UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. LG ELECTRONICS, INC. Petitioner. ATI TECHNOLOGIES ULC Patent Owner

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD LG ELECTRONICS, INC. Petitioner v. ATI TECHNOLOGIES ULC Patent Owner Case: IPR Patent 6,784,879 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,784,879

2 TABLE OF CONTENTS I. MANDATORY NOTICES... 1 II. PAYMENT OF FEES... 2 III. STANDING... 2 IV. REQUEST FOR INTER PARTES REVIEW OF CLAIMS 17, 20, 21, AND 24 OF THE 879 PATENT... 2 A. Technology Background... 3 B. The Alleged Invention Of The 879 Patent... 3 V. CLAIM CONSTRUCTION... 4 A. Standards For Claim Construction... 4 B. storage means (Claims 17 and 21)... 5 VI. SUMMARY OF PRIOR ART TO THE 879 PATENT FORMING THE BASIS FOR THIS PETITION... 7 A. U.S. Patent No. 6,141,003 ( Chor ) (Ex. 1005)... 7 B. U.S. Patent No. 5,528,304 ( Cherrick ) (Ex. 1006)... 8 C. U.S. Patent No. 5,751,373 ( Ohyama ) (Ex. 1007)... 8 VII. GROUNDS FOR UNPATENTABILITY OF EACH CLAIM... 8 A. Ground 1: Claims 7, 20, 21, And 24 Are Unpatentable Under 35 U.S.C. 102(e) As Being Anticipated By Chor... 9 B. Ground 2: Claims 17, 20, 21, and 24 Are Unpatentable Under 35 U.S.C. 103(a) As Being Obvious Over Chor C. Ground 3: Claims 17, 20, 21, And 24 Are Unpatentable Under 35 U.S.C. 102(b) As Being Anticipated By Cherrick D. Ground 4: Claims 17, 20, 21, and 24 Are Unpatentable Under 35 U.S.C. 103(a) As Being Obvious Over Cherrick E. Ground 5: Claims 17, 20, 21, and 24 Are Unpatentable Under 35 U.S.C. i

3 102(e) As Being Anticipated By Ohyama F. Ground 6: Claims 17, 20, 21, and 24 Are Unpatentable Under 35 U.S.C. 103(a) As Being Obvious Over Ohyama VIII. CONCLUSION ii

4 PETITIONER S EXHIBIT LIST Description Exhibit No. U.S Prosecution History of U.S Complaints filed in Related District Court Cases 1003 Declaration of Dan Schonfeld, Ph.D. ( Schonfeld Decl. ) 1004 U.S. Patent No. 6,141,003 ( Chor ) 1005 U.S. Patent No. 5,528,304 ( Cherrick ) 1006 U.S. Patent No. 5,751,373 ( Ohyama ) 1007 iii

5 Pursuant to 35 U.S.C. 311, Petitioner hereby respectfully requests inter partes review of Claims 17, 20, 21, and 24 of Ex. 1001, U.S. ( the 879 Patent ) which issued on August 31, The challenged claims are unpatentable under 35 U.S.C. 102 and 103 over the prior art publications identified and applied in this Petition. I. MANDATORY NOTICES disclosures: Pursuant to 37 C.F.R. 42.8, Petitioner provides the following mandatory A. Real Parties-In-Interest. LG Electronics U.S.A., Inc. and LG Electronics MobileComm U.S.A. are real parties-in-interest with Petitioner, LG Electronics, Inc. B. Related Matters. Pursuant to 37 C.F.R. 42.8(b)(2), Petitioner submits that the 879 Patent is the subject of a patent infringement lawsuit brought by Advanced Micro Devices, Inc. in the Northern District of California: Advanced Micro Devices, Inc., et al., v. LG Electronics, Inc., et al., Case No. 3:14-cv C. Lead and Back-up Counsel. Petitioner provides the following designation of counsel: LEAD COUNSEL Robert G. Pluta Registration No. 50,970 MAYER BROWN LLP 71 S. Wacker Drive Chicago, IL Telephone: BACK-UP COUNSEL Amanda K. Streff Registration No. 65,224 MAYER BROWN LLP 71 S. Wacker Drive Chicago, IL Telephone:

6 Facsimile: Facsimile: D. Service Information. Pursuant to 37 C.F.R. 42.8(b)(4), Petitioner identifies the following service information: Please direct all correspondence regarding this proceeding to lead counsel at the address identified above. Petitioner consents to electronic service by and with a courtesy copy to AMDIPR@mayerbrown.com. II. PAYMENT OF FEES Pursuant to 37 C.F.R , $23,000 is being paid at the time of filing this petition, charged to Deposit Account Should any further fees be required by the present Petition, the Patent Trial and Appeal Board ( the Board ) is hereby authorized to charge the above referenced Deposit Account. III. STANDING Pursuant to 37 C.F.R (a), Petitioner certifies that the patent sought for review, the 879 Patent, is available for inter partes review and that Petitioner is not barred or estopped from requesting an inter partes review of the patent. IV. REQUEST FOR INTER PARTES REVIEW OF CLAIMS 17, 20, 21, AND 24 OF THE 879 PATENT Pursuant to 37 C.F.R (b), Petitioner requests that the Board find unpatentable claims 17, 20, 21, and 24 of the 879 Patent. Such relief is justified as the alleged invention of the 879 Patent was described by others prior to the effective 2

7 filing date of the 879 Patent. A. Technology Background Generally, control panels are used for controlling the content on a display while the display is in use. Ex. 1004, Declaration of Dan Schonfeld, Ph.D. ( Schonfeld Decl. ), 36. Computer displays and television receivers provide video content to a user, which may be controlled. Id. at 36. Control of video content involves changing various attributes of the video display. Id. at 36. Control panels for controlling video displays typically contain icons for controlling features such as image, brightness, volume, speed, mute, pause, fast forward, stop, rewind etc. Id. at The use of a control panel has since been incorporated in most computers since Id. at 37. It is common for the content to remain in the background while the user navigates the control panel to alter the desired feature. Id. at 36. The 879 Patent also refers to icons remaining in focus while a user selects an icon on a control panel. Ex. 1001, at 2:24-25; see also Schonfeld Decl., at Selecting an icon may be accomplished by the cursor of a mouse, a keyboard, touch screen, or other selection tools. Id. at 2: The ability to view and switch among multiple applications on a computer screen, and thus view different applications was standard technology since the inception of the personal computer. Schonfeld Decl., at 40. B. The Alleged Invention Of The 879 Patent The 879 Patent relates to computer displays and more particularly to providing control of background video. Ex. 1001, at 1:8-9. According to the 879 3

8 Patent, [c]omputers are known to include a central processing unit, cache memory, hard drive memory, floppy disk drive memory, CD ROM drive, audio processing circuitry, and video processing circuitry Id. at 1: The 879 Patent discloses that displaying of live video on a computer monitor may be done in several ways and attributes of live video may be changed through graphical user interfaces. Id. at 1: The purported advantage of the alleged 879 Patent s invention relates to providing control of background video while the video remains in the background and applications that were in focus remain in focus. Ex. 1001, at 1:51-53, 2: Specifically, the 879 Patent discloses a method for allowing a user who has multiple applications open to adjust the attributes of television broadcasting playing in the background (e.g., change the channel, volume, pause, fast forward, or rewind) while applications overlaying the background video remain in the foreground. Yet, as shown below, this was already known in the prior art. V. CLAIM CONSTRUCTION A. Standards For Claim Construction A claim subject to inter partes review is given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R (b). This means that the words of the claim are given their plain meaning from the perspective of one of ordinary skill in the art unless that meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Petitioner submits, for the purposes of inter partes review only, that the claim terms are 4

9 presumed to take on their broadest reasonable interpretation in light of the specification of the 879 Patent. 1 B. storage means (Claims 17 and 21) The term storage means in claims 17 and 21 is a means-plus-function term subject to interpretation under 35 U.S.C. 112, 6. The claimed function of the first, second, and third storage means is storing programming instructions.... Ex. 1001, at 5. The 879 Patent specification does not disclose a specific algorithm for performing the claimed functions for each of the three storage means, but rather only illustrates two logic diagrams which may be performed by the processing system 40. Ex. 1001, at 3:4-5. 3: According to the 879 Patent to perform the control of the background video, the central processing unit and/or video graphic processor perform programming instructions relating to the logic diagrams of FIGS. 3 and 4. 1 Inter partes review is limited to evaluating invalidity issues arising from the consideration of certain prior-art issues, i.e., 35 U.S.C ; and, therefore, excludes consideration of indefiniteness, enablement, and numerous other grounds for invalidity. Petitioner thus files this inter partes review without prejudice to its right to challenge the validity of the subject patent in other forums and proceedings on any and all bases recognized by law and equity, including, but not limited to, the basis that storage means or means for storing in claims 17, 20, 21, and 24 are indefinite and in focus, live video, and relates to live video in claims 17 and 21 are indefinite. 5

10 Id. at 2:67-3:3. Further, the 879 Patent does not disclose the structure for three distinct storage means but rather discloses a single memory, memory 44, as depicted in the portion of Fig. 1 to the right. Memory 44 stores the programming instructions relating to the operations of the embodiments disclosed in the 879 Patent, and can be implemented as cache memory, hard drive, floppy disk, CD ROM, or any other means for storing digital information. Id. at 2:56-60; see also Schonfeld Decl., at 73. There is no disclosure suggesting that it can be implemented as more than one memory devices. Therefore, the disclosed corresponding structure for all three claimed storage means is the same cache memory, hard drive, floppy disk, CD ROM, or other means for storing digital information memory 44 and its equivalents. See Schonfeld Decl., at 74. Accordingly, the broadest reasonable construction of the first, second, and third storage means in light of the specification is the same memory device. Thus, a single memory device can be relied upon to satisfy the first, second, and third means for storage. See Schonfeld Decl., at 74. There is no disclosure of the structure of memory 44. See generally Ex. 1001; see also Schonfeld Decl., at 75. As discussed below, however, at the time of the invention, it was common to partition memory into distinct areas. See Schonfeld 6

11 Decl., at 75, While not the broadest reasonable construction, to the extent Patent Owner argues that the first, second, and third means for storage correspond to separate areas of a partitioned storage device, as discussed below, this would have been obvious in view of the prior art and the knowledge of one of skill in the art at the time. See Schonfeld Decl., at 75, There is also no discloses of more than one memory 44. See generally Ex. 1001; see also Schonfeld Decl., at 76. As discussed below, however, at the time of the invention, it was common to include more than one memory device in video display systems. See Schonfeld Decl., at 76, While not the broadest reasonable construction, to the extent Patent Owner argues that the first, second, and third means for storage correspond to three storage devices, as discussed below, this would have been obvious in view of the prior art and the knowledge of one of skill in the art at the time. See Schonfeld Decl., at VI. SUMMARY OF PRIOR ART TO THE 879 PATENT FORMING THE BASIS FOR THIS PETITION A. U.S. Patent No. 6,141,003 ( Chor ) (Ex. 1005) Chor discloses a graphical user interface for assisting a viewer in navigating among various channels. Ex. 1005, 1:66-2:1. Chor qualifies as prior art under 35 U.S.C. 102(e), because Chor was filed on March 18, 1997, before the July 14, 1997 priority date to which the 879 Patent may be entitled. Chor was not cited or considered during the prosecution of the application that led to the 879 Patent. 7

12 B. U.S. Patent No. 5,528,304 ( Cherrick ) (Ex. 1006) Cherrick discloses an enhancement for on-screen menus that are improved with the addition of a picture-in-picture display. Ex. 1006, 1:7-11. Cherrick qualifies as prior art under 35 U.S.C. 102(b) because Cherrick issued as a patent on June 18, 1996, one year before the July 14, 1997 priority date to which the 879 Patent may be entitled. Cherrick was not cited or considered during prosecution of the application that led to the 879 Patent. C. U.S. Patent No. 5,751,373 ( Ohyama ) (Ex. 1007) Ohyama discloses a method and apparatus for displaying a plurality of hierarchies of a menu such that the user can easily make a selection. Ex. 1007, 2: Ohyama qualifies as prior art under 35 U.S.C. 102(e), because Ohyama was filed on March 28, 1996, before the July 14, 1997 priority date to which the 879 Patent may be entitled. Ohyama was not cited or considered during the prosecution of the application that led to the 879 Patent. VII. GROUNDS FOR UNPATENTABILITY OF EACH CLAIM In light of the disclosures detailed below, the 879 Patent is unpatentable for at least the reasons summarized in the chart below and discussed in more detail herein. Ground # Ground Prior art Exhibit(s) # Claims 1 102(e) Chor , 20, 21, (a) Chor , 20, 21, (b) Cherrick , 20, 21, (a) Cherrick , 20, 21, (e) Ohyama , 20, 21, 24 8

13 6 103(a) Ohyama , 20, 21, 24 A. Ground 1: Claims 7, 20, 21, And 24 Are Unpatentable Under 35 U.S.C. 102(e) As Being Anticipated By Chor Chor concerns a graphical user interface for an entertainment system which assists a viewer while navigating channels. Ex. 1005, at 1:66-2:1. Chor accomplishes this through a channel bar user interface, which is controlled by a processor, memory, and multitasking operating system and which is presented as a banner on the computerized viewing unit. Id. at 2:9-13, 2: Chor describes each and every element of claims 17, 20, 21, and 24 of the 879 Patent and therefore, invalidates those claims under 35 U.S.C Regarding claims 17 and 21, Chor discloses a digital storage device that stores programming instructions. Ex. 1005, at 2:9-17. Chor discloses program memory 84 (e.g., ROM, Flash, disk drive, floppy disk drive, CD-ROM, etc.) (id. at 4:17-23), which is similar to the storage device disclosed in the 879 Patent and would similarly have multiple storage means. See Ex. 1001, at 2:24-25; see also Schonfeld Decl., at 88. Processor 80 processes these instructions to provide, for example, a video control icon on the display. Ex. 1005, at 4: Fig. 5 depicts video control icon as numeral 74 Tools. See Schonfeld Decl., at 80, 94. Once selected, a control panel appears while the current program remains in the background and the banner applications and recent channels applications remain overlaid on the background display. See Schonfeld Decl., at 80, This is shown in annotated Fig. 6 below. The 9

14 control panel allows the viewer to change attributes such as signing on to the entertainment system or turning the TV off. See, e.g., Ex. 1005, at 9:46-64; see also Schonfeld Decl., at Regarding claims 20 and 24, Chor discloses removing the control panel or expanded Tools 74 when another displayed element is selected. See Schonfeld Decl., at For example, compare Fig. 6 to the right showing the control panel displayed with Fig. 5 showing the favorite channels icon selected. When the favorite channels icon is selected in Fig. 5, it expands to cover the area occupied by the control panel and the control panel is collapsed. Ex. 1005, at 9:41-46; see also Schonfeld Decl., at In light of the above, the table below demonstrates how each limitation of claims 17, 20, 21, and 24 of the 879 Patent is disclosed by Chor. For all these reasons, claims 17, 20, 21, and 24 are unpatentable in view of Chor 10

15 and thus, Petitioner has a reasonable likelihood of prevailing with respect to at least one claim. 879 Claim Element Chor (Ex. 1005) 17. A digital storage According to one implementation, the entertainment device that stores system is a computerized viewing unit which has a programming instructions processor, memory, and a multitasking operating system. that, when read by a processing unit, causes the processing unit to The operating system provides a graphical user interface environment which supports presentation of graphical windows. An application executes on the processor to provide control of provide the channel bar user interface (UI). When used in background video, the conjunction with television programming, the application digital storage device sizes the channel bar UI to ensure that it resides in the comprises: video safe zone. Ex. 1005, at 2:9-17 (emphasis added). FIG. 2 shows a viewer computing unit 50 constructed according to one implementation of this invention. The viewer computing unit 50 is embodied as a broadcastenabled personal computer (PC) having tuner equipment installed therein to receive the video data, such as conventional television broadcast signals. The viewer computing unit 50 includes a display 52, a central processing unit (CPU) 54 (which is shown separately, but may be incorporated into the display casing), and various input devices such as a remote control handset 56, a remote keyboard 58, and a remote mouse 60. Id. at 3:35-44 (emphasis added). The broadcast-enabled PC is only one example implementation, and many are possible. One alternative implementation is a computer-enhanced television set having a processor, memory, and an operating system.... Id. at 3:49-56 (emphasis added). FIG. 3 shows an entertainment system in the form of a viewer computing unit 50 embodied as a broadcastenabled computer. The central processing unit 54 has a processor 80 (e.g., x86 or Pentium microprocessor from Intel Corporation), volatile memory 82 (e.g., RAM), 11

16 879 Claim Element Chor (Ex. 1005) and program memory 84 (e.g., ROM, Flash, disk drive, floppy disk drive, CD-ROM, etc.). Id. at 4:17-23 (emphasis added). The viewer computing unit 50 runs an operating system 94 which supports multiple applications. The operating system 94 is stored in program memory 84 and is loaded into volatile memory 82 for execution on processor 80 when the entertainment system is booted. The operating system 94 is preferably a multitasking operating system which allows simultaneous execution of multiple applications. Id. at 4:43-49 (emphasis added). The viewer computing unit 50 has a television explorer application 96 stored in memory 84 and executable on the processor The channel bar UI is preferably implemented as a DLL (dynamic linked library) 98, which is stored in memory 84 and is callable by the TV explorer application 96. Alternatively, in systems designed more exclusively for television viewing (e.g., a Web television, TV with set top box, etc.), the channel bar UI might be implemented as part of the operating system tailored for that machine.... Id. at 5:5-28 (emphasis added). The banner 68 is positioned at the top, left hand corner of the video frame, partially overlaying a current program 102. Id. at 5:39-40 (emphasis added). FIG. 5 shows a screen 120 when the viewer specifically invokes the full channel bar UI. The viewer requests the fill channel bar UI 64 by depressing a menu key on the remote control handset, or by moving a mouse pointer to the top of the screen, or by some other designated command. The full channel bar UI 64 resides along the top of the video frame, and may partially overlie the video program 102. Id. at 6:8-14 (emphasis added). During normal viewing, the television signals are 12

17 879 Claim Element Chor (Ex. 1005) displayed within a full screen frame. The channel bar, when visible, is overlaid along the top periphery of the frame. Id. at 9:67-10:3 (emphasis added). [17.a] first storage means for storing programming instructions that, when read by the processing unit, causes the processing unit to provide a video control icon that is visible on the display, wherein the video control icon relates to live video that is being presented as a background on a display; See Schonfeld Decl. at According to one implementation, the entertainment system is a computerized viewing unit which has a processor, memory, and a multitasking operating system. The operating system provides a graphical user interface environment which supports presentation of graphical windows. An application executes on the processor to provide the channel bar user interface (UI). When used in conjunction with television programming, the application sizes the channel bar UI to ensure that it resides in the video safe zone. Ex. 1005, at 2:9-17 (emphasis added). FIG. 3 shows an entertainment system in the form of a viewer computing unit 50 embodied as a broadcastenabled computer. The central processing unit 54 has a processor 80 (e.g., x86 or Pentium microprocessor from Intel Corporation), volatile memory 82 (e.g., RAM), and program memory 84 (e.g., ROM, Flash, disk drive, floppy disk drive, CD-ROM, etc.). Id. at 4:

18 879 Claim Element Chor (Ex. 1005) (emphasis added). The viewer computing unit 50 has a television explorer application 96 stored in memory 84 and executable on the processor 80. The TV explorer application 96 controls how the program is displayed on the display 52. For this implementation, the TV explorer application enables television-like viewing on a computer. During normal viewing, the TV explorer application 96 executes in background, with its user interface hidden from the viewer, and the television show or other video program is shown in full screen. When the viewer enters a command with an input device (e.g., channel up, channel down, entry of new channel number, etc.), the TV explorer application presents the channel bar graphical user interface on the display along with the video program. The channel bar UI is preferably implemented as a DLL (dynamic linked library) 98, which is stored in memory 84 and is callable by the TV explorer application 96. Alternatively, in systems designed more exclusively for television viewing (e.g., a Web television, TV with set top box, etc.), the channel bar UI might be implemented as part of the operating system tailored for that machine.... Id. at 5:5-28 (emphasis added). The banner 68 is positioned at the top, left hand corner of the video frame, partially overlaying a current program 102. Id. at 5:39-40 (emphasis added). FIG. 5 shows a screen 120 when the viewer specifically invokes the full channel bar UI. The viewer requests the fill channel bar UI 64 by depressing a menu key on the remote control handset, or by moving a mouse pointer to the top of the screen, or by some other designated command. The full channel bar UI 64 resides along the top of the video frame, and may partially overlie the video program 102. Id. at 6:8-14 (emphasis added). During normal viewing, the television signals are 14

19 879 Claim Element Chor (Ex. 1005) displayed within a full screen frame. The channel bar, when visible, is overlaid along the top periphery of the frame. Id. at 9:67-10:3 (emphasis added). As shown in FIG. 2, the TV explorer application provides a graphical user interface (IU) configured as channel bar 64 arranged along the top periphery of the video frame. The channel bar 64 is typically hidden from view while the viewer is watching the program 62. The channel bar appears when the viewer activates buttons on one of the input devices The channel bar 64 has multiple channel icons 66 which are associated the channels used to receive the programs. The icons are linearly arranged in a horizontal region or bar. Different horizontal bars identify different groupings of icons which relate to different features. In the illustrated implementation, the channel bar 64 comprises a banner 68 and three control bars a recent channels bar 70, a favorite channels bar 72, and a tools bar 74. The channel bar user interface is described below and in more detail with references to FIGS Id. at 4:1-16 (emphasis added). With reference again to FIG. 5, the tools bar 74 is shown in a collapsed state to conserve precious screen space in the channel bar region. When the viewer activates this small region, the tools bar 74 expands across the favorite channels bar 72 to reveal the icons in the tools bar. Id. at 9:42-46 (emphasis added). FIG. 6 shows a screen 140 with the tools bar 74 expanded to a full bar state. The tools bar 74 contains actuatable icons which control operation of the viewer computing unit 50. In this example, the tools bar 74 lists a Find Show icon 142, a Sign On icon 144, a Windows icon 146, and a TV off icon 148. The Find Show icon 142 launches a find dialog box which permits a viewer to enter letters or numbers in search of a channel, a program, a network, a particular subject 15

20 879 Claim Element Chor (Ex. 1005) matter, or the like. The Sign On icon 144 enables viewers to initially log onto the entertainment system. This icon is activated when a viewer first turns on the system and involves a password or key challenge to restrict viewing to authorized viewers. Additionally, requiring viewer identification through log on procedures enables different viewer permission levels, such as restricting junior family members from viewing certain channels. The TV off icon 148 initiates a shut down sequence to terminate operation of the computer viewing unit. Id. at 9:46-64 (emphasis added). [17.b] second storage means for storing programming instructions that, when read by the processing unit, causes the programming unit to detect selection of the video control icon; See Schonfeld Decl. at A viewer-controllable focus is movable along the channel bar to permit the viewer to select and actuate any one of the icons, causing the entertainment system to jump to the channel associated with the selected icon. Ex. 1005, at 2:4-8. FIG. 3 shows an entertainment system in the form of a viewer computing unit 50 embodied as a broadcastenabled computer. The central processing unit 54 has a processor 80 (e.g., x86 or Pentium microprocessor from Intel Corporation), volatile memory 82 (e.g., RAM), and program memory 84 (e.g., ROM, Flash, disk drive, floppy disk drive, CD-ROM, etc.). Id. at 4:

21 879 Claim Element Chor (Ex. 1005) (emphasis added). A focus 130 is movable along the channel bar 64 (and in this illustration, the recent channels bar 70) to highlight different icons. The focus 130 is shown as a frame that borders the selected icon. The focus may be implemented in a number of ways, such as changing the icon color when selected, displaying an animated rectangle around the icon, or visually elevating a selected icon to appear more in the foreground, enlarging a selected icon, and the like. Additionally, the focus might be implemented as a pointer, such as those commonly used in personal computers. Still another possible implementation of the focus 130 is that of a tip pointer, in which a pointer identifies an icon and a text box is currently displayed adjacent to the pointer to offer a description of the icon being referenced by the pointer. Such a text box may contain dynamically changing information about the icon; for example, if a favorite channel icon is selected, the text box may display the name of the program currently showing on that channel. Id. at 8:39-56 (emphasis added). The viewer moves the focus 130 along the channel bar 64 using one of the input devices (e.g., actuating the directional pad or keys on a remote control handset, depressing the arrow keys on a keyboard, or manipulating the mouse). The focus can be configured to slide icon-byicon, or to permit free selection of any icon without regard to positional order, such as by using a mouse pointer or the like. Once the focus is positioned on a selected icon, the icon is activated by clicking a mouse key, or hitting the enter key on the keyboard, or depressing an action key on the remote control handset, or the like. Id. at 8:57-67 (emphasis added). FIG. 6 shows a screen 140 with the tools bar 74 expanded to a full bar state. The tools bar 74 contains actuatable icons which control operation of the viewer computing unit 50. In this example, the tools bar 17

22 879 Claim Element Chor (Ex. 1005) 74 lists a Find Show icon 142, a Sign On icon 144, a Windows icon 146, and a TV off icon 148. The Find Show icon 142 launches a find dialog box which permits a viewer to enter letters or numbers in search of a channel, a program, a network, a particular subject matter, or the like. The Sign On icon 144 enables viewers to initially log onto the entertainment system. This icon is activated when a viewer first turns on the system and involves a password or key challenge to restrict viewing to authorized viewers. Additionally, requiring viewer identification through log on procedures enables different viewer permission levels, such as restricting junior family members from viewing certain channels. The TV off icon 148 initiates a shut down sequence to terminate operation of the computer viewing unit. Id. at 9:46-64 (emphasis added). [17.c] and third storage means for storing programming instructions that, when read by the processing unit, causes the processing unit to provide a control panel while the live video remains in the background and an application that was in focus remains in focus when the video control icon has been selected. See Schonfeld Decl. at According to one implementation, the entertainment system is a computerized viewing unit which has a processor, memory, and a multitasking operating system. The operating system provides a graphical user interface environment which supports presentation of graphical windows. An application executes on the processor to provide the channel bar user interface (UI). When used in conjunction with television programming, the application sizes the channel bar UI to ensure that it resides in the video safe zone. Ex. 1005, at 2:9-17 (emphasis added). FIG. 3 shows an entertainment system in the form of a viewer computing unit 50 embodied as a broadcastenabled computer. The central processing unit 54 has a processor 80 (e.g., x86 or Pentium microprocessor from Intel Corporation), volatile memory 82 (e.g., RAM), and program memory 84 (e.g., ROM, Flash, disk drive, floppy disk drive, CD-ROM, etc.). Id. at 4:17-23 (emphasis added). The viewer computing unit 50 has a television explorer 18

23 879 Claim Element Chor (Ex. 1005) application 96 stored in memory 84 and executable on the processor 80. The TV explorer application 96 controls how the program is displayed on the display 52. For this implementation, the TV explorer application enables television-like viewing on a computer. During normal viewing, the TV explorer application 96 executes in background, with its user interface hidden from the viewer, and the television show or other video program is shown in full screen. When the viewer enters a command with an input device (e.g., channel up, channel down, entry of new channel number, etc.), the TV explorer application presents the channel bar graphical user interface on the display along with the video program. The channel bar UI is preferably implemented as a DLL (dynamic linked library) 98, which is stored in memory 84 and is callable by the TV explorer application 96. Alternatively, in systems designed more exclusively for television viewing (e.g., a Web television, TV with set top box, etc.), the channel bar UI might be implemented as part of the operating system tailored for that machine. The viewer computing unit 50 also has a Web browser 99 stored in memory 84 and executable on the processor 80 to render hypermedia documents received from target resources on the Internet. Id. at 5:5-28 (emphasis added). As sown [sic] in FIG. 2, the TV explorer application provides a graphical user interface (IU) configured as channel bar 64 arranged along the top periphery of the video frame. The channel bar 64 is typically hidden from view while the viewer is watching the program 62. The channel bar appears when the viewer activates buttons on one of the input devices The channel bar 64 has multiple channel icons 66 which are associated the channels used to receive the programs. The icons are linearly arranged in a horizontal region or bar. Different horizontal bars identify different groupings of icons which relate to different features. In the illustrated implementation, the channel bar 64 comprises a banner 68 and three control bars a recent channels bar 70, a 19

24 879 Claim Element Chor (Ex. 1005) favorite channels bar 72, and a tools bar 74. The channel bar user interface is described below and in more detail with references to FIGS Id. at 4:1-16 (emphasis added). With reference again to FIG. 5, the tools bar 74 is shown in a collapsed state to conserve precious screen space in the channel bar region. When the viewer activates this small region, the tools bar 74 expands across the favorite channels bar 72 to reveal the icons in the tools bar. Id. at 9:41-46 (emphasis added); see also Fig. 5 above. FIG. 6 shows a screen 140 with the tools bar 74 expanded to a full bar state. The tools bar 74 contains actuatable icons which control operation of the viewer computing unit 50. In this example, the tools bar 74 lists a Find Show icon 142, a Sign On icon 144, a Windows icon 146, and a TV off icon 148. The Find Show icon 142 launches a find dialog box which permits a viewer to enter letters or numbers in search of a channel, a program, a network, a particular subject matter, or the like. The Sign On icon 144 enables viewers to initially log onto the entertainment system. This icon is activated when a viewer first turns on the system and involves a password or key challenge to restrict viewing to authorized viewers. Additionally, requiring viewer identification through log on procedures enables different viewer permission levels, such as restricting junior family members from viewing certain channels. The TV off icon 148 initiates a shut down sequence to terminate operation of the computer viewing unit. Id. at 9:

25 879 Claim Element Chor (Ex. 1005) 20. The digital storage device of claim 17 further comprises means for storing programming instructions that, when read by the processing unit, causes the processing unit to remove the control panel when another displayed element is selected. See Schonfeld Decl. at See citations to claim 17 above. FIG. 3 shows an entertainment system in the form of a viewer computing unit 50 embodied as a broadcastenabled computer. The central processing unit 54 has a processor 80 (e.g., x86 or Pentium microprocessor from Intel Corporation), volatile memory 82 (e.g., RAM), and program memory 84 (e.g., ROM, Flash, disk drive, floppy disk drive, CD-ROM, etc.). Id. at 4: The viewer computing unit 50 has a television explorer application 96 stored in memory 84 and executable on the processor 80. The TV explorer application 96 controls how the program is displayed on the display 52. For this implementation, the TV explorer application enables television-like viewing on a computer. During normal viewing, the TV explorer application 96 executes in background, with its user interface hidden from the viewer, and the television show or other video program is shown in full screen. When the viewer enters a command with an input device (e.g., channel up, channel down, entry of new channel number, etc.), the TV explorer application presents the channel bar graphical user interface on the display along with the video program. The channel bar UI is preferably implemented as a DLL (dynamic linked library) 98, which is stored in memory 84 21

26 879 Claim Element Chor (Ex. 1005) and is callable by the TV explorer application 96. Alternatively, in systems designed more exclusively for television viewing (e.g., a Web television, TV with set top box, etc.), the channel bar UI might be implemented as part of the operating system tailored for that machine.... Id. at 5:5-28 (emphasis added). With reference again to FIG. 5, the tools bar 74 is shown in a collapsed state to conserve precious screen space in the channel bar region. When the viewer activates this small region, the tools bar 74 expands across the favorite channels bar 72 to reveal the icons in the tools bar. Id. at 9:41-46 (emphasis added); see also Fig. 5 above. FIG. 6 shows a screen 140 with the tools bar 74 expanded to a full bar state. The tools bar 74 contains actuatable icons which control operation of the viewer computing unit 50. In this example, the tools bar 74 lists a Find Show icon 142, a Sign On icon 144, a Windows icon 146, and a TV off icon 148. The Find Show icon 142 launches a find dialog box which permits a viewer to enter letters or numbers in search of a channel, a program, a network, a particular subject matter, or the like. The Sign On icon 144 enables viewers to initially log onto the entertainment system. This icon is activated when a viewer first turns on the system and involves a password or key challenge to restrict viewing to authorized viewers. Additionally, requiring viewer identification through log on procedures enables different viewer permission levels, such as restricting junior family members from viewing certain channels. The TV off icon 148 initiates a shut down sequence to terminate operation of the computer viewing unit. Id. at 9:46-64 (emphasis added). 21. A digital storage device that stores See Schonfeld Decl. at See citations to claim element 17.preamble above. 22

27 879 Claim Element Chor (Ex. 1005) programming instructions that, when read by a See Schonfeld Decl. at 121. processing unit, causes the processing unit to provide control of background video, the digital storage device comprises: [21.a] first storage means for storing programming instructions that, when read by the processing unit, causes the processing unit to detect selection of a video control icon, wherein the video control icon relates to live video that is being presented as a background on a display; A viewer-controllable focus is movable along the channel bar to permit the viewer to select and actuate any one of the icons, causing the entertainment system to jump to the channel associated with the selected icon. Ex. 1005, at 2:4-8 (emphasis added). FIG. 3 shows an entertainment system in the form of a viewer computing unit 50 embodied as a broadcastenabled computer. The central processing unit 54 has a processor 80 (e.g., x86 or Pentium microprocessor from Intel Corporation), volatile memory 82 (e.g., RAM), and program memory 84 (e.g., ROM, Flash, disk drive, floppy disk drive, CD-ROM, etc.). Id. at 4:17-23 (emphasis added). A focus 130 is movable along the channel bar 64 (and in this illustration, the recent channels bar 70) to highlight different icons. The focus 130 is shown as a frame that borders the selected icon. The focus may be implemented in a number of ways, such as changing the icon color when selected, displaying an animated rectangle around the icon, or visually elevating a selected icon to appear more in the foreground, enlarging a selected icon, and the like. Additionally, the focus might be implemented as a pointer, such as those commonly used in personal computers. Still another possible implementation of the focus 130 is that of a tip pointer, in which a pointer identifies an icon and a text box is currently displayed adjacent to the pointer to offer a description of the icon being referenced by the pointer. Such a text box may contain dynamically changing information about the icon; 23

28 879 Claim Element Chor (Ex. 1005) for example, if a favorite channel icon is selected, the text box may display the name of the program currently showing on that channel. Id. at 8:39-56 (emphasis added). The viewer moves the focus 130 along the channel bar 64 using one of the input devices (e.g., actuating the directional pad or keys on a remote control handset, depressing the arrow keys on a keyboard, or manipulating the mouse). The focus can be configured to slide icon-byicon, or to permit free selection of any icon without regard to positional order, such as by using a mouse pointer or the like. Once the focus is positioned on a selected icon, the icon is activated by clicking a mouse key, or hitting the enter key on the keyboard, or depressing an action key on the remote control handset, or the like. Id. at 8:57-67 (emphasis added). FIG. 6 shows a screen 140 with the tools bar 74 expanded to a full bar state. The tools bar 74 contains actuatable icons which control operation of the viewer computing unit 50. In this example, the tools bar 74 lists a Find Show icon 142, a Sign On icon 144, a Windows icon 146, and a TV off icon 148. The Find Show icon 142 launches a find dialog box which permits a viewer to enter letters or numbers in search of a channel, a program, a network, a particular subject matter, or the like. The Sign On icon 144 enables viewers to initially log onto the entertainment system. This icon is activated when a viewer first turns on the system and involves a password or key challenge to restrict viewing to authorized viewers. Additionally, requiring viewer identification through log on procedures enables different viewer permission levels, such as restricting junior family members from viewing certain channels. The TV off icon 148 initiates a shut down sequence to terminate operation of the computer viewing unit. Id. at 9:

29 879 Claim Element Chor (Ex. 1005) See Schonfeld Decl. at [21.b] second storage means for storing See citations to claim element 17.c above. programming instructions See Schonfeld Decl. at that, when read by the processing unit, causes the processing unit to provide a control panel while the live video remains in the background and an application that was in focus remains in focus when the video control icon has been selected; [21.c] and second storage The tools bar contains actuatable icons that are means for storing associated with control features for operating the programming instructions entertainment system. For example, the tools bar might that, when read by the contain an icon for facilitating viewer log on, an icon for processing unit, causes the processing unit to turning off the entertainment system, and an icon for launching a find dialog box to help the viewer find a adjust at least one particular program or channel. The tools bar also has an attribute of the live video icon which permits a viewer to toggle between a based on an input television mode, in which programs are displayed full received via the control screen, and a windows mode in which the program and panel. channel bar are confined to a window. Ex. 1005, at 2:53-62 (emphasis added). FIG. 3 shows an entertainment system in the form of a viewer computing unit 50 embodied as a broadcastenabled computer. The central processing unit 54 has a processor 80 (e.g., x86 or Pentium microprocessor from Intel Corporation), volatile memory 82 (e.g., RAM), and program memory 84 (e.g., ROM, Flash, disk drive, floppy disk drive, CD-ROM, etc.). Id. at 4:17-23 (emphasis added). The viewer computing unit 50 has a television explorer application 96 stored in memory 84 and executable on the processor When the viewer enters a 25

30 879 Claim Element Chor (Ex. 1005) command with an input device (e.g., channel up, channel down, entry of new channel number, etc.), the TV explorer application presents the channel bar graphical user interface on the display along with the video program. The channel bar UI is preferably implemented as a DLL (dynamic linked library) 98, which is stored in memory 84 and is callable by the TV explorer application 96. Alternatively, in systems designed more exclusively for television viewing (e.g., a Web television, TV with set top box, etc.), the channel bar UI might be implemented as part of the operating system tailored for that machine. The viewer computing unit 50 also has a Web browser 99 stored in memory 84 and executable on the processor 80 to render hypermedia documents received from target resources on the Internet. Id. at 5:5-28 (emphasis added). FIG. 6 shows a screen 140 with the tools bar 74 expanded to a full bar state. The tools bar 74 contains actuatable icons which control operation of the viewer computing unit 50. In this example, the tools bar 74 lists a Find Show icon 142, a Sign On icon 144, a Windows icon 146, and a TV off icon 148. The Find Show icon 142 launches a find dialog box which permits a viewer to enter letters or numbers in search of a channel, a program, a network, a particular subject matter, or the like. The Sign On icon 144 enables viewers to initially log onto the entertainment system. This icon is activated when a viewer first turns on the system and involves a password or key challenge to restrict viewing to authorized viewers. Additionally, requiring viewer identification through log on procedures enables different viewer permission levels, such as restricting junior family members from viewing certain channels. The TV off icon 148 initiates a shut down sequence to terminate operation of the computer viewing unit. Id. at 9:47-64 (emphasis added); see also Fig. 6 above. 26

31 879 Claim Element Chor (Ex. 1005) See Schonfeld Decl. at The digital storage device of claim 21 further comprises means for storing programming instructions that, when read by the processing unit, causes the processing unit to remove the control panel when another displayed element is selected. See citations to claim 21 above. See citations to claim 20 above. See Schonfeld Decl. at B. Ground 2: Claims 17, 20, 21, and 24 Are Unpatentable Under 35 U.S.C. 103(a) As Being Obvious Over Chor Chor discloses each and every limitation of claims 17, 20, 21, and 24 of the 879 Patent as demonstrated above in Ground 1, herein incorporated by reference. To the extent it is found that the construction of first, second, and third storage means requires partitioned storage areas in a single memory device, this limitation would have been obvious in view of Chor. See Schonfeld Decl., at 89. Specifically, it would have been obvious to one of skill in the art to have multiple storage areas in a single memory device. Id. Storage devices with multiple memory areas were wellknown in the art. Id. at 89, Further, it would have been obvious to one of skill in the art to have multiple memory devices. Id. at 90. Accordingly, claims 17, 20, 21, and 24 of the 879 Patent are obvious in view of Chor. 27

32 C. Ground 3: Claims 17, 20, 21, And 24 Are Unpatentable Under 35 U.S.C. 102(b) As Being Anticipated By Cherrick Cherrick discloses an enhancement to channel menus and source related functions through the use of picture-in-picture displays. Ex. 1006, at 2: Cherrick discloses a television receiver, a main display, a picture-in-picture display, and an on-screen menu display for adjusting various display parameters. Id. at Abstract. Cherrick uses picture-in-picture to enhance the use of on-screen menus. Id. Cherrick describes each and every element of claims 17, 20, 21, and 24 of the 879 Patent and therefore invalidates those claims under 35 U.S.C Regarding claims 17 and 21, Cherrick discloses a digital storage device, memory 13, which stores programming instructions, which are read by the processing unit microprocessor 12. See Ex. 1006, at Fig. 1, 3:4-9. Cherrick discloses a storage device with storing means similar to that discloses in the 879 Patent. Compare Ex. 1006, at 3:4-9 with Ex. 1001, at 2:56-58; see also Schonfeld Decl., at 152. Cherrick discloses providing video control icons relating to live video displayed in the background as shown in annotated Fig. 3. Ex. 1006, at Fig. 3, 3:47-55; see also Schonfeld Decl., at 143, 186. As can be seen below, the set-up icon 38 is indicated by a 28

33 double border as having been highlighted or selected. Ex. 1006, at 3: Icon 38 and the other applications (icons 34) remain overlaying the background video when the control panel 46 is displayed and video control icon 38 is selected. See Schonfeld Decl., at 143, Cherrick discloses changing attributes of live video such as the audio. Ex. 1006, at 4:40-46; see also Schonfeld Decl., at Regarding claims 20 and 24, when another display element is selected, here the channel indictor 48, the control panel is removed. Ex. 1006, at 3:61-4:31; see also Schonfeld Decl., at This can be seen in annotated Figs. 3 and 4 below. In light of the above, the table below demonstrates how each limitation of claims 17, 20, 21, and 24 of the 879 Patent is disclosed by Cherrick. For all these reasons, claims 17, 20, 21, and 24 are unpatentable in view of Cherrick and thus, Petitioner has a reasonable likelihood of prevailing with respect to at least one claim. 879 Claim Element Cherrick (Ex. 1006) 17. A digital storage Within the television receiver 10, there is a device that stores microprocessor 12, sometimes termed a systems programming instructions controller or micro-controller as these terms define its that, when read by a essential function. Within, or connected to, the processing unit, causes microprocessor 12 is a memory module 13, infrared (IR) 29

34 879 Claim Element Cherrick (Ex. 1006) the processing unit to decoder 18, and an on-screen display (OSD) generator provide control of 50. Ex. 1006, at 3:4-9 (emphasis added). background video, the digital storage device comprises: A video processor 31 in the television receiver 10 receives and processes the television signal and sends it to video output circuitry 19 which in turn drives a CRT 51. The video processor 31 may contain the P-I-P circuitry 20 and is under the control of the microprocessor 12 which in turn controls circuits such as the on-screen display generator 50 contained therein and the input switching circuit 64 which helps to affect the present invention as further explained below. Id. at 3:23-30 (emphasis added). Referring also to FIG. 3, access to the menus for selecting the signal source, setting up the receiver 10, and adjusting other television parameters is gained by depressing the menu key 22 on the RCU 16. The normal television picture, or main screen display, 29 is then overlaid with a banner of adjustment icons 34 across the top of the screen. The icons 34 are identified from left to right as follows: source icon 36, set-up icon 38, audio icon 40, video icon 42, and P-I-P icon 44. Id. at 3:47-55 (emphasis added). The icons 34, and the overlays 46 and 48, are generated by the on-screen display, or character, generator 50 upon 30

35 879 Claim Element Cherrick (Ex. 1006) command from the microprocessor 12, which in turn has responded to the menu command from the RCU 16. The overlays are in color as indicated schematically by the RGB control line 52. Id. at 4:5-10 (emphasis added). See also FIGS [17.a] first storage means for storing programming instructions that, when read by the processing unit, causes the processing unit to provide a video control icon that is visible on the display, wherein the video control icon relates to live video that is being presented as a background on a display; See Schonfeld Decl. at FIG. 3 is a television picture depicting five icons, each of which represents a category for television parameter adjustments, and an adjacent list of set-up menus for television receiver operation. Ex. 1006, at 2:41-44 (emphasis added). Referring also to FIG. 3, access to the menus for selecting the signal source, setting up the receiver 10, and adjusting other television parameters is gained by depressing the menu key 22 on the RCU 16. The normal television picture, or main screen display, 29 is then overlaid with a banner of adjustment icons 34 across the top of the screen. The icons 34 are identified from left to right as follows: source icon 36, set-up icon 38, audio icon 40, video icon 42, and P-I-P icon 44. Id. at 3:47-55 (emphasis added). The sequence of television operation illustrative of the present invention is as follows: the menu key 22 is pressed and the icons 34 appear, superimposed on the television picture 29. Id. at 3:61-64 (emphasis added). 31

36 879 Claim Element Cherrick (Ex. 1006) The icons 34, and the overlays 46 and 48, are generated by the on-screen display, or character, generator 50 upon command from the microprocessor 12, which in turn has responded to the menu command from the RCU 16. The overlays are in color as indicated schematically by the RGB control line 52. Id. at 4:5-10 (emphasis added). [17.b] second storage means for storing programming instructions that, when read by the processing unit, causes the programming unit to detect selection of the video control icon; [17.c] and third storage means for storing programming instructions that, when read by the processing unit, causes the processing unit to provide a control panel while the live video remains in the background and an application that was in focus remains in focus See Schonfeld Decl. at An icon 34 is selected by sequentially depressing the menu key 22 which, operating in a "wrap-around" mode, successively scans or highlights the icons 34 indicating selection. A pull down list of menus 46 appears when the icon is selected. In FIG. 3 the set-up icon 38 is indicated by a double border as having been highlighted or selected. Ex. 1006, at 3:55-60 (emphasis added). Upon selection of the icon, the list of menus 46 appears, also overlaying the normal television picture 29. The menu list 46 provides for selection of the set-up procedures listed, that is, AUTO PROGRAM et al. The identity of the channel to which the television receiver is presently tuned, e.g.,channel two, is indicated by the channel indicator overlay 48. Id. at 3:65-4:4 (emphasis added). See Schonfeld Decl. at FIG. 3 is a television picture depicting five icons, each of which represents a category for television parameter adjustments, and an adjacent list of set-up menus for television receiver operation. Ex. 1006, at 2:41-44 (emphasis added). Referring also to FIG. 3, access to the menus for selecting the signal source, setting up the receiver 10, and adjusting other television parameters is gained by depressing the menu key 22 on the RCU 16. The normal television picture, or main screen display, 29 is then overlaid with a banner of adjustment icons 34 across the 32

37 879 Claim Element Cherrick (Ex. 1006) when the video control top of the screen. The icons 34 are identified from left to icon has been selected. right as follows: source icon 36, set-up icon 38, audio icon 40, video icon 42, and P-I-P icon 44. Id. at 3:47-55 (emphasis added). The sequence of television operation illustrative of the present invention is as follows: the menu key 22 is pressed and the icons 34 appear, superimposed on the television picture 29. The set-up icon 38 is selected by scanning the icons 34 with the menu key 22. Upon selection of the icon, the list of menus 46 appears, also overlaying the normal television picture 29. The menu list 46 provides for selection of the set-up procedures listed, that is, AUTO PROGRAM et al. The identity of the channel to which the television receiver is presently tuned, e.g., channel two, is indicated by the channel indicator overlay 48. The icons 34, and the overlays 46 and 48, are generated by the on-screen display, or character, generator 50 upon command from the microprocessor 12, which in turn has responded to the menu command from the RCU 16. The overlays are in color as indicated schematically by the RGB control line 52. Id. at 3:61-4:10 (emphasis added). 20. The digital storage device of claim 17 further comprises See Schonfeld Decl. at See citations to claim 17 above. means for storing A video processor 31 in the television receiver 10 33

38 879 Claim Element Cherrick (Ex. 1006) programming instructions receives and processes the television signal and sends it to that, when read by the video output circuitry 19 which in turn drives a CRT 51. processing unit, causes The video processor 31 may contain the P-I-P circuitry the processing unit to 20 and is under the control of the microprocessor 12 remove the control panel which in turn controls circuits such as the on-screen when another displayed display generator 50 contained therein and the input element is selected. switching circuit 64 which helps to affect the present invention as further explained below. Ex. 1006, at 3:23-30 (emphasis added). The sequence of television operation illustrative of the present invention is as follows: the menu key 22 is pressed and the icons 34 appear, superimposed on the television picture 29. The set-up icon 38 is selected by scanning the icons 34 with the menu key 22. Upon selection of the icon, the list of menus 46 appears, also overlaying the normal television picture 29. The menu list 46 provides for selection of the set-up procedures listed, that is, AUTO PROGRAM et al. The identity of the channel to which the television receiver is presently tuned, e.g., channel two, is indicated by the channel indicator overlay 48. The icons 34, and the overlays 46 and 48, are generated by the on-screen display, or character, generator 50 upon command from the microprocessor 12, which in turn has responded to the menu command from the RCU 16. The overlays are in color as indicated schematically by the RGB control line 52. With reference to the menu list 46, the three operations relevant to the preferred embodiment are CH. ADD/DEL (adding or deleting a channel), CH LABELS (labeling a channel) and SOURCE ID (identifying the source of the signal routed to the video display electronics of the television, whether from an antenna, a VCR, laser disc player, or other). To add or delete a channel, the user will scan the menu list 46 to the CH. ADD/DEL option. The selection is indicated by a banner 47 which is scrolled up or down to highlight the options. This is done by pressing the up/down arrow keys 24a, 24c. The user then presses the right or left 34

39 879 Claim Element Cherrick (Ex. 1006) arrow key 24b, 24d and a channel add/delete menu 56 (FIG. 4) comprising a table of channels is called up from memory module 13 and compiled by the on-screen display generator 50 for display on the CRT 51, as depicted in FIG. 4. The channel which is presently selected by the tuner 21 for the main picture is then applied to the P-I-P circuitry 20 by control of the input switch 64. The P-I-P window 60 then displays the picture 58 of the broadcast channel to which the television receiver 10 is presently tuned. Id. at 3:61-4:31 (emphasis added). 21. A digital storage device that stores programming instructions that, when read by a processing unit, causes the processing unit to provide control of background video, the digital storage device comprises: [21.a] first storage means for storing programming instructions that, when read by the processing unit, causes the processing unit to detect selection of a video control icon, wherein the video control icon relates to live video that is being presented as a background on a display; See Schonfeld Decl. at See citations to claim element 17.preamble above. See Schonfeld Decl. at 181. An icon 34 is selected by sequentially depressing the menu key 22 which, operating in a "wrap-around" mode, successively scans or highlights the icons 34 indicating selection. A pull down list of menus 46 appears when the icon is selected. In FIG. 3 the set-up icon 38 is indicated by a double border as having been highlighted or selected. Ex. 1006, at 3:55-60 (emphasis added). Upon selection of the icon, the list of menus 46 appears, also overlaying the normal television picture 29. The menu list 46 provides for selection of the set-up procedures listed, that is, AUTO PROGRAM et al. The identity of the channel to which the television receiver is presently tuned, e.g.,channel two, is indicated by the channel indicator overlay 48. Id. at 3:65-4:4 (emphasis added). 35

40 879 Claim Element Cherrick (Ex. 1006) FIG. 3 is a television picture depicting five icons, each of which represents a category for television parameter adjustments, and an adjacent list of set-up menus for television receiver operation. Id. at 2:41-44 (emphasis added); see also Figs Referring also to FIG. 3, access to the menus for selecting the signal source, setting up the receiver 10, and adjusting other television parameters is gained by depressing the menu key 22 on the RCU 16. The normal television picture, or main screen display, 29 is then overlaid with a banner of adjustment icons 34 across the top of the screen. The icons 34 are identified from left to right as follows: source icon 36, set-up icon 38, audio icon 40, video icon 42, and P-I-P icon 44. Id. at 3:47-55 ((emphasis added). [21.b] second storage means for storing programming instructions that, when read by the processing unit, causes the processing unit to provide a control panel while the live video remains in the background and an application that was in focus remains in focus when the video control icon has been selected; [21.c] and second storage means for storing programming instructions that, when read by the processing unit, causes See Schonfeld Decl. at See citations to claim element 17.c above. See Schonfeld Decl. at 191. The icons 34, and the overlays 46 and 48, are generated by the on-screen display, or character, generator 50 upon command from the microprocessor 12, which in turn has responded to the menu command from the RCU 16. The overlays are in color as indicated schematically by the 36

41 879 Claim Element Cherrick (Ex. 1006) the processing unit to adjust at least one attribute of the live video based on an input received via the control panel. RGB control line 52. Ex. 1006, at 4:5-10 (emphasis added). FIG. 3 is a television picture depicting five icons, each of which represents a category for television parameter adjustments, and an adjacent list of set-up menus for television receiver operation. Id. at 2:41-44 (emphasis added). Referring also to FIG. 3, access to the menus for selecting the signal source, setting up the receiver 10, and adjusting other television parameters is gained by depressing the menu key 22 on the RCU 16. Id. at 3:47-50 (emphasis added); see also FIGs. 1, 3-7. The sequence of television operation illustrative of the present invention is as follows: the menu key 22 is pressed and the icons 34 appear, superimposed on the television picture 29. The set-up icon 38 is selected by scanning the icons 34 with the menu key 22. Upon selection of the icon, the list of menus 46 appears, also overlaying the normal television picture 29. The menu list 46 provides for selection of the set-up procedures listed, that is, AUTO PROGRAM et al. The identity of the channel to which the television receiver is presently tuned, e.g., channel two, is indicated by the channel indicator overlay 48. The icons 34, and the overlays 46 and 48, are generated by the on-screen display, or character, generator 50 upon command from the microprocessor 12, which in turn has responded to the menu command from the RCU 16. The overlays are in color as indicated schematically by the RGB control line 52. With reference to the menu list 46, the three operations relevant to the preferred embodiment are CH. ADD/DEL (adding or deleting a channel), CH LABELS (labeling a channel) and SOURCE ID (identifying the source of the signal routed to the video display electronics of the television, whether from an antenna, a VCR, laser disc player, or other). To add or delete a 37

42 879 Claim Element Cherrick (Ex. 1006) channel, the user will scan the menu list 46 to the CH. ADD/DEL option. The selection is indicated by a banner 47 which is scrolled up or down to highlight the options. This is done by pressing the up/down arrow keys 24a, 24c. The user then presses the right or left arrow key 24b, 24d and a channel add/delete menu 56 (FIG. 4) comprising a table of channels is called up from memory module 13 and compiled by the on-screen display generator 50 for display on the CRT 51, as depicted in FIG. 4. The channel which is presently selected by the tuner 21 for the main picture is then applied to the P-I-P circuitry 20 by control of the input switch 64. The P-I-P window 60 then displays the picture 58 of the broadcast channel to which the television receiver 10 is presently tuned. Id. at 3:61-4:31 (emphasis added). Alternatively, or in addition, the speaker output may be muted in the audio processor 69 under the control of the microprocessor 12. The menu presents the channels that are presently active, i.e., selectable for viewing, as highlighted by an overlay of color, a condition indicated schematically by the underscoring of the respective active channel numbers. Nonactive channels are displayed in white. Id. at 4:40-46 (emphasis added). 24. The digital storage device of claim 21 further comprises means for storing programming instructions that, when read by the processing unit, causes the processing unit to remove the control panel when another displayed element is selected. See Schonfeld Decl. at See citations to claim 21 above. See citations to claim 20 above. See Schonfeld Decl. at

43 D. Ground 4: Claims 17, 20, 21, and 24 Are Unpatentable Under 35 U.S.C. 103(a) As Being Obvious Over Cherrick Cherrick discloses each and every limitation of claims 17, 20, 21, and 24 of the 879 Patent as demonstrated above in Ground 3, herein incorporated by reference. To the extent it is found that the construction of first, second, and third storage means requires partitioned storage areas in a single memory device, this limitation would have been obvious in view of Cherrick. See Schonfeld Decl., at 153. Specifically, it would have been obvious to one of skill in the art to have multiple storage areas in a single memory device. Id. Storage devices with multiple memory areas were well-known in the art. Id. at 153, Further, it would have been obvious to one of skill in the art to have multiple memory devices. Id. at 154. Accordingly, claims 17, 20, 21, and 24 of the 879 Patent are obvious in view of Cherrick. E. Ground 5: Claims 17, 20, 21, and 24 Are Unpatentable Under 35 U.S.C. 102(e) As Being Anticipated By Ohyama Ohyama relates to a function selection method, a television receiver, and a television remote commander for displaying a plurality of menu hierarchies so that the user can make a selection simply and rapidly. Ex. 1007, at 1:7-14, 2: Specifically, Ohyama relates to a television function selection method, wherein, for example, a hierarchical menu is displayed on a screen of the television receiver and a predetermined function is selected from a displayed menu. Id. at 1:7:14. According to Oyhama, [i]n the television function selection method, if one of the selection 39

44 items of a menu displayed in the first region of the screen is designated and selected, then while the menu or at least the selected selection item remains displayed in the first region of the screen of the television receiver, a lower menu which is subordinate to the hierarchy of the menu and includes relating selection items relating to the selected selection item is displayed in the second region of the screen different from the first region. Id. at 2: While the control panel is present on the screen, the video remains in the background and the main menu application remains in focus. See Schonfeld Decl., at 203. Ohyama describes each and every element of claims 17, 20, 21, and 24 of the 879 Patent and therefore, invalidates those claims under 35 U.S.C Regarding claims 17 and 21, Ohyama discloses a digital storage device that stores programming instructions labeled as numeral 12 in Fig. 1 and a processing unit for reading those instructions labeled as numeral 11. Ex. 1007, at 5:61-66; see also Schonfeld Decl., at Ohyama discloses a storage device with storing means similar to that disclosed in the 879 Patent. Compare Ex. 1007, at 5:61-66 with Ex. 1001, at 2:56-58; see also Schonfeld Decl., at 213. According to Ohyama, the processing unit 11 provides control of background video on the display. See Schonfeld Decl., at 210. In Fig. 3, the main menu contains video control icons while a television broadcasting program remains in the background. See Schonfeld Decl., at 204, Fig. 7 is one example[] of a menu screen which can be used with the television receiver. The main 40

45 menu is formed of items (icons) displayed on a left side portion of the screen.... Ex. 1007, at 11:20-22; see also Schonfeld Decl., at 204, 217. As can be seen in annotated Fig. 7 below, Ohyama discloses detecting selection of the video control icon. Ex. 1007, at 3:51-59; see also Schonfeld Decl., at 204, Also shown in Fig. 7, selection of a video control icon produces a control panel for controlling the live video remains in the background all the while the applications in the main menu remain overlying the background video when an icon is selected. See Schonfeld Decl., at Ohyama discloses changing such attributes as the picture of the video and various settings relating to the image. Ex. 1007, at 12:54-60, 11:20-46; see also Schonfeld Decl., at Regarding claims 20 and 24, Ohyama also discloses that the processing unit can stop the display of a menu when an icon is selected. See Ex. 1007, at 10:41-11:11; see also Schonfeld Decl., at In light of the above, the table below demonstrates how each limitation of claims 17, 20, 21, and 24 of the 879 Patent is disclosed by Oyhama. For all these reasons, claims 17, 20, 21, and 24 are unpatentable in view of Ohyama and thus, 41