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. 8,006,263 Filing Date: October 7, 2005 Issue Date: August 23, 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 1 of 3 Comcast, Ex-1002

2 TABLE OF CONTENTS Page I. INTRODUCTION... 1 II. PROFESSIONAL BACKGROUND AND QUALIFICATIONS... 1 III. MATERIALS CONSIDERED... 6 IV. APPLICABLE LEGAL STANDARDS AND PRINCIPLES... 7 V. THE RELEVANT ART AND LEVEL OF ORDINARY SKILL IN THE RELEVANT ART VI. CLAIM CONSTRUCTION VII. THE 263 PATENT VIII. OVERVIEW OF THE PRIOR ART IX. SUMMARY OF OPINIONS WITH RESPECT TO THE 263 PATENT i Comcast, Ex-1002

3 X. HUMPLEMAN IN VIEW OF KILLIAN RENDERS OBVIOUS CLAIMS 1-2, 4-6, 8-9, 11-12, 14-15, AND XI. HUMPLEMAN IN VIEW OF KILLIAN AND FURTHER IN VIEW OF LAWLER RENDERS OBVIOUS CLAIMS 3, 7, 10, 13, 16, AND XII. KONDO IN VIEW OF KILLIAN AND FURTHER IN VIEW OF KAWAMURA RENDERS OBVIOUS CLAIMS 1-2, 4-6, 8-9, 11-12, 14-15, AND XIII. KONDO IN VIEW OF KILLIAN IN VIEW OF KAWAMURA AND IN FURTHER VIEW OF LAWLER RENDERS OBVIOUS CLAIMS 3, 7, 10, 13, 16, AND ii Comcast, Ex-1002

4 XIV. CONCLUSION iii Comcast, Ex-1002

5 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. 8,006,263 (Ex-1001, the 263 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-1002

6 is included in my Curriculum Vitae, which is attached as Exhibit 1003 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-1002

7 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 263 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-1002

8 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 263 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-1002

9 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-1002

10 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 263 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. 8,006,263 to Michael D. Ellis (Ex-1001, the 263 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 263 Patent. 18. In preparing this declaration I have reviewed the following references relied on in the petition upon which the challenge is based: U.S. Pat. No. 6,182,094 to Humpleman (Ex-1006) U.S. Prov. App. No. 60/059,499, hereinafter Humpleman Provisional (Ex-1007) U.S. Pat. No. 6,163,316 to Killian (Ex-1008) U.S. Pat. No. 5,805,763 to Lawler (Ex-1009) Jap. Pub. No. H to Kondo (Ex-1011 [Japanese original] and Ex-1012 [English translation]) 6 Comcast, Ex-1002

11 Jap. Pub. No. H to Kawamura (Ex-1013 [Japanese original] and Ex-1014 [English translation]) 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 263 Patent based on the following grounds: Claims 1-2, 4-6, 8-9, 11-12, 14-15, and as obvious under 35 U.S.C. 103(a) based on Humpleman in view of Killian. Claims 3, 7, 10, 13, 16, and 19 as obvious under 35 U.S.C. 103(a) based on Humpleman in view of Killian and Lawler. Claims 1-2, 4-6, 8-9, 11-12, 14-15, and as obvious under 35 U.S.C. 103(a) based on Kondo in view of Killian and Kawamura. Claims 3, 7, 10, 13, 16, and 19 as obvious under 35 U.S.C. 103(a) based on Kondo in view of Killian, Kawamura, and Lawler. 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 7 Comcast, Ex-1002

12 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 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 8 Comcast, Ex-1002

13 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 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 9 Comcast, Ex-1002

14 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. 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 263 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-1001, 1:19-22). I understand that a person of ordinary skill in the art 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. 10 Comcast, Ex-1002

15 28. I believe that a person of ordinary skill in the art of the 263 Patent at the time of the alleged invention of the 263 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 263 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 263 Patent, and thus, I am familiar with the knowledge that such persons had at the time (i.e., ). 29. All of my statements in this declaration regarding what a person of ordinary skill in the art 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 263 Patent i.e., July 17, 1998 (although, as I establish in Section VII.A below, the 263 Patent is not entitled to claim a priority date prior to July 16, 1999). 11 Comcast, Ex-1002

16 VI. CLAIM CONSTRUCTION 30. I understand that my analysis requires an understanding of the scope of the claims of the 263 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: interactive television program guide, mobile device, user television equipment, and user profile. Each of these is addressed below in turn. A. Local and Remote Interactive Television Program Guides 32. The term interactive television program guide would be understood by a POSA to refer to control software that is operative at least in part to generate a display of television program listings and allows a user to navigate through the television program listings, make selections, and control functions of the software. This understanding is consistent with the term s usage in the 263 Patent, which discloses the term by function: Interactive television program guides allow the user to navigate through television program listings using a remote control. (Ex- 1001, 1:31-33). An example of a typical program guide is provided in which 12 Comcast, Ex-1002

17 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- 1001, 1:33-36). This usage would inform a POSA that an interactive television program guide at least provides functionality to allow a user to navigate television program listings. Furthermore, as described in the 263 Patent, such interactive television program guides are typically implemented on set-top boxes... connected to the user's television. (Ex-1001, 1:37-40). A POSA would further understand that an interactive television program guide provides users the capability to make selections and to control functions of the program guide software. 33. I note in particular that interactive program guides are a type of electronic program guide (EPG). 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). Thus, a reference may disclose the claimed interactive television program guide despite describing the guide as an electronic program guide. 34. The 263 Patent distinguishes between interactive television program guide equipment and an interactive television program guide, which is implemented on interactive television program guide equipment. (See e.g., Ex- 13 Comcast, Ex-1002

18 1001, claim 1). A POSA would understand this distinction to mean that the interactive television program guide is control software that is implemented on interactive television program guide equipment, such as a set-top box. (See, e.g., Ex-1001, 1:37-38 ( Interactive television program guides are typically implemented on set-top boxes located in the homes of users. )). 35. The term local interactive television program guide would be understood by a POSA to refer to an interactive television program guide that generates a display of television program listings for use at the user premises. (Ex- 1001, 1:31-33, 1:37-40, 12:23-29, 21:24-29). It is my understanding that the Patent Owner has asserted claims of the 263 Patent in U.S. International Trade Commission Investigation No. 337-TA-1001, styled In the Matter of Certain Digital Video Receivers and Hardware and Software Components Thereof ( ITC Investigation ). It is further my understanding that the 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-1045, 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 14 Comcast, Ex-1002

19 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. (Ex-1046, 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 interactive television program 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 263 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. 36. The term remote interactive television program guide would be understood by a POSA to refer to an interactive television program guide that generates a display of television program listings for use on a remote access device, such as a mobile device. (Ex-1001, 11:16-33, 9:43-49). 15 Comcast, Ex-1002

20 B. Mobile Device 37. The term mobile device would be understood by a POSA to refer to any portable computer-based device, for example a notebook computer, as contrasted with stationary devices such as servers and desktop computers. The term mobile device finds no clear definition in the 263 Patent, and is in fact not recited in the 263 Patent specification. However, the 263 Patent specification does recite a remote program guide access device and provides several examples: As shown in FIG. 5, remote program guide access device 24 may be any suitable personal computer (PC), portable computer (e.g., a notebook computer), palmtop computer, handheld personal computer (H/PC), display remote, touch-screen remote, automobile PC, personal digital assistant (PDA), or other suitable computer based device. (Ex-1001, 9:43-49). 38. The 263 Patent specification does not identify any of these devices particularly as mobile devices. A POSA would recognize, however, that some of the devices identified as a remote program guide access device are also mobile devices, while some would be understood as non-mobile. For example, a portable computer (e.g., a notebook computer), palmtop computer, handheld personal computer (H/PC), display remote, touch-screen remote, automobile PC, [or] personal digital assistant (PDA) would be understood by a POSA to be mobile. A POSA would understand that other suitable computer based device[s] 16 Comcast, Ex-1002

21 may include both portable and non-portable devices, and would consider suitable computer-based portable devices to fall within the term mobile device as used in the 263 Patent. Therefore, a POSA would understand mobile device to refer to any portable computer-based device. C. User Television Equipment 39. The term user television equipment would be understood by a POSA 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. An example of user television equipment is provided in FIG. 3 of the 263 Patent. (Ex-1001, 3:51-53 ( 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-1001, Fig. 3; see also 7:27-8:62). 40. However, the 263 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-1001, Fig. 4, 8:63-9:41.). As such, a POSA 17 Comcast, Ex-1002

22 would understand 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 television equipment also includes a display device. A POSA would also understand that the broadest reasonable interpretation of user television equipment in view of the 263 Patent Specification includes multiple devices communicatively coupled together, such as a STB and a VCR. (See Ex- 1001, Figs. 3 and 4, 7:27-40, 8:63-9:7). D. User Profile 41. The term user profile would be understood by a POSA to include any data indicating a user preference. The 263 Patent specification uses User Profiles, User Preference Profiles, and Preference Profiles interchangeably. (See, e.g., Ex-1001, 17:37-47, 23:60-24:26). As such, a POSA would recognize these terms to be interchangeable within the context of the 263 Patent. The 263 Patent specification provides some examples of what user preference profiles are used for. For example, [u]ser preference profiles may also be used to limit the amount of data provided to remote program guide access device by data filtering according to the user profiles when transferring data to remote program guide access device 24. (Ex-1001, 17:37-43). Specifically, [o]nly data for those 18 Comcast, Ex-1002

23 programs or channels that are of interest to the user may be transferred if desired. (Ex-1001, 17:43-45.) 42. Based on this usage, a POSA would understand a user profile to include, at least, information indicating programs or channels that are of interest to the user. (Id.). However, user profile information is not limited to favorites. For example, user profiles are described as also having favorite channels, themes, indicate likes or dislikes, etc. (Ex-1001, 24:4-7). Therefore, a POSA would understand that under a broadest reasonable interpretation, a user profile includes any data indicating a user preference. E. Preambles of Claims of the 263 Patent 43. 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. I further understand that the preamble of a claim may also act as a necessary component of the claimed invention when limitations of a dependent claim rely upon and derive antecedent basis from the preamble. Based on this understanding, in my analyses given below I have assumed that the preamble of all independent claims of the 263 Patent is not to be treated as limiting the scope of the claims. 19 Comcast, Ex-1002

24 VII. THE 263 PATENT A. Priority Date of the 263 Patent 44. I understand that U.S. Pat. App. Ser. No. 11/246,392 ( the 392 Application ), which eventually became the 263 Patent, was filed on October 7, It is further my understanding that the 392 Application was the third 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 Ex U.S. Prov. App. No. 60/093,292 ( the 292 Provisional ); and Ex U.S. Prov. App. No. 60/097,527 ( the 527 Provisional )). 45. 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 263 Patent, nor does either provisional provide an enabling disclosure as would be required for a POSA to make and use the claims of the 263 Patent. I have identified two primary features recited in the claims of the 263 Patent that do not find support in the provisional applications, indicated in the diagram below which reproduces claim 1 of the 263 Patent: 20 Comcast, Ex-1002

25 46. First, neither provisional application provides a written description for a system wherein the remote access interactive television program guide transmits a communication identifying the television program corresponding to the selected program listing from the remote access interactive television program guide to the local interactive television program guide [for recording by the local interactive 21 Comcast, Ex-1002

26 television program guide] over the Internet communications path as recited in claim 1 and the other independent claims of the 263 Patent. No such communication from a remote access interactive television program guide to the local interactive television program guide is disclosed. 47. 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 viewer may be given the option of choosing among those locations, without further support. (See Ex-1004 at p. 2). Thus, the 292 Provisional does not contain a written description of a system wherein the remote access interactive television program guide transmits a communication identifying the television program corresponding to the selected program listing from the remote access interactive television program guide to the local interactive television program guide [for recording by the local interactive television program guide] over the Internet communications path, much less provide such written description as would be required for a POSA to make and use such a limitation. 48. 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, 22 Comcast, Ex-1002

27 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-1005 at p. 3). 49. 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 access interactive television program guide and to the local interactive television program guide for recording by the local guide. Thus, the 527 Provisional does not contain a written description of a system wherein the remote access interactive television program guide transmits a communication identifying the television program corresponding to the selected program listing from the remote access interactive television program guide to the local interactive television program guide [for recording by the local interactive television program guide] over the Internet communications path, much less provide such written description as would be required for a POSA to make and use such a limitation. 23 Comcast, Ex-1002

28 50. Second, neither provisional application provides a written description for a display of a plurality of program listings for display on the remote program guide access device, wherein the display of the plurality of program listings is generated based on a user profile stored at a location remote from the remote program guide access device as recited in claim 1 and the other independent claims of the 263 Patent. The 292 Provisional states that a guide may make available a profile or favorite channels for multiple locations. (Ex-1004 at 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 based on the profile or favorite channels. (See id.). Thus, the 292 Provisional does not contain a written description of a display of a plurality of program listings for display on the remote program guide access device, wherein the display of the plurality of program listings is generated based on a user profile stored at a location remote from the remote program guide access device, much less provide such written description as would be required for a POSA to make and use such a limitation. 51. 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-1005 at p. 3). However, there is no recitation of how that information would be used to display a plurality of program listings on a remote 24 Comcast, Ex-1002

29 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. 52. 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. (Id.). 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. (Id.). Thus, the 527 Provisional does not contain a written description of a display of a plurality of program listings for display on the remote program guide access device, wherein the display of the plurality of program listings is generated based on a user profile stored at a location remote from the remote program guide access device, much less provide such written description as would be required for a POSA to make and use such a limitation. 53. Additionally, the 292 Provisional fails to provide a written description for wherein the remote program guide access device is a mobile device. The 292 Provisional fails to provide any disclosure of a mobile device, 25 Comcast, Ex-1002

30 much less a remote access program guide operating on a mobile device. (Ex-1004 at p. 2). Thus, the 292 Provisional does not contain a written description of wherein the remote program guide access device is a mobile device, much less provide such written description as would be required for a POSA to make and use such a limitation. 54. 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 263 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 263 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 263 Patent. 55. I understand that the 392 Application was filed as 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. I understand that the 392 Application claims priority to the 344 Application by way of U.S. Pat. App. Ser. No. 10/927,814. It 26 Comcast, Ex-1002

31 is my opinion that the alleged invention claimed in the 263 Patent was at best first described in the specification of the 344 Application on July 16, 1999, the filing date of the 344 Application. B. Relevant Background of the 263 Patent 56. In the years before July 16, 1999, the date to which the 263 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. 57. 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 263 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. 58. 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 priority date of the 263 Patent. On-line program 27 Comcast, Ex-1002

32 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-1001, 1:46-53). These program guides would allow 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-1001 at 1:46-53, 2:4-7). 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-1006, 20:42-51). 59. 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-1008, 1:20-41, 2:1-13). C. Brief Description of the Alleged Invention 60. The alleged invention of the 263 Patent relates to remotely accessible IPGs that are able to schedule recordings on local hardware by communicating with local IPG software. (See Ex-1001, 1:19-22, 2:23-28). The claims of the 263 Patent recite systems and methods for selecting television programs over a remote access link comprising an Internet communications path for recording. (Ex- 1001, claim 1). The system includes local interactive television program guide equipment on which a local interactive television program guide is implemented. 28 Comcast, Ex-1002

33 (Id.). The system also includes a remote program guide access device located outside of the user s home on which a remote access interactive television program guide is implemented, which is recited as being a mobile device. (Id.). The remote guide is recited as operating to generate a display of a plurality of program listings for display on the remote program guide access device, wherein the display of the plurality of program listings is generated based on a user profile stored at a location remote from the remote program guide access device. (Id.). The remote guide receives a selection of a program listing for recording by the local guide, and transmits a communication identifying the television program corresponding to the selected program listing to the local guide. (Id.). The local guide receives the communication and records the television program using the local interactive television program guide equipment. (Id.). 61. 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 user profile information stored at a location other than the remote guide device. (See, e.g., Ex-1001 at claim 1). 29 Comcast, Ex-1002

34 62. Based on my review of the file history of the 263 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 systems including guide-to-guide communication were well-known at the time of the alleged invention. I note that no evidence was submitted during prosecution regarding secondary considerations of non-obviousness. 63. The 263 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-1001, Abstract). Therefore, in my opinion, it is a reasonable and accurate statement to conclude: the general area of technology of the 263 Patent is that of interactive program guides, and remote or local access to and use of IPGs to control end-user video equipment. 64. In the analyses I make below I will use multiple prior art references to show that the claims of the 263 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 263 Patent, and thus a POSA of the time would have found it 30 Comcast, Ex-1002

35 obvious to combine the teachings of the prior art references in order to arrive at the claims of the 263 Patent. D. Limitation Correspondence of All Claims of the 263 Patent 65. The 263 Patent includes 19 claims, of which 6 are independent. After reviewing the independent claims of the 263 Patent, it is my opinion that the 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, 8, 11, 14, and 17 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 (1, 8, 14) and the method claims (5, 11, 17), 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 invalidity. Additionally, it is my opinion that dependent claims 6, 9, 12, 15, and 18 are of the same scope as claim 2, and that dependent claims 7, 10, 13, 16, and 19 are of the same scope as claim 3. The features of claim 4 are not repeated. 66. In the figure below, I have identified, using annotations, where each limitation of claim 5 can be found in claim 1: 31 Comcast, Ex-1002

36 Although claim 5 does not explicitly require user television equipment located within a user s home, claim element 5(b) requires the local interactive television program guide generates a display of one or more program listings for display on a display device at the user's home. As noted in Section VI.C, the broadest reasonable interpretation of user television equipment includes a display device. Therefore, while there are minor variations in language, in my opinion, 32 Comcast, Ex-1002

37 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. 67. In the figure below, I have identified, using annotations, where each limitation of claim 8 can be found in claim 1: Although claim 8 does not explicitly require user television equipment located within a user s home, claim element 8(c) requires the local interactive television program guide generates a display of one or more program listings for display on a 33 Comcast, Ex-1002

38 display device at the user's home. As noted in Section VI.C, the broadest reasonable interpretation of user television equipment includes a display device. Therefore, while there are minor variations in language, in my opinion claims 1 and 8 are either of the same scope or have minor variations that would be considered insubstantial to a POSA, for purposes of prior art analysis. 68. In the figure below, I have identified, using annotations, where each limitation of claim 11 can be found in claim 1: 34 Comcast, Ex-1002

39 Although claim 11 does not explicitly require user television equipment located within a user s home, claim element 11(b) requires the local interactive television program guide generates a display of one or more program listings for display on a display device at the user's home. As noted in Section VI.C, the broadest reasonable interpretation of user television equipment includes a display device. Therefore, while there are minor variations in language, in my opinion claims 1 and 11 are either of the same scope or have minor variations that would be considered insubstantial to a POSA, for purposes of prior art analysis. 69. In the figure below, I have identified, using annotations, where each limitation of claim 14 can be found in claim 1: 35 Comcast, Ex-1002

40 Although claim 14 does not explicitly require user television equipment located within a user s home, claim elements 14(a) and 14(b) require a local interactive television program guide implemented on local interactive television program guide equipment [] located within a user's home wherein the local interactive television program guide: generates a display of one or more program listings for display on a display device at the user's home. As noted in Section VI.C, the broadest reasonable interpretation of user television equipment includes a 36 Comcast, Ex-1002

41 display device. Therefore, while there are minor variations in language, in my opinion claims 1 and 14 are either of the same scope or have minor variations that would be considered insubstantial to a POSA, for purposes of prior art analysis. 70. In the figure below, I have identified, using annotations, where each limitation of claim 17 can be found in claim 1: Although claim 17 does not explicitly require user television equipment located within a user s home, claim element 17(a) requires the local interactive 37 Comcast, Ex-1002

42 television program guide generates a display of one or more program listings for display on a display device at the user's home. As noted in Section VI.C, the broadest reasonable interpretation of user television equipment includes a display device. Therefore, while there are minor variations in language, in my opinion claims 1 and 17 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. The table below summarizes the results of the above analysis. To understand how to interpret the table contents, note, for example, that claim element 5(a) is shown as corresponding to both claim elements 1(b) and 1(c). This means that a portion of claim element 5(a) matches the entire claim element 1(b), while another portion of claim element 5(a) matches the entire claim element 1(c). And, the table shows that the requirements of both claim elements 5(d) and 5(e) are met by the entire claim element 1(f). The overall result is that all of the requirements of claims 5, 8, 11, 14 and 17 are met by one or more elements of claim 1. Any differences in scope are either insubstantial or would lead to claim 1 being narrower in scope than the other independent claims. Furthermore, all requirements of claims 6, 9, 12, 15 and 18 are met by claim 2, and all requirements of claims 7, 10, 13, 16 and 19 are met by claim 3. Claim 1 Claim 5 Claim 8 Claim 11 Claim14 Claim 17 1(a) 5(b) 8(c) 11(b) 14(a)14(b) 17(a) 1(b) 5(a) 8(a), 8(b) 11(a) 14(c) 17(b) 1(c) 5(a) 8(a), 8(b) 11(a) 14(c) 17(b) 38 Comcast, Ex-1002

43 1(d) 5(b) 8(c) 11(b) 14(c) 17(b) 1(e) 5(c) 8(d) 11(c) 14(c) 17(b) 1(f) 5(d), 5(e) 8(e) 11(d) 14(d) 17(c) As a result of this analysis, it is my opinion that it is only necessary to show obviousness of claim 1 and its dependent claims 2 and 3 to also show obviousness of claims 5, 8, 11, 14 and 17 and their respective dependent claims. That is, a POSA would understand that claims 1, 5, 8, 11, 14, and 17 require the same features and would conclude that claims 5, 8, 11, 14, and 17 would be obvious if claim 1 were found obvious. Similarly, a POSA would understand that claims 6, 9, 12, 15, and 18 require the same limitations as claim 2 and that claims 7, 10, 13, 16, and 19 require the same limitations as claim 3, and would conclude that these claims would be obvious if claims 2 and 3 were found obvious. VIII. OVERVIEW OF THE PRIOR ART A. U.S. Pat. No. 6,182,094 Humpleman (Ex-1006) and U.S. Prov. App. No. 60/059,499 Humpleman Provisional (Ex-1007) 73. Humpleman was filed June 24, 1998, and issued January 30, Accordingly, it is my understanding that Humpleman is available as prior art under 35 U.S.C. 102 (e). 74. Humpleman is generally directed to a browser based home network [that] uses Internet technology to control and command home devices that are connected to a home network. (Ex-1006, 4:5-7). In the Humpleman system, each 39 Comcast, Ex-1002

44 home device contains one or more Hypertext Markup Language (HTML) pages that provide for the commanding and controlling of the home device. (Ex-1006, 4:12-15). Then, using browser technology, the home network employs Internet standards to render the HTML pages in order to provide users with a plurality of graphical user interfaces ( GUIs ) for commanding and controlling each [of the] home devices. (Ex-1006, 4:15-19). 75. I understand that Humpleman claimed the benefit of priority of Humpleman Provisional, which was filed September 22, 1997, and also incorporated that document by reference. (See Ex-1006, 1:7-13). I have reviewed Humpleman Provisional, and it is my opinion that the disclosure of Humpleman Provisional fully discloses every element of at least claim 1 of Humpleman, as evidenced in the chart below: Humpleman [Ex-1006] # Claim Text [1.P.i] A method for generating a program guide for a home network, [1.P.ii] wherein the program guide identifies multimedia material that is associated with a first home device connected to the home network, Humpleman Provisional [Ex-1007] Here additional html files are available to represent the programs audio and video material available for the server device to source. (Ex-1007, p. 10). (See also Ex-1007, p. 2; p. 3, Fig. 1; p. 11, Fig. 8; p. 12, Fig. 9; p. B-5) Here additional html files are available to represent the programs audio and video material available for the server device to source. (Ex-1007, p. 10). 40 Comcast, Ex-1002

45 Humpleman [Ex-1006] # Claim Text the method comprising the steps of: [1.A] identifying multi-media material associated with the first home device; [1.B] generating an HTML page based on the identified multi-media material associated with the first home device; [1.C] storing the HTML page in an accessible area on the first home device; and [1.D] providing a means for retrieving the HTML page of the first home device without user input. Humpleman Provisional [Ex-1007] One of the more innovative pieces to this self-populating tree is that it has the ability to begin categorizing and indexing available (and unavailable) media for the home. (Ex- 1007, p ). (See also Ex-1007, p. 21, Fig. 13; p. 22). Here additional html files are available to represent the programs audio and video material available for the server device to source. (Ex-1007, p. 10). (See also Ex-1007, p. 11, Fig. 8). The device is represented by an 'html' (hyper text markup language) file kept in a accessible directory of the device. (Ex- 1007, p. 2). The DTV browser accesses, using http protocol, the devices html file and renders it to create the devices GUI and present it to the user. (Ex-1007, p. 2). (See also Ex-1007, p. B-5). Humpleman prominently recites in its first paragraph that Humpleman Provisional is incorporated by reference. (Ex-1006, 1:7-13). It is my opinion that one of ordinary skill in the art would understand that Humpleman Provisional, as incorporated by reference, provides further details as to the features of Humpleman s disclosed system. Upon seeing the incorporation by reference of Humpleman Provisional, one of ordinary skill in the art would turn to Humpleman 41 Comcast, Ex-1002

46 Provisional as a part of the document and would rely on it as teaching various implementation details and other features of the system. 76. In my opinion, the general area of technology of Humpleman is the same as that of the 263 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-1008) 77. 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). 78. 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-1008, 6:26-31). 79. In my opinion, the general area of technology of Killian is the same as that of the 263 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. 5,805,763 Lawler (Ex-1009) 80. Lawler was filed May 5, 1995, and issued on September 8, Accordingly, it is my understanding that Lawler is available as prior art under 35 U.S.C. 102 (a) and (e). 42 Comcast, Ex-1002

47 81. Lawler teaches a program recording system which, in some embodiments, utilizes a central recording device at a head end to record programs for multiple users. (See, e.g., Ex-1009, 2:24-29 and 13:26-37). 82. In my opinion, the general area of technology of Lawler is the same as that of the 263 Patent, which is that of interactive program guides, and remote or local access to and use of IPGs to control end-user video equipment. D. Jap. Pub. No. H Kondo (Ex-1011 [Japanese Original] and Ex-1012 [English translation]) 83. Kondo published June 9, 1998, in the Japanese language (Ex-1011), and I have reviewed a certified translation of Kondo in the English language (Ex- 1012). Accordingly, it is my understanding that Kondo is available as prior art under 35 U.S.C. 102 (a) and (b). 84. Kondo is directed to a system allowing users to schedule recordings on their local equipment over the Internet using a program guide displayed by a remote access terminal. (Ex-1012, [0012]-[0013]). In particular, Kondo discloses a communication terminal TA1 that schedules recordings via the Internet at a video recorder VTR attached to a reception terminal TA2. (Ex-1012, [0010]-[0011]; FIG. 1). 85. In my opinion, the general area of technology of Kondo is the same as that of the 263 Patent, which is that of interactive program guides, and remote or 43 Comcast, Ex-1002

48 local access to and use of IPGs to control end-user video equipment. E. Jap. Pub. No. H Kawamura (Ex-1013 [Japanese original] and Ex-1014 [English translation]) 86. Kawamura published April 15, 1997, in the Japanese language (Ex- 1013), and I have reviewed a certified translation of Kawamura in the English language (Ex-1014). Accordingly, it is my understanding that Kawamura is available as prior art under 35 U.S.C. 102 (b). 87. Kawamura is directed to a system allowing users away from home to set recordings on their local hardware. (Ex-1014, [0023], [0001]). Kawamura teaches that a user on a mobile terminal may access and display a remote guide to select programs for recording by local hardware. (Ex-1014, [0021]; [0023]; FIG. 7). 88. In my opinion, the general area of technology of Kawamura is the same as that of the 263 Patent, which is that of interactive program guides, and remote or local access to and use of IPGs to control end-user video equipment. IX. SUMMARY OF OPINIONS WITH RESPECT TO THE 263 PATENT 89. It is my opinion that claims 1-2, 4-6, 8-9, 11-12, 14-15, and of the 263 Patent are rendered obvious by Humpleman in view of Killian. 90. It is my opinion that claims 3, 7, 10, 13, 16 and 19 of the 263 Patent are rendered obvious by Humpleman in view of Killian and in further view of Lawler. 44 Comcast, Ex-1002

49 91. It is my opinion that claims 1-2, 4-6, 8-9, 11-12, 14-15, and of the 263 Patent are rendered obvious by Kondo in view of Killian and in further view of Kawamura. 92. It is my opinion that claims 3, 7, 10, 13, 16, and 19 of the 263 Patent are rendered obvious by Kondo in view of Killian in view of Kawamura and in further view of Lawler. X. HUMPLEMAN IN VIEW OF KILLIAN RENDERS OBVIOUS CLAIMS 1-2, 4-6, 8-9, 11-12, 14-15, AND 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 Humpleman (Ex-1006) and Killian (Ex-1008) in a manner that renders obvious claims 1-2, 4-6, 8-9, 11-12, 14-15, and As set forth above, the claims of the 263 Patent relate to a local interactive television program guide on local guide equipment in communication via the Internet with a remote access interactive television program guide on a mobile device. The remote guide receives user input selecting a program for recording by the local guide, and sends a communication to the local guide over the Internet instructing the local guide to schedule a recording of the program using the local guide equipment. The remote guide is generated based on user profile information stored at a location other than the mobile device. 45 Comcast, Ex-1002

50 95. Similarly, Humpleman, U.S. Pat. No. 6,182,094 (Ex-1006), discloses a system where a user uses a remote guide HTML page and selects a program for recording in order to schedule a recording on local equipment by way of a local guide. (Ex-1006, 20:31-51). As I explained above, Humpleman is generally directed to an improved home network wherein controlled devices make HTML control pages available for access by other browser-enabled devices elsewhere in the network or located externally over the Internet. (See, e.g., Ex-1006, 1:16-18, 2:31-47, 20:32-51). In particular, Humpleman discloses a digital satellite services interface device (referred to in Humpleman as a DSS-NIU and hereinafter as a DSS, which is typically called a set-top box) that provides a conventional EPG which is displayed on a television to which the digital satellite services interface device is connected (i.e. as a local guide) but also contains Humpleman software that generates an HTML page with a remote version of that guide for remote use by other devices on the network (i.e., a remote guide). (See, e.g., Ex-1006, 22:21-59). The HTML guide may be accessed by any suitable browser-equipped device, including an external device located remotely from the home network via the Internet. (Ex-1006, 5:55-67, 20:32-51). Humpleman discloses as one example that a user at work (away from home) can access the HTML program guide for his home DSS using his work PC over the Internet, and that the user may be able to schedule a recording remotely. (See Ex-1006, 20:32-51). Humpleman further 46 Comcast, Ex-1002

51 explains that the system may generate an HTML program guide having a subset of program information based on user preferences, such as by removing certain channels disfavored by the user. (Ex-1006, 22:30-46). 96. Humpleman claims priority to and incorporates by reference Humpleman Provisional, U.S. Prov. App. No. 60/059,499 (Ex-1007). (Ex-1006, 1:7-13). It is my opinion that one of ordinary skill in the art would understand that Humpleman Provisional, as incorporated by reference, provides further details as to the features of Humpleman s disclosed system. Upon seeing the incorporation by reference of Humpleman Provisional, one of ordinary skill in the art would turn to Humpleman Provisional as a part of the document and would rely on it as teaching various implementation details and other features of the system. 97. Humpleman Provisional provides additional detail regarding the operation of the devices in Humpleman s system, as well as the interactions therebetween. In particular, Humpleman Provisional provides illustrative diagrams of the software structures involved: 47 Comcast, Ex-1002

52 (Ex-1007 at p. 21, Fig. 13 (annotated to show local guide software and EPG data in purple, remote guide files in orange, control software for the local recording equipment in blue, and referencing the remote guide equipment in red)). Humpleman Provisional further discloses that the DSS interface receives identification of the program to be recorded, then passes this information on to the VCR: The One Touch Record (OTR) program is triggered by the server observing a 'record_program' set in the dss GUI. The OTR accesses the dvcr GUI, transfers information from the dss GUI to the dvcr GUI, and returns the dvcr form to set it to 48 Comcast, Ex-1002

53 record, see figure 10. (Ex-1007, p. 14, 4). A remote device sends a message to the DSS control application (i.e. the local... television program guide ) over the Internet in response to the user making a selection in a displayed HTML program guide (i.e. the remote access interactive television program guide ), instructing the DSS control application to control DVCR hardware to record the selected program. (Id.). 98. As I will demonstrate further below, a POSA would understand Humpleman to disclose a local guide on local guide equipment in communication via the Internet with a remote access interactive television program guide on a mobile device, as required in the claims of the 263 Patent. Humpleman allows users to navigate program listings and select a program to control local hardware to record the program using its remotely displayed HTML guide. For example, Humpleman s HTML pages allow[] users to command and control the home devices that are connected to the home network, specifically, for example, to program[] a DBSS, and record[] a television program. (Ex-1006, 14:5-14). Humpleman discloses the generation of an HTML program guide as part of its control page system. (Ex-1006, 22:30-59). Humpleman Provisional explains how a recording is scheduled through the DSS (rather than the DVCR): One touch record takes place at the dss GUI where a selection is made for a future recording. Somehow the information must be transfered to the dvcr automatically. 49 Comcast, Ex-1002

54 This is done by the dss server accessing the dvcr GUI automatically and filling in the record information and returning it back to the dvcr. (Ex-1007, p. 14, 2 (errors in original, emphasis added)). And Humpleman teaches that the HTML program guide is useable to select programs. (See Ex-1007, p. 6, 6 ( selecting program material ); p. 10, sec. 3.4 ( Program selection )). Humpleman further discloses that its remote guide sends a communication to the local guide over the Internet instructing the local guide to schedule a recording of the program using the local guide equipment. (See Ex-1006, 20:32-51). Further, Humpleman discloses that the remote guide is generated based on user profile information stored at the local guide. (Ex-1006, 22:30-46). 99. As detailed further below, one of ordinary skill in the art would understand Humpleman to render obvious the claimed local interactive television program guide. To any extent Humpleman may not expressly describe additional details regarding interactive selection and control features of its locally implemented program guide on a DSS, it is my opinion that implementation of an interactive program guide as the control software on the DSS would have been obvious to one of ordinary skill in the art. 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 263 Patent, as admitted in the specification of the 263 Patent itself. (Ex-1001, 1:27-38). Similarly, to any extent the remote 50 Comcast, Ex-1002

55 HTML guide may not be expressly described as receiving user selections for recording, using an IPG to implement Humpleman s disclosed features of allowing a remote user at work to schedule recordings on his work PC would have also been obvious. Further, to any extent Humpleman may fail to describe particular details of the exemplary user profile embodiments described in the 263 Patent related to favorites lists, building a filtered guide based on a user profile stored on the STB or in an Internet database would have been obvious to one of ordinary skill in the art based on conventional listing filtering techniques. Further evidence regarding functionality of interactive television program guides, including an IPG operating on a conventional DSS and a program guide with filtering, is described in Killian Killian, U.S. Pat. No. 6,163,316 (Ex-1008), is directed to a system providing an interactive television program guide implemented using the familiar JAVA stack and utilizing Application Programming Interfaces (APIs) to coordinate system functionality. (See, e.g., Ex-1008, 2:1-24, 3:7-37). A JAVA program guide application is locally installed on a JAVA-enabled television receiver (such as a receiver for a direct broadcast satellite system (DBSS), or a regular satellite broadcast system which a POSA would understand to refer to a DSS) (hereinafter receiver ). (Ex-1008, 3:7-18, 3:50-58). This locally installed program guide application (i.e., the claimed local interactive television program guide ) generates displays of programming information and receives user input for 51 Comcast, Ex-1002

56 navigating through program listings, selecting programs for recording, and controlling functions of the receiver and platform. (See Ex-1008 passim, e.g., Ex at Fig. 5, 3:20-33, 4:7-13, 4:20-47, 5:11-29, 7:8-16, 7:49-61, 8:5-56, 10:61-11:13, 13:12-21, and 15:53-16:7). Using control APIs, the locally installed program guide can control local recording hardware in order to record selected programs. (See, e.g., Ex-1008 at 15:5-28). Furthermore, the EPG displays generated by the guide software may be based on user profiles stored in a user profile database on the Internet or stored local to the receiver. (See, e.g., Ex-1008, 9:10-25; 10:61-66). Killian expressly notes that its guide software modules can be distributed in order to operate on external processing platforms. (See Ex-1008, 15:53-16:7) The general area of technology of Killian is also the same as that of Humpleman; namely, that of interactive program guides (IPGs), and remote or local access to and use of IPGs to control end-user video equipment. Therefore, a POSA would have known to combine the teachings of Humpleman and Killian to arrive at the elements claimed in the 263 Patent As I explain further below with reference to specific claim recitations, it would have been obvious to one of ordinary skill in the art to incorporate interactive features in Humpleman s local guide, such as the interactive program guide features described in Killian. One of ordinary skill in the art would have 52 Comcast, Ex-1002

57 been motivated to use Killian s interactive television program guide features in Humpleman s system for many reasons, including many of the exemplary rationales that I understand may support a finding of obviousness as noted above in Section IV First, Humpleman provides an express teaching that its extensible HTML home control system is configured to be interoperable with existing and conventional hardware, including vendor-supplied control applications. (See Ex at 6:55-64, 19:46-55, 22:47-59). Humpleman further discloses that the DSS displays its own EPG (i.e., a local guide) separately from the generated HTML program guide (i.e., a remote guide). (See Ex-1006 at 22:29-59). One of ordinary skill in the art would understand Humpleman s discussion of interoperability to teach that the techniques described there in were designed to work with an existing program guide installed on the user s local equipment. That is, Humpleman s system is designed to be layered on top of existing hardware and software installations in an extensible manner. Thus, one of ordinary skill in the art would understand that the remote access techniques of Humpleman were intended to interface with a pre-existing local interactive television program guide, such as where one of the devices on the user s home network was a STB/DSS loaded with the interactive program guide of Killian. This combination would be done for the purpose of interoperability with existing STBs having installed thereon Killian s 53 Comcast, Ex-1002

58 program guide software, allowing them to be integrated in and controlled by Humpleman s network of remote devices. This would obtain the known benefits of interoperability, namely allowing users to continue utilizing already installed hardware and providing control over a broader range of devices Second, Killian also provides an express teaching that the EPG software modules (which implement the control APIs used in its JAVA platform) could be integral to the functionality of devices other than the receiver on which the local program guide is implemented. (Ex-1008, 15:53-16:7). The system of Humpleman was designed to use well known web/html technology, which included both JAVA programs and code to control devices, and JAVA scripts inserted into HTML web pages. (Ex-1006, 7:16-23, 19:34-45). One of ordinary skill in the art would readily recognize that the generic HTML control messages of Humpleman could be implemented using Killian s modules implementing the JAVA control APIs of Killian. Seeking to implement Humpleman s control software using JAVA code, one of ordinary skill in the art would be motivated to use Killian s modules implementing the control APIs based on Killian s express teaching that its modules could be integral to the functionality of other devices (e.g. Humpleman s remote access device). This would provide the predictable result of allowing existing STBs having installed thereon Killian s guide software to be integrated in and controlled by Humpleman s network of remote devices. 54 Comcast, Ex-1002

59 105. Third, in my opinion combining Killian with Humpleman would be nothing more than using known techniques to improve similar devices, obtaining a predictable result. As I explained above, Humpleman s DSS displays its own EPG (i.e., a local guide) separately from the generated HTML page comprising a remote program guide (i.e., a remote guide). (Ex-1006, 22:30-59). Further, to any extent Humpleman s local guide arguably may not be expressly described as "interactive," a POSA would recognize that Humpleman s local guide could be improved by using the features of Killian's known IPG. This would achieve the predictable result of creating a local guide with interactive features as in Killian, where the local guide is able to communicate with a remote guide in order to schedule recordings. This would provide the same benefits that Killian discloses, namely allowing viewers to more intelligently select, schedule, and record their viewing opportunities. (Ex-1008, 1:20-23). Furthermore, the known techniques of displaying local guides and filtering based on stored user profiles would be used by one of ordinary skill in the art to improve the similar DSS device of Humpleman in the same way as these features improved the STBs in Killian. One of ordinary skill in the art would also find it obvious to incorporate the known local program guide of Killian in the DSS EPG control software in Humpleman to achieve the predictable result of providing users with expected and typical user interfaces to view and navigate scheduled programs. Similarly, to any extent 55 Comcast, Ex-1002

60 Humpleman may not expressly describe using the remote guide page to allow the user to program his DVCR remotely (such as from work), it would have been obvious to use interactive guide features in the remote guide to obtain the benefits of an interactive remote guide Fourth, this would also be a simple substitution of one known element for another, closely related element that would produce predictable results. A POSA would recognize that Killian's known IPG could be installed on Humpleman s DSS as a simple substitution for the generically recited EPG. This would achieve the predictable result of a local interactive television program guide having the conventional and expected interactive features disclosed in Killian, and would provide the same benefits that Killian discloses, namely allowing viewers to more intelligently select, schedule, and record their viewing opportunities. (Ex-1008, 1:20-23) In the following sections, I explain how each limitation of claims 1-2, 4-6, 8-9, 11-12, 14-15, and is disclosed in Humpleman and Killian, as would have been understood by one of ordinary skill in the art. A. Independent Claim Independent claim 1 requires a local interactive television program guide on local guide equipment in communication via the internet with a remote access interactive television program guide on a mobile device. The claim 56 Comcast, Ex-1002

61 requires that the remote guide receive user input selecting a program for recording by the local guide, and sends a communication to the local guide over the Internet instructing the local guide to schedule a recording of the program using the local guide equipment. The claim further requires that the remote guide is generated based on user profile information stored at a location other than the mobile device Below, I explain how each limitation of independent claim 1 is disclosed in Humpleman and Killian, as would have been understood by one of ordinary skill in the art. A system for selecting television programs over a remote access link comprising an Internet communications path for recording 110. Humpleman discloses a home network including an Electronic Programming Guide (EPG) that displays a list of available programs on a DSS. (Ex-1006, 22:33-35). Data underlying this EPG can be used to create an HTML program guide for use by other devices to control operations on the DSS. (Ex- 1006, 22:38-39). Humpleman also discloses that connecting the home network to the Internet can provide the advantage of being able to control home devices from outside the home. (Ex-1006, 20:33-35). Humpleman Provisional makes clear: Moreover the system is compatible with the Internet protocols so may be controlled from a computer outside the home running a browser just as well as the home DTV. (Ex-1007, p. 3, 3). These two features of Humpleman s disclosure 57 Comcast, Ex-1002

62 work together: [f]or example, if a user is required to work late and is therefore unable to watch the Monday night football game, the user can program a DVCR connected to their home network via the Internet, in order to record the particular event. (Ex-1006, 20:47-51) Therefore, it is my opinion that Humpleman discloses a system for selecting television programs (i.e., the HTML program guide described at Ex- 1006, 22:38-39) over a remote access link comprising an Internet communications path (i.e., the Internet connection described at Ex-1006, 20:32-35) for recording (i.e., the example provided of recording football at Ex-1006, 20:42-51). a local interactive television program guide equipment on which a local interactive television program guide is implemented, wherein the local interactive television program guide equipment includes user television equipment located within a user s home and the local interactive television program guide generates a display of one or more program listings for display on a display device at the user's home 112. Humpleman 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 Humpleman, the combination of Humpleman in view of Killian renders this claim 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 Humpleman and Killian. 58 Comcast, Ex-1002

63 a) a local interactive television program guide equipment on which a local interactive television program guide is implemented 113. Humpleman discloses that one example of a home device is a digital satellite services (DSS) device: [f]or example, the term home device includes but is not limited to such electronic devices as security systems, theatre equipment (e.g., TVs, VCRs, stereo equipment, and direct broadcast satellite services or (DBSS), also known as digital satellite services (DSS)). (Ex-1006, 1:25-30). When Humpleman uses the terms DBSS or DSS to refer to a home device, it is the set-top box (STB) that receives and uses the information that is broadcast by the satellite services to which Humpleman is referring. Humpleman recognizes that each home device, such as a DSS/STB, provides its own control interface in addition to a home network control interface: [t]he control application of a home device further enables the respective vendors to provide their own control scenarios for their devices. (Ex-1006, 19:49-52) This vendor-supplied control scenario is distinct from the control methods over a home network as described in Humpleman. An example of such a device-provided control is an Electronic Program Guide (EPG) provided by digital satellite service (DSS): [m]ost digital satellite services provide programming information through an Electronic Programming Guide (EPG). (Ex-1006, 22:32-34). Thus, the EPG displayed by the DSS is a separate user interface from the 59 Comcast, Ex-1002

64 HTML program guide generated for remote access, as evidenced by Humpleman s separate discussion of the display of the DSS EPG and the generation of the HTML program guide. (See Ex-1006, 22:30-59; see also Ex-1007,p. 10, 2) I understand the term interactive television program guide to refer to control software that is operative at least in part to generate a display of television program listings and allows a user to navigate through the television program listings, make selections, and control functions of the software. (See Section VI.A, supra). The local EPG described by Humpleman is described as being displayed by the DSS. However, to any extent Humpleman may not disclose additional details regarding the interactive features supported by the local EPG, such as allowing a user to navigate through television program listings, make selections, and control functions of the software (the "interactive" in interactive television program guide ), one of ordinary skill in the art would have found it obvious to implement an interactive program guide having conventional and expected IPG functionality on the DSS. As acknowledged in the 263 Patent itself, interactive program guides having the features I described above were widely implemented on typical STBs of the time of the alleged invention of the 263 Patent. (Ex-1001,1:27-38). One such typical IPG and associated software is described in Killian. 60 Comcast, Ex-1002

65 116. Killian discloses a program guide application locally installed on a receiver that generates displays of programming information and receives user input to, for example, navigate through program listings, select programs for recording, and control functions of the receiver. (See Ex-1008 at Fig. 5, 3:20-33, 4:7-13, 4:20-47, 5:11-29, 7:8-16, 7:49-61, 8:5--56, 10:61-11:13, 13:12-21, and 15:53-16:7). That is, Killian discloses an interactive television program guide. Killian discloses [a]n electronic programming guide (EPG) JAVA applet or application running on platform 12 periodically accesses database 48 using link 14 and server 46 to receive program listing information 6 that allows the EPG applet or application to provide television-related functionalities to viewers associated with receiver 10 and television 40. (Ex-1008, 4:7-12; see also 3:7-27, 8:36-56). The program guide disclosed by Killian is software-based (e.g., JAVA ) and implemented on computing hardware (i.e., one or more processors ). (Ex-1008, 3:7-27, 6:32-57, 8:36-56) Killian discloses an EPG applet 70 that includes functionality to record[] a television program that is scheduled for broadcast on some unspecified date in the future. (Ex-1008, 8:8-11.) This EPG, which includes program listings corresponding to multiple channels over a range of time slots, is illustrated in FIG. 5: 61 Comcast, Ex-1002

66 (Ex-1008, FIG. 5, 10:66-11:13; see also 15:53-16:7, 8:49-56). This display is, for example, output to a television via a super video (S-video) output with RCA jack cable support or any other suitable video output. (Ex-1008, 4:39-44) Therefore, Killian discloses a local interactive television program guide equipment (e.g., the JAVA-enabled television system disclosed at 3:7-18) on which a local interactive television program guide is implemented (i.e., an electronic programming guide (EPG) JAVA applet or application running on platform 12 disclosed at 4:7-8) As I explained above, a POSA would readily implement Humpleman s local guide using the conventional interactive television program 62 Comcast, Ex-1002

67 guide features of Killian to provide users with expected and typical television control functionality through a local IPG. This would be a use of known techniques (Killian s interactive features) to improve a similar device (Humpleman s local guide on the DSS), obtaining a predictable result (providing interactive features on a local guide). Humpleman s DSS displays its own EPG (i.e., a local guide) separately from the generated HTML program guide (i.e., a remote guide). (Ex-1006, 22:30-59). To any extent Humpleman s local guide arguably may not be expressly described as "interactive," a POSA would recognize that the features of Killian's known IPG could be used to improve Humpleman s local guide. This would achieve the predictable result of a local guide having interactive features and able to communicate with a remote guide, and would provide the same benefits that Killian discloses, namely allowing viewers to more intelligently select, schedule, and record their viewing opportunities. (Ex-1008, 1:20-23) Furthermore, using Killian s local IPG in Humpleman s system would be a simple substitution of one known element for another, closely related element that would obtain predictable results. Killian s program guide is the type of program guide software that Humpleman discloses as [t]he control application of a home device [that] further enables the respective vendors to provide their own control scenarios for their devices. (Ex-1006, 19:49-52). Killian discloses its 63 Comcast, Ex-1002

68 program guide in connection with a direct broadcast satellite system, (Ex-1008, 3:55) similar to Humpleman s disclosure of a digital satellite system providing an EPG (Ex-1006, 22:32-34). In light of these similarities, a POSA would be motivated to look to Killian s program guide as one example of a control application of a home device provided by a satellite television vendor to provide their own control scenarios for their devices. (Ex-1006, 19:50-52). Doing so would be a simple substitution of one known element (Killian s program guide) for another (the local EPG described by Humpleman) to obtain predictable results (a satellite set-top box with an IPG) This combination would be further motivated based on express teachings in both Humpleman and Killian. (Ex-1006, 6:55-64, 19:46-55, 22:47-59; Ex-1008, 15:53-16:7). Humpleman explains that its HTML home control system is configured to be interoperable with existing and conventional hardware, including vendor-supplied control applications. (See Ex-1006, 6:55-64, 19:46-55, 22:47-59). One of ordinary skill in the art would understand that a STB/DSS loaded with Killian s JAVA program guide could and would be utilized in Humpleman, because Humpleman was designed to layer in on top of existing hardware and software installations And Killian contemplates that the modules implementing its control APIs and available on its devices could be integral to the functioning of external 64 Comcast, Ex-1002

69 devices other than the receiver. (See Ex-1008, 15:53-16:7). One of ordinary skill in the art would readily recognize that Humpleman s generic HTML control messages could be implemented using Killian s modules implementing the control APIs. This would be done for interoperability with existing STBs having installed thereon Killian s EPG software, allowing them to be integrated in and controlled by Humpleman s network of local and remote home devices Therefore, it is my opinion that Humpleman in view of Killian discloses a local interactive television program guide equipment on which a local interactive television program guide is implemented (i.e., the local, vendorprovided program guide of Humpleman s DSS, improved with the typical interactive features of Killian). b) wherein the local interactive television program guide equipment includes user television equipment located within a user s home 124. In Humpleman, the local interactive television program guide equipment that implements the DSS EPG includes a DSS unit, or a Digital Satellite Service Network Interface Unit (DSS-NIU). (See Ex-1006, 5:39-62; see also, 22:30-46; 22:47-59; Ex-1007 at, p. 10, 2). Humpleman discloses a home network including DSS-NIU 104 that is connected to the home network. (Ex-1006, 6:31-34). This home network disclosed by Humpleman also includes DTV 102, DVCR 110, DVD 108, and security system 120 as other home devices on the 65 Comcast, Ex-1002

70 home network. (Id.). Because I understand the term user television equipment to include various typical components of a home television system, such as a settop box, remote control, secondary storage device, and a television, or any of these alone or coupled together with other such devices, Humpleman s disclosure of a home network including these devices communicatively coupled by the home network constitutes user television equipment. (See Section VI.C, supra). Additionally, Humpleman describes that these devices are found in the home. (Ex-1006, 1:21-31) As such, it is my opinion that Humpleman discloses wherein the local interactive television program guide equipment includes user television equipment located within a user s home (i.e., the DSS and other devices connected to the home network such as the DVCR). c) the local interactive television program guide generates a display of one or more program listings for display on a display device at the user's home 126. The program guide displayed by the DSS in Humpleman displays a list of available programs and the specific time in which the programs can be viewed through the service. (Ex-1006, 22:34-36). A POSA would understand that this display would be displayed on a display device, such as a television set or monitor, at the user s home. As such, Humpleman discloses the local interactive television program guide generates a display of one or more program listings for 66 Comcast, Ex-1002

71 display on a display device at the user s home (i.e., the local guide generated by the DSS). I have already explained above in Section X.A.2.a how the combination of Humpleman and Killian discloses that the local guide would be an interactive television program guide It is my opinion that Humpleman discloses that the local guide generates a display of one or more program listings. Killian s locally installed program guide also generates a display of one or more program listings for display on a display device at the user s home. For example, Killian discloses an EPG applet 70 that includes functionality to record[] a television program that is scheduled for broadcast on some unspecified date in the future. (Ex-1008, 8:8-11.) This EPG is illustrated in FIG. 5: 67 Comcast, Ex-1002

72 (Ex-1008, FIG. 5, 10:66-11:13, see also 8:49-56, 15:53-16:7). This display is, for example, output to a television via a super video (S-video) output with RCA jack cable support or any other suitable video output. (Ex-1008, 4:39-44) As I have already explained above in Section X.A.2.a, it would have been obvious to one of ordinary skill in the art to incorporate Killian s interactive program guide into Humpleman s system to obtain the interoperability benefits described in Humpleman, to obtain the improved usability of Killian s interactive program guide, and to obtain the predictable results of providing users with an interactive user interface to control their television system. 68 Comcast, Ex-1002