COMCAST CABLE COMMUNICATIONS, LLC, Petitioner. ROVI GUIDES, INC. Patent Owner

Transcription

1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD COMCAST CABLE COMMUNICATIONS, LLC, Petitioner v. ROVI GUIDES, INC. Patent Owner Patent No. 8,046,801 Filing Date: August 26, 2004 Issue Date: October 25, 2011 Title: INTERACTIVE TELEVISION PROGRAM GUIDE WITH REMOTE ACCESS Inter Partes Review No.: Unassigned DECLARATION OF DR. GARY TJADEN IN SUPPORT OF PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C AND 37 C.F.R et seq. Declaration in Support of Petition 3 of 3 Comcast, Ex-1202

2 TABLE OF CONTENTS Page I. INTRODUCTION... 1 II. PROFESSIONAL BACKGROUND AND QUALIFICATIONS... 1 III. MATERIALS CONSIDERED... 6 IV. APPLICABLE LEGAL STANDARDS AND PRINCIPLES... 6 V. THE RELEVANT ART AND LEVEL OF ORDINARY SKILL IN THE RELEVANT ART VI. CLAIM CONSTRUCTION A. Guide / Electronic Program Guide B. Local Guide C. Remote Guide D. User equipment / Television equipment E. Program Guide Information F. Preambles of Claims of the 801 Patent VII. THE 801 PATENT A. Priority Date of the 801 Patent B. Relevant Background of the 801 Patent C. Brief Description of the Alleged Invention D. Prosecution History E. Limitation Correspondence of All Claims of the 801 Patent VIII. OVERVIEW OF THE PRIOR ART A. WIPO Publication WO 98/10589 Blake (Ex-1222) B. U.S. Pat. No. 6,163,316 Killian (Ex-1208) C. U.S. Pat. No. 4,706,121 Young (Ex-1223) IX. SUMMARY OF OPINIONS WITH RESPECT TO THE 801 PATENT X. BLAKE IN VIEW OF KILLIAN RENDERS OBVIOUS CLAIMS A. Independent Claim i Comcast, Ex-1202

3 B. Dependent Claim 2: The method of claim 1, wherein the user equipment is accessible by the remote device over a modem C. Dependent Claim 3: The method of claim 1, wherein scheduling the recording comprises scheduling the recording from an electronic program guide running on the remote device D. Dependent Claim 4: The method of claim 1, wherein a web site is accessible to the user from a computing device of the user E. Dependent Claim 6: The method of claim 5, wherein the user equipment is accessible by the remote device over the Internet F. Claims 5 and XI. CONCLUSION ii Comcast, Ex-1202

4 I, Dr. Gary S. Tjaden, declare that I have personal knowledge of the facts set forth in this declaration and, if called to testify as a witness, could and would do so competently. I. INTRODUCTION 1. I have been retained as an expert witness on behalf of the Petitioner, Comcast Cable Communications, LLC, for the above-referenced inter partes review proceeding. 2. I reside in St. Simons Island, Georgia. 3. I have been asked to provide a declaration regarding electronic program guides and related technologies as well as the relevant industry. I have also been asked to render opinions regarding certain matters pertaining to U.S. Patent No. 8,046,801 (Ex-1201, the 801 Patent ) and the unpatentability grounds set forth in the Petition for this proceeding. 4. I am being compensated at my usual consulting rate of $475 per hour for my work on this matter. My compensation is in no way dependent upon my opinions or testimony or the outcome of this proceeding. II. PROFESSIONAL BACKGROUND AND QUALIFICATIONS 5. A description of my professional background and qualifications is provided below. An additional account of my work experience and qualifications 1 Comcast, Ex-1202

5 is included in my Curriculum Vitae, which is attached as Exhibit-1203 to the Petition. 6. I hold a Bachelor of Science degree in electrical engineering (B.S.E.E.), which I received from the University of Utah in I received a Master of Science degree in electrical engineering (M.S.E.E.) in 1969 from Northwestern University. In 1973, I received a Doctor of Philosophy (Ph.D.) degree in computer science from the Johns Hopkins University. 7. I am currently the Founder and President of COCOMO ID, LLC, a developer of technology for mobilized speech-audio publishing, a position I have held since In this capacity, I have developed multiple computer software applications. These include applications for automating the editing of textual information (e.g., news articles) so it will be correctly spoken by speech synthesis software, web server applications providing for end-user selection and automated downloading of speech-edited textual information to mobile remote devices, and applications running on mobile remote devices (such as Personal Digital Assistants (PDAs) and cellphones) that speak the textual information organized according to end-user preferences. 8. I have over thirty-five years of experience working with telecommunication systems and information technology services, with a significant portion of that experience in the fields of interactive program guides, set-top boxes, 2 Comcast, Ex-1202

6 and techniques for delivering content or program guide data over a cable system or the Internet. I have held various design, leadership, and executive positions in, for example, technology research, engineering, operations, sales and marketing, and product management at leading companies, such as the Center for Enterprise Systems at the Georgia Institute of Technology, NYNEX Corporation, Burroughs/Unisys, Cox Cable Communications, and Bell Telephone Laboratories. 9. From 1993 through 2004, I was a Principal Research Engineer and Director of the Center for Enterprise Systems at the Georgia Institute of Technology. While at the Georgia Institute of Technology, my responsibilities included obtaining funding of the research performed by the Center, and using the research to help commercial enterprises to use information technology to support business strategy and operations. 10. Before coming to the Georgia Institute of Technology, I held numerous executive positions with NYNEX Corporation ( ), a regional telecommunication service provider, and with Burroughs/Unisys ( ), a manufacturer of computer systems and provider of information technology services. Of particular relevance to the technology underlying the 801 Patent and the prior art about which I render the opinions below, I worked with/on the development and implementation of computer systems comprised of multiple 3 Comcast, Ex-1202

7 computers and computer-controlled devices interoperating over local and widearea communication networks at NYNEX/Burroughs. 11. I was Senior Vice President of Engineering and Technology for Cox Cable Communications from 1979 to 1984, where I was involved in various company activities and ventures, including supervising development and implementation of the company s interactive cable-based videotext system known as INDAX. Of particular relevance to the technology underlying the 801 Patent and the prior art about which I render the opinions below, I established a research organization and led the research, development and implementation of a new technology for efficiently providing two-way data communication over cable television networks, and the development and implementation of head-end computer servers and end-user set-top boxes providing new cable system services such as interactive program guides and remote shopping while at Cox Cable Communications. 12. Prior to joining Cox, I held research and development posts with Sperry Corporation in both the Sperry Research Center located in Sudbury, Massachusetts ( ) and the Univac Division located in Bluebell, Pennsylvania ( ) and with the Bell Telephone Laboratories Electronic Switching Systems Division located in Naperville, Illinois ( and ). 4 Comcast, Ex-1202

8 13. I am a named inventor of eight issued U.S. patents, and thus I am familiar with the prosecution of patent applications before the United States Patent & Trademark Office ( USPTO ) and have a general understanding of the novelty and non-obviousness requirements for patentability. 14. I have held professional affiliations that are particularly relevant to my analyses of the issues presented in this inter partes review. Specifically, I was a member of the National Science Foundation Committee on the National Telecommunications Network, representing the Cable Television (CATV) industry, in And, I served as the two term Chairman of the CATV Trade Association Engineering Committee from There are two technical publications listed in my curriculum vitae of particular relevance to my background with respect to the issues about which I opine below. The first is: The INDAX Two-Way CATV Network For Videotex Services, VideoTex Key To The Information Revolution, (Northwood Hills, Middlesex, UK), June, 1982, pp , coauthor. And the second is: INDAX: An Operational Interactive Cable Television and Home Information System, Proceedings of COMPCON Spring 82, February 1982, pp , coauthor. 16. I believe that my extensive industry experience (including experience with interactive program guides, set-top boxes, and techniques for delivering content or program guide data over a cable system, local-area networks, and the 5 Comcast, Ex-1202

9 Internet) and educational background qualify me as an expert in the relevant field of electronic program guides. I am knowledgeable of the relevant skill set that would have been possessed by a hypothetical person of ordinary skill in the art at the time of the invention of the 801 Patent, which I have been instructed is for purposes of this proceeding. III. MATERIALS CONSIDERED 17. In formulating my opinion, I reviewed and considered U.S. Patent No. 8,046,801 to Michael D. Ellis (Ex-1201, the 801 Patent ), as to which I am offering my opinion regarding the validity of certain claims, as discussed herein. I have also reviewed and considered the Petition and each of its accompanying exhibits, including the file history of the 801 Patent. 18. In preparing this declaration I have reviewed the following references relied on in the petition upon which the challenge is based: WIPO Publication WO 98/10589 to Blake (Ex-1222) U.S. Pat. No. 4,706,121 to Young (Ex-1223) U.S. Pat. No. 6,163,316 to Killian (Ex-1208) IV. APPLICABLE LEGAL STANDARDS AND PRINCIPLES 19. Although I am not an attorney, I have a general understanding of the applicable legal standards pertaining to the patentability issues presented in this proceeding. I understand that the Petitioner is challenging the patentability of the claims of the 801 Patent based on the following grounds: 6 Comcast, Ex-1202

10 Claims 1-54 would have been obvious under 35 U.S.C. 103(a) 1 based on Blake in view of Killian. 20. I understand that, in this inter partes review, Petitioner has the burden of proving that each challenged claim is unpatentable by a preponderance of the evidence. 21. I understand that a patent claim is unpatentable if, at the time of the invention, it would have been obvious to one of ordinary skill in the art to combine the teachings of the prior art to yield the patent claim. It is my understanding that this determination is made after weighing the following factors: (1) level of ordinary skill in the pertinent art; (2) the scope and content of the prior art; (3) the differences between the prior art as a whole and the claim at issue; and (4) as appropriate, secondary considerations of non-obviousness. 22. It is my understanding that the prior art and claimed invention should be viewed through the knowledge and understanding of a person of ordinary skill in the art one should not use his or her own insight or hindsight in deciding whether a claim is obvious. I further understand that a claim may be rendered obvious if a person of ordinary skill in the art can implement the claimed invention as a predictable variation of a known product. I further understand that a person of ordinary skill in the art is presumed to have knowledge of the relevant 1 Citations herein to pre-aia 35 U.S.C Comcast, Ex-1202

11 prior art at the time of the claimed invention, which comprises any prior art that was reasonably pertinent to the particular problems the inventor faced. 23. It is my understanding that an obviousness evaluation can be made on a single reference or a combination of several prior art references. It is my understanding that an obviousness analysis involving two or more references generally requires a motive that would have prompted a person of ordinary skill in the relevant field to combine aspects of those references in the way the claimed new invention does. It is my understanding that the prior art references themselves may provide a suggestion, motivation, or reason to combine, but other times the link may be common sense. I further understand that obviousness analysis recognizes that market demand, rather than scientific literature, often drives innovation, and that is sufficient motivation to combine references. 24. It is my understanding that a particular combination may be proven obvious merely by showing that it was obvious to try the combination. For example, common sense is a good reason for a person of ordinary skill to pursue known options when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions. 25. I further understand that a proper obviousness analysis focuses on what was known or obvious to a person of ordinary skill in the art, not just the patentee. Accordingly, it is my understanding that any need or problem known in 8 Comcast, Ex-1202

12 the field at the time of invention and addressed by the patent can provide a reason for combining the limitations in the manner claimed. 26. It is my understanding that at least the following rationales may support a finding of obviousness: (1) combining prior art elements according to known methods to yield predictable results; (2) simple substitution of one known element for another to obtain predictable results; (3) use of a known technique to improve similar devices (methods, or products) in the same way; (4) applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (5) obvious to try choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (6) a predictable variation of work in the same or a different field of endeavor if a person of ordinary skill would be able to implement the variation; (7) there existed a known problem for which there was an obvious solution encompassed by the patent s claims at the time of the claimed invention; (8) known work in one field may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art; and (9) some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. 9 Comcast, Ex-1202

13 V. THE RELEVANT ART AND LEVEL OF ORDINARY SKILL IN THE RELEVANT ART 27. I understand that obviousness is determined from the vantage point of a person of ordinary skill in the relevant art at the time of the alleged invention ( POSA ). The 801 Patent states that the invention relates to interactive television program guide video systems, and I agree that this represents the relevant field of art. (See Ex-1201, 1:16-17). I understand that a POSA is one who is presumed to be aware of all pertinent art, thinks along conventional wisdom in the art, and is a person of ordinary creativity. 28. I believe that a person of ordinary skill in the art of the 801 Patent at the time of the alleged invention of the 801 Patent would have a bachelor s degree in computer science, electrical engineering, computer engineering, or a similar discipline, and two years of experience with interactive program guides, set-top boxes, mobile computer devices, and techniques for delivering content or program guides over communication networks, such as a cable system, a local-area network, and the Internet. In the alternative, a person of ordinary skill in the art of the 801 Patent could have equivalent experience either in industry or research, such as designing, developing, evaluating, testing, or implementing the aforementioned technologies. I worked in the relevant field with such persons at, and leading up to, the time of the alleged invention of the 801 Patent, and thus, I am familiar with the knowledge that such persons had at the time (i.e., ). 10 Comcast, Ex-1202

14 29. All of my statements in this declaration regarding what a POSA would have known, understood, appreciated, been motivated to do, etc. refer to a person of ordinary skill in the art on or before the earliest claimed priority date of the 801 Patent i.e., July 17, 1998 (although, as I establish in Section VII.A below, the 801 Patent is not entitled to claim a priority date prior to July 16, 1999). VI. CLAIM CONSTRUCTION 30. I understand that my analysis requires an understanding of the scope of the claims of the 801 Patent. I understand that claims subject to inter partes review are given the broadest reasonable construction in light of the specification of the patent in which it appears. Therefore, in my analyses given below I have assumed that all claim terms are given their broadest reasonable interpretation as would have been understood by a person of ordinary skill in the art ( POSA ) as of the priority date. 31. With this understanding, I construe several claim terms here: guide, electronic program guide, local guide, remote guide, user equipment, television equipment, and program guide information. Each of these is addressed below in turn. A. Guide / Electronic Program Guide 32. The terms guide and electronic program guide would be understood by a POSA to refer to software that is operative at least in part to 11 Comcast, Ex-1202

15 generate a display of television program listings. I note that the claims further recite the guide as allowing a user to make selections from the displayed television program listings, though these limitations are not inherent to the term guide itself. An example of a typical program guide is provided in which various groups of television program listings are displayed in predefined or userdefined categories and [l]istings are typically displayed in a grid or table. (Ex- 1201, 1:30-33). The 801 Patent describes at least two different types of guides : interactive television program guides ( IPGs ) and on-line program guides. The term interactive television program guide is defined by function: Interactive television program guides allow the user to navigate through television program listings using a remote control. (Ex-1201, 1:28-30). By contrast, online program guides are described that allow users to view program listings using a web-browser, but do not allow the user to set in-home reminders for programming, to adjust parental control settings, or to select programs for recording on the user s videocassette recorder. (Ex-1201, 1:43-50). Because the 801 Patent describes at least two different types of program guides but only claims the generic term guide, one of ordinary skill in the art would understand that the term guide as used in the 801 Patent includes, but is not limited to, interactive television program guides. 12 Comcast, Ex-1202

16 33. The term electronic program guide does not appear in the 801 Patent specification. One of ordinary skill in the art would understand this term to also refer to software that is operative at least in part to generate a display of television program listings. And, one of ordinary skill in the art would understand that interactive television program guides are a type of electronic program guide. 34. To any extent the terms guide or electronic program guide may be construed as limited to interactive television program guides, I note that whether or not a program guide is interactive is determined based on, for example, whether it offers interactive features allowing a user to navigate through television program listings, make selections, and control functions of the software (such as selecting a program for recording). (See, e.g., Ex-1201, 1:28-33). Thus, a reference may disclose an interactive television program guide despite describing the guide as an electronic program guide. 35. The 801 Patent distinguishes between the user equipment / remote device and the local guide / remote guide implemented thereon. (See, e.g., Ex-1201, claim 1). A POSA would understand this distinction to mean that the guide is control software that is implemented on user equipment or the remote device, such as a set-top box or PC. (See, e.g., Ex-1201, 1:34-35 ( Interactive 13 Comcast, Ex-1202

17 television program guides are typically implemented on set-top boxes located in the homes of users. )). B. Local Guide 36. The term local guide would be understood by a POSA to refer to a guide that generates a display of television program listings for use at the user premises. (Ex-1201, 1:28-30, 1:34-37, 15:9-15, 24:4-15). It is my understanding that the Patent Owner has asserted claims of the 801 Patent in U.S. International Trade Commission Investigation No. 337-TA-1201, styled In the Matter of Certain Digital Video Receivers and Hardware and Software Components Thereof ( ITC Investigation ). It is further my understanding that Patent Owner argued that the local interactive television program guide could be implemented on equipment that includes, but is not limited to, equipment in the user s home. In particular, the Patent Owner presented arguments that the claimed local guide limitations could be met by software implemented in part on equipment located outside the user premises. (Ex-1245, p. 56, 218:21-220:13 (discussing the local guide in the context of Petitioner s system, and arguing that the data server providing guide information was part of the local guide)). Similarly, during a discussion of the prior art, the Patent Owner presented argument that a remotely located server that provides program guide information would be part of the equipment on which the local guide is implemented, under the Patent Owner s interpretation of this term. 14 Comcast, Ex-1202

18 (Ex-1246, p. 43, 1117: :2 (discussing Sato, U.S. Pat. No. 6,408,435, and agreeing that under Patent Owner s construction the local guide is implemented on a local computer and an external broadcast station)). That is, under Patent Owner s interpretation of local guide, as evidenced by the argument portions I have cited, the local guide may be implemented at least in part on a server or other device outside the user s home. I have been informed that Petitioner is requesting that the Board adopt this broad interpretation for purposes of this proceeding only, despite certain statements made during prosecution of the 801 Patent and related patents. In my analysis below, I present my conclusions under this broad interpretation as well as under a narrower interpretation in which the local guide is only implemented on equipment located within the user s home. C. Remote Guide 37. The term remote guide would be understood by a POSA to refer to a guide that generates a display of television program listings for use on a remote access device, such as a mobile device. (Ex-1201, 14:4-21, 12:31-37). D. User equipment / Television equipment 38. The terms user equipment and television equipment would be understood by a POSA to be interchangeable and to at least include various typical components of a home television system, such as a set-top box, remote control, secondary storage device, and a television, or any of these alone or coupled together with other such devices. I note that the 801 Patent specification generally 15 Comcast, Ex-1202

19 uses the term user television equipment, which is of the same scope as either user equipment or television equipment for validity purposes. An example of user equipment or television equipment is provided in Fig. 3 of the 801 Patent. (Ex-1201, 5:41-43 ( Fig. 3 is an illustrative schematic block diagram of the user television equipment of Fig. 2 in accordance with the principles of the present invention. )). In this example, user television equipment includes set-top box 28, remote control 40, secondary storage device 32, and television 36. (Ex-1201, Fig. 3; see also 10:15-12:7). 39. However, the 801 Patent makes clear that this is not the only example of user television equipment. Fig. 4 illustrates [a] more generalized embodiment of user television equipment including a user interface 46, display device 45, control circuitry 42, digital storage device 49, secondary storage device 47, and communications device 51. (Ex-1201, Fig. 4, 11:51-12:29). As such, a POSA would have understood that user television equipment is not confined to only the example illustrated in Fig. 3, but also includes any combination of devices that would have the functional elements of Fig. 4. Thus, the broadest reasonable interpretation of user equipment or television equipment also includes a display device. A POSA would also have understood that the broadest reasonable interpretation of user equipment and television equipment in view of the Comcast, Ex-1202

20 Patent specification includes multiple devices communicatively coupled together, such as a STB and a VCR. (See Ex-1201, Figs. 3 and 4, 10:15-28, 12:8-29). E. Program Guide Information 40. Program guide information is described in the 801 Patent as broadly including reminder information, listings information, recording information, message information, status information, parental control settings, audio and video, status or polling information, user information, favorites settings, or any other information necessary for remotely providing program guide functionality. (Ex-1201, 15:33-41; see also 15:42-16:5, 16:55-17:9, 21:1-10, 24:62-25:7). Thus, a POSA would recognize that program guide information under a broadest reasonable definition includes at least those specific items enumerated in the 801 Patent. F. Preambles of Claims of the 801 Patent 41. It is my understanding that preamble language that merely states the purpose or intended use of an invention is generally not treated as limiting the scope of the claim. However, I further understand that when limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention. Based on this understanding, in my analyses given below, I have assumed that the preamble of each independent claim of the 801 Patent is not to be treated as limiting the scope of the claims. 17 Comcast, Ex-1202

21 VII. THE 801 PATENT A. Priority Date of the 801 Patent 42. I understand that U.S. Pat. App. Ser. No. 10/927,814 ( the 814 Application ), which eventually became the 801 Patent, was filed on August 26, I understand that the 814 Application was the second in a chain of applications claiming priority to two provisional applications filed in 1998 that briefly described features related to networked electronic program guides. (See U.S. Prov. App. No. 60/093, 292, Ex-1204 ( the 292 Provisional ); U.S. Prov. App. No. 60/097, 527, Ex-1205 ( the 527 Provisional )). After reviewing the claims of the 801 Patent and the two provisional applications, it is my opinion that neither provisional included sufficient disclosure to fully support or enable the lengthy claims that issued in the 801 Patent. 44. I have reviewed both the 292 Provisional and the 527 Provisional. In my opinion, neither provisional provides a full written description that could support the lengthy claims that issued in the 801 Patent, nor does either provisional provide an enabling disclosure as would be required for a POSA to make and use the claims of the 801 Patent. I have identified two primary features recited in the claims of the 801 Patent that do not find support in the provisional applications, indicated in the diagram below which reproduces claim 1 of the 801 Patent: 18 Comcast, Ex-1202

22 45. First, neither provisional application provides a written description of transmitting, with the remote guide, a communication to the local guide identifying the program corresponding to the selected program listing via the Internet as recited in claim 1 and the other independent claims of the 801 Patent. No such communication from a remote guide and to the local guide is disclosed. 46. There is no discussion of transmitting a selection of a program between guides in the 292 Provisional. Regarding transmitting an instruction to record, the 292 Provisional states only that [i]f a household has only one VCR, there will only be one location that will make all recordings, regardless of which station the recordings are set from. If there are multiple VCRs in the home, the 19 Comcast, Ex-1202

23 viewer may be given the option of choosing among those locations, without further support. (See Ex-1204, p. 2). Thus, the 292 Provisional does not contain a written description of transmitting, with the remote guide, a communication to the local guide identifying the program corresponding to the selected program listing via the Internet, much less provide such written description as would be required for a POSA to make and use such a limitation. 47. There is a similar lack of support for this feature in the 527 Provisional. The 527 Provisional states that: A viewer may also set reminders, schedule recordings, or purchase pay programs from a remote computer. These scheduled events would be transmitted to the television viewing station, where they would be acted upon at the appropriate time. A viewer might request that a program be recorded on a VCR in the home, a digital storage medium in the home (such as recordable DVD) or on a remote server. These requests might also be made via a touch-tone phone. (Ex-1205, p. 3). 48. The 527 Provisional does not discuss identification of a user selection being sent by a remote guide to a local guide for the local guide to commence a recording. At best, the relevant section of the 527 Provisional only states that a remote computer may schedule a recording via transmission to a television viewing station. (Id.). However, there is no discussion of transmitting a program selection from a remote guide and to the local guide for recording by the local guide. 20 Comcast, Ex-1202

24 Thus, the 527 Provisional does not contain a written description of transmitting, with the remote guide, a communication to the local guide identifying the program corresponding to the selected program listing via the Internet, much less provide such written description as would be required for a POSA to make and use such a limitation. 49. Second, neither provisional application provides a written description for generating, with a remote guide accessible by a user of a remote device, a display comprising a plurality of program listings for display on the remote device, wherein the display is generated by the remote guide based on program guide information received from a local guide implemented on user equipment via the Internet, as recited in claim 1 and the other independent claims of the 801 Patent. The 292 Provisional states that a guide may make... available a profile or favorite channels for multiple locations. (Ex-1204, p. 2). However, there is no recitation of a lineup of program listings based on the profile or favorite channels at all, much less a description of a display on a remote device comprising a plurality of program listings. (See id.). Thus, the 292 Provisional does not contain a written description of generating, with a remote guide accessible by a user of a remote device, a display comprising a plurality of program listings for display on the remote device, wherein the display is generated by the remote guide based on program guide information received from a local guide implemented on 21 Comcast, Ex-1202

25 user equipment via the Internet, much less provide such written description as would be required for a POSA to make and use such a limitation. 50. The 527 Provisional similarly fails. The 527 Provisional states that user profiles, channel lineups, and parental control options might be retrieved from the guide.... (Ex-1205, p. 3). However, there is no recitation of how that information would be used to display a plurality of program listings on a remote device. In fact, there is no recitation of the information being displayed on a remote device, at all. (Id.). Thus, there is no sufficient written description of generating program listings based on program guide information as would be required for a POSA to make and use such a limitation. 51. Further, though the 527 Provisional recites a guide running in a car might allow the user to ask verbally for a list of upcoming programs meeting a user profile loaded from the television, this description specifically recites verbal information. (Ex-1205, p. 3). The guide allows the user to ask verbally, and the user hears the program of interest. (Id.). While a user profile loaded from the television is involved in the result, there is no recitation of any display of a guide based on the user profile in the 527 Provisional. (Ex-1205, pp. 3-4). Thus, the 527 Provisional does not contain a written description of generating, with a remote guide accessible by a user of a remote device, a display comprising a plurality of program listings for display on the remote device, wherein the display 22 Comcast, Ex-1202

26 is generated by the remote guide based on program guide information received from a local guide implemented on user equipment via the Internet, much less provide such written description as would be required for a POSA to make and use such a limitation. 52. Therefore, a POSA would be unable to make or use the system conforming to the limitations of claim 1 based on the limited disclosures provided by the 292 Provisional and the 527 Provisional. Because the other claims of the 801 Patent recite similar features to claim 1, the provisional applications would similarly fail to provide a POSA with sufficient written description as would be required for a POSA to make and use such limitations as they recite. Thus, after reviewing the claims of the 801 Patent and the two provisional applications, it is my opinion that neither provisional included sufficient disclosure to fully support or enable the lengthy claims that issued in the 801 Patent. 53. I understand that the 814 Application was filed as a continuation of an abandoned application (U.S. Pat. App. Ser. No. 09/354,344 the 344 Application ) directed to selecting programs over a remote access link for recording. The 344 Application expanded substantially on the bare concepts of the two provisional applications. It is my opinion that the alleged invention claimed in the 801 Patent was at best first disclosed in the specification of the 344 Application on July 16, 1999, the filing date of the 344 Application. 23 Comcast, Ex-1202

27 B. Relevant Background of the 801 Patent 54. In the years before July 16, 1999, the date to which the 801 Patent is at best entitled to claim priority, the number of channels available on cable and satellite television systems was beginning to increase dramatically, calling into question the workability of traditional paper guides. 55. Solutions to this problem that had appeared in the marketplace were electronic program guides (EPGs then dedicated television channels where program listings would scroll passively) and interactive program guides (IPGs - where users could scroll, search, and select the listings through button pushes on the remote control). By the time the applications to which the 801 Patent claims priority were filed, both of these solutions were well known to those of ordinary skill in the art. Additionally, as interactive program guides became ubiquitous, use of the terms began to overlap. In the technical literature, authors frequently used EPG to refer to a television program guide offering interactive features. 56. While interactive program guides were originally implemented on settop boxes, communicating via the cable company s connection to the home, that was beginning to change by the claimed priority date of the 801 Patent. On-line program guides were also being implemented that would allow users to access interactive program guides from other devices, and from anywhere with an Internet connection. (See, e.g., Ex-1201, 1:43-50). These program guides would allow 24 Comcast, Ex-1202

28 users to use personal computers on the Internet to browse to an on-line program guide where the user could scroll and search through program listings. (See, e.g., Ex-1201, 1:43-44, 2:1-4). And, some of these online interactive program guides gave users the ability to use the online program guides to remotely schedule recordings of programs on their home equipment. (See, e.g., Ex-1222, 17:1-2, 18:1-16). 57. Another known solution to the problem of the large number of channels was to generate the program listings based on user profiles or favorite channel lists in order to limit the number of programs or channels displayed to those the user would find most appealing. (See, e.g., Ex-1208, 1:20-41, 2:1-13). C. Brief Description of the Alleged Invention 58. The alleged invention of the 801 Patent relates to remotely accessible guides that are able to schedule recordings on local hardware by communicating with local guide software. (See Ex-1201, 1:16-19, 2:20-25). The claims of the 801 Patent recite systems and methods enabling a user to perform recordings. (Ex-1201, claim 1). The system includes a remote guide accessible by a user of a remote device. (Id.). The system also includes a local guide implemented on user equipment. (Id.). The remote guide is recited as generating... a display comprising a plurality of program listings for display on the remote device, wherein the display is generated by the remote guide based on program guide 25 Comcast, Ex-1202

29 information received from a local guide implemented on user equipment via the Internet. (Id.). The remote guide receives a user selection of a program listing from the plurality of program listings, wherein the user selection identifies a program corresponding to the selected program listing for recording by the local guide, and transmits a communication to the local guide identifying the program corresponding to the selected program listing via the Internet. (Id.). The local guide receiv[es] the communication and schedules the program corresponding to the selected program listing for recording by the user equipment. (Id.). 59. In other words, the claims are generally directed to systems and methods having a local guide on local guide equipment in communication via the Internet with a remote guide on a remote guide device. The remote guide sends a communication to the local guide over the Internet identifying a user-selected program and instructing the local guide to schedule a recording of the program. The remote guide is generated based on program guide information received from the local guide. (See, e.g., Ex-1201 at claim 1). D. Prosecution History 60. Based on my review of the file history of the 814 Application (which became the 801 Patent), it is my understanding that the applicant repeatedly argued that the primary distinction between the prior art and the alleged invention lay in the two-guide nature of the claims. However, many remote access IPG 26 Comcast, Ex-1202

30 systems including guide-to-guide communication were well-known at the time of the alleged invention. For example, IPGs and associated functionality were commonly implemented on DSS and other STB hardware at the time of the alleged invention of the 801 Patent, as admitted in the specification of the 801 Patent itself. (See, e.g., Ex-1202, 1:20-27). I note that no evidence was submitted during prosecution regarding secondary considerations of non-obviousness. 61. In particular, I note that the Blake reference relied on herein was cited during prosecution of the 814 Application. As explained below, during prosecution of the 814 Application, the applicant relied on a narrow interpretation of the claimed invention wherein the communication of user program selections were sent from the remote device to a local guide implemented on equipment in the user s home. 62. For example, in response to an office action rejecting the claims over Blake, the applicant argued that Blake s system only includes one guide, maintaining that Blake does not show or suggest a remote guide that transmits a communication to a second guide (on user equipment) to schedule and perform a recording of a program selected at the remote guide.... (Ex-1233, p (emphasis added)). The applicant also argued in a prior response that the Blake system uses central processing system 334 to schedule recordings of programs selected by the user using a single schedule guide and control the recording 27 Comcast, Ex-1202

31 device to perform the recording, as a result there is only one guide with which the recording is performed remotely, and not two guides in communication to perform the remote recording. (Ex-1232, p. 9). 63. To overcome the examiner objections in view of Blake, the applicant mischaracterized Blake s system as only having one guide. However, as explained further herein (see Section X, infra), Blake s system indeed included two guides in communication as recited in the claims of the 801 Patent. 64. To overcome rejections based on Blake s disclosure of two guides in communication, the applicant emphasized during prosecution that the claimed communication of user-selected program listings from the remote guide to the local guide was not met by Blake s communication of user selection information from input device 332 to central processing system 334. For example, during prosecution, the applicant submitted a declaration under 37 C.F.R of Dr. George T. Ligler ( the Ligler Declaration ) arguing that the claimed communication of program listings from a remote guide to the local guide was not met by Blake since both embodiments (i.e., the the Page 17 Embodiments and the Page 18 Embodiments ) required transmitting the user selections from the remote guide to a central processing system 334. (See Ex-1234, 19, 21, 24, 41). 65. Consequently, to distinguish over Blake during prosecution, the applicant advanced a narrow interpretation of the claimed local interactive 28 Comcast, Ex-1202

32 television program guide, wherein the local guide is implemented solely on hardware within the user s home. However, I understand that in the ITC Investigation Patent Owner relied on a much broader interpretation of the claimed limitations, arguing that the local interactive television program guide could be implemented on equipment that includes, but is not limited to, equipment in the user s home. (See Ex-1245, p. 56, 218:21-220:13, p. 58, 226:14-227:14 (discussing the local guide in the context of Petitioner s system, and arguing that the data server providing guide information or guide functionality, including recording commands, was part of the local guide)). 66. This interpretation is broader than the narrower constructions that were advanced during prosecution and argued in the Ligler Declaration. In fact, under Patent Owner s more expansive interpretation of the claimed local guide, many of the admissions made by the applicant during prosecution regarding Blake resemble what Patent Owner now contends would infringe the alleged inventions of the 801 Patent. For example, to distinguish over Blake, the applicant argued during prosecution that the claimed communication of program listings was not met by Blake because input device 332 communicated user program selections to the central processing system and not a local guide implemented on local equipment. (See Ex-1233, p ; Ex-1234, 19, 21, 24, 33, 35, 41). However, Patent Owner now contends that a recording request made on Blake s input device 29 Comcast, Ex-1202

33 332 is communicated to the local guide because the request is communicated to central processing system 334 and then to VCR 32. (See Ex-1246, p. 48, 1137: :15). 67. The 801 Patent recites the following in the abstract: An interactive television program guide with remote access is provided. The interactive television program guide is implemented on interactive television program guide equipment. A remote program guide access device is connected to the interactive television program guide equipment by a remote access link to provide a user with remote access to program guide functions. (Ex-1201, Abstract). Therefore, in my opinion, it is a reasonable and accurate statement to conclude: the general area of technology of the 801 Patent is that of interactive program guides, and remote or local access to and use of IPGs to control end-user video equipment. 68. In the analyses I make below I will use multiple prior art references to show that the claims of the 801 Patent would have been obvious to a POSA. For each prior art reference, I will show that its general field of technology is the same as that of the 801 Patent, and thus a POSA of the time would have found it obvious to combine the teachings of the prior art references in order to arrive at the claims of the 801 Patent. E. Limitation Correspondence of All Claims of the 801 Patent 69. The 801 Patent includes 54 claims, of which 12 are independent. After reviewing the independent claims of the 801 Patent, it is my opinion that the 30 Comcast, Ex-1202

34 requirements of each of the independent claims are the same for purposes of determining whether every limitation is disclosed in the prior art. That is, claims 1, 5, 10, 15, 19, 23, 28, 33, 37, 41, 46, and 51 are all either of the same scope or have minor variations in wording that would be considered insubstantial to a POSA, for purposes of prior art analysis. I have reviewed both the system claims (10, 15, 28, 33, 46, 51) and the method claims (1, 5, 19, 23, 37, 41), and they each recite the same devices performing the same steps. Therefore, it is my opinion that the nature of a claim as a system or a method is insubstantial for purposes of prior art analysis. Additionally, it is my opinion that dependent claims 7, 12, 16, 20, 25, 30, 34, 38, 43, 48, and 52 are of the same scope with claim 2, that dependent claims 8, 13, 17, 21, 26, 31, 35, 39, 44, 49, and 53 are of the same scope with claim 3, that dependent claims 9, 14, 18, 22, 27, 32, 36, 40, 45, 50, and 54 are of the same scope with claim 4, and that dependent claims 11, 24, 29, 42, and 47 are of the same scope with claim In the figure below, I have identified, using annotations, where each limitation of claim 5 can be found in claim 1: 31 Comcast, Ex-1202

35 Although claim 5 does not explicitly require that user equipment is located at a user site, claim element 5(b) requires that the local guide generates a display of one or more program listings for display on a display device at the user site. As noted in Section VI.D, the broadest reasonable interpretation of user equipment includes a display device. Therefore, while there are minor variations in language, in my opinion claims 1 and 5 are either of the same scope or have minor variations that would be considered insubstantial to a POSA for purposes of prior art analysis. 71. In the figure below, I have identified, using annotations, where each limitation of claim 10 can be found in claim 1: 32 Comcast, Ex-1202

36 Claim 10 is a system claim, but recites the same devices performing the same steps as claim 1. Although claim 10 does not explicitly require user equipment, claim element 10(b) requires television equipment. As noted in Section VI.D, these terms are interchangeable as used in the 801 Patent, so television equipment and user equipment are of the same scope for purposes of prior art analysis. Although claim 10 does not explicitly require wherein the user equipment is remote to the remote device as recited in claim 1, this difference would, at most, render claim 10 broader than claim 1. Therefore, while there are minor variations in language, in my opinion claims 1 and 10 are either of the same scope or have minor variations that would be considered insubstantial to a POSA, for purposes of prior art analysis. 33 Comcast, Ex-1202

37 72. In the figure below, I have identified, using annotations, where each limitation of claim 15 can be found in claim 1: Claim 15 is a system claim, but recites the same devices performing the same steps as claim 1. Although claim 15 does not explicitly require user equipment, claim element 15(b) requires television equipment. As noted in Section VI.D, these terms are interchangeable as used in the 801 Patent, so television equipment and user equipment are of the same scope for purposes of prior art analysis. Although claim 15 does not explicitly require wherein the user equipment is remote to the remote device as recited in claim 1, this difference would, at most, render claim 15 broader than claim 1. Therefore, while there are minor variations in language, in my opinion claims 1 and 15 are either of the same scope or have 34 Comcast, Ex-1202

38 minor variations that would be considered insubstantial to a POSA for purposes of prior art analysis. 73. In the figure below, I have identified, using annotations, where each limitation of claim 19 can be found in claim 1: Although claim 19 does not explicitly require receiving the communication with the local guide, as recited in claim 1, this difference would, at most, render claim 19 broader than claim 1. Therefore, while there are minor variations in language, in my opinion claims 1 and 19 are either of the same scope or have minor variations that would be considered insubstantial to a POSA for purposes of prior art analysis. 74. In the figure below, I have identified, using annotations, where each limitation of claim 23 can be found in claim 1: 35 Comcast, Ex-1202

39 Although claim 23 does not explicitly require receiving the communication with the local guide, as recited in claim 1, this difference would, at most, render claim 23 broader than claim 1. Therefore, while there are minor variations in language, in my opinion claims 1 and 23 are either of the same scope or have minor variations that would be considered insubstantial to a POSA for purposes of prior art analysis. 75. In the figure below, I have identified, using annotations, where each limitation of claim 28 can be found in claim 1: 36 Comcast, Ex-1202

40 Although claim 28 does not explicitly require user equipment, claim element 28(c) requires television equipment. As noted in Section VI.D, these terms are interchangeable as used in the 801 Patent, so television equipment and user equipment are of the same scope for purposes of prior art analysis. Although claim 28 does not explicitly require wherein the user equipment is remote to the remote device as recited in claim 1, this difference would, at most, render claim 28 broader than claim 1. Although claim 28 does not explicitly require receiving the communication with the local guide, as recited in claim 1, this difference would, at most, render claim 28 broader than claim 1. Therefore, while there are minor variations in language, in my opinion claims 1 and 28 are either of the same scope or have minor variations that would be considered insubstantial to a POSA for purposes of prior art analysis. 37 Comcast, Ex-1202

41 76. In the figure below, I have identified, using annotations, where each limitation of claim 33 can be found in claim 1: Although claim 33 does not explicitly require user equipment, claim element 33(c) requires television equipment. As noted in Section VI.D, these terms are interchangeable as used in the 801 Patent, so television equipment and user equipment are of the same scope for purposes of prior art analysis. Although claim 33 does not explicitly require wherein the user equipment is remote to the remote device as recited in claim 1, this difference would, at most, render claim 33 broader than claim 1. Although claim 33 does not explicitly require receiving the communication with the local guide, as recited in claim 1, this difference would, at most, render claim 33 broader than claim 1. Therefore, while there are minor variations in language, in my opinion claims 1 and 33 are either of the same 38 Comcast, Ex-1202

42 scope or have minor variations that would be considered insubstantial to a POSA for purposes of prior art analysis. 77. In the figure below, I have identified, using annotations, where each limitation of claim 37 can be found in claim 1: Although claim 37 does not explicitly require wherein the user equipment is remote to the remote device as recited in claim 1, this difference would, at most, render claim 37 broader than claim 1. Claim 37 requires the user selected program listing is selected from the display generated by the remote guide which is not recited in claim 1. However, a POSA would understand claim 1 s user selection of a program listing from the plurality of program listings to come from the display comprising a plurality of program listings for display on the remote device in order for a user to see the program listing he is selecting. Therefore, 39 Comcast, Ex-1202

43 while there are minor variations in language, in my opinion claims 1 and 37 are either of the same scope or have minor variations that would be considered insubstantial to a POSA for purposes of prior art analysis. 78. In the figure below, I have identified, using annotations, where each limitation of claim 41 can be found in claim 1: Although claim 41 does not explicitly require wherein the user equipment is remote to the remote device as recited in claim 1, this difference would, at most, render claim 41 broader than claim 1. Claim 41 requires the user selected program listing is selected from the display generated by the remote guide which is not recited in claim 1. However, a POSA would understand claim 1 s user selection of a program listing from the plurality of program listings to come from the display comprising a plurality of program listings for display on the remote 40 Comcast, Ex-1202

44 device in order for a user to see the program listing he is selecting. Therefore, while there are minor variations in language, in my opinion claims 1 and 41 are either of the same scope or have minor variations that would be considered insubstantial to a POSA for purposes of prior art analysis. 79. In the figure below, I have identified, using annotations, where each limitation of claim 46 can be found in claim 1: Claim 46 is a system claim, but recites the same devices performing the same steps as claim 1. Although claim 46 does not explicitly require wherein the user equipment is remote to the remote device as recited in claim 1, this difference would, at most, render claim 46 broader than claim 1. Claim 46 requires that the user selected program listing is selected from the display generated by the remote guide which is not recited in claim 1. However, a POSA would understand claim 41 Comcast, Ex-1202

45 1 s user selection of a program listing from the plurality of program listings to come from the display comprising a plurality of program listings for display on the remote device in order for a user to see the program listing they are selecting. Therefore, while there are minor variations in language, in my opinion claims 1 and 46 are either of the same scope or have minor variations that would be considered insubstantial to a POSA for purposes of prior art analysis. 80. In the figure below, I have identified, using annotations, where each limitation of claim 51 can be found in claim 1: Claim 51 is a system claim, but recites the same devices performing the same steps as claim 1. Although claim 51 does not explicitly require wherein the user equipment is remote to the remote device as recited in claim 1, this difference would, at most, render claim 51 broader than claim 1. Claim 51 requires the user 42 Comcast, Ex-1202

46 selected program listing is selected from the display generated by the remote guide which is not recited in claim 1. However, a POSA would understand claim 1 s user selection of a program listing from the plurality of program listings to come from the display comprising a plurality of program listings for display on the remote device in order for a user to see the program listing he is selecting. Therefore, while there are minor variations in language, in my opinion claims 1 and 51 are either of the same scope or have minor variations that would be considered insubstantial to a POSA for purposes of prior art analysis. 81. The dependent claims of each independent claim generally correspond to one another. Claim 2 depends on claim 1, and relates to accessing the remote device over a modem. The limitations of claim 2 are recited using the same or similar language in dependent claims 7, 12, 16, 20, 25, 30, 34, 38, 43, 48, and 52, and are of the same scope. Claim 3 depends on claim 1 and relates to scheduling a recording from an electronic program guide (e.g., the remote guide ) running on the remote device. The limitations of claim 3 are recited using the same or similar language in dependent claims 8, 13, 17, 21, 26, 31, 35, 39, 44, 49, and 53, and are of the same scope. Claim 4 depends on claim 1 and relates to a user having access to a website through a computer. The limitations of claim 4 are recited using the same or similar language in dependent claims 9, 14, 18, 22, 27, 32, 36, 40, 45, 50, and 54 are of the same scope. And claim 6 depends on claim 5 and relates to 43 Comcast, Ex-1202

47 accessing the remote device over the Internet. The limitations of claim 6 are recited using the same or similar language in dependent claims 11, 24, 29, 42, and 47, and are of the same scope. 82. As a result of this analysis, it is my opinion that it is only necessary to show obviousness of all requirements of claim 1 and dependent claims 2, 3, 4, and 6 to also show obviousness of claims 5, 10, 15, 19, 23, 28, 33, 37, 41, 46, and 51 and their respective dependent claims. That is, a POSA would understand that claims 1, 5, 10, 15, 19, 23, 28, 33, 37, 41, 46, and 51 require the same limitations and would conclude that claims 5, 10, 15, 19, 23, 28, 33, 37, 41, 46, and 51 were obvious if claim 1 were found obvious. Similarly, a POSA would understand that claims 7, 12, 16, 20, 25, 30, 34, 38, 43, 48, and 52 require the same limitations as claim 2; that claims 8, 13, 17, 21, 26, 31, 35, 39, 44, 49, and 53 require the same limitations as claim 3; that claims 9, 14, 18, 22, 27, 32, 36, 40, 45, 50, and 54 require the same limitations as claim 4; and that claims 11, 24, 29, 42, and 47 require the same limitations as claim 6, and would conclude that these claims would be obvious if claims 2, 3, 4, and 6 were found obvious. VIII. OVERVIEW OF THE PRIOR ART A. WIPO Publication WO 98/10589 Blake (Ex-1222) 83. Blake was published on March 12, Accordingly, it is my understanding that Blake is available as prior art under 35 U.S.C. 102 (b). 44 Comcast, Ex-1202

48 84. Blake is generally directed to a system for providing media schedule information, and more particularly to a television schedule system with enhanced recording capability. (Ex-1222, 1:17-19). Peripheral devices (e.g., television/guide equipment) located within a user s home, for example a PC, PCTV, or set-top box 38, receive broadcast data streams from a distribution center and include software applications that utilize television schedule information in the data stream to generate an interactive electronic program guide. (See, e.g., Ex- 1222, 4:10-14, 4:24-26, 4:28-30, 5:1-6, 6:7-10). The local guide displays television schedule information, allows a user to make program selections, and controls a recording device located in the user s home (e.g., VCR 32 of Fig. 1) to record selected programs. (See, e.g., Ex-1222, 15:3-7, 16:12-33; Figs. 1, 12, and 13). The system architecture of Blake is illustrated in Fig. 1: 45 Comcast, Ex-1202

49 (Ex-1222, Fig. 1 (annotated to illustrate the various receiving locations (e.g., user premises) in red and peripheral devices such as VCRs 32 and 36 in blue, TVs 30 and 34 in purple, and set-top box 38 in orange)). 85. Blake s television system enhances the recording capability of the [local] schedule guide, for example a schedule guide as disclosed in Young (incorporated by reference in Blake), by allowing the user to schedule recordings from a remote location. (Ex-1222, 17:1-2 (emphasis added); see also 1:20-2:5). In particular, Blake discloses that a user who is away from home may record a program remotely by using input device 332, which allows a user to select 46 Comcast, Ex-1202

50 programs to record according to theme and control recording equipment located in the user premises (e.g., recording device 336, VCRs 32) to record the selected program. (Ex-1222, 17:1-5, 17:8-15, 17:19-21, 18:1-16, Figs. 1 and 13). Program selections made on input device 332 (e.g., program recording requests) are communicated to and stored at processing system 334 which then activates the local recording device to record the selected program. (Ex-1222, 17:8-18, 18:5-16, 18:18-29). Blake further teaches performing theme-based selections via a web site which is connected to processing system 334 to enter the user s selection. (Ex-1222, 18:19-23). 86. In my opinion, the general area of technology of Blake is the same as that of the 801 Patent, which is that of interactive program guides, and remote or local access to and use of IPGs to control end-user video equipment. B. U.S. Pat. No. 6,163,316 Killian (Ex-1208) 87. Killian was filed on October 3, 1997, and issued December 19, Accordingly, it is my understanding that Killian is available as prior art under 35 U.S.C. 102(e). 88. Killian is directed to using Internet technology to provide a program guide applet or application that allows viewers to select, schedule, and record viewing opportunities according to viewer profiles and program listing information retrieved from a database. (See Ex-1208, 6:26-31). 47 Comcast, Ex-1202

51 89. In my opinion, the general area of technology of Killian is the same as that of the 801 Patent, which is that of interactive program guides, and remote or local access to and use of IPGs to control end-user video equipment. C. U.S. Pat. No. 4,706,121 Young (Ex-1223) 90. Young was filed May 6, 1986, and issued on November 10, Accordingly, it is my understanding that Young is available as prior art under 35 U.S.C. 102 (a) and (e). Blake incorporates by reference U.S. Patent No. 4,706,121 to Young (Ex-1223) 2, and prominently recites in its fourth paragraph that Young is incorporated by reference therein. (Ex-1222, 1:32-2:5). 91. As discussed above in Section VIII.A, Blake s system enhances the recording capability of local IPGs including known systems for providing television schedule information to users. (Ex-1222, 1:20-2:5, 17:1-2). Blake describes the IPG disclosed in Young as an example of a known interactive television schedule system. (Ex-1222, 1:17-22). Blake notes that Young s interactive television schedule system receives and displays broadcast television schedule information on a user s television screen. (Ex-1222, 1:20-24). In particular, Young discloses an electronic system for controlling a television to 2 Unless expressly stated herein, citations to columns 1 through 12 of Young are not referencing the Reexamination Certificate issued under 35 U.S.C Comcast, Ex-1202

52 present program listings on a television schedule guide based on schedule information received in broadcast form, and for enabling a user to program a VCR or other recording device for automatic unattended recordings based on programs selected by a user via the television schedule guide. (Ex-1223, 1:11-24, 7:5-11, 7:17-21, 7:60-8:3, 21:48-64, Figs. 2 and 3). 92. Additionally, Blake notes that Young s system allows a user to make program selections, control the schedule information presented on the screen, and control a television receiver to automatically record a selected program on a VCR or other recording device. (See Ex-1222, 1:24-31). In particular, Young discloses that a user may use a remote control device (e.g., remote controller 1010) to navigate a cursor through program listings displayed on the television schedule guide (e.g., Master Guide, Program Guide ), to select television programs to view, and to schedule program recordings on a local recording device. (See, e.g., Ex-1223, 9:7-15, 9:28-31, 9:48-54, 10:13-18, 10:45-47, 11:26-28, 11:51-53, 11:62-65, 12:13-23). 93. It is my opinion that a POSA would have understood that Young, as incorporated by reference in Blake, provides further details as to the features of Blake s disclosed local television schedule system, such as the features described above. Upon seeing the incorporation by reference of Young, a POSA would turn to Young as a part of the Blake reference and would rely on it as teaching various 49 Comcast, Ex-1202

53 implementation details and other features of Blake s television schedule system, in particular the well-known IPG features disclosed in Young. IX. SUMMARY OF OPINIONS WITH RESPECT TO THE 801 PATENT 94. It is my opinion that claims 1-54 of the 801 Patent are rendered obvious by Blake in view of Killian. X. BLAKE IN VIEW OF KILLIAN RENDERS OBVIOUS CLAIMS For reasons that I will address in more detail below, it is my firm belief and opinion that, at the time of the invention, one of ordinary skill in the relevant art would have combined Blake (Ex-1222) and Killian (Ex-1208) in a manner that renders obvious claims As explained above, the claims relate to a local guide on user equipment communicating via the Internet with a remote guide on a remote device. The remote guide receives a user selection of a program listing for recording by the local guide, and transmits a communication to the local guide via the Internet instructing the local guide to record the program using the user equipment. The remote guide display is generated based on program guide information received from the local guide. (Ex-1201, claim 1). 97. Similarly, Blake, WIPO Publication WO 98/10589 (Ex-1222), discloses a computer/television system that improves the recording capability of the local interactive television program guide by allowing a user to view television schedule information and remotely schedule recording requests via a remote input 50 Comcast, Ex-1202

54 device. (Ex-1222, 17:1-5, 17:8-15, 18:1-16). As explained above, Blake is directed to an interactive television schedule system with enhanced recording capability wherein peripheral devices (e.g., television/guide equipment), located within a user s home, implement a local interactive television schedule guide that may incorporate the IPG features and functionality of known systems, such as the IPG system disclosed in Young. (See, e.g., Ex-1222, 1:20-31, 5:1-6, 17:1-2). 98. In particular, Blake discloses a television/computer system that includes television/guide equipment located in a user s home that receive broadcast data streams from a distribution center or service provider (Ex-1222, 4:10-14, 4:20-26), and include software applications that utilize [television] schedule information provided in the data stream to generate a [local] schedule guide for displaying on a television or monitor. (See, e.g., Ex-1222, 5:1-6, 6:7-10 ( The processor, executing software stored in memory, generates interactive electronic program guide images, as well as images of received programs. The guide can be used to interact with and control programs displayed in the [display screen]. )). User input for Blake s local interactive television program guide is provided via a remote control, mouse or keyboard, for example (see Ex-1222, 6:19-20, 8:7-11, 14:26-28), thus allowing the local guide to receive[] commands and respond[] by presenting the requested display screen and/or by performing the function 51 Comcast, Ex-1202

55 requested by the command, such as recording a program. (See Ex-1222, 15:3-7, 15:23-25). 99. The local schedule guide disclosed in Blake meets the broadest interpretation of a local guide because it generates a display of television program listings, allows a user to navigate through the listings, make program selections, and control a recording device located at the user premises to record a selected program. (See, e.g., Ex-1222, 16:12-33, Fig. 12). An example display of program listings generated by the interactive local guide disclosed in Blake is illustrated in Fig. 12: (Ex-1222, Fig. 12) Blake s system also allows a user who is away from home to access a guide remotely and schedule recordings on their home equipment. (Ex-1222, 17:1-52 Comcast, Ex-1202

56 5; see also 18:1-16). This is accomplished using the architecture illustrated in Fig. 13: (Ex-1222, Fig. 13). Blake discloses an input device 332 that allows a user to remotely schedule program recordings on local recording equipment. (See, e.g., Ex-1222, 17:1-5, 17:8-15, 17:19-21, Fig. 13; see also 18:1-16). Input device 332 may comprise any device capable of transmitting data from a remote location, for example, an office PC, laptop computer, or cellular phone (each remote devices ). (Ex-1222, 17:5-8) Specifically, Blake teaches that a user may designate a program to record, for example, by directly entering program information using input device 332 or by selecting a program to record according to themes. (See, e.g., Ex-1222, 17:8-11, 17:15-16, 18:1-2, 18:20-23). Input device 332 communicates the user selection information to processing system 334 which stores the information and, at the appropriate time, activates a recording device in the user s home to record 53 Comcast, Ex-1202

57 the selected program. (Ex-1222, 18:12-16). Blake discloses that the local recording device is a VCR, such as VCR 32 of Fig. 1 (see Ex-1222, 4:24-32), but may be any device with video and\or audio recording capabilities. (Ex-1222, 17:19-21) Thus, in Blake, a remote user on a user input device, such as a laptop, selects a program from a theme guide. The selected program is communicated to a central processing system which controls local hardware to record the program. As noted above in Section VI.B, the broadest reasonable construction of the term local guide is an interactive television program guide, implemented on equipment that includes, but is not limited to, equipment in the user s home, and that generates a display of television program listings for use at the user premises. Both the central processing system and the peripheral devices in the user s home, as disclosed in Blake, control recording equipment in the user s home to schedule a recording of a program selected by the user As I will explain further below, a POSA would have understood that Blake discloses the claimed local guide on user equipment in communication via the Internet with the remote guide on a remote device, as required by the claims of the 801 Patent. The guides are displayed by local and external devices, respectively, and would allow users to select programs for recording on their local peripheral device over the Internet. In particular, Blake s peripheral devices (e.g., 54 Comcast, Ex-1202

58 television/guide equipment) processes television schedule information to generate a local schedule guide ( local guide ) that displays program listings to the user on a television screen or monitor. (Ex-1222, 5:1-6, 16:8-9). The user may interact with the local guide to navigate the on-screen program listings and to schedule a recording of a selected program on a local recording device. (Ex-1222, 16:17-19, 18:26-32). Additionally, Blake discloses that remote input device 332 presents (via an interface) a list of television program listings by theme, for example basketball games which are currently being played or are scheduled to be played. (See Ex-1222, 18:8-10). Blake s remotely displayed user interface allows the user to filter/navigate theme categories and program listings, select presented program listings, and control a local recording device to record the selected program(s). (See, e.g., Ex-1222, 18:8-16) A POSA would have understood from the disclosure in Blake that to display a listing of selectable theme selections and program listings (Ex-1222, 18:2-10), input device 332 would necessarily provide a user interface (e.g., a remote guide) to allow the user to select desired programs and initiate a record request, as is done on the local device. (See, e.g., Ex-1222, 15:3-7, 16:20-25). Blake discloses that television schedule information may be customized and/or adapted to the user by utilizing a user interface to create a special line-up of channels. (See, e.g., Ex-1222, 16:20-22). The presentation of program listings and 55 Comcast, Ex-1202

59 available theme selections, as displayed by the user interface on input device 332, meets the broadest reasonable interpretation of remote guide because it encompasses control software that generates a display of television program listings for use on input device 332, and further allows a user to navigate through the program listings, make program selections, and control functions of the software (e.g., scheduling a recording on a home recording device). (See, e.g., Ex- 1222, 18:1-16; see also Sec. VI.C, supra). In response to the user designating/providing program criteria, processing system 334 (part of the local guide ) will communicate the corresponding/matching television schedule information ( program guide information ) to input device 332 for display to the user (as a remote guide ). (Ex-1222, 18:5-12) The system described in Blake closely mirrors that claimed in the 801 Patent. To any extent the claims are read narrowly to require an interactive program guide on the remote device or to require that program guide information be received from a local guide wholly implemented in the user s home, and to any extent these narrow limitations may not be expressly described in Blake, such limitations would have been obvious to a POSA. IPGs and associated functionality were widely-known and commonly implemented on DSS and other STB hardware at the time of the alleged invention of the 801 Patent, as admitted in the specification of the 801 Patent itself. (Ex-1201, 1:24-33). A POSA would have 56 Comcast, Ex-1202

60 had ample reason to use the interactive features of known program guides to display program listings at Blake s input device 332 given that the remote input device would require a useful user interface allowing users to make program selections and initiate record requests, as is taught by Young (see, e.g., Ex-1223, 10:13-18, 10:44-62, 12:13-24), and Blake s own local guide embodiments. (Ex- 1222, Figs. 1 and 12) A POSA would have recognized that Blake s input device 332 and the personal computer or PCTV 90 are similar in that they are personal computers, display listings of current or future television programs, enable a user to navigate through themes/listings and select programs to record, and control audio/visual equipment to schedule program recordings. As such, it would have been obvious to implement the conventional and expected interactive features of Blake s local television schedule guide on input device 332 to, for example, receive and display television schedule information (e.g., program listings), to allow the user to navigate through the displayed program listings, and control a recording device to record the selected program. (See, e.g., Ex-1222, 5:3-6, 16:12-33, Fig. 12). Furthermore, Young (which Blake incorporates by reference) teaches conventional displays of IPG interfaces. A POSA would have understood, based on the incorporation by reference, that Young provides further detail as to Blake s system. Young s program guide, referred to as an EPG, provides interactive 57 Comcast, Ex-1202

61 features by generating displays of programming information and receiving user input to, for example, navigate through program listings, select programs, filter program listings based on user preferences, and control functions of the VCR. (See, e.g., Ex-1223, 11:6-24, 11:51-57, 12:13-19). Using these known interactive guide features to implement the remote interface would provide predictable benefits, such as allowing a user to visually select a program for recording on the mobile device using a typical guide user interface To any extent Blake s remote user interface arguably may not be expressly described as an IPG, a POSA would recognize that the features of Young s known IPG could be used to improve Blake s input device 332. A POSA would find it obvious to incorporate the interactive features of Young s IPG into the user interface of Blake s input device 332 to achieve the predictable result of providing users with expected and typical user interfaces to view and navigate displayed program schedule information. This would be using the known IPG features of Blake and/or Young to improve the closely related program selection interface on Blake s remote input device 332 to obtain the predictable results I describe above, including providing users with expected and typical user interfaces to view and navigate displayed program schedule information. This would also be a simple substitution of the IPG interface of Blake or Young for the theme list on Blake s remote input device 332, obtaining these same predictable results. 58 Comcast, Ex-1202

62 108. To any extent that the claims are narrowly read to require that the local guide be wholly implemented on hardware in the user s home, excluding processing system 334 from the local guide (contrary to Patent Owner s assertion in the ITC Investigation), it would have been obvious to modify Blake s system to retrieve program guide information from local hardware. For example, Killian teaches IPGs that use a profile module to customize a program guide based on user preferences stored as user profile data. (See, e.g., Ex-1208, 9:10-25,10:55-60, 8:57-9:9). Killian s user profiles are stored in a profile database that may be stored locally to the STB or remotely accessible over the Internet. (Ex-1208, 9:10-25, 11:20-21). Killian teaches that program guides may be advantageously customized based on user profile information stored locally or remotely, and that program guide displays are constructed based on the user profile information. (Ex-1208, 7:49-61, 9:10-25, 11:20-21). Killian s user profile data is a type of program guide information because it is user information. (See Sec. VI.E, supra) The general area of technology of Killian is also the same as Blake; namely, that of interactive electronic program guides (IPGs), and remote or local access to and use of IPGs to control end-user video equipment. (See e.g., Ex-1208, 1:7-9, Abstract). A POSA would have known to combine the teachings of Blake and Killian to arrive at the elements claimed in the 801 Patent. 59 Comcast, Ex-1202

63 110. It would have been obvious to a POSA to implement Killian s filtered guides using user profiles stored at the local device in Blake s remote access guide system. Blake s input device 332 provides a remote theme guide that allows the user to filter program listings according to themes, tracks the user s selections, and stores that information at processing system 334, not the remote input device. (Ex- 1222, 18:1-10, 18:12-14). Killian teaches that program guides may be customized based on user profile information stored locally or remotely. (Ex-1208, 9:10-25, 11:20-21). A POSA would have recognized that Killian s user profiles could be used to store information about user preferences in Blake and that at least some of the user profile information would be stored on local hardware and shared with the remote device, allowing the system to better track a user s preferences and generate more effective user interfaces. This would be nothing more than using known techniques (Killian s user preference filtering based on locally stored user profiles) to improve a similar device (Blake s remote guide) to obtain predictable results. This would also improve the user experience through better tracking of user preferences and better identification of desired/undesired content. This would be done for the purpose of customizing the remote access guide (i.e., the remote theme guide ), providing the advantages discussed in Killian. For example, applying Killian s known teachings regarding program guide filtering based on locally stored information would provide the benefit of a customized guide, 60 Comcast, Ex-1202

64 allowing the user to more quickly identify a desired program in the program listings. As discussed below, Killian also teaches interactive guide features and a POSA would similarly look to Killian s known IPG to improve Blake s similar remote guide in the same way. (Ex-1208, 3:20-33, 4:7-13, 7:49-61, 8:5-56, 10:61-11:13) In the following sections, I explain how each limitation of claims 1-54 is disclosed in Blake and Killian, as would have been understood by one of ordinary skill in the art. A. Independent Claim As explained above, the claims relate to a local guide on user equipment communicating via the Internet with a remote guide on a remote device. The remote guide receives a user selection of a program listing for recording by the local guide, and transmits a communication to the local guide via the Internet instructing the local guide to record the program using the user equipment. The remote guide display is generated based on program guide information received from the local guide. (Ex-1201, claim 1). Below, I explain how each limitation of independent claim 1 is rendered obvious in view of Blake and Killian, as would have been understood by one of ordinary skill in the art. A method of enabling a user to perform recordings 113. Blake discloses an interactive program guide with enhanced recording capability that provides remote access to recording equipment located within the 61 Comcast, Ex-1202

65 user premises, allowing the user to schedule recordings while away from home using input device 332. (See, e.g., Ex-1222, 2:8-11, 17:1-5). Specifically, a user designates a particular program to record using input device 332, for example by filtering through program listings according to theme and then selecting the desired program(s). (See, e.g., Ex-1222, 18:1-10). After the selection(s) has been made, processing system 334 stores the program selection(s). (Ex-1222, 17:10-13, 18:12-14). At the appropriate time, a recording device 336 at the user s home will be activated to record the [selected] program. (See Ex-1222, 17:13-15, 18:14-16) Therefore, it is my opinion that Blake discloses a method of enabling a user to perform recordings (e.g., The present invention enhances the recording capability of the schedule guide by allowing the user to schedule recordings from a remote location. ). (Ex-1222, 17:1-2). generating, with a remote guide accessible by a user of a remote device, a display comprising a plurality of program listings for display on the remote device, wherein the display is generated by the remote guide based on program guide information received from a local guide implemented on user equipment via the Internet, wherein the user equipment is remote to the remote device, wherein the user equipment is located at a user site, and wherein the local guide generates a display of one or more program listings for display on a display device at the user site; 115. Blake discloses all of this claim element as would be understood by a POSA. However, to the extent that there are some details that are not explicitly disclosed by Blake, the combination of Blake in view of Killian renders this claim 62 Comcast, Ex-1202

66 element obvious. Below, I have broken the above limitation into discrete segments for purposes of illustrating how each portion of this limitation is disclosed in Blake and Killian. a) generating, with a remote guide accessible by a user of a remote device, a display comprising a plurality of program listings for display on the remote device 116. As explained above, Blake s system enhances the recording capability of a local program guide by allowing a user to schedule recordings away from home using a remote access device (i.e., input device 332). (See, e.g., Ex-1222, 17:1-5). Blake further discloses that a user may use input device 332 to initiate a record request by selecting a program to record from a list of available programs presented on input device 332. (See, e.g., Ex-1222, 18:1-16). The user s program selection is communicated to processing system 334 in order to, at the appropriate time, activate a recording device in the user s home to record the selected program. (See, e.g., Ex-1222, 17:8-15, 18:1-16, Fig. 13). It is my understanding that, in the ITC Investigation, Patent Owner admitted that Blake s input device 332 is a remote device that allows a user who is away from home to schedule program recordings on local television equipment, such as VCR 32. (Ex-1246, pp. 46 and 48, 1132:18-23, 1137:15-22) Blake further discloses that a user may select a television program to record according to themes. (Ex-1222, 18:1-2, 18:20-23). In particular, Blake 63 Comcast, Ex-1202

67 discloses that the user may be presented, via a user interface on input device 332, with several themes to select from when choosing a program to record, such as sports, movies, science fiction, sit-coms and the like. (Ex-1222, 18:2-7). In response to the user designating/providing program criteria, processing system 334 will communicate the corresponding/matching television schedule information to input device 332 for display to the user. (Ex-1222, 18:5-12; see also Ex-1234, 31 (admission by applicant in Ligler Declaration that Blake s input device 332 provides the interface to the user for remotely scheduling recording of a program )). Blake describes a particular example of selecting a basketball game to record (i.e., Chicago Bulls v. LA Lakers) via the user interface presented on input device 332 wherein: [T]he user may first choose to select program by themes. The user may then select sports when presented with a list of theme selections, and further select basketball. The user may be presented with a list of basketball games which are currently being played or are scheduled to be played, and the user may then choose the Bulls v. Lakers game. (Ex-1222, 18:5-10 (emphasis added)). For purposes of this analysis, I will adopt the convention that the various listings of themes (e.g., sports, movies, science fiction, etc.), theme selections (e.g., basketball), and program listings (e.g., the list of basketball games which are currently being played or are scheduled to be 64 Comcast, Ex-1202

68 played ), as rendered and displayed by the user interface presented on input device 332, will be referred to as a remote theme guide. (Ex-1222, 18:2-10). As noted above, the user may filter through available television schedule information provided on the remotely displayed user interface when finding a program to record, which is particularly helpful when the user is not quite sure of the title of the program. (Id.) The remote input device (i.e., input device 332) allows a user to select a program to record according to themes by presenting, via a remote theme guide, a list of selectable themes (e.g., sports) and theme selections (e.g., basketball) for the user to choose from. (Ex-1222, 18:1-8; see also 17:22-24 (describing user interface of input device 332)). It is my opinion that the presentation of the remote theme guide by Blake s input device 332 meets the broadest reasonable interpretation of remote guide because, as discussed above, it is software that generates a display of television program listings for use on the remote input device. It also is an interactive guide because it further allows a user to navigate through the program themes/listings, make theme/program selections, and control functions of the software (e.g., scheduling a recording on a local recording device). (Ex-1222, 18:1-16, 17:13-19, 17:22-24). It is my further understanding that Patent Owner previously admitted in the ITC Investigation that the remote input device providing enhanced recording capabilities allowing the 65 Comcast, Ex-1202

69 user to remotely schedule programs, as described in the Fig. 13 embodiment of Blake, implemented an interactive program guide. (Ex-1246, p. 47, 1135:13-19) A POSA would have understood that Blake s input device 332 necessarily provides a user interface (i.e., the remote theme guide) allowing the user to select a program for recording from the available theme selections and program listings on the remote input device (a display of television program listings that allows a user to control functions of the software). (Ex-1222, 18:1-26). Additionally, the POSA would have further understood that Blake s input device 332 necessarily receives television schedule information to generate the remote theme guide allowing the user to view and navigate through displayed program listings. (Ex-1222, 18:1-16, 5:1-3). Because Blake teaches that television/guide equipment includes software to generate program guides using television schedule information and to initiate recording requests via the local guide (Ex-1222, 5:2-3, 6:5-9, 16:20-25), a POSA would have understood that Blake s input device 332 would similarly use software to implement the remote theme guide to display television schedule information on input device 332 and allow a user to schedule program recordings on home recording equipment via the remote theme guide However, to the extent that Patent Owner may argue that Blake fails to expressly disclose additional details as to the implementation of a remote guide 66 Comcast, Ex-1202

70 on input device 332, implementing IPG functionality in the user interface of Blake s remote input device would have been obvious to a POSA. As discussed above, interactive electronic program guides, such as Young s IPG and Blake s own local IPG, were well known and commonly implemented prior to the time of the alleged invention of the 801 Patent. (See Sec. VII.B, supra). Blake discloses generating, by the television/guide equipment located within a user s home, a local IPG based on television schedule information received from distribution center 10. (See, e.g., Ex-1222, 4:10-16, 5:1-3, 6:5-9). Specifically, the local program guide implemented in part on Blake s television/guide equipment displays the television schedule information... in a grid-like display on the television screen. (Ex-1222, 16:12-14). [V]arious channels are provided on the Y-axis of the grid guide, and various times are provided on the X-axis of the grid guide. (Ex-1222, 16:14-16). An example display of program listings generated by the interactive local guide disclosed in Blake is illustrated in Fig. 12: 67 Comcast, Ex-1202

71 (Ex-1222, Fig. 12). As shown in Fig. 12 above, the local IPG presents television schedule information in a grid-like display, and Blake discloses that the user, via the local guide interface, can scroll through the television schedule information provided in the local guide to access additional programs/channels. (See Ex-1222, 16:12-19). The display in Figure 12 of Blake would be displayed on a display device, such as a television set or computer monitor, at the user s home. (Ex-1222, 4:28-30, 15:29-30, 16:12-13). Notably, the applicant admitted in the Ligler Declaration that Blake s system incorporates a local television schedule guide implemented on equipment within the user s home, such as the television schedule guide disclosed by Young. (See Ex-1234, 19, 33, 41). Furthermore, during a discussion of the Blake reference in the ITC Investigation, Patent Owner admitted that Blake discloses an interactive program guide and that IPGs were known well 68 Comcast, Ex-1202