IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Transcription

1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re Patent of: Inoue, Hajime, et al. U.S. Patent No.: 6,467,093 Attorney Docket No.: IP2 Issue Date: October 15, 2002 Appl. Serial No.: 09/244,282 Filing Date: February 3, 1999 Title: Method and Apparatus for Receiving Digital Broadcasts TABLE OF CONTENTS I. QUALIFICATION AND BACKGROUND INFORMATION... 2 II. LEGAL STANDARDS... 7 A. Anticipation... 7 B. Obviousness... 8 C. Date of the Claimed Invention... 9 III. OVERVIEW OF 093 PATENT IV. OVERVIEW OF PRIOR ART A. Browne Patent Application B. Joseph Patent C. Hoffman Article V. LEVEL OF ORDINARY SKILL IN THE ART VI. INTERPRETATION OF CLAIMS OF 093 PATENT VII. ANALYSIS OF 093 PATENT CLAIMS IN LIGHT OF PRIOR ART A. Claims 1 and 8 of the 093 Patent Are Anticipated by Browne Claim Claim B. Claims 1, 3, and 8 of the 093 Patent Are Rendered Obvious by Browne in View of Joseph Claim Claims 1 and C. Claims 1 and 8 of the 093 Patent Are Rendered Obvious by Browne in View of Hoffman 57 D. Claims 1, 3, and 8 of the 093 Patent Are Rendered Obvious by Browne in View of Joseph and Hoffman VIII. ADDITIONAL REMARKS ARRIS 1003

2 DECLARATION OF JEFFREY J. RODRIGUEZ, PH.D. I, Jeffrey J. Rodriguez, Ph.D., hereby declare as follows: I. QUALIFICATION AND BACKGROUND INFORMATION 1. I am an Associate Professor with tenure in the Dept. of Electrical and Computer Engineering at The University of Arizona, where I serve as Director of the Signal and Image Laboratory. I have been on the faculty of The University of Arizona since 1990, holding the rank of Assistant Professor from 1990 to 1997, and Associate Professor with tenure since During 2003 to 2008, I was Co- Director of Connection One, a National Science Foundation industry/university cooperative research center for communication circuits and systems. 2. I have a Bachelor of Science degree from The University of Texas at Austin (1984), a Master of Science degree from Massachusetts Institute of Technology (1986), and a Ph.D. from The University of Texas at Austin (1990), all in Electrical Engineering. 3. I teach courses at both the graduate and undergraduate level. The courses I have taught include Digital Image Processing, Digital Image Analysis, Digital Signal Processing, Advanced Digital Signal Processing, Signals and Systems, and Circuit Analysis. In 1992 I was awarded the Outstanding Teaching Award by the IEEE and Eta Kappa Nu, given by the students at the University of Arizona to one outstanding professor each year. 2

3 4. My research activity is generally directed to systems for digital signal/image/video processing and analysis. My current research activities include automated algorithms for object detection and tracking in video, image/video inpainting algorithms, and automated image segmentation algorithms. My research has also included content-adaptive improved error concealment methods for H.264/AVC video communication. 5. One of my recent research projects involves the design and development of a real-time image and video processing system for automated behavioral analysis of zebrafish for use in ototoxicity assessment of drugs. The system we designed and built includes an array of Raspberry Pi microcomputer systems configured for parallel video capture of sixteen zebrafish populations. Each Raspberry Pi features a system on a chip, which includes a CPU, a video graphics processing unit (GPU), and a memory system. Our zebrafish analysis system automatically captures and transmits compressed MPEG video data to a local personal computer or to a high-performance computing cluster to decode the video and implement customized algorithms for further video processing and analysis, resulting in automated assessment of zebrafish swimming behavior. 6. In other work, I directed the development of efficient algorithms for improved error concealment in corrupted H.264/AVC video sequences. Using the information of Intra prediction modes from the coded bit-stream, we developed a 3

4 spatial error concealment method, which improved the concealment performance and the visual quality of the damaged Intra frames. In addition, we proposed a content-adaptive temporal error concealment method for packet losses occurring in the Inter frames of the video sequence. 7. I am a Senior Member of the Institute of Electrical and Electronics Engineers (IEEE) and the IEEE Signal Processing Society. I served as General Chair of the 2016 IEEE Southwest Symposium on Image Analysis and Interpretation (SSIAI), and General Chair of the 2007 IEEE International Conference on Image Processing (ICIP). In addition, during , I served on the IEEE Signal Processing Society Technical Committee on Image, Video, and Multidimensional Signal Processing. During , I was Associate Editor of the IEEE Transactions on Image Processing. Over the years, I have served on numerous other professional committees, and I have served as a technical reviewer for numerous journals and professional conferences. 8. My research has resulted in more than 140 technical publications, including journal articles, conference proceedings publications, and book chapters. Over the past 27 years, I have trained hundreds of students in image and video processing, including directing the research of numerous graduate students, resulting in more than 45 graduate theses and dissertations.. 4

5 9. A detailed listing of my education, work experience, honors, awards, professional associations, publications, etc. is included in my curriculum vitae, which is included as Exhibit 1007 of the petition. 10. In preparing this declaration, I have relied on my own knowledge and experience, such as my work experience in the field of electrical and computer engineering, including image and video processing, my experience in teaching those subjects, and my experience in working with others involved in this field. I also relied on other materials cited in this report. 11. In preparing this declaration, I have considered my own knowledge and experience as well as the following: US 6,467,093 ( 093 Patent ; Exhibit ARRIS-1001); File History of the 093 patent (Exhibit ARRIS-1002); WO 1992/ to Browne et al. ( Browne ; Exhibit ARRIS- 1004); US 5,844,636 to Joseph et al. ( Joseph ; Exhibit ARRIS-1005); Hoffman et al., IEEE 1394: A Ubiquitous Bus, Digest of Papers, IEEE CompCon 95, pp , March 5-9, 1995 ( Hoffman ; Exhibit ARRIS-1006); 5

6 Claim Construction Order, Sony Corporation v. Pace plc and Pace Americas, LLC, 1:15-cv SLR-SRF (10/24/2016) (Exhibit ARRIS-1008); ISO/IEC :1993, MPEG-1 Video (Exhibit ARRIS-1009); ISO/IEC :1993, MPEG-1 Audio (Exhibit ARRIS-1010); S. L. Diamond, IEEE 1394: status and growth path, in IEEE Micro, vol. 16, no. 3, pp , Jun 1996 (Exhibit ARRIS-1011); ISO/IEC :1996, MPEG-2 Video (Exhibit ARRIS-1012); ISO/IEC :1995, MPEG-2 Audio (Exhibit ARRIS-1013); T. R. Hurley, Evolution of the Digital Set Top Box, in IEE Conference Publication for International Broadcasting Convention, pp , Sep (Exhibit ARRIS-1014); C. Severance, Linking Computers and Consumer Electronics, in IEEE Computer, vol. 30, Issue 2, pp , Feb (Exhibit ARRIS-1015); US 5,027,400 to Baji et al. (Exhibit ARRIS-1018); J. Terry, Alternative Technologies and Delivery Systems for Broadband ISDN Access, in IEEE Communications Magazine, pp , Aug (Exhibit ARRIS-1019); US 6,369,855 to Chauvel et al. (Exhibit ARRIS-1020); and 6

7 EP to Hirota et al. (Exhibit ARRIS-1021). 12. Although this declaration refers to selected portions of the cited references for the sake of brevity, it should be understood that a person of ordinary skill in the art would have viewed the references cited herein in their entirety and in combination with other references cited herein or cited within the references themselves. The references used in this declaration, therefore, should be viewed as being incorporated herein in their entirety. 13. I am not, and never was, an employee of ARRIS International plc, ARRIS Group, Inc., ARRIS Technology, Inc., ARRIS Enterprises, LLC, ARRIS Solutions, Inc., ARRIS Global Ltd. and ARRIS U.S. Holdings, Inc. ( Petitioners ). I have been engaged in the present matter to provide my independent analysis of the issues raised in the petition for inter partes review of the 093 patent. I received no compensation for this Declaration beyond my normal hourly compensation based on my time actually spent studying the matter, and I will not receive any added compensation based on the outcome of the inter partes review of the 093 patent. II. LEGAL STANDARDS A. Anticipation 14. I have been informed that a patent claim is invalid as anticipated under 35 U.S.C. 102 if each and every element of a claim, as properly construed, 7

8 is found either explicitly or inherently in a single prior art reference. I further have been informed that under the principles of inherency, if the prior art necessarily functions in accordance with, or includes the claimed limitations, it anticipates. 15. I have been informed that a claim is invalid under 35 U.S.C. 102(a) if the claimed invention was known or used by others in the U.S., or was patented or published anywhere, before the applicant s invention. I further have been informed that a claim is invalid under 35 U.S.C. 102(b) if the invention was patented or published anywhere, or was in public use, on sale, or offered for sale in this country, more than one year prior to the priority date of the patent application. And a claim is invalid, as I have been informed, under 35 U.S.C. 102(e), if an invention described by that claim was described in a U.S. patent granted on an application for a patent by another that was filed in the U.S. before the date of invention for such a claim. B. Obviousness 16. I have been informed that a patent claim is invalid as obvious under 35 U.S.C. 103 in light of one or more prior art references if it would have been obvious to a POSITA, taking into account (1) the scope and content of the prior art, (2) the differences between the prior art and the claims, (3) the level of ordinary skill in the art, and (4) any so called secondary considerations of nonobviousness, which include: (i) long felt need for the claimed invention, (ii) 8

9 commercial success attributable to the claimed invention, (iii) unexpected results of the claimed invention, and (iv) copying of the claimed invention by others. 17. I have been informed that a claim can be obvious in light of a single prior art reference or multiple prior art references. To be obvious in light of a single prior art reference or multiple prior art references, as I have been informed, there must be a reason to modify the single prior art reference, or combine two or more references, in order to achieve the claimed invention. I have been informed that this reason may come from a teaching, suggestion, or motivation to combine, or may come from the reference or references themselves, the knowledge or common sense of one skilled in the art, or from the nature of the problem to be solved, and may be explicit or implicit from the prior art as a whole. I have been informed that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. I also understand it is improper to rely on hindsight in making the obviousness determination. C. Date of the Claimed Invention 18. For the 093 patent, I have been told to assume the date of the claimed invention is the same as the priority date, which is February 4, Thus, for my analysis of the 093 patent, I have assumed the date of the claimed invention is February 4,

10 III. OVERVIEW OF 093 PATENT 19. For the purpose of this declaration, I was asked to analyze and provide opinions about the validity of claims 1, 3, and 8 of the 093 patent. Those claims are recited as follows, where I have labeled the individual limitations for convenience (i.e., I subsequently refer to the preamble and individual limitations as limitation 1(a), limitation 1(b), etc.): Claim 1. (a) A digital broadcast receiving apparatus for receiving broadcast program signals, comprising: (b) broadcast program extraction means for extracting from said broadcast program signals compressed data including a broadcast program selected and specified by a user; (c) decompression means for decompressing the compressed data extracted by said broadcast program extraction means and for outputting decompressed data; (d) digital interface means for receiving the compressed data extracted by said broadcast program extraction means and the decompressed data from said decompression means, and for outputting each of the compressed data and the decompressed data to a digital external unit; and 10

11 (e) control means for controlling, based on an instruction from the user, the selection of an output from said digital interface means to said digital external unit, said output being selected from the compressed data extracted by said broadcast program extraction means and the decompressed data from said decompression means. Claim 3. (a) The digital broadcast receiving apparatus according to claim 1, (b) wherein the compressed data comprises data which is compressed by an MPEG method. Claim 8. (a) A method of receiving a digital broadcast comprising (b) extracting from the digital broadcast compressed data including a broadcast program selected and specified by a user; (c) decompressing the compressed data to form decompressed data; (d) outputting, in a main outputting step, each of the compressed data and the decompressed data to a digital external unit; and (e) controlling, based on an instruction from the user, the selection of an output from said main outputting step to said digital external unit, said output being selected from the compressed data and the decompressed data. 11

12 20. The claims of the 093 patent relate to a method and an apparatus for receiving digital broadcast signals. ARRIS-1001 at 1:7-9. There are many patents related to this technology. 21. According to the specification of the 093 patent, prior art broadcast receiving devices were allegedly deficient because only compressed data was provided as output. See id. at 1:44-2:14. To this end, the 093 patent proposes outputting either compressed output or decompressed output. See id. at 2: The 093 patent device can receive digital broadcasts in which data is compressed, directly supply the compressed data of a target broadcast program to the digital external unit, and supply the decompressed data of a target broadcast program to the digital external unit. Id. at 2: Thus, the 093 patent states it is possible to supply the decompressed data even to a digital external unit which is not provided with a decompression function compatible with the data compression method of digital broadcasting. Id. at 2:44-49.d 22. Referring further to annotated FIG. 1 below, the 093 patent mentions a digital interface 20 that receives both compressed MPEG broadcast data (from descrambler 131) and decompressed MPEG broadcast data (from MPEG decoder 141). See id. at 6:11-14, 9:10-10:11. As also shown below, the digital interface 20 can output either compressed or decompressed MPEG data via its terminal 20T. 12

13 ARRIS-1001 at FIG. 1 (annotated) 23. As for the compressed/decompressed output coming out of terminal 20T, the 093 patent states that either compressed or decompressed output can be selected depending on the type of digital external unit that is connected to the digital interface. ARRIS-1001 at 9: For instance, the 093 patent describes a controller 30 that is used to determine[] which type of digital external unit has been selected. Id. at 12:56-58; see also 12: As further illustrated in FIG. 6 below, the controller 30 controls the digital interface 20 to output compressed MPEG data if the user has selected either DVTR or AVHDD as the digital external unit. Id. at 12: Alternatively, if the user has selected the MD unit as the 13

14 digital external unit, the controller 30 controls the digital interface 20 to output MPEG-decoded, namely decompressed, data. Id. at 13:1-5. ARRIS-1001 at FIG. 6 (annotated) IV. OVERVIEW OF PRIOR ART A. Browne Patent Application 24. Based on my review of the prosecution history of the 093 patent, I understand that the Examiner primarily allowed the claims because there were allegedly no prior art references that disclosed receiving the compressed data 14

15 extracted by said broadcast program extraction means and the decompressed data from said decompression means, and for outputting each of the compressed data and the decompressed data to a digital external unit. ARRIS-1002, Notice of Allowability at 2 (PDF p. 190). However, a review of other relevant literature available at the time shows that this idea of a digital interface that receives and sends both compressed and decompressed data was known. For example, Browne discloses such a system. 25. As shown below in FIG. 1 of Browne, Browne discloses a system 100 that receives a plurality of input signals including signal[s] 101a-101f from air and ground based broadcast sources and compressed digital signals 101g and 101h. ARRIS-1004 at 6. Browne also includes digital output 112g for outputting decompressed data and digital output 112h for outputting digital compressed data. See id. at 6,

16 ARRIS-1004 at FIG. 1 (annotated) 26. In Browne s apparatus there is a digital interface that interfaces with any digital external receivers that may be connected to outputs 112g or 112h. Browne s digital interface is receiving compressed data extracted by demodulator 113g and the decompressed data from decompressor 106, via mixer 108c. See id. at 6, 9, 14, 16, FIG. 1. Browne s digital interface also outputs each of the compressed data and the decompressed data to external receivers, such as a digital television receiver or any receiver with decompression circuitry. Id. at To control the various inputs and outputs as shown above, Browne discloses a user control system that gives the user a great deal of control over the signals that are input and can output the signals to one or more receivers. ARRIS- 16

17 1004 at 33; see also 16, 22, 27. For example, Browne discloses using a control interface, like the one shown below in FIG. 7, so the user can choose from a plurality of input formats, including compressed digital broadcasts, as well as choose from a plurality of output formats/destinations, such as decompressed digital data... to a digital television receiver or compressed program data... to any receiver with decompression circuitry. Id. at 16; see also 27. ARRIS-1004 at FIG As illustrated through the two figures above, Browne s system is designed to receive compressed digital broadcast signals and then route such signals, based on what the user chooses via a control interface, as compressed or digital data to an external device. See ARRIS-1004 at 22,

18 B. Joseph Patent 29. As described above, Browne discloses the main features of the 093 patent. However, because Browne is such an early piece of prior art (from early 1990s), it does not explicitly mention some of the implementation details that are contemplated in the 093 patent. For example, while Browne discloses receiving/processing high information content signals such as high definition television (HDTV) signals and improved definition television (IDTV), it does not specifically mention that such signals are MPEG signals. ARRIS-1004 at 11. This is likely because MPEG standards were still being developed as of the priority date (1991) of Browne. For instance, the MPEG-1 standard was not adopted until See ARRIS-1009 and ARRIS As a result of MPEG s advancement after Browne s filing namely, the many references that came after Browne but before the 093 patent unequivocally teach MPEG signals as a type of compressed digital signals a POSITA would have known to modify Browne to receive and process MPEG signals. 30. Joseph, for example, explains that for types of transmissions like digital broadcast data that would have been received in Browne, compression and decompression of packetized video and audio signals may be accomplished according to the Motion Picture Expert Group (MPEG) standard. ARRIS-1005 at 1:8-56. That is, based on Joseph s explicit teachings that the types of compressed 18

19 signals that are handled by systems such as Browne s would include MPEG signals, a POSITA would have known to modify Browne to receive and process MPEG signals. Thus, to the extent Browne needs to be modified further to account for the use of MPEG technology, a POSITA would have found it obvious to do so in view of Joseph s teachings so that Browne s system would receive, decode, store, and output compressed data based on the MPEG standard. C. Hoffman Article 31. As another example of after-arising technology not explicitly mentioned in Browne, the 093 patent describes the use of an IEEE 1394 interface to implement its digital interface. ARRIS-1001 at 9: Similar to my discussion above with respect to MPEG technology, Browne s silence regarding the now well-known IEEE 1394 standard is simply because it was not prevalent in 1991 when Browne was conceived. In fact, the IEEE 1394 standard was not approved until December 1995, several years after Browne was written. See ARRIS-1011 at p. 75. However, as was the case with MPEG, a POSITA would have found it obvious to modify Browne s crowded output section, with its various audio/video outputs, to incorporate after-arising IEEE 1394 technology, which allows for a simpler digital interface to external components. 32. Hoffman is one example of a prior art reference that explicitly recognizes the desire to upgrade older devices having multiple outputs with a 19

20 simpler and more flexible IEEE 1394 digital interface. For example, Hoffman explains that older devices requir[e] a great deal of space for the connectors and that the growing number of cables overwhelms many users. ARRIS-1006 at 334. To this end, Hoffman discloses using an IEEE 1394 high-speed serial bus to reduce the clutter of cables and connectors while maintaining transmission performance. See id. at Accordingly, a POSITA would have been motivated to modify Browne using after-arising IEEE 1394 technology, as described in Hoffman, to provide a physically smaller size and high-speed data transport for the multiple outputs coming out of Browne s system. V. LEVEL OF ORDINARY SKILL IN THE ART 33. In my opinion, the field of art pertaining to the 093 patent includes digital electronics and video processing. In my opinion, with regard to the 093 patent, a person of ordinary skill in the art at the time of the claimed invention ( POSITA ) would have had at least a bachelor s degree in electrical engineering, computer engineering, computer science, or a related technical degree, with around 2-5 years of experience in digital electronics and video processing. Alternatively, a POSITA would have been someone with an advanced degree, such as a master s degree, in electrical engineering, computer engineering, computer science, or a related technical degree. 20

21 34. I am qualified as a person having at least this level of skill. Based on my experiences, I have a good understanding of the capabilities of a POSITA. Indeed, I have taught, trained, participated in organizations, and worked closely with many such persons over the course of my career, including during the late 1990s and certainly before the priority date of the 093 patent. 35. My opinions below explain how a POSITA would have understood the technology described in the references I have identified herein at the time of the claimed invention. VI. INTERPRETATION OF CLAIMS OF 093 PATENT 36. I understand that, for purposes of my analysis in this inter partes review proceeding, the terms appearing in the patent claims should be interpreted according to their broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R (b). In that regard, I understand that the best indicator of claim meaning is its usage in the context of the patent specification as understood by a POSITA. I understand that the standard in 37 C.F.R (b) is also referred to as the broadest reasonable interpretation (BRI) standard. I further understand that the words of the claims should be given their plain meaning under the broadest reasonable interpretation standard, unless that meaning is inconsistent with the patent specification or the patent s history of examination before the Patent Office (for example, where the applicant explicitly 21

22 acted as a lexicographer to provide a clear and unambiguous definition of a term in the patent specification, or where the applicant provided an explicit disclaimer/disavowal of a particular claim scope). I also understand that the words of the claims should be interpreted as they would have been interpreted by a POSITA at the time the invention was made (not today). 37. I also understand that a number of the claim terms of the 093 patent have been construed in a prior district court proceeding. See ARRIS I also understand claim interpretation in district courts can be different from, and possibly narrower than, claim interpretation under the BRI standard. 38. I also understand that certain claim limitations are governed by 35 U.S.C I understand that this section allows an element in a claim for a combination to be expressed as a means or a step for performing a specified function without the recital of structure, material, or acts in support of the function. I further understand that for elements recited in such a manner, the claim language shall be construed to cover the corresponding structure, material, or acts described in the specification, and equivalents thereof. 22

23 A. broadcast program extraction means for extracting from said broadcast program signals compressed data including a broadcast program selected and specified by a user 39. I understand that this claim limitation is governed by 35 U.S.C The recited function here is extracting from said broadcast program signals compressed data including a broadcast program selected and specified by a user. In claims 1 and 3, the corresponding structure for performing that function is a demodulator, by itself or with a demultiplexer, or equivalents thereof. 40. The 093 patent corroborates the function of a demodulator. For example, the 093 patent describes that broadcast programs can be received and demodulated to extract a signal of a target broadcast program. ARRIS-1001 at 5:62-67; see also id. at 6: In other words, a demodulator is the structure that performs the extraction process. Because the 093 patent does not state that structures other than the demodulator are required to perform extraction, a demodulator is the minimum structure required for extraction. See also id. at 7:1-4. While other structures, such as a demultiplexer, may be used together with the demodulator to extract compressed data as claimed, a demultiplexer would only be required when multiple program signals are multiplexed on a single carrier. In other words, a demultiplexer is not a required structure for performing the claimed extraction process as the language in claims 1 and 3 does not require a multiplexed 23

24 signal. In fact, the fact that demultiplexer is explicitly recited in claims 12 and 13 further suggests to a POSITA that the structure of a demultiplexer is not required for claims 1 and Therefore, under the BRI standard and based on what the 093 patent itself says about the extraction process, I believe that broadcast program extraction means should be construed to require the function of extracting from said broadcast program signals compressed data including a broadcast program selected and specified by a user. Moreover, in claims 1 and 3 this function is performed by a demodulator, by itself or with a demultiplexer, or equivalents thereof. B. decompression means for decompressing the compressed data extracted by said broadcast program extraction means and for outputting decompressed data 42. I understand that this claim limitation is also governed by 35 U.S.C The recited function here is decompressing the compressed data extracted by said broadcast program extraction means and outputting decompressed data. The corresponding structure for performing this function is a decoder or equivalents thereof. 43. Indeed, the 093 patent describes that various types of decoders perform the claimed function of decompressing the extracted compressed data. 24

25 For example, the 093 patent mentions that an MPEG decoder 141 can decompress MPEG-compressed video and audio signals. ARRIS-1001 at 8: In addition, the 093 patent mentions that an ATRAC decoder can be used to decompress ATRAC-compressed signals. Id. at 14: The 093 patent also refers to a software decoder as being able to perform decompression. Id. at 14:33-39; see also 14: A POSITA, therefore, would not have viewed the 093 patent as somehow limiting its disclosure of decompressing means to a particular type of decoder for decoding specific compression formats. Rather, a POSITA would have understood that various types of decoder as used in this field would be capable of performing the claimed decompressing function. 45. Therefore, under the BRI standard and based on what the 093 patent itself says about the decompression process, I believe that decompression means should be construed to require the function of decompressing the compressed data extracted by said broadcast program extraction means and outputting decompressed data. Moreover, this function is performed by the structure of a decoder or equivalents thereof. 25

26 C. digital interface means for receiving the compressed data extracted by said broadcast program extraction means and the decompressed data from said decompression means, and for outputting each of the compressed data and the decompressed data to a digital external unit 46. I understand that this claim limitation is also governed by 35 U.S.C The recited function here is receiving the compressed data extracted by said broadcast program extraction means and the decompressed data from said decompression means, and outputting each of the compressed data and the decompressed data to a digital external unit. The corresponding structure for performing this function is a digital interface or equivalents thereof. 47. According to the 093 patent, the structure for performing this function is a digital interface. For example, the 093 patent describes a digital interface 20 through which digital data is supplied to digital external units. ARRIS-1001 at 6: Additionally, the 093 patent describes that compressed and decompressed signals are [s]upplied to the digital interface 20. Id. at 9: The 093 patent also describes that the digital interface 20...outputs either the transport stream or the digital audio signal to the external unit. Id. at 9: In other words, the digital interface is the structure that performs the function of 26

27 receiving compressed and decompressed data and outputting each of the compressed and decompressed data to a digital external unit. 48. Therefore, under the BRI standard and based on what the '093 patent itself says about the decompression process, I believe that "digital interface means" should be construed to require the function of receiving the compressed data extracted by said broadcast program extraction means and the decompressed data from said decompression means, and outputting each of the compressed data and the decompressed data to a digital external unit. Moreover, this function is performed by the structure of a digital interface or equivalents thereof. D. control means for controlling, based on an instruction from the user, the selection of an output from said digital interface means to said digital external unit 49. I understand that this claim limitation is also governed by 35 U.S.C The recited function here is controlling, based on an instruction from the user, the selection of an output from said digital interface means to said digital external unit. The corresponding structure is a controller or equivalents thereof. 50. The 093 patent refers to, in multiple instances, a controller for performing the above-noted function. See, e.g., ARRIS-1001 at Abstract, 9:54-56, 11:33-38, 12:33-13:14. That is, the controller is the structure that performs the function of controlling, based on an instruction from the user, the selection of an 27

28 output from said digital interface means to said digital external unit. Indeed, the 093 patent also describes that the minimum structure for performing the controlling function is its controller. For example, the 093 patent describes that its digital interface supplies either of the transport stream or the decompressed data to a digital external unit under the control of the controller (id. at Abstract), that its controller controls the digital interface 20 in response to the command signal to supply the digital data (id. at 9:54-64), and that its controller 30 controls the digital interface 20 to output the transport stream or output the MPEG-decoded digital audio signal. Id. at 12:33-13:14. Based on this description, a POSITA would have recognized that the 093 patent s description of controller is the structure for performing the controlling function as claimed. 51. Therefore, under the BRI standard and based on what the 093 patent itself says about the controlling process, I believe that controlling means should be construed to require the function of controlling, based on an instruction from the user, the selection of an output from said digital interface means to said digital external unit. Moreover, this function is performed by the structure of a controller or equivalents thereof. 28

29 VII. ANALYSIS OF 093 PATENT CLAIMS IN LIGHT OF PRIOR ART 52. In my opinion, as further detailed below, at least claims 1, 3, and 8 of the 093 patent are unpatentable in view of Browne, Joseph, and Hoffman, either alone or in combination. A. Claims 1 and 8 of the 093 Patent Are Anticipated by Browne 53. Browne anticipates at least claims 1 and 8 of the 093 patent, as discussed on an element-by-element basis below. 1. Claim 1 (a) A digital broadcast receiving apparatus for receiving broadcast program signals, comprising 54. If the preamble is limiting, it is my opinion that Browne discloses this limitation. In particular, Browne discloses multi-source recorder player 100 having input connections which may receive an input signal 101a-101f from air and ground based broadcast sources, cable feeds, or digital distribution sources. ARRIS-1004 at 6. Furthermore, the multi-source recorder player receives, via the routing of inputs 101a-101g to input demodulators 113a-113g, receives signals from one or more of the following: a VHF antenna input, an FM antenna input, an AM antenna input, a cable television input, a Direct Broadcast Satellite input, a digital signal input, and an audio and video direct input. Id. at 9. Thus, Browne s multi-source recorder player can receive broadcast signals. Browne also discloses 29

30 that it can receive digital ISDN data. Id. at 11. Thus, Browne s multi-source recorder player is a digital broadcast receiving apparatus. Browne further discloses that the multi-source recorder player (an audio/video recorder system) receives a plurality of transmission signals each containing program information and simultaneously stores the received transmission signals. Id. at Abstract. Thus, Browne s multi-source recorder player receives broadcast program signals. Audio program data is handled in much the same way as video program data, so the broadcast program signals include audio program data or video program data. Id. at For at least these reasons, Browne discloses a digital broadcast receiving apparatus for receiving broadcast program signals, as recited in claim 1. (b) broadcast program extraction means for extracting from said broadcast program signals compressed data including a broadcast program selected and specified by a user 56. As I explained above in 39-41, I believe that broadcast program extraction means requires, under the BRI standard, the function of extracting from said broadcast program signals compressed data including a broadcast program selected and specified by a user performed by the structure of a demodulator, a demodulator with demultiplexer, or equivalents thereof. Because Browne discloses a demodulator, namely demodulator 113g, that performs the function of 30

31 extracting compressed data, including a broadcast program, from received signals, Browne discloses this limitation. 57. For example, Browne discloses a demodulator means for separately extracting the video and audio signals from each of the received transmission signals. ARRIS-1004 at Claim 23. Specifically, input demodulator section 113 includes a plurality of input demodulators 113a-113g, and [e]ach of the plurality of input demodulators 113a-113g respectively receives an input signal 101a-101g comprising audio and/or video information. Id. at 9. The multi-source recorder player 100 may receive digital ISDN data as input signal 101g, which is digitally modulated and distributed in a compressed format. See id. at 23 (... the user is prompted from source screen 502, shown in Fig. 5B, to enter the source from which the multi-source recorder player 100 should record the desired program.... can select from... ISDN digital from source screen 502. ); see also ARRIS-1018 at 1:6-8 (... image communication/bidirectional broadcast system such as a broadband ISDN or a cable television... ); ARRIS-1019 at 64 ( Broadcast TV stations and satellites can also be used effectively and rapidly to deploy [broadband ISDN] services. ). After demodulator 113g demodulates the input signal 101g, the output of demodulator 113g contains the digital data in unmodulated format but still in a compressed format i.e., demodulator 113g extracts compressed data. Id. at 11. This is further illustrated in Browne s FIG. 1 below. 31

32 ARRIS-1004 at FIG. 1 (annotated) 58. Thus, at least demodulator 113g of Browne corresponds to the demodulator as disclosed in the 093 patent. ARRIS-1001 at 6:66-7:4. Moreover, the extracted data in Browne includes a broadcast program selected and specified by a user. For instance, Browne s system is controlled by user input to allow for automatic recording of selected programs. ARRIS-1004 at Abstract. In other words, the user selects and specifies which broadcast program is extracted. An example user interface in Browne is shown in Browne s FIGS. 5A-5C below, where the user is prompted to select and specify the desired broadcast program for viewing or recording. Indeed, by choosing a channel as shown in FIG. 5A, by choosing a broadcast input source as shown in FIG. 5B, or by entering the name of the desired broadcast program as shown in FIG. 5C, the user selects and specifies 32

33 which broadcast programs are extracted by Browne s demodulators. See ARRIS at 23. ARRIS-1004 at FIGS. 5A-5C 59. The demodulator in Browne that performs the above-described extraction process is a demodulator, a demodulator with demultiplexer, or an equivalent thereof. Therefore, for at least these reasons, Browne discloses a broadcast program extraction means for extracting from said broadcast program signals compressed data including a broadcast program selected and specified by a user, as recited in claim 1. 33

34 (c) decompression means for decompressing the compressed data extracted by said broadcast program extraction means and for outputting decompressed data 60. As I explained above in 42-45, I believe that decompression means requires, under the BRI standard, the function of decompressing the compressed data extracted by said broadcast program extraction means and outputting decompressed data performed by the structure of a decoder or equivalents thereof. Because Browne discloses a decompressor section that is a decoder and that performs decompressing and outputting data in this manner, Browne discloses this limitation. 61. For example, Browne discloses the use of various decompressors 106 for decompressing compressed data. ARRIS-1004 at 14. Referring further to FIG. 1 of Browne below, the decompressor section 106, shown highlighted in red, receives compressed data that demodulator 113g has extracted from input signal 101g, decodes the compressed data, and sends the decompressed data downstream to a digital crosspoint 107. See ARRIS-1004 at

35 ARRIS-1004 at FIG. 1 (annotated) 62. The decompressor section in Browne that performs the abovedescribed decompression process is a decoder or an equivalent thereof because Browne s compressed digital data is encoded and must be decoded to decompress it. Therefore, for at least these reasons, Browne discloses a decompression means for decompressing the compressed data extracted by said broadcast program extraction means and for outputting decompressed data, as recited in claim 1. 35

36 (d) digital interface means for receiving the compressed data extracted by said broadcast program extraction means and the decompressed data from said decompression means, and for outputting each of the compressed data and the decompressed data to a digital external unit 63. As I explained above in 46-48, I believe that digital interface means requires, under the BRI standard, receiving the compressed data extracted by said broadcast program extraction means and the decompressed data from said decompression means, and outputting each of the compressed data and the decompressed data to a digital external unit performed by the structure of a digital interface or equivalents thereof. Because Browne discloses a digital interface that performs receiving and outputting data in precisely this manner, Browne discloses this limitation. 64. To provide more detail, I refer to annotated FIG. 1 of Browne below. In particular, in the output section of Browne [t]here are two digital outputs 112g and 112h. ARRIS-1004 at 16. Browne explains that output 112g is used for outputting decompressed digital data, for example, to a digital television receiver and that output 112h is used for outputting modulated or non-modulated compressed program data, for example, to a remote location via common carrier 36

37 channels, such as the telephone or ISDN networks, or to any receiver with decompression circuitry. ARRIS-1004 at 16. ARRIS-1004 at FIG. 1 (annotated) 65. In the annotated figure above, the portion of Browne s apparatus shown in red is a digital interface, which includes bus 109 and the additional circuitry that interfaces between (1) demodulator 113g and mixer 108c and (2) any digital external receivers that may be connected to outputs 112g or 112h. Browne s digital interface, shown in red in the annotated figure above, receives compressed data extracted by the broadcast program extraction means (the output of demodulator 113g) and the decompressed data from the decompression means (the output of decompressor 106 which passes through mixer 108c). Browne s digital 37

38 interface shown in the annotated figure above also outputs each of the compressed data and the decompressed data to external receivers, such as a digital television receiver or any receiver with decompression circuitry. Id. at In more detail, Browne s digital interface, shown in the annotated figure above, receives extracted, compressed data coming from demodulator 113g and outputs it to a digital external receiver via digital output 112h. This occurs when the user selects 101g as the input and 112h as the output. Browne s digital interface also receives decompressed data from decompressor section 106, via mixer 108c, and outputs it to a digital external receiver via digital output 112g. This occurs when the user selects 101g as the input and 112g as the output. Indeed, Browne discloses a system that can receive a plurality of different types of input signals... and can output the signals to one or more receivers. ARRIS at Thus, Browne s digital interface i.e., bus 109 and the additional circuitry that interfaces between (1) demodulator 113g and mixer 108c and (2) any digital external receivers that may be connected to outputs 112g or 112h performs the function of receiving compressed data extracted by the broadcast program extraction means and decompressed data from the decompression means and further outputting each of the compressed and decompressed data to a digital external unit. Further, the circuitry identified as a digital interface in the annotated 38

39 figure above is a digital interface or equivalent thereof because it interfaces between the (1) the demodulator 113g and mixer 108c, which provide digital data and (2) any digital external receivers that may be connected to outputs 112g or 112h. Therefore, for at least these reasons, Browne discloses a digital interface means for receiving the compressed data extracted by said broadcast program extraction means and the decompressed data from said decompression means, and for outputting each of the compressed data and the decompressed data to a digital external unit, as recited in claim 1. (e) control means for controlling, based on an instruction from the user, the selection of an output from said digital interface means to said digital external unit, said output being selected from the compressed data extracted by said broadcast program extraction means and the decompressed data from said decompression means 68. As I explained above in 49-51, I believe that "control means" requires, under the BRI standard, controlling, based on an instruction from the user, the selection of an output from said digital interface means to said digital external unit performed by the structure of a controller or equivalents thereof. Because Browne discloses a controller structure, namely controller 105, that performs this function, Browne discloses this limitation. 39

40 69. For example, Browne discloses the structure of a controller in a controller 105 that generates a routing controller screen 700. ARRIS-1004 at 27. Browne discloses that controller 105 is a microprocessor which preferably runs a user control program. Id. at 13. As shown below in FIG. 7 of Browne, the controller screen allows the user to select among various combinations of compressed and decompressed inputs/outputs. For example, the user can select any of the outputs 112a-112h to which the program signals should be sent, with outputs 112g and 112h sending out decompressed and compressed digital signals, respectively, as described above in the analysis of limitation 1(d), beginning at 63. See id. at 27. Here, I note that while the drawing only shows outputs 112a to 112c, the corresponding description in Browne clarifies that any of the outputs h may be designated by the user. Id. ( Output selection is not limited to outputs 112a-112c, but may be any of the outputs 112a-112h of the multi-source recorder player 100. ). 70. Similarly, the user can select any of the inputs from which the broadcast signals are received. Browne discloses allowing any source to be connected to any destination. Id. at 14. For example, Browne discloses that the user can select[] from the signal selection section 702 the types of signals which will be output by the output selected from output selection 701. Id. at

41 ARRIS-1004 at FIG. 7 (annotated) 71. Referring further to FIG. 1 of Browne, Browne discloses a system in which the user selects whether the compressed, digital data from input 101g is sent to digital output 112g as decompressed data, for example via decompressor 106d, or to digital output 112h as compressed data. 72. In the case where two different external units, for example one that can play compressed files and one that cannot, are respectively connected to each of outputs 112g and 112h, the claimed functionality is still met. Indeed, the 093 patent describes that its digital interface can output compressed data to DVTRs and AVHDDs, which can play compressed data, as well as output decompressed data 41

42 to magneto-optical disc players, which can play decompressed data. See ARRIS at 9:61-64, 13:15-39; see also id. at 17:7-10 (...transport streams are supplied to the DVTR 100 or the AVHDD unit 200, while MPEG-decoded digital audio signals are supplied to the MD unit 300. ). 73. Browne also discloses connecting a single external device to its multiple outputs. For example, Browne discloses that the various input signals can be output to one or more receivers. ARRIS-1004 at 33. In one instance, Browne discloses that outputs 112b and 112c, which are two separate outputs, are connected to one or more devices. Id. at 16. A POSITA would have understood, based on such disclosures of Browne, that a single digital external unit could be connected to both outputs 112g and 112h. 74. For at least these reasons, Browne discloses a control means for controlling, based on an instruction from the user, the selection of an output from said digital interface means to said digital external unit, said output being selected from the compressed data extracted by said broadcast program extraction means and the decompressed data from said decompression means, as recited in claim Claim 8 (a) A method of receiving a digital broadcast comprising 75. As discussed above in the analysis of limitation 1(a), beginning at 54, Browne discloses a digital broadcast receiving apparatus for receiving 42

43 broadcast program signals. See also ARRIS-1004 at 6, 9, 11, FIG. 1. Browne s digital broadcast receiving apparatus performs a method of receiving a digital broadcast. Therefore, for the same reasons, Browne discloses a method of receiving a digital broadcast. (b) extracting from the digital broadcast compressed data including a broadcast program selected and specified by a user 76. As discussed above in the analysis of limitation 1(b), beginning at 56, Browne discloses a broadcast program extraction means for extracting from said broadcast program signals compressed data including a broadcast program selected and specified by a user. See also ARRIS-1004 at 6, 10 11, 23, Claim 23. Therefore, for the same reasons, Browne discloses extracting from the digital broadcast compressed data including a broadcast program selected and specified by a user. (c) decompressing the compressed data to form decompressed data 77. As discussed above in the analysis of limitation 1(c), beginning at 60, Browne discloses a decompression means for decompressing the compressed data extracted by said broadcast program extraction means and for outputting decompressed data. See also ARRIS-1004 at 14, 16. Therefore, for the same 43

44 reasons, Browne discloses decompressing the compressed data to form decompressed data. (d) outputting, in a main outputting step, each of the compressed data and the decompressed data to a digital external unit 78. As discussed above in the analysis of limitation 1(d), beginning at 63, Browne discloses a digital interface means for receiving the compressed data extracted by said broadcast program extraction means and the decompressed data from said decompression means, and for outputting each of the compressed data and the decompressed data to a digital external unit. See also ARRIS-1004 at 14, 16, 27, 33, FIG. 1. Therefore, for the same reasons, Browne discloses outputting, in a main outputting step, each of the compressed data and the decompressed data to a digital external unit. (e) controlling, based on an instruction from the user, the selection of an output from said main outputting step to said digital external unit, said output being selected from the compressed data and the decompressed data 79. As discussed above in the analysis of limitation 1(e), beginning at 68, Browne discloses a control means for controlling, based on an instruction from the user, the selection of an output from said digital interface means to said 44

45 digital external unit. See also ARRIS-1004 at 13, 16, 22, 27, 33, FIG. 7. Therefore, for the same reasons, Browne discloses controlling, based on an instruction from the user, the selection of an output from said main outputting step to said digital external unit, said output being selected from the compressed data and the decompressed data. B. Claims 1, 3, and 8 of the 093 Patent Are Rendered Obvious by Browne in View of Joseph 80. Claim 3 of the 093 patent is rendered obvious by Browne in view of Joseph. Moreover, to the extent Browne is considered not to anticipate claims 1 and 8 of the 093 patent, Browne in view of Joseph renders the claims obvious. 1. Claim 3 (a) The digital broadcast receiving apparatus according to claim As discussed above in the analysis of claim 1, beginning at 54, Browne discloses a digital broadcast receiving apparatus. (b) wherein the compressed data comprises data which is compressed by an MPEG method 82. Claim 3 of the 093 patent recites that the compressed data, as recited in claim 1, is compressed by an MPEG method. As discussed above in the overview of the Joseph patent, beginning at 29, while Browne clearly discloses 45

46 receiving compressed digital signals such as high definition television (HDTV) signals, which a POSITA would readily understand would include compressed MPEG signals, Browne does not specifically mention MEPG compression, likely because the MPEG standard was still in early development and not in prevalent use for broadcasting in the early 1990s when Browne was written ARRIS-1004 at As discussed above in the overview of the Joseph patent, beginning at 29, there were many references in the timeframe between Browne and the 093 patent that taught use of MPEG compression technology for television broadcasting purposes. Such references, Joseph for instance, confirm that high definition digital television signals as received by Browne were compressed based on MPEG technology. Thus, it would have been obvious to a POSITA to modify the system of Browne, which is designed to receive and decode compressed broadcast signals, in view of Joseph s disclosure of MPEG technology, so that the system of Browne would receive, via input 101g, MPEG compressed signals as well as decode such signals for further processing and routing. 84. As discussed above in the overview in the overview of the Joseph patent, beginning at 29, the MPEG-1 standard had not yet been adopted at the time of Browne. In fact, the MPEG-2 standard, which subsequently became widespread for broadcast-quality television signals, did not come about until 1995 (audio) to 1996 (video). See ARRIS-1012 and ARRIS Thus, once the 46

47 MPEG standard became widely adopted for digital broadcasting, which is a timeframe prior to the 093 patent, a POSITA would have readily recognized that Browne, if not already so designed, should be modified to receive and process the MPEG signals provided through standard broadcasting media at that time. See ARRIS-1014 at 277 ( Digitally broadcast TV services are now well established in markets in many countries. ); see also id. at FIG. 1; ARRIS-1020 at 2:15-30 ( International standardization committees have been working on the specification of the coding methods and transmission formats for several compression algorithms... MPEG has also specified a second standard, MPEG-2, which provides audiovisual quality of both broadcast TV and HDTV. ); ARRIS-1021 at 1:6-10 ( Recently, by the establishment of the high efficiency coding technology such as MPEG (Moving Picture Experts Group) 2, the digital processing of the image is advanced, and further, in the television broadcasting the digital processing is being studied. ). That is, a POSITA would have understood that, in view of the limited number of types of compression in use for digital broadcasts at around the priority date of the 093 patent, Browne should be modified, if needed, to receive the standard compression format of the day MPEG. Not surprisingly, the 093 patent also recognizes that MPEG is the prevalent format for broadcasting compression: [i]n the digital broadcast system, signals representing a plurality of 47

48 television programs compressed according to, for example, the Moving Picture Experts Group (MPEG) method. ARRIS-1001 at 1: The modification of Browne in view of Joseph would have been especially motivated based on Browne s teaching that its system is designed to receive and process satellite and other HDTV broadcast signals. See ARRIS-1004 at 11. As noted above, a POSITA would have found it obvious to use MPEGcompressed signals for this purpose. In fact, both Joseph and Browne are directed to receiving direct broadcast satellite signals. ARRIS-1005 at 1:9-13; ARRIS-1004 at 9. Thus, a POSITA would have been motivated to incorporate the MPEG compression standard as disclosed in Joseph into Browne, in so doing modifying Browne to include any components of Joseph needed to receive and process the MPEG-compressed signals, including but not limited to a tuner, demodulator, transport circuit, demultiplexer, and MPEG decoder. 86. Joseph, which came after the adoption of the MPEG format, recognizes that [t]he compression and decompression of packetized video and audio signals may be accomplished according to the Motion Picture Expert Group (MPEG) standard for performing digital video/audio compression. ARRIS-1005, 1: Thus, Joseph s receiver unit includes a decoder, such as an MPEG-1 or MPEG-2 video/audio decoder in order to decompress the received compressed video/audio. Id. at 1:

49 87. Because a POSITA would have understood that the MPEG broadcast signals received in Joseph would be precisely the type of compressed broadcast signals that the system in Browne would have received following adoption of the MPEG standard, it would have been obvious to substitute, as needed, the components of Browne with those from Joseph needed to enable Browne to receive and process MPEG-compressed signals. Such components include, but are not limited to, a tuner, demodulator, transport circuit, demultiplexer, and MPEG decoder. Id. at FIG Therefore, because a POSITA would have found it obvious to modify Browne in view of Joseph to receive and process compressed MPEG signals, Browne and Joseph render obvious dependent claim Claims 1 and As discussed above in the analysis of claims 1 and 8, beginning at 53, Browne discloses all limitations of claims 1 and 8. However, should certain claim terms be construed narrowly such that Browne does not anticipate, then Browne in view of Joseph renders these claims obvious. I discuss below how Browne in view of Joseph further discloses limitations 1(b), 1(c), 1(d), and 1(e) as well as limitations 8(b), 8(c), 8(d) and 8(e). My discussions above regarding the remaining limitations of claim 1, beginning at 54, and of claim 8, beginning at 49

50 75, are further incorporated herein. Thus, claims 1 and 8 are rendered obvious by Browne in view of Joseph. (a) Limitations 1(b) and 8(b) 90. As discussed above regarding the interpretation of broadcast program extraction means, beginning at 39, Browne discloses the claimed broadcast program extraction means in the form of demodulator 113g. However, should broadcast program extraction means be interpreted narrowly to include specific structures such as a tuner or a front-end unit, or a demultiplexer, Joseph discloses precisely such structures and, for at least the reasons I gave above in and 82-88, a POSITA would have been motivated to modify Browne s system to include such structures, which are all found in Joseph. 91. For example, Joseph discloses a receiver unit that includes a tuner 52, [f]ront-end circuitry that receives that L-band RF signals... and converts them back into the original digital data stream, and a demodulator 54. ARRIS at 6:43-45, 7:14, FIGS. 1, 4. Joseph also discloses a channel demultiplexer 62 for extracting desired programming. ARRIS-1005, 7:33-38, FIG. 4. To the extent Browne does not disclose all the required components of the extraction means, a POSITA would have understood that Joseph s tuner, front-end unit, and demultiplexer could be readily incorporated into Browne s system to thereby extract compressed MPEG data from the received broadcast program signals. 50

51 Indeed, Joseph includes all the same components as described in the 093 patent (i.e. tuner, front-end unit, and demultiplexer) for extracting from broadcast program signals compressed data including a broadcast program selected and specified by a user. 92. Therefore, for at least these reasons, Browne in view of Joseph further renders obvious limitation 1(b). Limitation 8(b), which is a method step that corresponds to limitation 1(b), is rendered obvious by Browne in view of Joseph by similar rationale. (b) Limitations 1(c)-1(e) and 8(c)-8(e) 93. As discussed above in the analysis of limitation 1(c), beginning at 60, Browne discloses multiple decompressors, such as decompressor 106d, that decompress the compressed data extracted by the broadcast program extraction means and outputs decompressed data. See also ARRIS-1004, FIG. 1, 14, 16. However, should "decompression means" be interpreted narrowly to specifically include an MPEG decoder, Joseph discloses precisely such a decoder and, for at least the reasons I gave above in and 82-88, a POSITA would have been motivated to modify Browne's system to include an MPEG decoder in view of the MPEG technology as disclosed by Joseph. 94. Indeed, Joseph discloses that [t]he compression and decompression of packetized video and audio signals may be accomplished according to the 51

52 Motion Picture Expert Group (MPEG) standard for performing digital video/audio compression. ARRIS-1005 at 1: In order to decode such MPEG signals, Joseph discloses a receiver unit having an MPEG-1 or MPEG-2 video/audio decoder in order to decompress the received compressed video/audio. Id. at 1: The use of MPEG decoders in Joseph is further corroborated through FIGS. 4 and 7 of Joseph, which shows that the compressed transport stream in Joseph includes MPEG data that would have to be decoded downstream by Joseph s decoder circuit 72. See id., 9:51-10:32, FIGS. 4 and 7. Therefore, a POSITA would have found it obvious that the decompressing means in Browne, namely its decompressors, could be modified to use an MPEG decoder capable of decompressing the received MPEG data as taught by Joseph. Moreover, decompressed data from said decompression means, which are mentioned in claim elements 1(d) and 1(e), are likewise covered by the decoded MPEG data from Joseph s MPEG decoder. 95. For at least these reasons, Browne in view of Joseph further renders obvious limitations 1(c)-1(e), which recite the decompression means. Limitations 8(c)-8(e), which are method steps corresponding to limitations 1(c)-1(e), are also rendered obvious by Browne in view of Joseph for the same reasons. 52

53 (c) Limitations 1(e) and 8(e) 96. As I discussed above in the analysis of limitation 1(e), beginning at 68, Browne discloses the claimed control means in the form of controller 105 that allows the user to control, based on an instruction from the user, the selection of an output from the digital interface means to the digital external unit, said output being selected from the compressed data extracted by the broadcast program extraction means and the decompressed data from the decompression means. See also ARRIS-1004 at 27, FIG. 7. However, should control means be interpreted narrowly as a computer-implemented means that requires a memory as well as implementation of an algorithm, Browne in view of Joseph discloses this limitation. 97. For example, the controller 105 of Browne retains data... in RAM memory for future control of the multi-source recorder player 100 and also stores an index of programs in the memory of the controller 105. Id. at 22, 14. Thus, Browne discloses a controller with a memory. Joseph also discloses a microcontroller 58 as well as system RAM 70 and a random-access-memory (RAM) 74. ARRIS-1005 at 7:14-23, FIG. 4. Thus, the controller in both Browne and Joseph includes a memory. 98. Additionally, the controller 105 in Browne is described as run[ning] a user control program. ARRIS-1004 at 13. Thus, Browne s controller

54 necessarily implements an algorithm in order to carry out the necessary control functions associated with the user control program The 093 patent describes that a transport stream and an MPEGdecoded digital audio signal may be supplied to each of the DVTR 100 and the AVHDD unit 200, and the user may select the transport stream or the digital audio signal to be output. ARRIS-1001 at 17:7-19; see also 15:9-14. Accordingly, under the BRI standard, the algorithm that the 093 patent s controller uses to select from the compressed data and the decompressed data is one in which the controller receives user input selecting from compressed or decompressed output As explained above in the analysis of limitation 1(e), beginning at 68, Browne discloses such an algorithm where the controller receives user input for selecting from compressed or decompressed output. ARRIS-1004, 13, 16, 22, 27, 33, FIG. 7. Thus, a POSITA would have recognized that Browne and Joseph render obvious a controller and a memory that implement an algorithm in which the controller selects compressed or decompressed output based on received user input selecting from compressed or decompressed output The 093 patent also describes additional algorithms for controlling, based on an instruction from the user, the selection of an output from the digital interface selected from the compressed data and the decompressed data. See ARRIS-1001 at 12:49-13:11, 16:23-17:23. Such algorithms in the 093 patent 54

55 display a list of digital external units for user selection, determine which type of digital external unit has been selected, and select compressed or decompressed output based on the type of digital external unit selected. Id As explained above in the analysis of limitation 1(e), beginning at 68, Browne discloses a similar algorithm in which Browne s system displays a list of outputs for user selection, determines which type of output has been selected by the user, and selects compressed or decompressed output based on the type of output selected by the user, as further explained below. For instance, Browne discloses a controller 105 that generates a virtual control screen. ARRIS-1004 at 13. Moreover, the user can use the routing controller screen 700 to select[] the output to which the signals are to be sent as well as select[] from the signal selection 702 the types of signals that will be output. Id. at 27. Therefore, the user has a great deal of control over the signals that are input and can output the signals to one or more receivers. Id. at 33; see also id. at FIG While Browne describes selection of the type of output, rather than type of digital external unit, a POSITA would have found it obvious to select the type of digital external unit instead based on Browne s teachings regarding selecting the type of output. Indeed, Browne explains that [o]utput 112g may be used for sending decompressed digital data... to a digital television receiver or [o]utput 112h may be used to output compressed program data... to any 55

56 receiver with decompression circuitry. ARRIS-1004, 16, 27. Through this disclosure, Browne equates the type of output selected with the type of device connected to the output terminal. Thus, Browne recognizes selecting the type of output as being equivalent to selecting the type of digital external unit Based on Browne s disclosures as noted above, a POSITA would have found it obvious to select compressed or decompressed output based on selection of the type of digital external unit (that is, digital television receiver or receiver with decompression circuitry ). ARRIS-1004, 16, 27. Indeed, a POSITA would have understood controller selection of compressed or decompressed output as having a limited number of options, such as a first option of selecting the type of output or a second option of selecting the type of device receiving the output. Therefore, a POSITA would have found it obvious to modify Browne, or Browne in view of Joseph, to further implement the controller s selection of compressed or decompressed output based on user selection of the type of digital external unit. Moreover, under the BRI standard, a POSITA would have seen Browne s selection of type of output as being an algorithm that is equivalent to the 093 patent s selection of the type of digital external unit Therefore, for at least these reasons, Browne in view of Joseph further renders obvious limitation 1(e). Limitation 8(e), which is a method step that 56

57 corresponds to limitation 1(e), is rendered obvious by Browne in view of Joseph for the same reasons. C. Claims 1 and 8 of the 093 Patent Are Rendered Obvious by Browne in View of Hoffman 106. As discussed above in the analysis of limitation 1(d), beginning at 63, and in the analysis of limitation 8(d), beginning at 78, Browne discloses a digital interface for receiving the compressed data extracted by said broadcast program extraction means and the decompressed data from said decompression means, and for outputting each of the compressed data and the decompressed data to a digital external unit. ARRIS-1004 at 16. As discussed above in the overview of the Hoffman article, beginning at 31, and explained further below, a POSITA would have been motivated to modify Browne s digital interface with after-arising IEEE 1394 interface technology, for example as taught by Hoffman. Various other references, such as Hurley and Severance, also discuss the development and wide applicability of IEEE 1394 technology. See, e.g., ARRIS-1014 at Abstract ( New features that are expected in the future include... the move to digital interconnection of home equipment using IEEE1394. ); see also ARRIS-1015 at 119 ( [IEEE 1394] standard proposes to provide a single port on the back of our computers that can handle nearly all of the communication for which we now need eight to 10 ports. ). My discussions above regarding the remaining limitations of 57

58 claim 1, beginning at 54, and of claim 8, beginning at 75, are further incorporated herein Even if digital interface means is narrowly construed to include, for example, a single line that outputs both compressed and decompressed data, which I don t agree would be proper under the BRI standard, Browne in view of Hoffman nevertheless renders obvious this limitation under such narrow interpretation For example, a POSITA would have recognized that the IEEE 1394 interface, as described in Hoffman, offers an elegant solution to replacing the crowded output section of Browne having a plurality of outputs. See ARRIS-1004 at 15, FIG. 1. In fact, Browne discloses having up to eight video and eight stereo audio outputs. Id. at 15. The boxed section of Browne, reproduced below, shows the crowded output section. 58

59 ARRIS-1004 at FIG. 1 (annotated) 109. A POSITA would have recognized that Browne s system would have required many connectors and cables to connect all of the various external devices to its many outputs. Such a configuration would lead to many cables behind the recorder system of Browne Hoffman recognizes this problem with ever increasing number of output ports and mentions that users are not pleased with having so much space taken up by the various output ports and cables. See ARRIS-1006 at 334 ( Besides requiring a great deal of space for the connectors, the growing number of cables overwhelms many users. ). 59

60 111. Thus, Hoffman proposes using a high-speed IEEE 1394 interface to revolutionize the transport of digital data for both professional and consumer electronic products, such as the multi-source recorder player 100 described in Browne. Id. at Abstract As disclosed in Hoffman, using IEEE 1394 technology can lead to a physically small interface in which a thin serial cable can replace larger and more expensive interfaces. Id. at Moreover, IEEE 1394 may provide more bandwidth and allow up to 63 devices. Id. In one example, Hoffman describes how IEEE 1394 technology is used to connect a digital monitor, a computer, a digital VCR, and a printer to a digital data source by using a single IEEE 1394 cable. Id. at In view of Hoffman s disclosure about the IEEE 1394 interface, a POSITA would have readily recognized that the plurality of outputs in Browne would have easily been replaced with an IEEE 1394 interface having far fewer output ports and cables. A POSITA would have been motivated to make such a modification in order to reduce the excess space taken up by the multitude of output ports and cables at the output section of Browne. In particular, with reference to Browne s two separate digital outputs 112g and 112h that correspondingly output decompressed digital data to a digital television and compressed digital data to a receiver with decompression circuity, the modification 60

61 in view of Hoffman to combine the two outputs into a single output/wire would allow Browne to achieve the same result using a single IEEE 1394 cable Additionally, a POSITA would have also recognized that as more data and devices made the transition from analog to digital, the various D/A converters provided in Browne in order to convert the digital signals to analog signals intended for analog devices, would have been unnecessary. Indeed, Hoffman recognizes that [b]roadcast and cable television are migrating to digital transport and that [a] new interface is needed by the analog world migrating to a fully digital environment. ARRIS-1006 at 334. Thus, a POSITA would have recognized that by replacing the boxed section of Browne, as illustrated below in FIG. 1, with a fully digital IEEE 1394 interface, the complexity of Browne s system could have been reduced while at the same time reducing physical size and maintaining bandwidth. See id. at

62 ARRIS-1004 at FIG. 1 (annotated) 115. As an example of how a POSITA may have implemented the abovenoted modification of Browne to include the IEEE 1394 interface of Hoffman, I have provided an illustration below based on Browne. A POSITA would have found it obvious, for example, to replace the D/A converter and output section of Browne with the IEEE 1394 interface of Hoffman such that the IEEE 1394 interface would instead receive the decompressed and compressed broadcast data that would have been output through outputs 112g and 112h. A single IEEE 1394 port could then be used to replace the various output ports of Browne. In this way, the digital interface in this proposed combination of Browne and Hoffman that is, the IEEE 1394 interface of Hoffman receives compressed and decompressed broadcast data and then outputs digital data (either compressed or decompressed) through a single IEEE 1394 output. 62

63 ARRIS-1004 at FIG. 1 (annotated) 116. Accordingly, Browne in view of Hoffman renders obvious claims 1 and 8 by disclosing a digital interface that outputs each of the compressed data and the decompressed data to a digital external unit based on user selection. D. Claims 1, 3, and 8 of the 093 Patent Are Rendered Obvious by Browne in View of Joseph and Hoffman 117. As discussed above in the analysis of limitations 1(c)-1(e) and 8(c)- 8(e), beginning at 93, Browne in view of Joseph discloses a digital interface that receives the compressed data extracted by said broadcast program extraction means and the decompressed data from said decompression means, and outputs each of the compressed data and the decompressed data to a digital external unit. ARRIS-1004 at 16. My discussions above regarding the remaining limitations of 63