Paper No. 1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD MICROSOFT CORPORATION Petitioner, v. BISCOTTI INC. Patent Owner Title: Patent No. 8,144,182 Issued: March 27, 2012 Filed: September 16, 2009 Inventors: Matthew B. Shoemake and Nadeem Ahmed REAL TIME VIDEO COMMUNICATIONS SYSTEM Inter Partes Review No. IPR2015-01054 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,144,182 UNDER 35 U.S.C. 311-319 AND 37 C.F.R. 42.1-.80 & 42.100-.123
TABLE OF CONTENTS I. Introduction... 1 II. COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR INTER PARTES REVIEW... 3 A. Certification the 182 Patent May Be Contested by Petitioner... 3 B. Fee for Inter Partes Review ( 42.15(a))... 4 C. Mandatory Notices (37 CFR 42.8(b))... 4 D. Proof of Service ( 42.6(e) and 42.105(a))... 5 E. Motion for Joinder... 5 III. Identification of Claims Being Challenged ( 42.104(b))... 5 IV. Relevant Information Concerning the Contested Patent... 6 A. Effective Filing Date of the 182 patent... 6 B. Person of Ordinary Skill in the Art... 6 C. Construction of Terms Used in the Claims... 6 V. Precise Reasons for Relief Requested... 8 A. U.S. Patent No. 8,144,182... 8 B. U.S. Patent No. 7,907,164 to Kenoyer (Ex. 1006)... 11 C. The HDMI Specification (Ex. 1007) Was Publicly Disseminated Prior to September 2008 and is Prior Art to the '182 Patent Claims... 13 D. Kenoyer in View of the HDMI Specification (Ex. 1007) Renders Claims 72 and 73 Obvious... 20 VI. CONCLUSION... 32 Attachment A. Proof of Service of the Petition Attachment B. List of Evidence and Exhibits Relied Upon in Petition i
I. Introduction This petition contests claims 72 and 73 of U.S. Patent No. 8,144,182. Claims 72 and 73 depend from independent claim 69, upon which the Board has instituted trial for addressing issues of anticipation over U.S. Patent No. 7,907,164 (Ex. 1006) ( Kenoyer ) in IPR2014-01459. See Microsoft Corp. v. Biscotti, Inc., IPR2014-01459, Paper 11 at 14-18 (Mar. 19, 2015). Claim 69 of the '182 patent defines an audiovisual interface; claims 72 and 73 add simply that the audiovisual interface be a standard HDMI interface. See 182 patent at cl. 72 ( the audiovisual input interface is a high-definition multimedia interface ( HDMI ) ); cl. 73 ( the audiovisual output interface is a high-definition multimedia interface ( HDMI ) ); discussed, infra, at V.D.2. In the -01459 proceeding, the Board declined to institute trial on claims 72 and 73 because the Board found that Petitioner had not established that Exhibit 1007 (the HDMI Specification version 1.3a) was prior art to the 182 claims. See IPR2014-01459, Paper 11 at 21. The Board did not address the merits of the obviousness grounds for claims 72 and 73 advanced in the -01459 petition. Petitioner presents in this petition the grounds it presented in the -01459 proceeding regarding claims 72 and 73; namely, that claims 72 and 73 would have been considered obvious based on Kenoyer in view of the HDMI Specification version 1.3a. In this petition, however, Petitioner also presents additional evidence 1
establishing more than a reasonable likelihood that Exhibit 1007 is prior art to the '182 patent claims. Specifically, Petitioner presents Exhibit 1044, the Declaration of Steve Venuti, the now retired president of HDMI Licensing, LLC, an organization that developed and promoted the HDMI Specification. Ex. 1044 at 2-3. In his declaration, Mr. Venuti demonstrates that the HDMI Specification version 1.3a (Ex. 1007) was publicly disseminated well before the effective filing date of the 182 patent. Ex. 1044 at 3-5. See V.C, below. The Board should institute trial on claims 72 and 73 based on the grounds presented in this petition for several reasons notwithstanding its prior decision regarding these claims in the -01459 proceeding. First, the new evidence provided with this petition regarding the public availability of Exhibit 1007 is different than that presented in the -01459 petition, and now includes testimony of a person with direct knowledge of the public distribution of Ex. 1007. Also, this new testimonial evidence could not have been provided with the prior petition due to the policies of the sponsor of Ex. 1007 (i.e., HDMI Licensing, LLC). See V.C; Ex. 1044 at 12. Second, the Board did not address the merits of Ex. 1007 (alone or in conjunction with Kenoyer (Ex. 1006)) when it declined to institute trial on claims 72 and 73 in IPR2015-01459. Thus, this is not a situation where the merits of the grounds being proposed have already been considered by the Board. The Board 2
has instituted trial in similar situations where the prior art relied on in the inter partes review petition had been previously presented in a reexamination proceeding) but had not been substantively analyzed. See, e.g., Cisco Sys., Inc. et al v. Crossroads Sys., Inc., IPR2014-01544, Paper 9 at 13-14 (Apr. 3, 2015). The Board should therefore exercise the discretion it has under 325(d) to consider the merits of the grounds presented for claims 72 and 73 in this petition. See Kaiser Aluminum v. Constellium Rolled Products Ravenswood, LLC, IPR2014-01002, Paper 11 at 14-15 (Dec. 29,2014) ( [t]he permissive language of 325(d) [] does not prohibit instituting inter partes review based on prior art previously presented to the Office. ) II. COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR INTER PARTES REVIEW A. Certification the 182 Patent May Be Contested by Petitioner The 182 patent is the subject of prior inter partes reviews by Petitioner, IPR2014-01457, -01458, and -01459. The Board instituted on various claims in these petitions on March 19, 2015. See generally Microsoft Corp. v. Biscotti, Inc., IPR2014-01457, Paper 9; Microsoft Corp. v. Biscotti, Inc., IPR2014-01458, Paper 10; Microsoft Corp. v. Biscotti, Inc., IPR2014-01459, Paper 11. Petitioner certifies it is not barred or estopped from requesting inter partes review of U.S. Patent No. 8,144,182 (the 182 patent) (Ex. 1001) on the basis of this petition, as this petition is being filed concurrently with a motion for joinder to 3
IPR2014-001459. As 35 U.S.C. 315(b)(2) and 37 C.F.R. 42.122(b) provide, although inter partes review may not be instituted more than one year after the date on which a petitioner is served with a complaint alleging infringement of the patent-at-issue, the one year limitation does not apply when a petition for inter partes review is accompanied by a motion for joinder filed within one month of institution of the inter partes review for which joinder is requested. This Petition and its accompanying motion for joinder are timely, as both are submitted within one month of March 19, 2015, the date trial was instituted in IPR2014-01459. Also, neither Petitioner, nor any party in privity with Petitioner, has filed a civil action challenging the validity of any claim of the 182 patent. B. Fee for Inter Partes Review ( 42.15(a)) The Director is authorized to charge the fee specified by 37 CFR 42.15(a) to Deposit Account No. 50-1597. C. Mandatory Notices (37 CFR 42.8(b)) 1. Real Party in Interest ( 42.8(b)(1)) The real party of interest of this petition pursuant to 42.8(b)(1) is Microsoft Corporation ( Microsoft ) located at One Microsoft Way, Redmond, WA 98052. 2. Other Proceedings ( 42.8(b)(2)) The 182 patent is the subject of IPR2014-01457, 2014-01458, and 2014-01459. It is also the subject of IPR2015-01052 and IPR2015-01053, which were 4
concurrently filed with this petition. Biscotti has sued Microsoft in Civil Action No. 2:13-cv-01015-JRG in the Eastern District of Texas. Ex. 1027. Infringement contentions provided by Biscotti in that case are attached as Ex. 1025. 3. Designation of Lead and Backup Counsel Lead Counsel Joseph A. Micallef Reg. No. 39,772 jmicallef@sidley.com (202) 736-8492 Backup Lead Counsel Jeffrey P. Kushan Reg. No. 43,401 jkushan@sidley.com (202) 736-8914 Backup Lead Counsel Douglas I. Lewis Reg. No. 39,748 dilewis@sidley.com (312) 853-4169 4. Service Information ( 42.8(b)(4)) Service on Petitioner may be made by mail or hand delivery to: Sidley Austin LLP, 1501 K Street, N.W., Washington, D.C. 20005. The fax number for lead counsel is (202) 736-8711 and for backup counsel is (312) 853-7036. D. Proof of Service ( 42.6(e) and 42.105(a)) Proof of service of this petition is provided in Attachment A. E. Motion for Joinder Petition has filed concurrently with this petition a motion to join this petition with IPR2014-01459. Microsoft Corp. v. Biscotti, Inc., IPR2015-01054, Paper 2. III. Identification of Claims Being Challenged ( 42.104(b)) Claims 72 and 73 of the 182 patent are unpatentable as being obvious under 103 based on Kenoyer in view of the HDMI Specification (Ex. 1007). Petitioner s proposed construction of the contested claims, the evidence 5
relied upon, and a detailed explanation why the claims are unpatentable are provided in IV, below. Evidence relied upon in this petition is in Attachment B. IV. Relevant Information Concerning the Contested Patent A. Effective Filing Date of the 182 patent The 182 patent issued from U.S. Application No. 12/561,165, which was filed on September 16, 2009. The 165 application claims priority to Provisional Application No. 61/097,379, filed September 16, 2008. The prior art presented with these grounds is well before both of these dates. Accordingly, solely for the purpose of this Petition, Petitioner is not addressing whether the claims of the '182 patent would be entitled to priority to the September 16, 2008 filing date of the '379 provisional application. B. Person of Ordinary Skill in the Art A person of ordinary skill in the art in the field of the 182 patent would have been someone with a good working knowledge of video conferencing, networking, and audio/video processing, capture, and display. The person would have gained this knowledge either through an undergraduate education in electrical or computer engineering or a comparable field, in combination with training or several years of practical working experience. Ex. 1003, 62. C. Construction of Terms Used in the Claims In this proceeding, claims must be given their broadest reasonable construction in light of the specification. 37 CFR 42.100(b). If Patent Owner 6
contends terms in the claims should be read to have a special meaning, those contentions should be disregarded unless Patent Owner also amends the claims compliant with 35 U.S.C. 112 to make them expressly correspond to those contentions. See 77 Fed. Reg. 48764 at II.B.6 (August 14, 2012); cf. In re Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012). Claims 72 and 73 depend from claim 69, upon which trial has been instituted. Petitioner proposes to use the constructions adopted by the Board in IPR2014-01459 for the terms used in claim 69. In addition, Petitioner observes that many of the claim terms of the 182 patent recite conventional structures well known to those of ordinary skill in the art (e.g., network interface ) or which generically describe certain classes of devices (e.g., video communication device ) without any special meaning for such terms set forth in the patent documents. Indeed, Petitioner notes that Patent Owner has asserted in parallel litigation that a large number of claim terms should be given their plain meaning and that no construction [is] needed. Ex. 1036 at 2-5. Accordingly, in this proceeding, where claim language must be given its broadest reasonable interpretation, in many instances no additional interpretation is needed because the role of such structures is specified by other words in the claims, and their corresponding disclosure in the cited prior art is not disputable. 7
V. Precise Reasons for Relief Requested A. U.S. Patent No. 8,144,182 The 182 patent is directed to a video calling device that can reside between a set-top box and a television set. Ex. 1001, 2:10-12, 4:64-5:9. The video calling device is described as including various conventional features well known to those of ordinary skill in the art at the time the 182 patent was filed. For example, the device may also include a video capture device, such as a camera, and an audio capture device, such as a microphone: The video communication device might further comprise a video capture device (of which a high-definition video camera is but one example) to capture a captured video stream and/or an audio capture device (of which a microphone or microphone array might be examples) to capture a captured audio stream. Ex. 1001, 2:61-66. The camera and microphone are used to capture local and remote audio and video and to transmit between local and remote devices: one of the video communication device 105a captures a video stream 155 from a first video source 115a (which might be a user, etc.). Although not shown in FIG. 1A, the video source 115a might also serve as an audio source for the video communication device 105a. Similarly, the second video communication device 105b captures a video (and/or audio) stream 160 from a second video source 115b. Ex. 1001, 5:49-56. The device is also described as outputting video for display on a television: 8
Each video communication device 105 is configured to transmit an output video stream to a display device 120; in the illustrated embodiment, the display devices 120 are high definition televisions ( HDTVs ), although other types of display devices may be used as well. Ex. 1001, 5:56-60. The 182 patent indicates that the audio can be played either using an internal speaker or external speakers: the output audio interface 435 is configured to transmit an output audio stream (which may be a consolidated output audio stream, as described later) for reception by an attached external audio receiver, which might be a standalone device configured to power a set of external speakers and/or might be incorporated within a display device. Ex. 1001, 10:59-64. The 182 patent also indicates the video communication device further comprises a network interface (which might be a WLAN interface in some cases). Ex. 1001, 2:66-3:1. This network interface is used to transmit the captured streams to the other device, where they are displayed: the video communication device 105a might receive the audio/video stream 160 captured and transmitted by the other video communication device 105b (for example, as part of a video call), and this stream 160 can be output for display on the display device (Likewise, the video communication device 105a might transmit its captured audio/video stream 155 to the other video communication device 105b, which could then output that stream 155 for display on 9
its own display device 120b). Ex. 1001, 6:2-13. In addition to capturing, transmitting, and displaying audio and video, the 182 patent suggests including a video input and an audio input to receive video and audio from a set top box: the input audio interface 425 is configured to receive an audio stream (referred to herein as a STB audio stream ) from a STB, and the input video interface 420 is configured to receive a video stream (referred to herein as a STB video stream ) from a STB. Ex. 1001, 10:48-52. The 182 patent also explains that the audio and video from the set top box can be passed through to the display: a video communication device 105a might be situated inline between a set-top box ( STB ) 125a and the display device 120a, such that the video communication device 105a can pass through an audiovisual stream 150a (which might comprise a high-definition video stream) for display on the display device 120a. Ex. 1001, 5:63-6:1. As well as displaying the set top box video and the remote or captured video, the 182 patent describes displaying both at the same time: a video communication device 105a may be configured to display the audiovisual stream 150a from the STB 125a simultaneously with the stream 160 received from another video communication device 105b, and/or along with the stream 155 it captures itself. In this way, the system 100 can provide a video calling environment that allows a 10
user to both watch television and participate in a video call. Ex. 1001, 6:14-20. In addition to this general disclosure of a video conferencing system, the 182 patent describes other functionality, including using a processor (Ex. 1001, 9:64-10:1), an audio watermark (Ex. 1001, 20:15-27), specific types of microphones (Ex. 1001, 2:64-66), displays (Ex. 1001, 5:56-60), types of connections (such as HDMI) (Ex. 1001, 14:10-17), and functionality provided by HDMI (Ex. 1001, 20:56-62, 21:5-9, 21: 51-55). B. U.S. Patent No. 7,907,164 to Kenoyer (Ex. 1006) U.S. Patent No. 7,907,164 to Kenoyer (Ex. 1006) (herein after Kenoyer ) describes a video conferencing system connected to a set top box. Kenoyer issued on March 15, 2011 from Application 11/405,686 filed April 17, 2006 and is therefore prior art under 35 U.S.C. 102(e). Kenoyer expressly incorporates several patent applications by reference (Ex. 1006, 3:40-61), making those applications part of Kenoyer s disclosure. Harari v. Lee, 656 F.3d 1331, 1334 (Fed. Cir. 2011). These patent applications include (1) U.S. Patent Application Ser. No. 11/252,238, which issued as U.S. Patent No. 7,692,683 ( the 683 patent ) (Ex. 1010); (2) U.S. Patent Application Ser. No. 11/251,084, which published as U.S. Patent Application 2006/0093128 (Ex. 1011); and (3) U.S. Patent Application Ser. No. 11/251,086, which published as U.S. 11
Patent Application 2006/0132595 (Ex. 1013). Ex. 1006, 3:40-54. Kenoyer also incorporates by reference U.S. Patent Application Ser. No. 11/251,083, which published as U.S. Patent Application 2006/0104633 (Ex. 1014); U.S. Provisional Patent Application Ser. No. 60/676,918 (Ex. 1012) and U.S. Provisional Patent Application Ser. No. 60/761,869 (Ex. 1035). Ex. 1006, 3:55-61; 1:6-17. Kenoyer, which is entitled Integrated Videoconferencing System, describes using a multi-component videoconferencing system (MCVCS) and/or a codec to provide video conferencing and connecting that codec to a set top box. This system may include a high-definition camera, microphones, a high-definition display, and speakers: Endpoints 103D-103H may include voice and video communications capabilities (e.g., videoconferencing capabilities) and include or be coupled to various audio devices (e.g., microphones, audio input devices, speakers, audio output devices, telephones, speaker telephones, etc.) and include or be coupled to various video devices (e.g., monitors, projectors, displays, televisions, video output devices, video input devices, cameras, etc.). Ex. 1006, 4:39-46; Ex. 1003, 74. The system described in Kenoyer captures local video and audio, processes the local video and audio for transmission to a remote conference site, receives remote video and audio from the remote conference site, processes the remote video and audio, displays the remote video on a display, and plays the remote 12
audio through speakers. Ex. 1006, 15:8-20; Ex. 1003, 72. Like the 182 patent, Kenoyer describes connecting the system to a set top box: The codec may also be in an independent housing that is coupled to the set-top box 705. The codec may act as a pass-through for the regular programming/games when a conference is not being held. Ex. 1006, 10:25-28; Ex. 1003, 90, 92, 95. Kenoyer teaches that when, connected to the set top box, the codec/mcvcs system can act as a pass-through for the set top box s programming when no video conference is occurring or can display both the programming and a video conference at the same time. Ex. 1006, 10:25-30; Ex. 1003, 92, 111. Kenoyer explains that the codec can use wired or wireless networking and occur over the Internet or over other types of networks. Ex. 1006, 4:17-27; Ex. 1003, 75. A concise summary of the systems and processes described in Kenoyer is provided at 69-122 of Ex. 1003. C. The HDMI Specification (Ex. 1007) Was Publicly Disseminated Prior to September 2008 and is Prior Art to the '182 Patent Claims The HDMI Specification version 1.3a (Ex. 1007)(the "HDMI Specification") was publicly disseminated beginning in November of 2006. Ex. 1044 at 1-11; Ex. 1045; Ex. 1007; Ex. 1037; Ex. 1039; Ex. 1040; Ex. 1003 128. The HDMI Specification provides a detailed technical description of the well-known HDMI standard, which is used for transmitting audio and video between components. Ex. 13
1003, 127. The HDMI Specification version 1.3a (Ex. 1007) is prior art to claims 72 and 73 of the '182 patent under 35 U.S.C. 102(b). The HDMI Specification explains that: The High-Definition Multimedia Interface is provided for transmitting digital television audiovisual signals from DVD players, set-top boxes and other audiovisual sources to television sets, projectors and other video displays. HDMI can carry high quality multi-channel audio data and can carry all standard and highdefinition consumer electronics video formats. Ex. 1007, HDMI Specification at 1; Ex. 1003, 129. The evidence provided with this petition consistently supports the conclusion that the HDMI Specification was publicly distributed well prior to September 2008, and, therefore, is prior art to the '182 patent claims. This evidence includes a declaration from Steve Venuti, formerly President of HDMI Licensing, LLC, the entity responsible for development and dissemination of the HDMI Specification version 1.3a. Mr. Venuti s testimony is fully consistent with additional evidence provided with this petition showing that Ex. 1007 was publicly disseminated starting in November of 2006, and that copies of Ex. 1007 were actually received by third parties well prior to September of 2008. This evidence also refutes the contrary suggestion that Ex. 1007 was not publicly distributed until after September of 2008. 14
First, the date printed in the HDMI Specification v. 1.3a document is November 10, 2006. Ex. 1007. This is consistent with Mr. Venuti's testimony that version 1.3a of the HDMI Specification was released on November 10, 2006. Ex. 1044 at 8. Second, as Mr. Venuti explains in his declaration, the HDMI Specification, v. 1.3a (Ex. 1007) was made freely available for download by HDMI Licensing, LLC via its website hdmi.org starting in November of 2006 (i.e., well before September 2008). Ex. 1044 at 3. In particular, Mr. Venuti explains that Ex. 1007 was distributed to interested members of the public (e.g., HD device, display, component, and test equipment manufacturers) through, inter alia, the hdmi.org website from at least November 10, 2006 when version 1.3a of the HDMI specification was released. Ex. 1044 6-11. Ex. 1045 is an archived copy of a web page from the hdmi.org website maintained at archive.org. Ex. 1045 is consistent with Mr. Venuti's testimony that the hdmi.org website enabled interested members of the public to download the HDMI Specification version 1.3a (see Ex. 1044 at 8-9). This is because Ex. 1045 shows that the HDMI website, at least on June 2007, enabled interested members of the public to download a copy of the HDMI Specification version 1.3a. Ex. 1045. Mr. Venuti also explains in his declaration that, to obtain a copy of the HDMI Specification, a member of the public need only complete the 15
identification information on the download form. Ex 1044 at 9. As Mr. Venuti further explains, clicking the submit button on the webpage would provide a link from which the HDMI Specification version 1.3a document could be directly downloaded. Id. Fourth, Mr. Venuti confirms, as reflected also in Ex 1045, HDMI Licensing, LLC, placed no restrictions on the downloading or redistribution of the HDMI Specification. Ex. 1044 at 8. Fifth, Mr. Venuti explains that HDMI Licensing LLC, and he personally, actively promoted the adoption of the HDMI standard (including version 1.3a of that standard) by consumer electronics and PC manufacturers worldwide. Ex. 1044 at 3. Among other things, HDMI Licensing LLC encouraged adoption of the HDMI standard version 1.3a by making the HDMI Specification version 1.3a freely available on its website, hdmi.org.. HDMI Licensing LLC also promoted the adoption of version 1.3a of the HDMI standard documented in the HDMI Specification version 1.3a by communicating with manufacturers of consumer electronics and personal computers who were interested in using the HDMI Specification to implement audiovisual interfaces in their products. Ex. 1044 at 5. These actions functioned to alert the relevant public of the existence of the HDMI Specification version 1.3a, and enabled those interested members of the public to obtain copies that document. 16
Sixth, Mr. Venuti has personal knowledge of a number of people outside of HDMI Licensing, LLC who had actually downloaded the HDMI Specification version 1.3a from the hdmi.org website between November 2006 and late 2007. He also recalled that, in the 2007 time frame (i.e., after release of version 1.3a), HDMI Licensing LLC had reviewed the number of downloads of various versions of the HDMI Specification (including version 1.3a), and had observed that more than 30,000 downloads of these documents had been recorded by the website. Both points demonstrate not only that the HDMI Specification version 1.3a was made available via the hdmi.org website during at least 2006 and 2007, but that more than one copy of the HDMI Specification version 1.3a was actually downloaded from this website during that period (i.e., well before September of 2008). Other evidence provided with this petition is consistent with Mr. Venuti s testimony that a number of people outside of HDMI Licensing LLC had actually downloaded the HDMI Specification 1.3a before September of 2008. For example, a press release from Sony Corporation described performance of testing of its devices to be compliant with the HDMI Specification version 1.3a. See Ex. 1037 ( Sony Starts Industry First Compliance Test for HDMI ver.1.3a") To make products that conform to the HDMI Specification version 1.3a, individuals at Sony Corporation would necessarily have had to review the content of the HDMI 17
Specification version 1.3a. And because the press release indicates testing was being performed as of the date of the press release (i.e., November 10, 2006), this establishes that such individuals would have read the HDMI Specification version 1.3a prior to September of 2008. Additionally, the file history of U.S. Patent No. 7,940,809 demonstrates that unrelated parties had possession of the HDMI Specification, version 1.3a, prior to October 5, 2005. Ex. 1038. Specifically, the applicant of U.S. Patent No. 7,940,809 submitted on that date a copy of the HDMI Specification version 1.3a (Ex.1007) in an Information Disclosure Statement. Ex. 1039 at 3-4. This public record demonstrates that the HDMI Specification version 1.3a had actually been received by an entity unrelated to HDMI Licensing, LLC, and had been distributed under no condition of restriction or confidentiality. Specifically, Ex. 1038 shows that Ex. 1007 was actually provided to the Patent and Trademark Office (PTO) in an IDS on October 5, 2007, and that no steps were taken to treat the submitted document as confidential when it was provided to the PTO in an IDS. Moreover, the PTO, from the date of receipt of this document, was under no obligation to maintain it in confidence or to not distribute it further. Notably, even though the Office must maintain an application in confidence prior to its publication, it is not under any obligation to do so with regard to information provided in an IDS unless the patent applicant takes affirmative steps to prevent disclosure of the additional 18
information. See M.P.E.P. 724.02 ("Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials"). Documents provided in an IDS are not "the application" that is subject to confidentiality restrictions under 35 U.S.C. 122(a). Further evidence is an article published in PC Magazine in its November 20, 2007 edition that describes televisions with HDMI v 1.3a ports (the latest version available in televisions at press time). Ex. 1040 at 5. Again, in order for devices (i.e., televisions) to have "HDMI v 1.3a ports", individuals at the entities manufacturing these devices must have retrieved and read the contents of the HDMI Specification version 1.3a (Ex. 1007). It is self evident that the HDMI Specification version 1.3a is required to implement HDMI version 1.3a-compliant interfaces. Ex. 1044 at 2. This is again consistent with Mr. Venuti's testimony that the HDMI Specification version 1.3a document had been publicly distributed before September of 2008 the report in PC Magazine about actions of television manufacturers appeared in November of 2007. In the aggregate, the evidence provided with this petition consistently and conclusively establishes that the HDMI Specification version 1.3a was publicly disseminated without restriction starting in November of 2006, and well prior to September of 2008. Ex. 1007, therefore, is a prior art printed publication applicable to the claims of the 182 patent. 19
D. Kenoyer in View of the HDMI Specification (Ex. 1007) Renders Claims 72 and 73 Obvious Claims 72 and 73 are dependent on independent claim 69. Kenoyer discloses each of the elements of parent 69 claim. The Board has already instituted trial on claim 69 in IPR2014-01459 on the basis that it is anticipated by Kenoyer. See IPR2014-01459, Paper No. 11 at 14-18. For the convenience of the Board, Petitioner presents the basis for finding claim 69 anticipated by Kenoyer which it previously presented in its petition in the -01459 proceeding at pages 14 to 20. 1. Kenoyer Discloses All The Elements of Parent Claim 69 Independent claim 69 recites a method of using the components of a basic video conferencing system (e.g., a camera, microphone, speaker, display, network connection) in conjunction with a set top box. Set top boxes that supported video conferencing were well known by 2008. Indeed, each and every element of claim 69 is disclosed in Kenoyer. The preamble of claim 69 requires A method of providing video calling using a first video communication device comprising an audio capture device, a video capture device, a network interface, an audiovisual input interface, and an audiovisual output interface, the method comprising. Kenoyer describes the structure and operation of a videoconference system. See e.g., Ex. 1003, 70-72, 434; Ex. 1006, 1:43-48. Kenoyer therefore shows a method of providing video calling. 20
Kenoyer discloses a first video communication device in the form of a codec and a multi-component video conferencing system (MCVCS). Ex. 1006, 1:43-60; Ex. 1003, 70-72, 434. Kenoyer further discloses that the codec/mcvcs includes an audio capture device - a microphone. Ex. 1006, 4:39-46; 4:52-54; Ex. 1003, 77, 435. Kenoyer also discloses that the codec/mcvcs also includes a video capture device - a camera. Ex. 1006, 4:54-57; Ex. 1003, 77, 436. Kenoyer discloses that the codec/mcvcs includes an interface to a network, including both wireless 802.11 and wired network connections. Ex. 1006, 4:17-27; Ex. 1003, 96-97, 437. Kenoyer also shows a network connector, labeled IP connector 501. Ex. 1006, 9:12-14, Fig. 5; Ex. 1003, 95, 98, 437. This port 501 is an Ethernet port such as Internet Protocol (IP) port 501. Ex. 1006, 9:12-14. Kenoyer also describes using an RJ-45 local area network connection. Ex. 1006, 9:27-28. Kenoyer therefore shows that the codec/mcvcs also includes a network interface. Ex. 1003, 437. Kenoyer discloses that the codec/mcvcs has an interface to receive audio and video input from a set top box. Ex. 1003, 71-72, 92, 438; Ex. 1006, 1:65-2:1 ( The codec's audio and video processing may be incorporated in the set-top box and/or may be distributed (e.g., to other devices through a cable coupling the devices to the set-top box). ), 10:25-28 ( The codec may also be in an independent 21
housing that is coupled to the set-top box 705. The codec may act as a passthrough for the regular programming/ games when a conference is not being held. ). Kenoyer shows the interface for the audio and video input in Figure 5 ( Microphone In 513 Alternate In 515 Video In 503 Alt Video In 507 ). Ex. 1006, Fig. 5, 8:56-9:34; Ex. 1003, 95, 438. Kenoyer discloses that the codec/mcvcs has a video input interface to provide video to a display. Ex. 1003, 77, 81, 95, 438. Kenoyer therefore shows that the codec/mcvcs includes an audiovisual input interface. Ex. 1003, 438. Kenoyer discloses that the codec/mcvcs has a video output interface to provide video to a display. Ex. 1003, 81, 86-87, 95, 439; Ex. 1006, 12:67-13:3. Kenoyer also shows the interface for the video output in Figure 5 ( VGA Out 505 Alt Video Out 509 ). Ex. 1003, 95, 439; Ex. 1006, Fig. 5, 9:9-12. Kenoyer discloses that the codec/mcvcs has an audio output interface, including outputting audio to speakers and using an interface on the codec to do that. Ex. 1003, 81, 85, 95, 439; Ex. 1006, 4:39-46, 6:2-9. Ex. 1006 also shows the interface for the audio output in Figure 5 ( Speaker Out 517 Headset Jack Port 521 ). Ex. 1006, Fig. 5, 8:56-9:34; Ex. 1003, 95, 439. Kenoyer therefore shows that the codec/mcvcs includes an audiovisual output interface. Ex. 1003, 439. Kenoyer therefore discloses the preamble of claim 69. Kenoyer discloses receiving audio and video from the set top box using the 22
interface described above. The codec may also be in an independent housing that is coupled to the set-top box 705. The codec may act as a pass-through for the regular programming/games when a conference is not being held. Ex. 1006, 10:25-28; Ex. 1003, 71-72, 92, 441. Kenoyer therefore shows receiving, on the audiovisual input interface, a set-top box audiovisual stream from a set-top box, the set-top box audiovisual stream comprising a set-top box video stream and a set-top box audio stream. Ex. 1003, 441. Kenoyer discloses receiving the audio and video from a remote device over the network interface. See e.g., Ex. 1003, 75-76, 88, 442; Ex. 1006, 4:17-22 ( endpoints 103A-103H, gateways 130A-130B, conference units 105C-105D, and service provider 108 may each include various wireless or wired communication devices that implement various types of communication, such as wired Ethernet, wireless Ethernet (e.g., IEEE 802.11) ), 15:13-14 ( At 2205, the codec 309 may receive remote video and audio from the remote conference site. ). As Kenoyer explains, [e]ach videoconferencing system may also include a display and speaker to reproduce video and audio received from a remote participant over the network interface. Ex. 1003, 442; Ex. 1006, 1:32-34. Kenoyer therefore shows receiving, on the network interface, a remote audiovisual stream via a network connection with a second video communication device, the remote audiovisual stream comprising a remote audio stream and a remote video stream. Ex. 1003, 23
442. Kenoyer discloses transmitting on the output interface a consolidated output audio and video stream containing at least a portion of the remote audio and video stream. Kenoyer shows a video and audio output for remote video and audio streams. Ex. 1006, 15:8-20, 1:32-34 ( Each videoconferencing system may also include a display and speaker to reproduce video and audio received from a remote participant. ), 6:6-9 ( The MCVCS 300 may also include speakers 311a-b to produce audio from remote conference participants and a display 305 to provide video from local and remote conference participants. ; Ex 1003, 76, 81, 114-116, 443. These video and audio streams travel over the audiovisual interface to get to the speakers and display. See Ex. 1006, Fig. 5 (showing interfaces); Ex. 1003, 443. Kenoyer therefore shows transmitting, on the audiovisual output interface, a consolidated output video stream comprising at least a portion of the remote video stream and a consolidated output audio stream comprising at least the remote audio stream. Ex 1003, 443. Kenoyer discloses capturing video using a camera. At 2201, local video and audio may be captured. For example, camera 303 may capture video of local participants and microphones 319 may capture audio of local participants. Ex. 1003, 77, 444; Ex. 1006, 15:8-10. Kenoyer therefore shows capturing a captured video stream with the video capture device. Ex. 1003, 444. This same 24
portion of Kenoyer discloses capturing audio using a microphone. Ex. 1003, 77, 445; Ex. 1006, 15:8-10. Kenoyer therefore shows capturing a captured audio stream with the audio capture device. Ex. 1003, 445. Kenoyer discloses encoding the captured audio and video streams to produce a series of data packets. Ex. 1003, 446. Kenoyer discloses using the Internet Protocol (IP) and using the Internet to transmit audio and video. Ex. 1003, 96-98, 446; Ex. 1006, 9:12-14. The IP protocol necessarily requires encoding data to create data packets and sending audio and video using those IP packets. RFC for the IP protocol explains [t]he internet protocol provides for transmitting blocks of data called datagrams from sources to destinations, where sources and destinations are hosts identified by fixed length addresses where datagram is another term for packet. Ex. 1015 at 1; Ex. 1003, 446. The disclosure of the IP protocol in Kenoyer necessarily tells one of skill in the art that the disclosure describes producing a series of data packets. Id. Kenoyer therefore shows encoding the captured video stream and the captured audio stream to produce a series of data packets. Ex. 1003, 446. Alternatively, it would be obvious to one of skill in the art to encode into data packets from the disclosure of the Internet Protocol in Kenoyer. Ex. 1003, 446. The IP protocol uses packets, and Kenoyer expressly says to use the IP protocol, providing a reason to combine the two. Ex. 1003, 446. 25
Kenoyer describes several different network interfaces, including using the PSTN, wireless Ethernet (802.11), and wired Ethernet: various wireless or wired communication devices that implement various types of communication, such as wired Ethernet, wireless Ethernet (e.g., IEEE 802.11), EEEE 802.16, paging logic, RF (radio frequency) communication logic, a modem, a digital subscriber line (DSL) device, a cable (television) modem, an ISDN device, an ATM (asynchronous transfer mode) device, a satellite transceiver device, a parallel or serial port bus interface, and/or other type of communication device or method. Ex. 1003, 96-97, 447; Ex. 1006, 4:19-27. Kenoyer also discloses an IP connector 501 and an RJ-45 local area network connector for connecting to the network. Ex. 1003, 95, 447; Ex. 1006, Fig. 5; 9:9-19, 9:27-28. Kenoyer also discloses transmitting the packets for reception by the second video communication device. Ex. 1006, 15:11-12 ( the local video and audio may be processed in codec 309 for transmission to a remote conference site. ); Ex. 1003, 447. Kenoyer therefore shows transmitting the series of data packets on the network interface for reception by the second video communication device. Ex. 1003, 447. For these reasons, Kenoyer discloses each and every element of claim 69 of the 182 patent. Ex. 1003, 448. 2. Kenoyer in Combination With The HDMI Specification Renders Dependent Claims 72 and 73 Obvious. 26
Claim 72 recites [t]he method of claim 69, wherein the audiovisual input interface is a high-definition multimedia interface ( HDMI ). Claim 73 requires [t]he method of claim 69, wherein the audiovisual output interface is a highdefinition multimedia interface ( HDMI ). As explained in the previous section, Kenoyer discloses each element of claim 69. Kenoyer, however, does not describe implementation of its set top box supporting video conferencing using an HDMI interface. A person of ordinary skill in the art, however, by September of 2008, would have found use of an HDMI interface to implement the Kenoyer audiovisual output to have been an obvious way to implement the Kenoyer set top box with its support for video conferencing. Well before September of 2008, the HDMI standard was well known. In particular, HDMI Specification version 13.a (Ex. 1007) (which describes the HDMI standard) discloses a high-definition multimedia interface (HDMI). Ex. 1007 at 1, 8; Ex. 1003 263-265. It would have been obvious to one of ordinary skill in the art to use the wellknown HDMI interface disclosed in the HDMI Specification to implement the audiovisual input and output interfaces in Kenoyer scheme. Ex. 1003, 266, 455-460. First, one of ordinary skill in the art would have been able to implement an HDMI interface in the Kenoyer scheme by following the technical guidance 27
provided in the HDMI Specification (Ex. 1007). Ex. 1003, 135-141. Second, the HDMI Specification is from the same field of endeavor as Kenoyer. Ex. 1003, 135. Both Kenoyer and the HDMI Specification version 1.3a describe systems that allow connecting video sources to equipment such as a display or a set top box. Use of HDMI interfaces which would comply with the HDMI standard to support for audio and video communications was well known in September of 2008. For example, the HDMI Specification version 1.3a (Ex. 1007) provides extensive technical details and explanations regarding how to integrate HDMI interfaces in audiovisual devices. See, e.g., Ex. 1007 at 1 ( This specification completely describes the interface such that one could implement a complete transmission and interconnect solution or any portion of the interface ); id. at vi-xvi (table of contents). Well prior to September of 2008, integration of HDMI interfaces was common in devices with audio/video interfaces, such as televisions. See, e.g., Ex. 1009 (Sony manual); Ex. 1003, 135. Using HDMI to support audiovisual communications in devices capable of using or transmitting audiovisual signals, including the set top box supporting audiovisual communications described in Kenoyer, thus would have been an obvious implementation choice for a person of ordinary skill in the art. Ex. 1003, 135. HDMI also would have been one of a small number of options available for the person of ordinary skill to try to use to support audiovisual communications 28
when considering implementation of the Kenoyer system in September of 2008. Ex. 1003, 136. HDMI was one of a small number of defined interfaces for audio and video communications. Ex. 1003 at 136. This is illustrated, inter alia, by a contemporaneous Sony television manual showing the different available video and audio inputs. Ex. 1003, 136; Ex. 1009. Where there are a finite number of identified, predictable solutions, if a person of ordinary skill would have good reason to pursue the known options within his or her technical grasp, the solutions can be combined for obviousness purposes. One of skill in the art would therefore be motivated to use HDMI (as described in Ex. 1007) to implement the Kenoyer set top box. Ex. 1003 at 136. Using an HDMI connection (as disclosed in Ex. 1007) for the A/V interface in Kenoyer also would have been a routine design choice for one of skill in the art. Ex. 1003, 137. This is shown by other references that demonstrate the state of the art at the time. Ex. 1003, 137; Ex. 1009, Sony television manual; Ex. 1017, U.S. Patent No. 7,728,911, at 2:23-28 ( Types of video inputs include composite video input, s-video inputs, component video inputs, RGB video inputs, VGA inputs, HDMI inputs, and DVI inputs, among other types of video inputs. ); Ex. 1018, U.S. Patent No. 8,266,657, at 5:25-29 ( Switcher 138 typically receives either analog signals or decoded digital signals from the various program sources. For video, these signals may include composite video, component video, S-Video, 29
DVI, or HDMI. ); Ex. 1019, U.S. Patent Application 2006/0209892, at 14 ( The solution is also applicable to the delivery of other types of content traditionally delivered over cable ). No undue experimentation would be necessary to incorporate an HDMI interface into the Kenoyer systems by following the guidance in Kenoyer and in the HDMI Specification version 1.3a (Ex. 1007). Ex. 1003, 138. One of skill in the art would have known to do so and that such equipment was readily available. See, e.g., Ex. 1009 ; Ex. 1017, U.S. Patent No. 7,728,911, at 2:23-28; Ex. 1018, U.S. Patent No. 8,266,657, at 5:25-29 ; Ex. 1003 138. One of skill in the art would also know to convert adapt the A/V interfaces disclosed in Kenoyer to use and work with HDMI interfaces. Ex. 1003, 138. See also, e.g., Ex. 1021, U.S. Patent No. 7,576,663 ( Inline Audio/Visual Conversion ). Indeed, one could purchase self-contained units at the time that converted between HDMI and other standard audio/video interfaces off the shelf. See e.g., Ex. 1022, Extend Beyond HD, copyrighted 2007 (converted HDMI, carrying both audio and video, to component video and either analog audio or digital audio). The use of an HDMI interface with the scheme of Kenoyer would have produced only predictable results for which the HDMI interface was specifically designed. Ex. 1003, 138. A person of ordinary skill in the art would have been motivated to use HDMI for video and audio input and thus to combine it with Kenoyer. Ex. 1003, 30
139. Kenoyer teaches a set top box designed to support use of high definition video. Ex. 1003, 139. HDMI was a known way of connecting high definition video sources and their associated audio. Ex. 1007 at 1; Ex. 1044 4, 11; Ex. 1003, 139; see, e.g., Ex. 1009; see also, e.g., Ex. 1020, 63 ( In this way, HDMI reduces cabling requirements and may be advantageously employed with set-top boxes, DVD players, A/V receivers, digital televisions and other devices. ); Ex. 1021, 1:19-24 ( As digital displays such High-Definition Television (HDTV), Digital Television (DTV), and high resolution computer displays are becoming more common place, HDMI connections have become the desired way to bring A/V streams into digital displays as a HDMI cable carries both digital video and digital audio on a single cable. ); Ex. 1019, 0014 ( The solution is also applicable to the delivery of other types of content traditionally delivered over cable ). In addition, Kenoyer discloses a DVI video interface. Ex. 1003, 87, 140; Ex. 1006, 7:25-28. The DVI interface is electrically compatible with the video portion of HDMI. Ex. 1003, 140. This compatibility would suggest to one of skill in the art that HDMI also could be used in the scheme of Kenoyer with minimal effort. Ex. 1003, 140. Finally, the commercial implementation of the system disclosed in Kenoyer, sold by the assignee, a company called LifeSize Communications, Inc., actually 31
used HDMI ports for both input and output. See Ex. 1016 (LifeSize Express Brochure). This demonstrates that one of skill in the art, including those individuals behind Kenoyer and its commercial embodiment, considered HDMI to be replaceable for the input and output ports disclosed in Kenoyer. Ex. 1003, 141. It would therefore have been obvious to use the HDMI interface described in Ex. 1007 to implement the audiovisual input and output interfaces of the set top box described in Kenoyer. This would have resulted in a device meeting all the requirements of claim 69, and wherein the audiovisual input interface is a highdefinition multimedia interface ( HDMI )" as specified in claims 72 and 73. Kenoyer considered in view of the HDMI Specification version 1.3a, thus, would have rendered claims 72 and 73 obvious to the person of ordinary skill before September of 2008. Ex. 1003, 455-460. VI. CONCLUSION Because the information presented in this petition shows that there is a reasonable likelihood that the Petitioner would prevail with respect to at least one of the claims challenged in the petition, the Petitioner respectfully requests that a Trial be instituted and that claims 72 and 73 be canceled as unpatentable. 32
Dated: April 17, 2015 Respectfully Submitted, /Jeffrey P. Kushan / Jeffrey P. Kushan Reg. No. 43,401 Sidley Austin LLP 1501 K Street NW Washington, DC 20005 33
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,144,182 Attachment A: Proof of Service of the Petition
CERTIFICATE OF SERVICE I hereby certify that on this 17th day of April 2015, a copy of this Petition, including all attachments, appendices and exhibits, has been served in its entirety by Federal Express on the following counsel of record for patent owner: Swanson & Bratschun, L.L.C. 8210 Southpark Terrace Littleton, CO 80120 Amanda Hollis Kirkland & Ellis LLP 300 North LaSalle Chicago, IL 60654 Michael W. De Vries Kirkland & Ellis LLP 333 South Hope Street Los Angeles, CA 90071 Adam Alper Kirkland & Ellis LLP 555 California Street San Francisco, CA 94104 Dated: April 17, 2015 Respectfully submitted, /Jeffrey P. Kushan/ Jeffrey P. Kushan Registration No. 43,401 Attorney for Petitioner
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,144,182 Attachment B: List of Evidence and Exhibits Relied Upon in Petition
Exhibit # Reference Name 1001 U.S. Patent No. 8,144,182 1002 File History of U.S. Patent No. 8,144,182 1003 Declaration of Henry Houh 1004 Curriculum Vitae of Henry Houh 1005 Microsoft Computer Dictionary (5 th ed. 2002) 1006 U.S. Patent 7,907,164 ( Kenoyer ) 1007 HDMI Standard, v. 1.3 (2006) 1008 U.S. Patent No. 7,565,680 ( the 680 patent) 1009 Sony manual 1010 U.S. Patent No. 7,692,683 ( the 683 patent ) 1011 U.S. Patent Application No. 2006/0093128 ( the 128 patent application ) 1012 U.S. Provisional Patent Application Ser. No. 60/676,918 1013 U.S. Patent Application No. 2006/0132595 1014 U.S. Patent Application No. 2006/0104633 1015 RFC 791, Internet Protocol (Sept. 1981) 1016 LifeSize Communication brochure - LifeSize Express (2007) 1017 U.S. Patent No. 7,728,911 1018 U.S. Patent No. 8,266,657 1019 U.S. Patent Application No. 2006/0209892 1
Exhibit # Reference Name 1020 U.S. Patent Application No. 2007/0143801 1021 U.S. Patent No. 7,576,663 1022 Extend Beyond HD, copyrighted 2007 1023 U.S. Patent No. 6,813,577 1024 U.S. Patent Application No. 2009/0034750 1025 First Supplemental Infringement Contentions with attachments in Civil Action No. 2:13-cv-01015-JRG (E.D. Tex.) 1026 H.323 Recommendation 1027 Complaint in Civil Action No. 2:13-cv-01015-JRG (E.D. Texas) 1028 U.S. Patent Application No. 2003/0112367 ( the 367 application ) 1029 http://www.merriam-webster.com/dictionary/function 1030 http://dictionary.reference.com/browse/function?s=t 1031 Tandberg 77 manual 1032 Hart-Davis, Mastering Windows Vista Home Premium and Basic 1033 Briere and Hurley, Windows XP Media Center Edition 2004 PC for Dummies 1034 Summons Issued & Returned Executed in Civil Action No. 2:13-cv-01015-JRG (E.D. Texas) 1035 U.S. Provisional Patent Application Ser. No. 60/761,869 1036 Plaintiff s Proposed Preliminary Claim Construction in Action No. 2:13-cv-01015-JRG (E.D. Texas) 1037 Press release entitled Sony Starts Industry First Compliance 2