IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

COMCAST CABLE COMMUNICATIONS, LLC, Petitioner

v.

ROVI TECHNOLOGIES, CORP. Patent Owner

Patent No. 6,725,281 Filing Date: November 2, 1999

Original Issue Date: April 20, 2004 Reexamination Issue Date: October 26, 2012

Title: SYNCHRONIZATION OF CONTROLLED DEVICE STATE USING STATE TABLE AND EVENTING IN DATA-DRIVEN REMOTE DEVICE

CONTROL MODEL

Inter Partes Review No.: Unassigned

PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.

(Petition 1 of 7)

TABLE OF CONTENTS

I. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(A)(1) ....... 1

37 C.F.R. § 42.8(b)(1) & (2): Real Parties in Interest & Related Matters ................................................................................... 1

37 C.F.R. § 42.8(b)(3) & (4): Lead & Back-Up Counsel and Service Information ............................................................................. 3

II. COMPLIANCE WITH THE REQUIREMENTS FOR A PETITION FOR INTER PARTES REVIEW ............................................. 4

Payment of Fees Pursuant to 37 C.F.R. § 42.103 ............................. 4

Grounds for Standing Pursuant to 37 C.F.R. § 42.104 (a) .............. 4

III. IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R. § 42.104(B) AND STATEMENT OF THE RELIEF REQUESTED ........... 4

37 C.F.R. § 42.104(b)(1) & (2): Claims for Which Review is Requested and Ground(s) on Which the Challenge Is Based ......... 4

37 C.F.R. § 42.104(b)(3): How the Challenged Claims Are to Be Construed and Level of Ordinary Skill in the Art ..................... 5

How the Challenged Claims Are to Be Construed ................ 5

The Level of Ordinary Skill in the Art ................................. 10

37 C.F.R. § 42.104(b)(4): How the Construed Claims Are Unpatentable Under the Statutory Grounds Identified ................ 10

37 C.F.R. § 42.104(b)(5): Evidence Supporting Petitioner’s Challenge ............................................................................................ 11

IV. SUMMARY OF ARGUMENT ................................................................... 11

V. OVERVIEW OF THE ’281 PATENT ....................................................... 12

Brief Description of the Alleged Invention ..................................... 12

Prosecution History of the ’281 Patent ............................................ 14

ii

Litigation and Reexamination History ............................................ 15

VI. OVERVIEW OF THE PRIOR ART ......................................................... 18

U.S. Patent 6,148,241 (“Ludtke ’241”) ............................................ 18

U.S. Patent No. 6,389,464 (“Krishnamurthy”) ............................... 20

U.S. Patent No. 6,456,892 (“Dara-Abrams”) .................................. 21

U.S. Patent No. 5,551,701 (“Bouton”) .............................................. 23

U.S. Patent No. 6,020,881 (“Naughton”) ......................................... 24

Motivation to Combine Ludtke ’241 and Krishnamurthy ............ 24

VII. THE CHALLENGED CLAIMS ARE UNPATENTABLE ..................... 26

VIII. SPECIFIC GROUNDS FOR UNPATENTABILITY .............................. 26

Ground 1: Ludtke ’241 Renders Obvious Claims 1-4, 23-31, 33, 36-42, 45-47, and 70-72 ............................................................... 27

Claim 1 (Exhibit-1027, pp. 1-2.) ............................................. 28

Claim 2 (Exhibit-1027, pp. 2-3.) ............................................. 34

Claim 3 ..................................................................................... 42

Claim 4 ..................................................................................... 42

Claim 23 (Exhibit-1027, pp. 19-21.) ....................................... 44

Claim 24 ................................................................................... 50

Claim 25 ................................................................................... 51

Claim 42 (Exhibit-1027, pp. 25-27.) ....................................... 51

Claims 26 and 45 ..................................................................... 57

Claims 27 and 46 ..................................................................... 58

Claims 28 and 47 ..................................................................... 58

iii

Claims 29 and 70 ..................................................................... 58

Claims 30 and 71 ..................................................................... 59

Claims 31 and 72 ..................................................................... 60

Claim 33 ................................................................................... 60

Claim 36 ................................................................................... 61

Claim 37 ................................................................................... 61

Claim 38 ................................................................................... 62

Claim 39 ................................................................................... 62

Claim 40 ................................................................................... 62

Claim 41 ................................................................................... 63

Ground 2: Ludtke ’241 and Krishnamurthy Render Obvious Claims 5-6 ........................................................................................... 63

Claim 5 ..................................................................................... 63

Claim 6 ..................................................................................... 64

Ground 3: Ludtke ’241 and Dara-Abrams Render Obvious Claims 32 and 35................................................................................ 65

Ground 4: Ludtke ’241 and Bouton Render Obvious Claim 43 ... 66

Ground 5: Ludtke ’241 and Naughton Render Obvious Claim 44 ......................................................................................................... 67

IX. CONCLUSION ............................................................................................ 68

iv

EXHIBITS

Exhibit-1001: U.S. Patent No. 6,725,281 (“’281 Patent”)

Exhibit-1002: U.S. Patent No. 6,148,241 (“Ludtke ’241”)

Exhibit-1003: U.S. Patent No. 6,389,464 (“Krishnamurthy”)

Exhibit-1004: Reserved

Exhibit-1005: U.S. Patent No. 6,456,892 (“Dara-Abrams”)


Exhibit-1007: U.S. Patent No. 5,551,701 (“Bouton”)

Exhibit-1008: U.S. Patent No. 6,020,881 (“Naughton”)




Exhibit-1012: Expert Declaration of Andrew Lippman, Ph.D.

Exhibit-1013: November 8, 2002 Non-Final Office Action for the ’281 Patent

Exhibit-1014: April 22, 2003 Response to Non-Final Office Action for the ’281 Patent

Exhibit-1015: May 14, 2003 Final Office Action for the ’281 Patent

Exhibit-1016: October 22, 2003 Response and Request for Reconsideration for the ’281 Patent

Exhibit-1017: November 21, 2003 Notice of Allowance for the ’281 Patent

Exhibit-1018: TiVo’s request for Reexamination for the ’281 Patent

v

Exhibit-1019: April 25, 2011 Reexamination Order for the ’281 Patent

Exhibit-1020: August 16, 2011 Reexamination Non-Final Office Action for the ’281 Patent

Exhibit-1021: September 16, 2011 Response to Reexamination Non-Final Office Action for the ’281 Patent

Exhibit-1022: January 28, 2012 Reexamination Non-Final Office Action for the ’281 Patent

Exhibit-1023: February 28, 2012 Response to Reexamination Non-Final Office Action for the ’281 Patent

Exhibit-1024: August 7, 2012 Reexamination Final Office Action for the ’281 Patent

Exhibit-1025: August 29, 2012 Response to Reexamination Final Office Action for the ’281 Patent

Exhibit-1026: Reexamination Certificate for the ’281 Patent

Exhibit-1027: Claim Appendix

1

Comcast Cable Communications, LLC, hereby petitions for inter partes

review pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq. of claims

1-6, 23-33, 35-47, and 70-72 of U.S. Patent No. 6,725,281 (“the ’281 Patent”),

attached hereto as Exhibit-1001. This petition is supported by the Declaration of

Dr. Andrew Lippman (Exhibit-1012) and a Claim Appendix (Exhibit-1027) which

sets forth each limitation of claims 1-75 of the ’281 Patent and associated claim

limitation designations.

I. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(A)(1)

37 C.F.R. § 42.8(b)(1) & (2): Real Parties in Interest & Related Matters

The real parties-in-interest for this petition are (i) Comcast Corporation, (ii)

Comcast Business Communications, LLC, (iii) Comcast Cable Communications

Management, LLC, (iv) Comcast Cable Communications, LLC, (v) Comcast

Financial Agency Corporation, (vi) Comcast Holdings Corporation, (vii) Comcast

of Houston, LLC, (viii) Comcast Shared Services, LLC, and (ix) Comcast STB

Software I, LLC. These entities are referenced below as “Comcast entity __” or as

“Comcast entities __,” where “__” is one of or more of (i) through (ix).

No unnamed entity is funding, controlling, or directing the Petition for Inter

Partes Review of U.S. Patent No. 6,725,281, or otherwise has an opportunity to

control or direct this Petition or Petitioner’s participation in any resulting IPR.

2

The ’281 Patent has been asserted against Comcast entities (i)-(iv) and (vi)-

(viii), as well as other defendants, in Rovi Guides, Inc., et al. v. Comcast

Corporation, et al., U.S. District Court for the Eastern District of Texas, Case No.

2:16-cv-00321 (“EDTX litigation”). The earliest date of service on any of the

Comcast entities named in the EDTX litigation was April 4, 2016. The EDTX

litigation was subsequently transferred to the U.S. District Court for the Southern

District of New York, Case No. 1:16-cv-09278.

The ’281 Patent is at issue in Comcast Corporation, et al. v. Rovi

Corporation, et al., U.S. District Court for the Southern District of New York,

Case No. 1:16-cv-03852 (“SDNY litigation”). The SDNY litigation was brought

by Comcast entities (i)-(iv) and (vi)-(ix). The SDNY litigation does not challenge

the validity of a claim of the ’281 Patent.

According to the Office’s records from the PAIR system, the ’281 Patent

claims priority based on provisional application nos. 60/160,235 (expired) and

60/139,137 (expired). According to the PAIR system, application nos. 09/495,815

(U.S. Patent 6,779,004), 09/496,319 (abandoned), and 10/794,515 (U.S. Patent

7,089,307) claim priority to the application that became the ’281 Patent.

The ’281 Patent was also the subject of ex parte reexamination no.

90/011,541. A reexamination certificate issued in that proceeding on October 26,

2012. (Exhibit-1026.) The ’281 Patent was further asserted in U.S. District Court

3

for the Northern District of California, Case No. 5:10-cv-00240-LHK (“Microsoft

Corp. v. TiVo, Inc.”), which closed on March 22, 2012.

Petitioner is filing concurrently six additional Petitions seeking inter partes

review of the ’281 Patent on different grounds.

37 C.F.R. § 42.8(b)(3) & (4): Lead & Back-Up Counsel and Service Information

Petitioner designates counsel listed below. A power of attorney for counsel

is being filed herewith.

Lead Counsel Frederic M. Meeker (Reg. No. 35,282)

[email protected] Back-Up Counsel Bradley C. Wright (Reg. No. 38,061)

[email protected] Banner and Witcoff, LTD 1100 13th Street, NW, Suite 1200 Washington, DC 20005 Tel: (202) 824-3000 Fax: (202) 824-3001

Additional Back-Up Counsel Christopher L. McKee (Reg. No. 32,384)

[email protected] Aimee B. Kolz (Reg. No. 47,437)

[email protected] Scott Kelly (Reg. No. 65,121)

[email protected] Adam Banes (Reg. No. 60, 177)

[email protected] Banner and Witcoff, LTD 1100 13th Street, NW, Suite 1200 Washington, DC 20005 Tel: (202) 824-3000 Fax: (202) 824-3001

Please address all correspondence to counsel at the addresses shown above.

Petitioner consents to electronic service by email at the following address:

[email protected].

4

II. COMPLIANCE WITH THE REQUIREMENTS FOR A PETITION FOR INTER PARTES REVIEW

Payment of Fees Pursuant to 37 C.F.R. § 42.103

The undersigned authorizes the charge of any required fees to Deposit

Account No. 19-0733.

Grounds for Standing Pursuant to 37 C.F.R. § 42.104 (a)

Petitioner hereby certifies that the ’281 Patent is available for inter partes

review and that Petitioner is not barred or estopped from requesting an inter partes

review challenging claims 1-6, 23-33, 35-47, and 70-72 on the grounds identified

in this Petition.

III. IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R. § 42.104(B) AND STATEMENT OF THE RELIEF REQUESTED

37 C.F.R. § 42.104(b)(1) & (2): Claims for Which Review is Requested and Ground(s) on Which the Challenge Is Based

Petitioner respectfully requests inter partes review and cancellation of

claims 1-6, 23-33, 35-47, and 70-72 of the ’281 Patent based on the statutory

grounds set forth and explained below:

Ground(s): Claims: Unpatentable Under Pre-AIA 35 USC

§ 103 as Being Obvious Over:

1 1-4, 23-31, 33, 36-42,

45-47, 70-72 Ludtke ’241

2 5-6 Ludtke ’241 in view of Krishnamurthy

3 32, 35 Ludtke ’241 in view of Dara-Abrams

4 43 Ludtke ’241 in view of Bouton

5

5 44 Ludtke ’241 in view of Naughton

37 C.F.R. § 42.104(b)(3): How the Challenged Claims Are to Be Construed and Level of Ordinary Skill in the Art

How the Challenged Claims Are to Be Construed

An unexpired claim subject to inter partes review “shall be given its

broadest reasonable construction in light of the specification of the patent in which

it appears.” 37 C.F.R. § 42.100(b). The challenged claims of the ’281 Patent

include terms addressed below. The broadest reasonable constructions of these

terms in light of the specification are the meanings provided in this section.

Additional claim constructions are addressed in Section VIII below.

“a controlled computing device”

The ’281 Patent describes a controlled computing device as able to respond

to incoming communications from controllers, and send status updates to the

controller. (Exhibit-1001, 6:49-62.) Examples of controlled computing devices

include VCR, DVD player or recorder, computer, smartphone, etc. (Id.)

Accordingly, the broadest reasonable construction of “a controlled computing

device” in light of the specification is a device that responds to commands of

another device. (Exhibit-1012, ¶64.)

6

“a state table … representing an operational state of the controlled computing device”

The ’281 Patent teaches that the invention can, in at least one embodiment,

conform to the Universal PlugNPlay (“UPnP”) standard. (Exhibit-1001, 3:37-41.)

The ’281 Patent describes a device state table (DST) 230 as a service state table

(SST). (Id., 28:41-43, Figure 3 (230).) SST is defined as a table of rows having

values that represents the current electrical, mechanical, and/or logical state of a

controlled device. (Id., 8:53-56, 16:12-18.) Figure 20 illustrates an XML data

structure that represents an embodiment of the SST. (Id., 3:26-28, Figure 20.) The

’281 Patent describes that while, in one embodiment, the SST may include five

items, “the state table alternatively can contain fewer … items.” (Id., 16:14-16.)

Although the specification often discusses the invention in the context of UPnP,

the specification also refers to UPnP as “one described implementation.” (Id., 4:7-

11.) Therefore, for purposes of this Petition, the broadest reasonable interpretation

of this term is a data structure regarding the current state of a device. (Exhibit-

1012, ¶65.)

“a user controller device”/“control point computing device”

The ’281 Patent uses both “user controller device” and “control point

computing device” to refer to a User Control Point, which is a device that initiates

communication with and receives incoming communications (e.g., Events) from a

7

controlled device and displays a user interface to control the controlled device over

a network. (Exhibit-1001, 6:27-41.) The User Control Point may act as a

universal remote by aggregating control of multiple controlled devices. (Id., 6:37-

41.) Examples of a User Control Point include personal computers, digital

televisions, set-top boxes (STBs), hand-held computers, smart mobile phones, and

the like. (Id., 6:41-44.) The broadest reasonable interpretation of this limitation is

a device that presents a user interface to interact with another device resulting in a

change in the other device’s operational state. (Exhibit-1012, ¶66.)

“a user control point module”

The ’281 Patent describes “a user control point module” as a module or set

of modules that enable communication with a controlled device and contain a

rehydrator module that “translates between native operating system APIs

[application programming interfaces] and SCPs [service control protocols] and

events.” (Exhibit-1001, 6:26-27, 11:1-3.) A subscribe request informs the

controlled device of the user control point’s desire to receive future events and, in

response, the controlled device may notify the user control points upon changes to

the state table. (Id., 11:14-21.) The ’281 Patent defines a “module” as “[a]

component of a device, software program, or system that implements some

‘functionality’, which can be embodied as software, hardware, firmware, electronic

circuitry, or etc.” (Id., 6:22-25.) The broadest reasonable interpretation of a user

8

control point module in the user controller device operating to obtain a copy of the

state table of the user controlled device and subscribe to change notifications of the

state table is a component (or set of components) in the user controller device that

requests the operational state from the controlled device and causes the controlled

device to send operational state updates to the user controller device. (Exhibit-

1012, ¶67.)

“an eventing model”

The ’281 Patent describes an event source module that runs in a controlled

device that sends notifications to subscribing user control points whenever the state

table changes. (Exhibit-1001, 11:19-21, 11:40-42.) The ’281 Patent teaches

maintaining synchronization of changes in the state table between interested user

control points and the controlled device. (Id., 17:1-5, 9:22-28, 12:33-36.) The

’281 Patent refers to “eventing” as “the ability for a device to initiate a connection

at any time to one or more devices that have expressed a desire to receive events

from the source device” and an event is a message from a controlled device. (Id.,

12:32-39, 9:22-28.) The broadest reasonable interpretation of this limitation is a

software module in the controlled computing device that distributes operational

state updates of the controlled computing device to a subscribing user controller

device for presentation in the user interface. (Exhibit-1012, ¶68.)

9

“embedded computing device”

The ’281 Patent teaches that an embedded computing device can be any type

of device having “electronics to control operational functions … and in which

computing and networking capabilities are embedded” including televisions, cell

phones, audio video recorders, CD players, STBs, etc. (Exhibit-1001, 45:29-47;

Exhibit-1012, ¶69.)

“a peer networking state eventing and control protocol method for effecting state-concurrent multi-master control of a controlled computing device by a plurality of control point computing devices communicating on a data communications network”

The ’281 Patent teaches a data communications network that allows for

multiple control point computing devices 104, 105 in a peer-to-peer networking

environment to control the same controlled computing device 106 (“multi-

master”). (Exhibit-1001, 12:47-50, Figure 2.) All of the control point computing

devices receive the same state events, both the initial copy of the state table and the

change notifications, from the controlled computing device. (Id., 12:58-60.) Thus,

the state information is synchronized between the controlled computing devices.

(Id., 12:61-64.) The broadest reasonable interpretation of this limitation is

enabling multiple control devices to control the same controlled device and receive

the same state events over a data communications network. (Exhibit-1012, ¶70.)

10

The Level of Ordinary Skill in the Art

The relevant field of the invention of the ’281 Patent is the field of

networked devices, including synchronization of state tables, graphical user

interfaces and remote control of such devices, and associated computer software.

A person of ordinary skill in this field would have had at least a bachelor’s degree

in computer science, electrical engineering, computer engineering, or similar

discipline, and at least two to three years of experience or familiarity in the

relevant field, or have had equivalent knowledge and experience. (Exhibit-1012,

¶23.)

37 C.F.R. § 42.104(b)(4): How the Construed Claims Are Unpatentable Under the Statutory Grounds Identified

A detailed explanation of how construed claims 1-6, 23-33, 35-47, and 70-

72 of the ’281 Patent are unpatentable under 35 U.S.C. § 102 and/or § 103,

including identification of where each element of claims 1-6, 23-33, 35-47, and 70-

72 is taught by the prior art reference(s) relied upon, is provided in Section VIII

below. A full listing of the claim language is attached hereto in a Claim Appendix.

(Exhibit-1027.) Due to the verbose language of claims 1-75 and the substantial

redundancy of claimed concepts, claim limitation designations are provided in

the Claim Appendix and used in this Petition to refer to limitations of claims 1-

75. Variations of largely similar but not identical claim limitations are designated

with an additional letter reference as noted in the Claim Appendix.

11

37 C.F.R. § 42.104(b)(5): Evidence Supporting Petitioner’s Challenge

A List of Exhibits supporting this petition is set forth above, which includes

the Declaration of Andrew Lippman, Ph.D. Dr. Lippman has considerable

experience in the field of networked devices. (Exhibit-1012, ¶¶7-15.) His

Declaration provides factual support regarding the level of skill in the art, the prior

art, and technical information, and explains why the claimed invention would have

been obvious to a person having ordinary skill in the art (“PHOSITA”).

IV. SUMMARY OF ARGUMENT

The claims of the ’281 Patent are directed to a system comprising a target

device with a state table that represents the target device’s operational state, and a

user controller device with a user perceptible interface to control the target device.

(See generally, Exhibit-1001.) The user controller device can obtain a copy of the

target device’s state table and subscribe to change notifications to the state table.

The target device distributes change notifications to any subscribing device upon a

change to the state table which synchronizes the interface of the subscribing

devices (i.e., the user controller device) with the changed operational state of the

target device. The target device also has data that defines a device control user

interface.

As will be explained in Section VIII, infra, claims 1-6, 23-33, 35-47, and 70-

72 of the ’281 Patent would have been obvious to a PHOSITA. The primary

12

reference relied upon herein, Ludtke ’241, discloses a remote control and a target

device where (1) the target device maintains its operational state in a data structure,

(2) the remote control obtains a copy of the target device’s operational state data

and subscribes to change notifications and (3) the target device provides the

change notifications upon a change to the target device. Other references relied on

in combination with Ludtke ’241 include: Krishnamurthy, which teaches details of

a state table; Dara-Abrams, which teaches unsubscribing; Bouton, which teaches a

controlled gaming device; and Naughton, which teaches an environmental control

device.

V. OVERVIEW OF THE ’281 PATENT

Brief Description of the Alleged Invention

The claims of the ’281 Patent are directed generally to synchronizing a

controlled target device and a remote control by using data structure (called a state

table) that reflects the operational state of the target device. (Exhibit-1001, 6:48-

49, 45:25-47.) The target device has data that defines a device control user

interface and can export the user interface data over a network to the remote

control. (Id., 2:32-35.) The user interface on the remote control allows a user to

control the target device. (Id., 6:26-32, 12:65-67.)

The target device maintains the data structure (called a state table) of its

operational state. (Id., 12:61-62, 8:53-60, Figure 20.) The “description client” at

13

the remote control obtains a copy of the target device’s state table from the

“description server,” and the “event subscription client” subscribes to the “event

subscription server” for change notifications in the state table as indicated by the

communications encircled in Figure 11 (below). (Id., 6:27-30, 24:47-49, Figures

11, 13, and 23.)

The target device distributes change notifications to any subscribing remote

control upon a change to the state table. (Id., 6:48-52, 17:2-5.) The remote control

devices update their copy of the target device state table. (Id., 12:61-64, 17:2-5.)

Dr. Lippman provides a more detailed explanation of the ’281 Patent as it would be

understood by a PHOSITA in Exhibit-1012, ¶¶36-40.

Exhibit-1001, Figure 11 (annotated)

14

Prosecution History of the ’281 Patent

The ’281 Patent was filed on November 2, 1999 and claims priority to

provisional application nos. 60/139,137 (filed on June 11, 1999), and 60/160,235

(filed on Oct. 18, 1999). The ’281 Patent issued on April 20, 2004. (Exhibit-1001,

p. 1.)

On November 8, 2002, in response to an election after a restriction

requirement, the Examiner allowed claims 23-38 and rejected claims 1-6.

(Exhibit-1013, pp. 1-2.) In response, Applicant distinguished the prior art because

it had a central office location that managed and distributed the configuration of

other devices, not its own operational state. (Exhibit-1014, p. 11.) Applicant

amended claim 1 to clarify that the controller must affect an operational change in

the target device. (Id., p. 13.)

On May 14, 2003, the Examiner issued a final rejection allowing claims 23-

38 and rejecting claims 1-6 as obvious over U.S. Patent No. 6,185,613 (“Lawson”)

and Krishnamurthy. (Exhibit-1015, pp. 3-4.) In response, Applicant argued that

the target device in Lawson only sent event notifications to other systems and did

not maintain a state table or change notifications of said state table to other

devices. (Exhibit-1016, p. 15.) Applicant further amended claim 1 to clarify that

the change notifications happened upon a change to the state table where the

notification represented the respective change to the table. (Id., p. 2.) On

15

November 21, 2003, the Examiner allowed all of the pending claims. (Exhibit-

1017, pp. 1, 5.)

Litigation and Reexamination History

On January 19, 2010, Microsoft, then Assignee of the ’281 Patent, sued

TiVo in Civil Action No. 5:10-cv-00240 in the Northern District of California. In

March 2011, after the case was filed, TiVo sought an ex parte reexamination of

claims 1-4 and 20 of the ’281 Patent (discussed below). The litigation proceeded

through claim construction briefing but was stayed prior to a claim construction

decision due to the reexamination. The litigation was dismissed without prejudice

on March 22, 2012.

TiVo’s request for reexamination included the following grounds:

claims 1, 3-4 and 20 are anticipated by U.S. Patent No. 6,404,743

(“Meandzija”),

claims 1, 3-4 and 20 are obvious over Krishnamurthy in view of

Meandzija,

claims 1, 3-4, and 20 are anticipated by U.S. Patent No. 6,167,433

(“Maples”), and

claims 1-4 and 20 are obvious over U.S. Patent No. 5,655,081

(“Bonnell”) in view of Maples.

16

(See generally Exhibit-1018.) On April 25, 2011, the PTO found that TiVo’s

request for reexamination raised substantial new questions of patentability.

(Exhibit-1019, pp. 1, 7-9.) On August 16, 2011, the Examiner rejected the

reexamination claims by adopting all grounds provided by TiVo. (Exhibit-1020,

pp. 7, 23, 35, 52.)

In its September 16, 2011 response, Patent Owner (then Microsoft)

presented new claims 23-69, and attempted to traverse the rejections. (See

generally Exhibit-1021.) Among other arguments, Patent Owner distinguished

Meandzija by claiming the user control points did not obtain a copy of the asserted

state table and that the table pertained to the resources managed by the agent, not

the agent itself. (Id., pp. 19-22.) Additionally, Patent Owner argued that Maples

failed to disclose remote units that subscribed to change notifications, rather the

change notifications were automatically sent upon a change to all devices, and that

the system of Maples did not store any operational state information of any device.

(Id., pp. 26-29.) Patent Owner distinguished Bonnell by arguing that the user

interface did not permit remote user interaction to effect a change in the state of the

controlled computing device. (Id., p. 30.) Instead, Bonnell’s user interface simply

monitored the state of other objects. (Id.)

On January 28, 2012, the Examiner rejected several claims and allowed

claims 2, 23-31, 34, 40-42 and 48-69. (Exhibit-1022, pp. 1, 3.) Notably, the

17

Examiner found the Patent Owner’s arguments regarding Meandzija and Maples to

be unpersuasive and, thus, maintained the rejections. (Id.) In addition, the

Examiner submitted that “[t]o ‘subscribe’ is ‘to receive or obtain regularly’, ‘to

give consent’, ‘to contract to receive something.’” (See, e.g., id., p. 25.) The

Examiner took the position that “a request to access a shared multi-user

environment” is a subscription. (Id.)

In February 2012, after an interview with the Examiner, Patent Owner

amended claim 1 by changing which device maintained the copy of the state table

(from the user controller device to the user controlled device) and also added new

claims 70-77. (Exhibit-1023, pp. 2, 12-13.) Notably, Patent Owner did not

reassert arguments relating to subscription. Although with respect to Meandzija

and Maples, Patent Owner maintained similar arguments discussed in Patent

Owner’s prior response. (Id., pp. 16-27.)

The Examiner issued a Final Rejection on August 7, 2012, mostly

maintaining the prior rejections, but dropping the Krishnamurthy/Meandzija

combination for claim 20. (See generally Exhibit-1024.) The Examiner also

allowed new claims 70, 74-75 and 77. (Id., p. 3.)

To overcome the Final Rejection, Patent Owner narrowed independent

claims 1 and 20 by adding, “wherein the controlled computing device comprises

data defining a presentation of a device control user interface.” (Exhibit-1025, pp.

18

2, 4-5.) The Examiner issued a reexamination certificate in October 2012. (See

generally Exhibit-1026.)

VI. OVERVIEW OF THE PRIOR ART1

U.S. Patent 6,148,241 (“Ludtke ’241”)

Ludtke ’241 was filed July 1, 1998, issued November 14, 2000, and,

therefore, is prior art to the ’281 Patent under 35 U.S.C. §102(e). (Exhibit-1002.)

Ludtke ’241 was not cited during prosecution or reexamination of the ’281 Patent

and is not listed on the face of the ’281 Patent.

Ludtke ’241 teaches a user interface for networked target devices and

intelligent controller devices, whereby an intelligent controller obtains a copy of a

target device’s panel subunit information, including operational state data, and uses

the information to generate a user interface for the user to interact with the target

device. (Exhibit-1002, 1:10-12, 16:10-64, Figure 9 (steps 714, 716, 718) (below).)

1 In addition to addressing specific prior art references, Dr. Lippman provides in

his declaration an overview of the state of the art at the time of the alleged

invention. (Ex.-1012, ¶¶32-35.)

19


The intelligent controller posts a notification request to the target device, so

that it is notified of any changes in the status of the target device. (Id., 15:40-43,

17:10-15, Figure 9 (steps 718, 720) (above), 18:47-49, 18:61-63, Figure 12

(highlighted portions) (below).) Dr. Lippman provides a more detailed description

of Ludtke ’241 as it would be understood by a PHOSITA in Exhibit-1012, ¶¶42-

47.

20

U.S. Patent No. 6,389,464 (“Krishnamurthy”)

Krishnamurthy was filed June 27, 1997, issued May 14, 2002, and is prior

art under 35 U.S.C. §102(e). (Exhibit-1003.) Krishnamurthy was cited during

prosecution and reexamination of the ’281 Patent.


21

Krishnamurthy teaches a site server that manages other devices connected to

the site server. (Exhibit-1003, Abstract.) Figure 6 of Krishnamurthy (below)

teaches a web-based portal through which a user configures the site server’s

management of other devices. (Id., 10:32-62.)

Dr. Lippman provides a more detailed description of Krishnamurthy as it

would be understood by a PHOSITA in Exhibit-1012, ¶¶48-49.

U.S. Patent No. 6,456,892 (“Dara-Abrams”)

Dara-Abrams was filed October 30, 1998, issued September 24, 2002, and is

prior art under 35 U.S.C. §102(e). (Exhibit-1005.) Dara-Abrams was not cited

Exhibit-1003, Figure 6

22

during prosecution or reexamination of the ’281 Patent and is not listed on the face

of the ’281 Patent. Dara-Abrams is a continuation-in-part application of Ludtke

’241.

Dara-Abrams teaches a data-driven interface (“DDI”) between devices to

allow a universal controller. (Exhibit-1005, Abstract.) A DDI controller discovers

target devices, which in turn send a data structure containing a description of its

physical appearance, including control and display information to the controller,

which it uses to control the target device. (Id., 4:52-56, 6:61-7:6, Figure 6 (steps

410, 415, 420, and 425).) The controller can subscribe to change notifications,

after which the target device keeps the controller informed of its status for display

to the user. (Id., 14:17-22, 5:24-26, 13:25-29, Figure 6 (steps 410 and 440)

(below).) Dr. Lippman provides a more detailed description of Dara-Abrams as it

would be understood by a PHOSITA in Exhibit-1012, ¶¶50-54.

23


U.S. Patent No. 5,551,701 (“Bouton”)

Bouton was filed January 5, 1994, and issued on September 3, 1996,

(Exhibit-1007) and is prior art under 35 U.S.C. §102(b). Bouton was not cited

during prosecution or reexamination of the ’281 Patent and is not listed on the face

of the ’281 Patent.

Bouton teaches a video game controller that is reconfigurable to match the

user’s video game of choice. (Exhibit-1007, 3:11-13.) Dr. Lippman provides a

24

more detailed description of Bouton as it would be understood by a PHOSITA in

Exhibit-1012, ¶¶55-56.

U.S. Patent No. 6,020,881 (“Naughton”)

Naughton was filed February 18, 1997, issued February 1, 2000, and is prior

art under 35 U.S.C. §102(e). (Exhibit-1008.) Naughton was not cited during

prosecution or reexamination of the ’281 Patent and is not listed on the face of the

’281 Patent.

Naughton teaches a hand-held display device 170 may control remote

devices such as a thermostat 150, VCR 39, and stereo system 152. (Id., 7:14-21.)

Dr. Lippman provides a more detailed description of Naughton as it would be

understood by a PHOSITA in Exhibit-1012, ¶¶57-58.

Motivation to Combine Ludtke ’241 and Krishnamurthy

Ludtke ’241 teaches a target device providing control information to an

intelligent controller to permit the controller device to control the network device.

(Exhibit-1002, Abstract.) Similarly, Krishnamurthy teaches a universal device

management system in which a remote server allows another device to configure

and control the remote server. (Exhibit-1003, Abstract.) Krishnamurthy teaches a

system configuration table which contains factory default values that can be

customized by a user. (Id., 10:59-62.) At the time of the alleged invention, a

PHOSITA would have found it obvious to expand the dynamic data structure of

25

Ludtke ’241 to include the system table (e.g., default values) as described by

Krishnamurthy for at least the following reasons. (Exhibit-1012, ¶59.)

First, Ludtke ’241 expressly contemplates including additional descriptive

information in the dynamic data structure. Specifically, Ludtke ’241 notes that

“other similar control object descriptions can be used.” (Exhibit-1002, 15:10-16;

(Exhibit-1012, ¶60.)

Second, the addition of the system table information of Krishnamurthy to the

Ludtke ’241 data structure yields a predictable result of enabling the intelligent

controller to receive operational state data for the target device descriptor

information in the ’data structure even if not all of the descriptor information is

known to the target device. As a result, the intelligent controller will have a

complete set of operational data of the target device to act on. (Id., ¶61.)

Third, it would have been “obvious to try” to add default values for variables

described in the Ludtke ’241 dynamic data structure as there are a finite number of

identified, predicable solutions, with a reasonable expectation of success. For any

given variable in the Ludtke ’241 data structure, it can only have one of three

appropriate values: the actual value, a null or zero value, or a default value. Given

the three finite possible and predictable values for a variable, selecting one of them

(e.g., a default value) for a given variable would have a reasonable expectation of

26

success in informing the intelligent controller of a likely operational state

associated with that variable and for the target device. (Exhibit-1012, ¶62.)

VII. THE CHALLENGED CLAIMS ARE UNPATENTABLE

A petition for inter partes review must demonstrate “a reasonable likelihood

that the petitioner would prevail with respect to at least one of the claims

challenged in the petition.” 35 U.S.C. § 314(a). This Petition meets this threshold

with respect to each of the challenged claims.

VIII. SPECIFIC GROUNDS FOR UNPATENTABILITY

Pursuant to Rule 42.104(b)(4)-(5), the specific grounds discussed below and

in the Declaration of Dr. Andrew B. Lippman demonstrate that the challenged

claims are unpatentable for obviousness.

Six additional petitions, filed concurrently herewith, seek review of the

claims of the ’281 Patent. This petition and two others are based primarily on

Ludtke ’241, while the other petitions have grounds based on Dara-Abrams (2

petitions) and U.S. Patent No. 6,421,069 (“Ludtke ’069”) (2 petitions).

While each of Ludtke ’241, Ludtke ’069, and Dara-Abrams is generally

directed to a remote control system, each of the disclosures is different – both in

scope and in detail. Ludtke ’241 focuses on the state data in the panel subunit of

the controlled target device, including how the state data is structured. Although

Dara-Abrams is a continuation-in-part of Ludtke ’241, the specification of Dara-

27

Abrams is significantly different than Ludtke ’241. Dara-Abrams focuses more on

how the state data from the controlled target device is used to create the graphical

user interface on the user controller device, including the nature of the

communications to retrieve the state data and subscribe to change notifications of

the state data. Ludtke ’069, although it shares some inventors with Ludtke ’241

and Dara-Abrams, is not related to the other two patents through a claim of

priority. Ludtke ’069 focuses on self-describing information relating to a graphical

representation of the device that allows another device to control its operation.

Each of these references teaches limitations that are not present in the others.

For example, Ludtke ’241 teaches a STB and audio/video decoding formats (e.g.,

claim 42) that are not taught by Ludtke ’069, and Dara-Abrams teaches

unsubscribing messages (e.g., claim 32) which are not taught by the Ludtke

references. Accordingly, grounds primarily based on Ludtke ’241, Ludtke ’069,

and Dara-Abrams are not redundant.

Ground 1: Ludtke ’241 Renders Obvious Claims 1-4, 23-31, 33, 36-42, 45-47, and 70-72

As provided in detail below, Ludtke ’241 renders obvious the claimed

invention. (Exhibit-1012, ¶72.)

28

Claim 1 (Exhibit-1027, pp. 1-2.)

Distributed Computing Network Limitation (A) (Preamble)2

Ludtke ’241 teaches distributed networked consumer electronic devices in a

home entertainment system, such as TVs, STBs, VCRs, and personal computers

(“PC”), which distribute communications between two or more devices. (Exhibit-

1002, 1:8-11, Figure 1 (below), 2:16-19, 2:44-48; Exhibit-1012, ¶73.)

Controlled Computing Device Limitation

Ludtke ’241 teaches a controlled target device, which can be any type of

electronic device, and which responds to another device, e.g., an intelligent

controller. (Exhibit-1002, 2:44-48, 8:36-37; Exhibit-1012, ¶74.)

2 Claim designations are used to refer to various claim limitations as set forth in the

Claim Appendix. (Exhibit-1027.) These designations are also used in Dr.

Lippman’s Declaration. (Exhibit-1012).


29

State Table Limitation

Ludtke ’241 teaches a panel subunit which is a collection of data structures

that describes the physical controls of a target device such as VCR 12 (Figure 3A).

(Exhibit-1002, 9:8-10; Exhibit-1012, ¶¶75-77.) Figure 5 (annotated below) shows

the overall structure of the panel subunit 314 for VCR 12, while Figures 7A and

7B (annotated) show the specific details for control objects 382 (LCD panel 214)

and 384 (play button 250), including type, presentation data, identifiers, valid

values and ranges. (Exhibit-1002, 11:15-38 (Figure 5), 13:16-14:24 (Figure 7A),

14:25-55 (Figure 7B).)

30

The panel subunit also includes a dynamic status descriptor data structure

that is maintained by the target device and represents the current status of each

control object of the target device (e.g., VCR 12) that is described in the panel

subunit. (Exhibit-1002, 10:39-41, 15:17-26, Figure 8.) Figure 8 (below) is a

representation of the status descriptor data structure and shows the current state or

Exhibit-1002, Figures 5, 7A, 7B (annotated)

31

value for every control object defined in the panel subunits shown in Figures 5-7.

(Id., 15:26-39, 15:50-16:9.) For example, status information may include that

LCD Panel 214 is displaying certain text or that play button 250 is currently

pressed. (Id., 15:36-39; Exhibit-1012, ¶¶76-77.)

Ludtke ’241 expressly shows the data structure in the form of a “table.” A

PHOSITA at the time of the alleged invention would have understood that this

table shows the state of the target device. (Exhibit-1012, ¶78.) The format of the

representation of the state data is a matter of programming style. (Id.) A

PHOSITA at the time of the alleged invention would have understood that the

design of the state table is a matter of design choice to organize the status


32

information for ease of use. (Id.) Both the ’281 Patent and Ludtke ’241 would

work the same using a variety of data formats for the state data. (Id.) A PHOSITA

would also have understood that any data structure format would work in the same

way as a table with rows and column values with no unexpected results. (Id.)

Therefore, a PHOSITA would have found it obvious to use any data structure

format that maintains the same operational state information of the controlled

device, such as the status descriptor data structure found in Ludtke ’241. (Id.)

User Controller Device Limitation (A)

Ludtke ’241 teaches that an intelligent controller can be any device in a

network that has input and display capabilities. (Exhibit-1002, 7:18-21; Exhibit-

1012, ¶79.) The intelligent controller in Ludtke ’241 provides a user interface for

interacting with a target device, such as pressing play button 250. (Exhibit-1002,

7:25-32.) For example, referring to Figure 12, when a user presses a caps lock key

(step 810), a message (812) is sent to the target device and the proper action is

taken at the target device (step 835). (Id., 18:44-19:13, Figure 12; Exhibit-1012,

¶79.)

User Control Point Module Limitation (A)

Based on the broadest reasonable interpretation discussed in Section

III.B.1.d, the intelligent controller of Ludtke ’241 meets this limitation. (Exhibit-

1012, ¶¶80-81.) Ludtke ’241 teaches that the intelligent controller downloads the

33

target device panel subunit descriptor information which includes the current status

descriptor table for the target device. (Exhibit-1002, 16:22-26, Figure 9 (step

714).)

Additionally, the intelligent controller can post a notification request to the

target device to receive any changes to the status descriptor information, which

describes a subscription to change notifications, as shown in Figure 12 (step 805).

(Id., 10:41-51, 18:47-49, Figure 12; Exhibit-1012, ¶81.)

Event Source Module Limitation (A)

Using the broadest reasonable interpretation of “eventing model” discussed

in Section III.B.1.e, the target device of Ludtke ’241 meets this limitation.

(Exhibit-1012, ¶¶82-83.) Ludtke ’241 teaches that the target device sends a

notification to the intelligent controller when any change to the device (such as

pressing the caps lock key discussed above) results in a change to the status

descriptor data structure. (Exhibit-1002, 10:46-51, 17:10-15, 19:2-5, Figure 12.)

Referring to Figure 12, after the target device takes the action indicated by the

intelligent controller (step 835), it sends status message 837 to the intelligent

controller indicating the change. (Id.) Upon receipt of the notification, the

intelligent controller updates its graphical display as indicated by the change

notification to synchronize the display with the changed state information as shown

in step 815. (Id., 10:49-51; Exhibit-1012, ¶83.)

34

Data Presentation Limitation

Ludtke ’241 teaches that the status descriptor data structures maintained by

the target device describe the physical controls of the target device as well as the

current state of operation. (Exhibit-1002, 9:8-14; Exhibit-1012, ¶84.) In

particular, the data structures “describe the look, shape, grouping and location for

each user input element and each information display element for the user

interface.” (Exhibit-1002, 16:30-33.) The intelligent controller implements a user

interface for the target device based on the status descriptor data structures. (Id.,

10:49-51; Exhibit-1012, ¶84.)


Distributed Computing Network Limitation (A) (Preamble)


home entertainment system, such as TVs, STBs, VCRs, and PCs, which distribute

communications between two or more devices. (Exhibit-1002, 1:8-11, Figure 1

(below), 2:16-19, 2:44-48; Exhibit-1012, ¶85.)

35








(Exhibit-1002, 9:8-10; Exhibit-1012, ¶¶87-89.) Figure 5 (annotated below) shows

the overall structure of the panel subunit 314 for VCR 12, while Figures 7A and

7B (annotated below) show the specific details for control objects 382 (LCD panel

214) and 384 (play button 250), including type, presentation data, identifiers, valid

values and ranges. (Exhibit-1002, 11:15-38 (Figure 5), 13:16-14:24 (Figure 7A),

14:25-55 (Figure 7B).)


36


37




subunit. (Exhibit-1002, 10:39-41, 15:17-26, Figure 8; Exhibit-1012, ¶¶88-89.)

Figure 8 (below) is a representation of the status descriptor data structure and

shows the current state or value for every control object defined in the panel

subunits shown in Figures 5-7. (Id., 15:26-39, 15:50-16:9.) For example, status

information may include that LCD Panel 214 is displaying certain text or that play

button 250 is currently pressed. (Id., 15:36-39; Exhibit-1012, ¶¶88-89.)


38





















39


¶91.)







714).)












40






in step 815. (Id., 10:49-51.)

“the state table having a plurality of entries, wherein each entry of the state table comprises at least a variable identifier, a type and a current value”

Ludtke ’241 describes a dynamic data structure that maintains the current

operational state of the target device and includes an entry for each control object.

(Exhibit-1002, Abstract, 10:39-41, Figures 5-8.) The figures in Ludtke ’241

illustrate that there are many control objects for a particular target device (Figure

5) and that each control object has at least an identifier and a type (Figures 7A-7B)

and a current value (Figure 8). (Id.; Exhibit-1012, ¶96.) Figure 7B, for example,

discloses identifier 476 and type 460 for control object 384. (Exhibit-1002, 14:25-

46, Figure 7B (annotated below).) Figure 8 would contain the current value for

control object 384. (Id., 15:17-28, Figure 8.)

41

“at least one entry of the state table being of a type of data buffer, and containing a file as its current value”

Ludtke ’241 teaches the use of sending status information data structures

containing control objects to the intelligent controller. (Exhibit-1002, 15:17-16:9.)

The data structure has many fields, or entries, one of which contains an image (or

group of images) of the control object for display on the intelligent controller, such

as image 462 in Figure 7B (above). (Id., 13:24-31, Figure 7B.) As explained by

Dr. Lippman, a PHOSITA would have understood that the image(s) are stored as a

file in the data structure. (Exhibit-1012, ¶97.) Therefore, a PHOSITA would have

further understood that the Ludtke ’241 data structure field, or entry, in that case to

be a type of data buffer for the image file. (Id.)

Exhibit-1002, Figure 7B (annotated)

42

“whereby a change to the current value of said at least one entry effects a file transfer from the controlled device to said any subscribing user controller device”

Ludtke ’241 teaches that when there is any change in the state of the target

device that results in a change to the status descriptor data structure, the target

device sends a notification of the change to the intelligent controller, which would

include any files that may be present in the data structure. (Exhibit-1002, 10:46-

51; Exhibit-1012, ¶98.)

Claim 3

Claim 3 depends from claim 1 and adds the Embedded Device Limitation.

(Exhibit-1027, p. 3.) Ludtke ’241 teaches that a target device can be any number

of consumer electronic devices, including televisions, STBs, VCRs, CD players,

and PCs that are networked and able to communicate with other devices. (Exhibit-

1002, 2:44-48.) Under the broadest reasonable interpretation discussed in Section

III.B.1.f, Ludtke ’241 teaches this limitation. (Exhibit-1012, ¶99.)

Claim 4

Claim 4 depends from claim 1 and adds “further comprising a computer-

readable medium controlled computing device having encoded thereon the state

table” and also adds that the state table comprises a plurality of entries with each

entry comprising (1) a variable identifier and (2) a current value. (Exhibit-1027, p.

4.) Ludtke ’241 describes a dynamic data structure stored on the computer-

43

readable memory unit of the target device that maintains the current operational

state of the target device and includes an entry for each control object. (Exhibit-

1002, Abstract, 10:39-41, 15:19-24, Figures 5-8.)

The figures in Ludtke ’241 illustrate that there are many control objects for a

particular target device (Figure 5) and that each control object has at least an

identifier (Figures 7A-7B) and a current value (Figure 8). (Id.; Exhibit-1012,

¶100.) Figure 7B, for example, discloses identifier 476 for control object 384.

(Exhibit-1002, 14:25-46, Figure 7B (annotated below).) Figure 8 would contain

the current value for control object 384. (Id., 15:17-28, Figure 8.)

Exhibit-1002, Figure 7B (annotated)

44






(below), 2:16-19, 2:44-48; Exhibit-1012, ¶101.)









45

(Exhibit-1002, 9:8-10; Exhibit-1012, ¶¶103-05.) Figure 5 (annotated below)

shows the overall structure of the panel subunit 314 for VCR 12, while Figures 7A

and 7B (annotated below) show the specific details for control objects 382 (LCD

panel 214) and 384 (play button 250), including type, presentation data, identifiers,

valid values and ranges. (Exhibit-1002, 11:15-38 (Figure 5), 13:16-14:24 (Figure

7A), 14:25-55 (Figure 7B).)

46


47










pressed. (Id., 15:36-39; Exhibit-1012, ¶¶104-05.)

48





















49


¶107.)

Storing Presentation Data Limitation

Ludtke ’241 teaches that the status descriptor data structures maintained by

the target device describe the physical controls of the target device as well as the

current state of operation. (Exhibit-1002, 9:8-14; Exhibit-1012, ¶108.) In

particular, the data structures “describe the look, shape, grouping and location for

each user input element and each information display element for the user

interface.” (Exhibit-1002, 16:30-33.) The intelligent controller implements a user

interface for the target device based on the status descriptor data structures. (Id.,

10:49-51.)







714).)



50















in step 815. (Id., 10:49-51; Exhibit-1012, ¶112.)

Claim 24

Claim 24 depends from claim 23 and adds that the controlled computing

device is configured to transfer the presentation data for the user device control

interface to the user controller device. (Exhibit-1027, p. 21.) Ludtke ’241 teaches

that the target device transfers the status descriptor data for the display to the

51

intelligent controller. (Exhibit-1002, 16:22-26.) The data includes the “look,

shape, grouping and location for each user input element and each information

display element for the user interface.” (Id., 16:31-33, Figures 7A, 7B; Exhibit-

1012, ¶113.)

Claim 25

Claim 25 depends from claim 23 and adds the limitation that the user

controller device receives the presentation data defining the interface from the

controlled device and presents the user device control interface. (Exhibit-1027, p.

21.) Ludtke ’241 teaches that the intelligent controller receives the descriptor

information and status information for the target device and then displays a user

interface based on the downloaded information. (Exhibit-1002, 16:22-26; Exhibit-

1012, ¶114.)






(below), 2:16-19, 2:44-48; Exhibit-1012, ¶115.)

52








(Exhibit-1002, 9:8-10; Exhibit-1012, ¶¶117-19.) Figure 5 (annotated below)

shows the overall structure of the panel subunit 314 for VCR 12, while Figures 7A

and 7B (annotated below) show the specific details for control objects 382 (LCD

panel 214) and 384 (play button 250), including type, presentation data, identifiers,

valid values and ranges. (Exhibit-1002, 11:15-38 (Figure 5), 13:16-14:24 (Figure

7A), 14:25-55 (Figure 7B).)


53





54






pressed. (Id., 15:36-39; Exhibit-1012, ¶118-19.)





55


















taken at the target device (step 835). (Id., 18:44-19:13, Figure 12.)

56







714).)














57




in step 815. (Id., 10:49-51.)

STB and Tuner/Audio/Video Limitations

Ludtke ’241 teaches that the target device can be a STB. (Exhibit-1002,

2:44-48; Exhibit-1012, ¶126.) Ludtke ’241 also teaches that status descriptor fields

for the target device contain state information for channel selection buttons. (Id.,

12:29-37; Exhibit-1012, ¶¶127-28.)

Ludtke ’241 further teaches that target devices such as STBs contain

MPEG2 decoders and the status descriptor fields of the target device are used to

define virtual objects that represent the MPEG2 decoder. (Exhibit-1002, 19:28-39;

Exhibit-1012, ¶129.) Because the descriptor fields of the target device allow a user

to interact with the MPEG2 decoder, the fields must inherently identify the audio

and video decoding format of the decoder. (Id.)

Claims 26 and 45

Claims 26 and 45 depend from claims 25 and 1, respectively. (Exhibit-1027,

pp. 21, 27.) Both claims add the limitation that the user controller device is a

mobile phone. (Id.) Ludtke ’241 teaches the use of a cell phone as an intelligent

controller. (Exhibit-1002, 7:25-28; Exhibit-1012, ¶130.)

58

Claims 27 and 46


pp. 21, 27.) Both claims add the limitation that the user controller device is a STB.

(Id.) Ludtke ’241 teaches the use of a STB as an intelligent controller. (Exhibit-

1002, 2:39-40, 2:50-53; Exhibit-1012, ¶131.)

Claims 28 and 47


pp. 21-22, 27.) Both claims add the limitation that the user controller device is a

hand-held computer. (Id.) Ludtke ’241 teaches the use of a hand-held computer as

an intelligent controller. (Exhibit-1002, 7:25-28; Exhibit-1012, ¶132.)

Claims 29 and 70


pp. 22, 35.) Both claims add the limitation that the state table represents a current

electrical state of the controlled computing device. (Id.) Ludtke ’241 teaches the

target device data structure maintains a current electrical state such as the state of a

power-on key (Figure 10 (560)), LED (Figure 10 (554, 556, 558)), or a hybrid key

with an LED (Figure 10 (550)). (Exhibit-1002, 17:56-18:6, Figure 10 (annotated

below); Exhibit-1012, ¶133.)

59

Exhibit-1002, Figures 10 and 11 (annotated)

Figure 11 shows the status descriptor structure for hybrid key 550 which includes

entry 644 to reflect the state information as to whether the LED is on or off. (Id.,

Figure 11 (annotated above), 18:7-43; Exhibit-1012, ¶134.)

Claims 30 and 71



mechanical state of the controlled computing device. (Id.) Ludtke ’241 teaches

the target device data structure maintains a current mechanical, or physical, state of

the target device such as whether a key has been pressed. (Exhibit-1002, 16:38-64;

Exhibit-1012, ¶135.)

60

Claims 31 and 72



logical state of the controlled computing device. (Id.) The ’281 Patent teaches that

a logical entity is when one device emulates the behaviors of another device.

(Exhibit-1001, 7:45-48.) Ludtke ’241 teaches the target device data structure

maintains a current logical state, such as logical controls and the appearance of a

logical control panel that can be used to control a black box that has no physical

controls. (Exhibit-1002, 5:49-55.) For example, the virtual keyboard shown in

Figure 10 (on the intelligent controller) can be used to control a device that has no

physical controls. (Id., 17:44-55, Figure 10; Exhibit-1012, ¶136.)

Claim 33

Claim 33 depends from claim 1 and adds the limitation that the controlled

computing device is configured to send a copy of the state table to the user control

point module in response to receiving a subscribe message from the user controller

device. (Exhibit-1027, pp. 22-23.) As discussed above in Section III.B.1.d, a

subscribe message informs the controlled device of the desire to receive events.

(Exhibit-1001, 11:14-18.) Ludtke ’241 teaches that the target device is configured

to send a copy of the descriptor information for the target device to the intelligent

controller in response to a message from the intelligent controller. (Exhibit-1002,

61

16:22-26, 18:47-49, Figure 9.) A PHOSITA would understand this message to be

a subscribe message in accordance with the ’281 Patent. (Exhibit-1012, ¶137.)

Claim 36

Claim 36 depends from claim 1 and adds “the controlled computing device

is a cell phone.” (Exhibit-1027, p. 24.) Ludtke ’241 teaches that a target device

can be any electronic device with its own panel subunit. (Exhibit-1002, 8:36-37.)

Ludtke ’241 teaches that cell phones are one example of an electronic device. (Id.,

7:25-27.) Based on the teachings of Ludtke ’241, a PHOSITA at the time of the

alleged invention would have understood that the controlled computing device

could be a cell phone. (Exhibit-1012, ¶138.)

Additionally, it would have been obvious to a PHOSITA in view of Ludtke

’241 at the time of the alleged invention to use the cell phone as a controlled

computing device because Ludtke ’241 describes it as an example of an intelligent

controller, and it also falls within Ludtke ’241’s description of a target device.

(Exhibit-1012, ¶139.)

Claim 37


is an audio and video recorder.” (Exhibit-1027, p. 25.) Ludtke ’241 teaches that

the target device can be a VCR which records audio and video. (Exhibit-1002,

2:44-48, 8:34-35, Exhibit-1012, ¶140.)

62

Claim 38


is an audio or video playback device.” (Exhibit-1027, p. 25.) Ludtke ’241 teaches

that the target device can be a VCR which plays back audio and video. (Exhibit-

1002, 2:44-48, 8:34-35; Exhibit-1012, ¶141.)

Claim 39

Claim 39 depends from claim 1 and adds the STB Limitation. (Exhibit-1027,

p. 25.) Ludtke ’241 teaches that the target device can be a STB. (Exhibit-1002,

2:44-48, 19:25-38; Exhibit-1012, ¶142.)

Claim 40

Claim 40 depends from claim 39 and adds the Tuner Limitation. (Exhibit-

1027, p. 25.) Ludtke ’241 teaches that status descriptor fields contain state

information for channel selection buttons. (Exhibit-1002, 12:29-37.) Although

Ludtke ’241 does not explicitly teach the storing of the tuner channel selection, the

state information for the channel selection buttons would inherently correspond to

the status of the tuner channel selection since channel selection buttons control the

tuner of the device (e.g., VCR 12). (Exhibit-1012, ¶143.)

Additionally, it would have been obvious to a PHOSITA in view of Ludtke

’241 at the time of the alleged invention to represent the current tuner channel

selection in the status descriptor table. (Exhibit-1012, ¶144.) As noted above, the

controlled computing devices can include VCRs and televisions, the current

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channel for these devices is typically shown on the front panel of the device and, as

such, would be incorporated into the status descriptor data structure for the device.

(Id.)

Claim 41

Claim 41 depends from claim 39 and adds the Audio Limitation. (Exhibit-

1027, p. 25.) Ludtke ’241 teaches that target devices such as STBs contain

MPEG2 (audio/video) decoders and the status descriptor fields of the target device

are used to define objects that represent the MPEG2 decoder and allow the user to

interface with the MPEG2 decoder, thus meeting this limitation. (Exhibit-1002,

19:28-39; Exhibit-1012, ¶145.)

Ground 2: Ludtke ’241 and Krishnamurthy Render Obvious Claims 5-6

Ludtke ’241 teaches the claimed invention, but for the use of a default value,

which is rendered obvious by Krishnamurthy. (Exhibit-1012, ¶146.)

Claim 5

Claim 5 depends from claim 4 and adds the limitation that each entry of the

state table further comprises a variable type, a designation of legal values, and a

designation of a default value. (Exhibit-1027, p. 4.) Ludtke ’241 describes a

dynamic data structure that maintains the current operational state of the target

device and includes an entry for each control object. (Exhibit-1002, Abstract,

10:39-41, Figures 5-8.) The figures in Ludtke ’241 illustrate that there are many

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control objects for a particular target device (Figure 5) and that each control object

has at least an identifier and a type (Figures 7A-7B). (Id.; Exhibit-1012, ¶147.)

Figure 7B, for example, discloses identifier 476 and type 460 for control object

384. (Exhibit-1002, 14:25-46, Figure 7B.) Thus, Ludtke ’241 teaches a variable

type.

Additionally, Ludtke ’241 teaches that the status descriptor data structure

includes fields that represent the “allowable or valid value ranges” for an object.

(Exhibit-1002, 13:48-50.) Thus, Ludtke ’241 teaches the designation of legal

values, but does not teach a default value. (Exhibit-1012, ¶148.)

Krishnamurthy teaches a universal device management system that provides

a webpage to configure a remote server. (Exhibit-1003, Abstract.) Krishnamurthy

teaches a system configuration state table which contains factory default values

that can be customized by a user. (Id., 10:59-62; Exhibit-1012, ¶149.)

Referencing Section VI.F regarding motivation to combine, it would have been

obvious to a PHOSITA to expand the Ludtke ’241 state table to include the default

value provided by Krishnamurthy to enable initialization of the control system for

the networked device. (Id., ¶150.)

Claim 6

Claim 6 depends from claim 5 and adds the limitation that the variable type

can include a data buffer containing a file, where transmission of the state table

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effects transfer of the file. (Exhibit-1027, p. 4.) Ludtke ’241 teaches the use of

sending status information data structures containing control objects to the

intelligent controller. (Exhibit-1002, 15:17-16:9.) The data structure has a field

that contains an image (or group of images) of the control object for display on the

intelligent controller, such as image 462 in Figure 7B (above). (Id., 13:24-31,

Figure 7B.) A PHOSITA would have understood that the image(s) are stored as a

file. (Exhibit-1012, ¶151.)

Ludtke ’241 teaches that when there is any change in the state of the target

device that results in a change to the status descriptor data structure, the target

device sends a notification of the change to the intelligent controller, which would

include any files that may be present in the data structure. (Exhibit-1002, 10:46-

51; Exhibit-1012, ¶152.)

Ground 3: Ludtke ’241 and Dara-Abrams Render Obvious Claims 32 and 35

Ludtke ’241 teaches the claimed invention, but for the unsubscribing

limitation which is rendered obvious by Dara-Abrams. (Exhibit-1012, ¶153.)

Claims 32 and 35 depend from claim 1 and add the limitation that the user

control point module can unsubscribe to change notifications of the state table,

while claim 35 also adds that the user control point module can form an

unsubscribe message. (Exhibit-1027, pp. 22, 24.) Ludtke ’241 teaches that the

intelligent controller forms and sends a subscribe request for change notifications

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to the target device and allows for multiple intelligent controllers, but does not

teach an unsubscribe request. (Exhibit-1002, 18:47-49, 7:21-23; Exhibit-1012,

¶154.) In the same field of endeavor, Dara-Abrams teaches a controller that

subscribes to change notifications to the target device and then also forms and

sends an unsubscribe message to the target device to unsubscribe from change

notifications of the state table. (Exhibit-1005, 13:57-62, 14:42-44; Exhibit-1012,

¶154.)

As explained by Dr. Lippman, a PHOSITA at the time of the alleged

invention would have found it obvious to modify the Ludtke ’241 system to

include the unsubscribing limitation of Dara-Abrams to allow the intelligent

controller to stop receiving status updates which would advantageously save

memory space and maximize network bandwidth usage efficiency. (Exhibit-1012,

¶155.)

Ground 4: Ludtke ’241 and Bouton Render Obvious Claim 43

Claim 43 depends from claim 1 and adds the Game Console Limitation.

(Exhibit-1027, p. 27.) Ludtke ’241 teaches a controlled target device, but does not

teach a game console. (Exhibit-1002, 2:44-48, 8:36-37; Exhibit-1012, ¶¶156-57.)

Bouton teaches a video game/simulator system in a PC with a joystick controller

and a throttle controller. (Exhibit-1007, Abstract.) “The throttle and joystick

controller inputs are reconfigurable to work with different video game/simulator

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programs by downloading a new set of keycodes from the personal computer via

the keyboard port to a microcontroller and nonvolatile memory in the throttle

controller.” (Id.)

Both Ludtke ’241 and Bouton are directed to providing control description

information to a remote controller device. Thus, a PHOSITA, at the time of the

alleged invention, would have found it obvious for the target device in Ludtke ’241

to be a gaming device as described in Bouton since gaming devices were

commonly used with TVs and the Ludtke ’241 system includes TVs. (Exhibit-

1002, 2:44-48; Exhibit-1012, ¶158.)

Ground 5: Ludtke ’241 and Naughton Render Obvious Claim 44

Claim 44 depends from claim 1 and adds the Environment Control Device

Limitation. (Exhibit-1027, p. 27; Exhibit-1012, ¶¶159-60.) Ludtke ’241 teaches a

controlled target device, but does not teach environment control devices. (Exhibit-

1002, 2:44-48, 8:36-37.) Naughton teaches that a controlled computing device

may be a thermostat (an environment control device). (Exhibit-1008, 7:17-19.) A

PHOSITA at the time of the alleged invention would have found it obvious that the

Ludtke ’241 controlled target device could be the Naughton controlled thermostat

because both references teach graphical user interfaces for the remote control of

target devices commonly found within the home such as a VCR or personal

computer. (Exhibit-1012, ¶160.) Additionally, both references teach that the

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target devices provide user interface data to the remote control and that the target

devices provide updated information to the remote control upon changes to the

target device. (Id.)

IX. CONCLUSION

For the foregoing reasons, Petitioner respectfully submits that inter partes

review of claims 1-6, 23-33, 35-47, and 70-72 of U.S. Patent 6,725,281 should be

instituted on the grounds set forth herein.

BANNER & WITCOFF, LTD

Dated: March 20, 2017 By: / Frederic M. Meeker /

Frederic M. Meeker Reg. No. 35,282 Customer No. 71867 Banner & Witcoff, LTD 1100 13th Street, NW Suite 1200 Washington, DC 20005 (202) 824-3000 (202) 824-3001 [email protected]

69

CERTIFICATION UNDER 37 CFR § 42.24(d)

Under the provisions of 37 CFR § 42.24(d), the undersigned hereby certifies

that the word count for the foregoing Petition for Inter Partes Review totals 10,804,

as counted by the Word Count feature of Microsoft Word, which is less than the

14,000 allowed under 37 CFR § 42.24(a)(1)(i).

Pursuant to 37 C.F.R. § 42.24(a)(1), this count does not include the table of

contents, the table of authorities, mandatory notices under § 42.8, the certificate of

service, this certification of word count, the claims listing appendix, or appendix of

exhibits.

BANNER & WITCOFF, LTD

Dated: March 20, 2017 By: / Frederic M. Meeker /

Frederic M. Meeker Reg. No. 35,282 Customer No. 71867 Banner & Witcoff, LTD 1100 13th Street, NW Suite 1200 Washington, DC 20005

70

CERTIFICATE OF SERVICE

Pursuant to 37 C.F.R. § 42.105, I hereby certify that I caused a true and

correct copy of the Petition for Inter Partes Review in connection with U.S. Patent

No. 6,725,281 and supporting evidence to be served via FedEx Priority Overnight

on March 20, 2017, on the following:

ROPES & GRAY LLP PATENT DOCKETING 39/361 1211 AVENUE OF THE AMERICAS

NEW YORK, NY 10036-8704 BANNER AND WITCOFF, LTD Dated: March 20, 2017 By: / Frederic M. Meeker /

Frederic M. Meeker Reg. No. 35,282 Customer No. 71867 Banner & Witcoff, LTD 1100 13th Street, NW Suite 1200 Washington, DC 20005

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

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