that one having ordinary skill in the art would have improved Lee,
Wang, and Yukie’s system with Noble’s searching functionality to allow the
user to quickly select a program to view. Id. (citing, e.g., Ex. 1002 ¶¶ 171–
178, 219–222). Dr. Tjaden testifies
[b]ecause Lee describes a media content delivery system that
allows for searching of the content, a POSA would have looked
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to use Noble’s text-based or genre-based search processes as part
of the search capabilities of the Lee/Wang system, particularly to
allow users to enter text searches by a remote control and to
select a program that the user may have previously paused in the
Lee/Wang system.
Ex. 1002 ¶ 176.
Dr. Tjaden also testifies
[i]t would have been obvious to a POSA to combine Lee
and Wang with Noble at least because the combination would be
of applying a known technique (Noble’s text-based and genre-
based search interfaces) to a known device ready for
improvement (Lee’s pause and resume playback system with
searchable databases in combination with Wang’s multiple
bookmark user interface functionality) to yield predictable
results (allowing a user to select media content by title, including
for previously paused content). A POSA would have recognized
that applying the known technique of Noble would have yielded
predictable results and resulted in an improved system since a
user would be able to have a number of paused programs
maintained and then, at playback, have a user interface that
allows the user to quickly access media content, including her
various paused programs she was previously watching. Not only
would a POSA have recognized that a combination of Lee and
Wang and Noble was capable of implementation based upon the
combination of known techniques but a POSA would further
have recognized a reasonable expectation of success in
combining such features of Lee, Wang, and Noble to allow for
conventional searching for media content.
Id. ¶ 178; see also id. at ¶¶ 219–222 (testifying further regarding reasons
why a person having ordinary skill in the art would have made the proposed
combination including Yukie).
Patent Owner argues that Petitioner does not provide a reason to
combine the references. PO Resp. 58. Patent Owner also characterizes the
references as “divergent” and asserts that Noble does not relate to recording
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multiple position identifiers, or displaying multiple options for resuming
paused media delivery. Id. at 58–59 (citing Ex. 2005 ¶ 149). Patent Owner
further asserts that the combination of the asserted art does not teach that the
search results include “the previously accessed media content,” as required
by the claims. Id. at 59 (citing Ex. 2005 ¶ 150); PO Sur-Reply 23.
Patent Owner’s contentions and Dr. Wolfe’s testimony (PO Resp. 58–
59; Ex. 2005 ¶¶ 149–150, PO Sur-Reply 25) are conclusory and do not take
into account Petitioner’s contentions, Dr. Tjaden’s testimony, or the
teachings of the references and are contradicted by evidence in this record as
explained. We, therefore, give Dr. Wolfe’s testimony little to no weight.
See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
underlying facts or data on which the opinion is based is entitled to little or
no weight.”). Regarding Patent Owner’s argument and Dr. Wolfe’s
testimony that the combination of the asserted art does not teach that the
search results include “the previously accessed media content” (PO Resp.
59; Ex. 2005 ¶ 150), Patent Owner and Dr. Wolfe do not take into account
Dr. Tjaden’s testimony that a person having ordinary skill in the art would
have modified Lee’s disclosures to allow a user to enter text searches by a
remote control and to select a program that the user previously paused. Ex.
1002 ¶ 176. Patent Owner’s contentions and Dr. Wolfe’s testimony pertain
to Lee and Noble considered alone, rather than the combination of Lee’s and
Noble’s teachings set forth in the Petition. See Keller, 642 F.2d at 426
(CCPA 1981) (“[O]ne cannot show non-obviousness by attacking references
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individually where, as here, the rejections are based on combinations of
references.”).13
We agree with Petitioner’s contentions and we credit and give
significant weight to Dr. Tjaden’s testimony because Petitioner’s contentions
and Dr. Tjaden’s testimony (see, e.g., Ex. 1002 ¶¶ 59–64, 86–88, 171–178,
219–222) are consistent with the teachings of the asserted prior art. For
instance, Lee describes
[a] multimedia database 21 allows the storage and access to
extensive multimedia data of various sizes such as text, image,
animation, audio, and video. Also, the database 21 includes data
to support a search of a particular data. Thus, the database 21
has an index structure and search algorithm for searching the
media.
Ex. 1003, 1:32–38 (emphases added).
Also consistent with Petitioner’s contentions and Dr. Tjaden’s
testimony, Noble teaches
[t]he movie finder service 313 is a text-driven search
scheme which complements the icon-driven search scheme of the
preferred embodiment, employing a physical metaphor such as a
globe or torus. When the movie finder service is selected, three
screen elements as shown in FIG. 7 are displayed on the user's
television–a virtual keyboard 511, a title entry window 513, and
a title display window 512.
Ex. 1006, 5:51–57.

13 Although not necessary for our determination, we further agree with
Petitioner’s contentions and we credit and give significant weight to Dr.
Tjaden’s testimony that Noble teaches the recitation because Noble’s search
does not filter or distinguish previously accessed movies. Pet. Reply 25; Ex.
1025 ¶¶ 88–94.
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Noble further describes in response to receiving a text string,
displaying search results. More specifically, Noble’s description is as
follows:
The process of title entry is depicted in FIGS. 8A–C. Once an
initial letter is entered, a partial listing of movies starting with
that letter is displayed in the title display window 512. As the
user enters more letters the control interface 200 updates the list
to show the offerings with titles beginning with the entered letter
sequence as shown in FIG. 8B. If the user desires, the user can
spell out the entire movie name. Alternatively, when enough
letters are entered so that the sought-after title appears in the title
display window the user can make a transition to that window to
continue the search by using the “north” key 130.
Id. at 5:62–6:6.
We agree with Petitioner’s contentions and we credit and give
significant weight to Dr. Tjaden’s testimony (Pet. 52–54; Ex. 1002 ¶ 176)
that a person having ordinary skill in the art would have had reason to
modify Lee’s teachings in accordance with Noble’s technique above such
that the search results includes previously accessed media content meeting
the search criteria. In addition to Noble’s disclosures regarding text
searching a database of movies (Ex. 1006, 5:51–6:8), Lee discloses that the
paused program is stored in the network such that video server 1 transmits
the remaining portion, when the user selects to resume the program (Ex.
1003, 5:24–37) and further Petitioner has shown that it would have been
obvious to store Lee’s user profile information remotely. See supra
§§ III.E.4, III.F.2.
In summary, upon consideration of the complete record now before
us, we determine that Petitioner has shown that all recitations in claims 7,
16, and 25 are taught by the asserted art. Also, we are persuaded that
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Petitioner has articulated reasoning with a rational underpinning as to why
one of ordinary skill in the art would have modified and combined the
teachings of the asserted art in the manner recited in those claims. We also
are persuaded that Petitioner has demonstrated that such person would have
had a reasonable expectation of success.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that claim 7 of the ’799 Patent would have been obvious over
(1) Lee, Wang, and Noble; and (2) Lee, Wang, Vanzini, and Noble. Also,
we determine that Petitioner has demonstrated by a preponderance of the
evidence that each of claims 16 and 25 of the ’799 Patent would have been
unpatentable, under 35 U.S.C. § 103(a), as obvious over (1) Lee, Wang,
Yukie, and Noble; and (2) Lee, Wang, Yukie, Vanzini, and Noble.
IV. CONCLUSION
The outcome for the challenged claims is set forth in Table 3 of this
Decision below.14 In summary:

14 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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Claims
Challenged 35 U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatent-
able
Claims Not
shown
Unpatent-
able
1–4, 6 103(a) Lee, Wang 1–4, 6
5, 9 103(a) Lee, Wang, Bonomi 5, 9

7 103(a) Lee, Wang, Noble 7

8, 10-13, 15,
17, 19–22, 24,
26, 28
103(a) Lee, Wang,
Yukie
8, 10-13, 15,
17, 19–22,
24, 26, 28

14, 18, 23, 27
103(a) Lee, Wang,
Yukie,
Bonomi
14, 18, 23,
27

16, 25 103(a) Lee, Wang, Yukie, Noble 16, 25

1–4, 6 103(a) Lee, Wang, Vanzini 1–4, 6

5, 9
103(a) Lee, Wang,
Vanzini,
Bonomi
5, 9

7
103(a) Lee, Wang,
Vanzini,
Noble
7

8, 10-13, 15,
17, 19–22, 24,
26, 28
103(a) Lee, Wang,
Vanzini,
Yukie
8, 10-13, 15,
17, 19–22,
24, 26, 28

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Claims
Challenged 35 U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatent-
able
Claims Not
shown
Unpatent-
able
14, 18, 23, 27
103(a) Lee, Wang,
Vanzini,
Yukie,
Bonomi
14, 18, 23,
27

16, 25
103(a) Lee, Wang,
Vanzini,
Yukie, Noble
16, 25

Overall
Outcome
1–28

Table 3 of this Decision, above, summarizes the outcome for
each challenged claim and ground in the instant proceeding.

V. ORDER
In consideration of the foregoing, it is hereby
ORDERED that claims 1–28 of the ’799 Patent have been proven to
be unpatentable; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:
Frederic Meeker
Bradley Wright
Harry Porter
John Fleming
John Curry
Shambhavi Patel
Blair Silver
BANNER & WITCOFF LTD.
FMeeker@bannerwitcoff.com
BWright@bannerwitcoff.com
WPorter@bannerwitcoff.com
JFleming@bannerwitcoff.com
JCurry@bannerwitcoff.com
SPatel@bannerwitcoff.com
BSilver@bannerwitcoff.com

For PATENT OWNER:
Jason Eisenberg
Robert Sokohl
Kristina Kelly
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
JasonE-ptab@sternekessler.com
Rsokohl-ptab@sternekessler.com
Kckelly-ptab@sternekessler.com