Download - Unified Patents IPR Against Dragon IP
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UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Unified Patents Inc.
Petitioner
v.
Dragon Intellectual Property, LLC. Patent Owner
IPR2014- _____
Patent 5,930,444
____________
PETITION FOR INTER PARTES REVIEW
Mail Stop PATENT BOARD, PTAB Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450
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TABLE OF CONTENTS
I. INTRODUCTION ........................................................................................... 1
II. MANDATORY NOTICES ............................................................................. 2
A. Real Party-in-Interest ............................................................................ 2
B. Related Matters ...................................................................................... 4
C. Identification of Lead and Back-Up Counsel........................................ 5
D. Service Information ............................................................................... 5
III. PAYMENT OF FEES ..................................................................................... 5
IV. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 5
A. Grounds for Standing ............................................................................ 5
B. Statement of Precise Relief Requested (37 C.F.R. 42.22(a)) and Identification of Challenges (37 C.F.R. 42.104(b)) .................... 6
C. How the Construed Claims are Unpatentable under the Statutory Grounds identified in 37 C.F.R. 42.104(b)(2) and Supporting Evidence Relied upon to Support the Challenge ................ 6
D. Threshold Showing of Reasonable Likelihood That Petitioner Would Prevail With Respect To At Least One Challenged Claim (35 U.S.C. 314(a)) Has Been Met ........................................... 7
V. FACTUAL BACKGROUND .......................................................................... 7
A. Declaration Evidence ............................................................................ 7
B. The State of the Art as of 1992 ............................................................. 8
C. The Challenged 444 Patent ................................................................ 14
D. Prosecution History ............................................................................. 15
VI. CLAIM CONSTRUCTION (37 C.F.R. 42.104(B)(3)) .............................. 18
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A. Support for claim construction ............................................................ 19
VII. THE GROUNDS SHOWING THAT PETITIONER HAS A REASONABLE LIKELIHOOD OF PREVAILING .................................... 24
A. The Prior Art Discloses Each Claimed Feature and One of Ordinary Skill Would be Led to Form This Combination .................. 24
1. Reasons to Combine Ulmer and Goldwasser ........................... 25
2. The Combination of Ulmer and Goldwasser Disclose the Claimed Keyboard .................................................................... 27
3. Ulmer Necessarily Discloses the Control Circuit of the Claims ....................................................................................... 29
4. Ulmer Discloses Simultaneous Recording and Playback ......... 29
5. Ulmer Discloses "One Button Playback": Ulmer Discloses Playback with Sole Actuation of the Playback Key, and With an Interval of Time Delay Being the Same as the Time Elapsed Between the Actuation of the Record Key and the Actuation of the Playback Key ................ 31
6. One-Button Playback Would Necessarily Be Supported By the Control Circuit ............................................................... 32
7. Claim 1s Means for Powering Is Necessarily Present in Ulmer and Goldwasser .............................................................. 33
8. Ulmer Discloses Claim 8s Key Means .................................... 34
B. Claim Chart and Analysis Demonstrating How the Proposed Combination Renders Obvious Claims 1, 2, 7, 8, 10, 13, and 14 ....... 35
1. Ulmer and Goldwasser Render Claim 14 Obvious ................... 57
VIII. CONCLUSION .............................................................................................. 59
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I. INTRODUCTION
Pursuant to the provisions of 35 U.S.C. 311-319, Unified Patents, Inc.,
(Unified or Petitioner) hereby petitions the Patent Trial and Appeal Board to
institute inter partes review of claims 1, 2, 7, 8, 10, 13, and 14 of U.S. Patent No.
5,930,444 to Camhi, et al. (the 444 Patent, Ex. 1001).
In short, the 444 Patent describes a digital VCR, in which the video is
recorded not on magnetic videotape, but on a digital memory unit which is
described as a random access device. A feature of the memory unit is that it
provides the capability of simultaneous read/write, which enables the digital VCR
to record and playback at the same time. This provides the user with the ability to,
for example, pause viewing during the recording of a program, and then
immediately begin viewing again from the paused location while the recording
continues. The device is controlled by a remote control with buttons, including a
record key and a playback key. The device/remote control also includes common
VCR functions such as fast forward and reverse, pause, and single-frame advance.
Ex. 1013, at 7; Ex. 1001, at Abstract; 2:37-37; 3:11-22; 3:54-4:8.
During a Supplemental Examination, the PTO concluded that the 444
Patent was originally granted because the prior art did not disclose the ability to
initiate playback of a video after recording had begun using a single button
activation, which Petitioners declarant, Dr. Hemami, describes as one-button
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playback. The prior art relied upon herein discloses one-button playback and
also fills the gap that the Examiner found in the prior art during the Supplemental
Examination.
The Petitioner relies upon Ulmer (PCT Publication WO 89/12896) and
Goldwasser (U.S. Pat. No. 5,241,428) to demonstrate that the challenged claims
are unpatentable as being obvious. Ulmer was never considered by the Office, but
Goldwasser was part of the Supplemental Examination. Here, Petitioner relies
upon Ulmer in view of Goldwasser, a combination never considered by the Office,
which casts Goldwasser in a new light.
II. MANDATORY NOTICES
Pursuant to 37 C.F.R. 42.8(a)(1), Unified Patents provides the following
mandatory disclosures.
A. Real Party-in-Interest
Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Unified Patents is
the real party-in-interest, and further certifies that no other party exercised control
or could exercise control over Unified Patents participation in this proceeding, the
filing of this petition, or the conduct of any ensuing trial.
Unified Patents was founded by intellectual property professionals over
concerns with the increasing risk of non-practicing entities (NPEs) asserting poor
quality patents against strategic technologies and industries. The founders thus
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created a first-of-its-kind company whose sole purpose is to deter NPE litigation
by protecting technology sectors, like content delivery, the technology at issue in
the 444 Patent. Companies in a technology sector subscribe to Unifieds
technology specific deterrence, and in turn, Unified performs many NPE-deterrent
activities, such as analyzing the technology sector, monitoring patent activity
(including patent ownership and sales, NPE demand letters and litigation, and
industry companies), conducting prior art research and invalidity analysis,
providing a range of NPE advisory services to its subscribers, sometimes acquiring
patents, and sometimes challenging patents at the United States Patent and
Trademark Office (USPTO). Since its founding, Unified is 100% owned by its
employees; subscribers have absolutely no ownership interest.
Unified has sole and absolute discretion over its decision to contest patents
through the USPTOs post-grant proceedings. Should Unified decide to challenge
a patent in a post-grant proceeding, it controls every aspect of such a challenge,
including controlling which patent and claims to challenge, which prior art to apply
and the grounds raised in the challenge, and when to bring any challenge.
Subscribers receive no prior notice of Unifieds patent challenges. After filing a
post-grant proceeding, Unified retains sole and absolute discretion and control over
all strategy decisions (including any decision to continue or terminate Unifieds
participation). Unified is also solely responsible for paying for the preparation,
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filing, and prosecution of any post-grant proceeding, including any expenses
associated with the proceeding.
In the instant proceeding, Unified exercised its sole discretion and control in
deciding to file this petition against the 444 Patent, including paying for all fees
and expenses. Unified shall exercise sole and absolute control and discretion of
the continued prosecution of this proceeding (including any decision to terminate
Unifieds participation) and shall bear all subsequent costs related to this
proceeding. Unified is therefore the sole real-party-in-interest in this proceeding.
B. Related Matters
Dragon Intellectual Property, LLC (Dragon) has asserted the 444 Patent
in ten litigations in Delaware District Court, all filed on December 20, 2013 and all
are pending. Unified is not a party to any of these litigations.
Dragon v. Charter Communications Inc., 1-13-cv-02062 Dragon v. DirecTV LLC, 1-13-cv-02065 Dragon v. Sirius XM Radio Inc., 1-13-cv-02067 Dragon v. Apple Inc., 1-13-cv-02058 Dragon v. Cox Communications Inc., 1-13-cv-02064 Dragon v. Comcast Cable Communications LLC, 1-13-cv-02063 Dragon v. DISH Network LLC, 1-13-cv-02066 Dragon v. Time Warner Cable Inc., 1-13-cv-02068 Dragon v. Verizon Communications, Inc., 1-13-cv-02069 Dragon v. AT&T Services Inc., 1-13-cv-02061
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C. Identification of Lead and Back-Up Counsel
Pursuant to 37 C.F.R. 42.8(b)(3), Petitioner provides the following
designation of counsel: Lead counsel is Michael L. Kiklis (Reg. No. 38,939) and
back-up counsel is Scott A. McKeown (Reg. No. 42,866).
D. Service Information
Pursuant to 37 C.F.R. 42.8(b)(4), papers concerning this matter should be
served on the following:
Address: Michael L. Kiklis or Scott McKeown Oblon Spivak 1940 Duke Street Alexandria, VA 22314
Email: [email protected] and [email protected]
Telephone: (703) 413-2707/(703)413-3000 (main) Fax: (703) 413-2220
III. PAYMENT OF FEES
The undersigned authorizes the Office to charge the required fees as well as
any additional fees that might be due to Deposit Account No. 15-0030.
IV. REQUIREMENTS FOR INTER PARTES REVIEW
As set forth below and pursuant to 37 C.F.R. 42.104, each requirement for
inter partes review of the 444 Patent is satisfied.
A. Grounds for Standing
Petitioner certifies pursuant to 37 C.F.R. 42.104(a) that the 444 Patent is
available for inter partes review and that Petitioner is not barred or estopped from
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requesting inter partes review challenging the patent claims on the grounds
identified herein.
B. Statement of Precise Relief Requested (37 C.F.R. 42.22(a)) and Identification of Challenges (37 C.F.R. 42.104(b))
Petitioner requests inter partes review and cancellation of claims 1, 2, 7, 8,
10, 13, and 14 of the 444 Patent as being obvious under 35 U.S.C. 103 in view
of the following PCT publication and U.S. patent, each of which is prior art
pursuant to 35 U.S.C. 102(b) or 102(e):
1. PCT Publication WO 89/12896 to Ulmer, published December
28, 1989 (Ulmer)(Ex. 1002); and
2. U.S. Pat. No. 5,241,428 to Goldwasser, et al., filed March 12, 1991
(Goldwasser)(Ex. 1003).
C. How the Construed Claims are Unpatentable under the Statutory Grounds identified in 37 C.F.R. 42.104(b)(2) and Supporting Evidence Relied upon to Support the Challenge
The challenged claims are to be construed as indicated in Section VI, below.
Pursuant to 37 C.F.R. 42.104(b)(4), an explanation of how the challenged claims
are unpatentable under the statutory ground identified above, including the
identification of where each element of the claim is found in the prior art, is
provided in Section VII, below, in the form of a claim chart and analysis. Pursuant
to 37 C.F.R. 42.104(b)(5), the appendix numbers of the supporting evidence
relied upon to support the challenges and the relevance of the evidence to the
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challenges raised, including identifying specific portions of the evidence that
support the challenges, are provided in Section VII, below, in the form of a claim
chart and analysis.
D. Threshold Showing of Reasonable Likelihood That Petitioner Would Prevail With Respect To At Least One Challenged Claim (35 U.S.C. 314(a)) Has Been Met
The information and evidence presented in this Petition, including
unpatentability ground detailed in Section VII, below, establishes a reasonable
likelihood that Petitioner will prevail with respect to at least one of the challenged
claims. See 35 U.S.C. 314(a). Indeed, that section, supported by the Hemami
declaration (Ex. 1013) demonstrates that the challenged claims are obvious in view
of the relied upon prior art.
V. FACTUAL BACKGROUND
A. Declaration Evidence
This Petition is supported by the declaration of Professor Sheila S. Hemami,
Ph.D. from Northeastern University (attached as Ex. 1013). Dr. Hemami offers her
opinion with respect to the skill level of one of ordinary skill in the art (Ex. 1013,
23 and 24), the content and state of the prior art (Ex. 1013, 25-41), the
teachings and suggestions that one of ordinary skill would understand based on
Exs. 1002-1003 (Ex. 1013, pps. 21-64), the reasons for combining the teachings
from Exs. 1002-1003 (Ex, 1013, 50-73), and the manner in which one of
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ordinary skill would combine those teachings (Ex. 1013, pps. 26-64). Dr. Hemami
is Professor of Electrical and Computer Engineering at Northeastern University in
Boston, Massachusetts and Chair of the Department of Electrical & Computer
Engineering. She has over twenty years of experience in multimedia systems. See
Ex. 1013.
B. The State of the Art as of 1992
VCR Functionality in 1992
By March, 1992, infrared remotes were commonplace, programming to
record at a later time was commonplace, and controlling fast forward or reverse or
frame advance (jog-shuttle) was commonplace. Programming the VCR to record a
future program was also commonplace. Ex. 1013, at 25; Ex. 1004.
The '444 Patent itself admits to well-known "enhanced playback features"
provided by the invention when describing the user's ability to control the unit via
fast forward, reverse, pause, and frame advance at 6:27-41:
The enhanced remote control has additional function keys intended
for use during time delay playback by recorder 10, as described above
and initiated by user actuation of playback key 20. These additional
function keys include fast forward 52 and reverse 54, pause 56, and
frame advance 58. Control circuit 14 is adapted to respond to user
actuation of these keys by controlling the rate and sequence with
which stored information retrieved from memory unit 12 is transferred
to outputs 24 for display. This enables the recorder of the instant
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invention to approximate the enhanced playback features which have
become well known from their presence on all but the least expensive
VCR's presently known and marketed.
Ex. 1013, at 26.
Remote controls in 1992:
Remote controls for televisions and VCRs were well established in the
1970's and IR remote controls had replaced the previous ultrasonic-based remote
controls by the mid-80's. Many patents were filed and issued around 1980
pertaining to infrared technology and its use in television and VCR (or VTR, for
video tape recorder, as they were also known). Ex. 1013, at 27.
Remote controls at the time the '444 Patent was filed provided keys to
enable enhanced playback features, as recited in the '444 Patent itself at 6:27-41
(reproduced above). A person of ordinary skill would understand that a remote
control had keys or buttons with which the user interfaced with the remote control,
and such keys would include the well-known keys that the 444 Patent mentions
above, such as fast forward, rewind, frame advance, and pause. Ex. 1013, at 28.
Random access memory allowing simultaneous read and write
Dual-ported RAM allows Read and Write to happen on the same clock
cycle. Video RAM is a well-known example. Both were well established and well
known in 1992. Furthermore, multi-head disk drives that achieved simultaneous
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read and write operations through the use of multiple heads were also known, see,
e.g., U.S. Patent 5,134,499 to Sata et al. (Ex. 1005) entitled "Video Recording
Apparatus Having Control Means Provided Therein for Independently Controlling
the Writing Head and the Reading Head," which was considered by the examiner
during prosecution of the 444 Patent, and also U.S. Patent No. 4,972,396 to
Rafner entitled "Multiple Independently Positionable Recording Reading Head
Disk System" (Ex. 1013). Ex. 1013, at 30.
Application of Random-Access Memory to Provide Simultaneous Read/Write Capabilities in a Digital VCR
The idea of a digital VCR was not new. U.S. Patent 5,625,464 to Compoint
entitled "Continuous Television Transmission Reproduction and Playback"
(priority date March 5, 1991) continuously records an incoming television signal
by digitizing it and writing it to a two-headed hard disk, which enables
simultaneous reading and writing. Ex. 1013, at 31; Ex. 1007.
U.S. Patent 4,972,396 to Rafner entitled "Multiple Independently
Positionable Recording-Reading Head Disk System" (issued November 20, 1990)
describes a multi-headed hard disk system in which reading from and writing to the
disk can occur at the same time. Ex. 1013. Rafner provides an example of use of
the device to provide VCR-type functionality, where compressed digital video is
stored and provides a contrast with conventional tapes because viewing can begin
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prior to termination of recording due to the use of separate read/write heads. Ex.
1013, at 32.
U.S. Patent 5,134,499 to Sata entitled "Video recording apparatus having
control means provided therein for independently controlling the writing head and
the reading head" (filed August 3, 1989) describes an apparatus in which viewing
can begin prior to the termination of recording using two separate read/write heads,
with a RAM allowing writing to a buffer when the write head is traversing and not
writing to disk. Ex. 1013, at 33; Ex. 1005.
PCT Publication WO 89/12896 to Ulmer entitled "Device for simultaneous
recording and playback of television images" (published December 28, 1989)
allows users to perform VCR-like functionality on television signals. Ex. 1002.
Ulmer discloses a device having a remote control that allows playback of a
recorded video signal while the recording is still taking place. The video is stored
in a digital random-access memory, which enables simultaneous recording and
playback. Ulmer discloses user control of the unit through a remote control, and
clearly indicates the simple operation of the device: record, wait for a user-
selected interval of time, playback. Ulmer describes extensively the operation of
the control circuit that allows for not only simultaneous reading and writing but
also providing the enhanced playback features of fast forward, reverse, pause, and
frame-by-frame playback. Ex. 1013, at 34.
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U.S. Patent No. 5,241,428 to Goldwasser entitled "Variable-delay video
recorder" (filed March 12, 1991) describes a video recorder and playback device
allowing simultaneous recording and playback and allowing for a user-controlled
time delay between the recording and the playback. Ex. 1003. A user can pause
the playback of a signal being recorded for an arbitrary amount of time, and then
resume playback. Goldwasser describes a video recorder and playback device
allowing for a user-controlled time delay between the recording and the playback.
The video is stored in a digital random-access memory, allowing simultaneous
recording and playback. A user can pause the playback of a signal being recorded
for an arbitrary amount of time, and then resume playback. Goldwasser includes a
user control panel and a control circuit coupled to the user control panel and the
memory. In addition to pausing, Goldwasser also includes fast forwarding and
rewinding. Ex. 1013, at 35.
Control circuitry in a VCR responsive to the remote control commands
Independent claims 1 and 14 in the 444 Patent include a "control circuit"
that is coupled to the "keyboard." This control circuit provides "selective storage
or retrieval of information or both, to and from memory unit 12 as the case may be.
Control circuit 12 is in turn responsively coupled to keyboard 16. . . ." Ex. 1001, at
3:60-65. It is further described at 6:34-37 as "Control circuit 14 is adapted to
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respond to user actuation of these keys by controlling the rate and sequence with
which stored information retrieved from memory unit 12 is transferred to output 24
for display." A person of ordinary skill would understand that such a control
circuit is not a novel feature, but is a requirement for any remote-
controlled/keyboard-controlled device, as the receipt of the command at the player
itself is not sufficient to control the device; the received command needs to be
passed on to the electronics that control the device itself, e.g., executing commands
that result in the actual execution of play, fast forwarding, etc. Rather, the
command "receiver" at the device would decode the received signal and then pass
on the requested command to a device controller. Ex. 1013, at 36.
Such control circuitry is described in many patents pertaining to
VTRs/VCRs operated by remote control, e.g. U.S. 4,885,579 A, entitled "Device
for the remote control of a videorecorder or a videoreceiver" (issued December 5,
1989)(Ex. 1008); U.S. 4,866,542, "Remote-controlling commander with a multi-
function rotatry dial" (issued September 12, 1989)(Ex. 1009); and U.S. 4,426,662
A, "IR Remote control detector/decoder" (issued January 17, 1984)(Ex. 1010).
While these patents apply to magnetic-tape based VCRs/VTRs, it would be readily
apparent to one of ordinary skill that the need for and operation of such a control
device would be independent of the actual storage media. The 444 Patent itself
teaches multiple storage media (semiconductor memory, optical disks, magnetic
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disks) and therefore the disclosed control unit must be in fact media-independent.
Ex. 1013, at 37.
In conclusion, the state of the art as of 1992 was that all the features of the
contested claims were well known to those of ordinary skill in the art. VCR
functionality and control via a remote control were well known. The existence of
control circuitry to execute commands on the recorder apparatus when those
commands were received from the remote control was also well understood. Use
of random-access memories to provide simultaneous reading and writing was well
known, and the application of these memories to provide simultaneous recording
and playback in a digital VCR was established art. A person of ordinary skill was
well aware of these features, and in designing a digital VCR, they would select
these features readily and with ease to suit their design goals. Ex. 1013, at 38.
C. The Challenged 444 Patent
The 444 Patent describes essentially a digital VCR, in which the video
signal (and associated audio) is recorded not on magnetic videotape, but on a
digital memory unit which is described as a random access device. A feature of
the memory unit is that it provides the capability of simultaneous read/write, which
enables the digital VCR to record and playback at the same time. This provides
the user with the ability to, for example, pause viewing during the recording of a
program, and then immediately begin viewing again from the paused location. The
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device is controlled by a remote control with buttons, including "at least one record
key and at least one playback key." The device/remote control also includes
common VCR functions such as fast forward and reverse, pause, and single-frame
advance. Ex. 1013, at 7; Ex. 1001, at Abstract; 2:37-37; 3:11-22; 3:54-4:8.
The contested claims include the following features: a remote control, a
memory unit providing random access, and a memory control circuit providing
simultaneous read and write capabilities. As Dr. Hemami testifies, all the features
of the contested claims were well known to one of ordinary skill in the art as of the
earliest priority date of the 444 Patent. Ex. 1013, at 8.
D. Prosecution History
The Patent Owner filed a request for Supplemental Examination based, in
part, on Goldwasser. In the Supplemental Examination, the Examiner made the
following observations about the original prosecution:
[I]ndependent claims 1 and 14 of the '444 Patent were allowed
because none of the references of record taught or suggested a control
circuitry being configured so that substantially simultaneous recording
and playback of program information is achieved when said record
key is first actuated to being a recording by initiating storage of the
broadcast program information in said memory unit, and said
playback key is subsequently and solely actuated to begin time delay
playback of the recording from the beginning thereof by initiating
retrieval of the stored program information in said memory unit, with
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the interval of the time delay being the same as the time elapsed
between the actuation of said record key and the subsequent actuation
of said playback key. Ex. 1011, at 15.
Dr. Hemami refers to the above operation as providing "one-button playback,"
which she describes as, after recording has begun, the user can initiate playback by
simply commanding playback with a single button activation (in contrast to VCRs,
where a "stop" was required to initiate playback, the "stop" being the cessation of
recording). Ex. 1013, at 44.
During Supplemental Examination, the Examiner found that Goldwasser,
taken alone, did not raise a substantial new question of patentability because
Goldwasser failed to expressly teach or suggest:
a) a keyboard having a record key and a playback key; and
b) a control circuit, coupled to the keyboard, being configured so that
substantially simultaneous recording and playback of program
information is achieved when said record key is first actuated to being
a recording by initiating storage of the broadcast program information
in said memory unit, and said playback key is subsequently and solely
actuated to begin time delay playback of the recording from the
beginning thereof by initiating retrieval of the stored program
information in said memory unit, with the interval of the time delay
being the same as the time elapsed between the actuation of said
record key and the subsequent actuation of said playback key. Ex.
1011, at 31.
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In other words, the Patent Office found that Goldwasser alone did not provide
"one-button playback." Ex. 1013, at 45-46.
The Examiner also found that Goldwasser, in combination with Smith did
not raise a substantial new question of patentability because Smith lacked a control
circuit that performed one-button playback. See Ex. 1011, at 6, 25; Ex. 1013,
at 47.
As Dr. Hemami testifies, Smith teaches a remote control only, without any
discussion of the corresponding control circuit at the remotely controlled
apparatus, let alone a control circuit that performed one-button playback.
Goldwasser provides a control circuit, but the "one-button playback" operation is
not described. Similarly, the examiner found that the combination of Sata and
Smith did not provide "one-button playback." As such, none of the prior art
combinations disclosed a control circuit that performed one-button playback. Ex.
1013, at 48.
In contrast, one of ordinary skill in the art would recognize that Ulmer
explicitly teaches "one-button playback" and discloses a control circuit which
implements this function. Both Ulmer and Goldwasser are directed toward
simultaneous recording and playback in a unit providing VCR-like functionality
with digital video. While the Patent Office looked to Goldwasser to provide "one-
button playback," this function is instead provided by Ulmer in Dr. Hemamis
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combination. The combination of Ulmer and Goldwasser discloses all features of
each contested claim. Ex. 1013, at 49.
VI. CLAIM CONSTRUCTION (37 C.F.R. 42.104(B)(3))
Pursuant to 37 C.F.R. 42.204(b)(3), the claims subject to inter partes review
shall receive the broadest reasonable construction in light of the specification of
the patent in which [they] appear[]. See 42 C.F.R. 100(b). For the purposes of
this petition, the Petitioner adopts the plain meaning for all claims terms. The
Petitioner proposes a specific construction for several terms below:
Claim Term Proposed construction Keyboard (claims 1, 2, 8, and 14) the buttons or keys used to control
the device Means for powering the apparatus (claim 1)
Function: powering the apparatus Structure: batteries for the remote control and AC power for the recorder
Key means for enabling user control of the rate or sequence or both of transfer of program information from said memory unit to the user's display device (claim 8)
Function: enabling user control of the rate or sequence or both of transfer of program information from said memory unit to the user's display device Structure: the fast forward, reverse, pause, and frame advance buttons (or "keys") on the remote control
Frame advance key (claim 10) "a button that, when activated, performs frame-by-frame playback"
Timer circuit (claim 13) a circuit for implementing a timer function
Control circuit (coupled responsively to the keyboard) (claim 1) (coupled also
a circuit for controlling operations of
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to the memory unit, claim 1) the recorder
A. Support for claim construction
Keyboard (claims 1, 2, 8, and 14): Dr. Hemami testifies that one of ordinary skill
in the art would interpret this term to mean "the buttons or keys used to control the
device." She notes that these keys can be either located on the recorder or on a
remote control. The specification discloses in Fig. 1 that the keys used to control
the device (e.g., record and play) are on the device itself. In Figs. 3 and 4, these
keys are disclosed as being on a remote control. One of ordinary skill would
therefore understand that the term keyboard was intended to cover both
embodimentswhen the keys are on the device itself and when the keys are on a
remote controland that the use of this term in the specification is not necessarily
inconsistent with the ordinary meaning of the term. At 6:7-12 and 6:66-67, the
444 Patent supports this construction and clarifies that keyboard refers to the
keys on the remote control. Ex. 1013, at 10-12.
Moreover, the doctrine of claim differentiation dictates this result. Claim 1
recites a keyboard and a control circuit coupled responsively to said keyboard
and claim 2, which depends from claim 1, adds a remote control and recites
wherein said keyboard is housed in said remote control. Thus, the term
keyboard as used in the claims must be broad enough to cover keys that are on
the device as well as keys that are on a remote control. Additionally, and for the
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same reason, the recitation a control circuit coupled responsively to said
keyboard would be understood by one of ordinary skill in the art to cover both a
local direct coupling as well as a remote coupling. Ex. 1013, at 12.
Means for powering the apparatus (claim 1): This element is a means-plus-
function element. The function is powering the apparatus. The structure that
performs this function in the patent is batteries for the remote control and AC
power for the recorder itself, as stated at 6:19-24: "It should be noted that the
power source contemplated for remote control unit 46 is batteries, as opposed to
AC power source contemplated for recorder 10. . . ." Dr, Hemami notes that the
444 Patent discloses no other structure for this function. Ex. 1013, at 13.
The 444 Patent does not specifically provide details of the way in which
batteries are used for the remote and the way in which AC power is used for the
device. Dr. Hemami therefore concludes that the way is merely using some sort of
battery power source for the remote and an AC power source for the device itself.
The specification provides no more details that allows her to perform a more
detailed analysis. The result of the means for powering limitation is that the
apparatus receives power so that it is rendered operational. Ex. 1013, at 14.
Key means for enabling user control of the rate or sequence or both of
transfer of program information from said memory unit to the user's display
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device (claim 8): This element is also a means-plus-function claim element. The
function is enabling user control of the rate or sequence or both of transfer of
program information from said memory unit to the user's display device. The
structure that corresponds to this function is the fast forward, reverse, pause, and
frame advance buttons (or "keys") on the remote control. In fact, when referring to
these buttons on the remote control, the 444 Patent states:
The enhanced remote control has additional function keys intended
for use during time delay playback by recorder 10, as described above
and initiated by user actuation of playback key 20. These additional
function keys include fast forward 52 and reverse 54, pause 56, and
frame advance 58. Control circuit 14 is adapted to respond to user
actuation of these keys by controlling the rate and sequence with
which stored information retrieved from memory unit 12 is transferred
to outputs 24 for display. Ex. 1001, at 6:28-41(emphasis added).
Figure 5 shows 6 keys, labeled "rec," "play," "ff," "rev," "pause," "f.adv", and
"terminate." The specific keys that correspond to controlling the rate or sequence
would be understood by one of ordinary skill in the art to be "ff," "rev," pause
and "f.adv." These buttons correspond to their expected functionality from a VCR,
as stated in the patent at 6:36-40. Ex. 1013, at 15; see also Ex. 1001, at 6:24-56.
The way this structure (the "ff," "rev," pause and "f.adv." keys) works is
just like their conventional VCR counterpart and as each keys name implies: ff
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fast forward; rev reverse; pause pause playback; and f.adv. advance one
frame at a time. The result of this means-plus-function element is the manipulation
of playback speed. Ex. 1013, at 16.
Frame advance key (claim 10): Claim 10 further defines the key means to
include a frame advance key for advancing the transfer of program information to
the user's display device at a rate sufficiently slowly so that a user may review the
content of the program information transferred from said memory unit on a frame
by frame basis. Ex. 1001, at 9:28-33. One of ordinary skill in the art would
recognize that this term means a button that, when activated, performs frame-by-
frame playback. This is consistent with the specification which describes a
button that enables users to review the content of a program on a frame-by-frame
basis, called the "f.adv" button (or "key") on a remote control. Ex. 1013, at 17;
1001, at 6:24-56.
Timer circuit (claim 13): This term does not appear in the specification, only
claim 13. A person of ordinary skill in the art would understand this term to mean
a circuit for implementing a timer function. The 444 Patent at 7:10-24 refers to
a timer consistent with this definition, although it does not specifically refer to a
timer circuit. One of ordinary skill would also understand that such a circuit can
be fully specified by its functionality and that the term circuit is very broad and
can encompass discrete electronic components, a microprocessor or other
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programmable chip or chipset implementing an algorithm, a custom or semi-
custom integrated circuit, combinations of the above hardware, or other electronic
means of implementing a control algorithm. Ex. 1013, at 18.
Control circuit (coupled responsively to the keyboard) (claim 1) (coupled also
to the memory unit, claim 1): A person of ordinary skill would understand the
control circuit to mean a circuit for controlling operations of the recorder. The
operations of the recorder, for example, include play, record, reverse, etc., as
indicated by the user control through the keyboard. One of ordinary skill would
also understand that such a circuit can be fully specified by its operation or
functionality (i.e., by the control algorithm that it implements) and that the term
circuit is very broad, as stated above. The existence of such a control circuit is
required in order for the device to operate, and as such, a control circuit, whether it
is expressly disclosed in a reference or not, is necessarily present and inherent.
The control circuit implements an algorithm, and as such, specification of an
algorithm is sufficient for one of ordinary skill in the art to understand that such a
control circuit must exist in order to execute the algorithm. While the '444 Patent
discusses the operation of the control circuit extensively (e.g., 3:54-67; 4:53-58;
5:5-36), no actual hardware comprising the circuit or in fact anything other than
the box labeled "control" in the figures (Figs. 7-9) is disclosed, which supports the
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conclusions in this paragraph. As stated above, the coupled responsively to said
keyboard includes both a direct coupling or remote coupling. Ex. 1013, at 19.
VII. THE GROUNDS SHOWING THAT PETITIONER HAS A REASONABLE LIKELIHOOD OF PREVAILING
A. The Prior Art Discloses Each Claimed Feature and One of Ordinary
Skill Would be Led to Form This Combination
Ulmer in view of Goldwasser render claims 1, 2, 7, 8, 10, 13, and 14 obvious
and there is a strong motivation for combining these references.
Ulmer describes a "Device for simultaneous recording and playback of
television images" which allows users to perform VCR-like functions on television
signals such as record, pause, play, and rewind. Ulmer's device includes a remote
control by which a user can control the device. The device has a reading
mechanism and a recording mechanism described as "being separate and
independent, capable of operating simultaneously" and therefore allows the user to
skip commercials. Ulmer explicitly describes user control of the device as starting
recording, waiting some amount of time, and then starting playback. Ex. 1002, at
1-2 and 81; Ex. 1013, at 40.
1These page numbers refer to the page numbers of the English translation part of
Ex. 1002.
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Goldwasser describes a "Variable-delay video recorder" which effectively
implements a digital VCR providing simultaneous recording and playback. Under
the control of a user, an input video signal is converted from analog to digital,
compressed, and written into a random-access memory which allows simultaneous
read and write. Playback occurs by retrieving the compressed digital video,
decompressing it, and converting it back to an analog signal for display.
Goldwasser discloses that the viewer can begin watching a recording before it
completes; that a viewer can pause playback of a program as it is being recorded to
take a phone call and then resume viewing after a delay which is the length of the
phone call; and that a viewer can fast-forward through commercials and catch up to
the live broadcast. Ex. 1013, at 41;Ex. 1003, at Abstract; 1:55-3:38; 6:22-58;
Fig. 3.
1. Reasons to Combine Ulmer and Goldwasser
As an initial matter, one of ordinary skill in the art would be motivated to
combine Ulmer and Goldwasser because they both address the same problem:
providing simultaneous recording and playback as a mechanism to allow a viewer
to skip commercials. Such a person would readily recognize that the
implementation details of Ulmer's and Goldwasser's apparatus overlap
significantly, and that Goldwasser's functional block diagram provided in figure 3
could be used to implement Ulmer's described apparatus and control circuit. In
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other words, one of ordinary skill in the art would recognize the great similarity
between Ulmer and Goldwasser and would be led to use some of Goldwassers
design details during implementation, as Dr. Hemami does. Given the very close
relationship between Ulmer and Goldwasser, one of ordinary skill would be
motivated to combine features of Goldwasser with Ulmer and look to various
design details of Goldwasser when implementing the Ulmer/Goldwasser
combination. Ex. 1013, at 50.
Ulmer and Goldwasser each individually teaches many of the claimed
features and are very similar. Both Ulmer and Goldwasser teach a device for
simultaneous recording and playback of video (claim 1 generally), using a random
access memory for storing the video comprising semiconductor memory, magnetic
memory, or optical memory (claims 6 and 7). Both Ulmer and Goldwasser teach
an input coupled to the memory and the memory coupled to the output, allowing
recording to and playback from the memory (claims 1(e)2 and 1(f)). Both Ulmer
and Goldwasser teach user control of the device, and that the delay between the
recording and the playback is controlled by the user and is variable (claim 1(f)).
Both Ulmer and Goldwasser teach a control circuit coupled to the memory unit
2Petitioner has lettered each element of the independent claims for ease of
reference, and this convention is followed in the below claim chart.
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(claim 1(d)). Both Ulmer and Goldwasser teach that the user can control the rate
and sequence of the video during playback (claim 8). Ex. 1013, at 51.
Ulmer teaches a remote control coupled to the control circuit (claim 1(c);
Ulmer's keyboard would be understood by one of ordinary skill in the art as being
necessarily present). Ulmer teaches "one-button playback" - that after recording
has been started, playback can be initiated with the press of a single button (claim
1(f)). Ulmer teaches that the playback can be frame-by-frame (claim 10). Ex.
1013, at 52.
Goldwasser teaches a timer circuit so that the device can be preprogrammed
(claim 13). One of ordinary skill in the art would combine Goldwassers timer
circuit with Ulmer to provide the benefit of delayed recording. This was a
common and important feature of VCRs in 1992, and users would simply demand
such functionality if it were not already provided. Ex. 1013, at 53.
Ulmer's one-button playback and remote control would be seen as desirable
improvements over Goldwasser's system, leading one of ordinary skill to focus on
the Ulmer teachings as supplemented in various respects by Goldwasser. For
example, one of ordinary skill would readily recognize Goldwasser's timer circuit
as being a desirable enhancement to Ulmer's system. Ex. 1013, at 54.
2. The Combination of Ulmer and Goldwasser Disclose the Claimed Keyboard
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Remote controls in 1992 necessarily had buttons, or a "keyboard" as used in
the specification. The buttons serve as the user interface for the remote controls.
A person of ordinary skill would understand that buttons would be necessarily
present on a remote control, such as Ulmers. As such, the '444 Patent's keyboard
is necessarily present in the Ulmer/Goldwasser combination. Ex. 1013, at 59.
Additionally, Remote control functions for VCR-like operation were well
known and acknowledged by the '444 Patent (Ex. 1001, at 6:37-41). Ulmer
specifically teaches such functionality as is recited in Claims 8 and 10 (fast
forward, reverse, pause, frame-by-frame playback). Ex. 1002, at 3(the copy of
the television images can be made in one of the following modes: normal forward
speed, accelerated forward speed, slow forward speed, normal reverse speed,
accelerated reverse speed, slow reverse speed, freezing on image, image by image
forward, image by image in reverse). Ulmer also teaches that the user controls
the device through a remote control. Ex. 1002, at 1(it is he or she who controls
the device of the invention, for example with a remote). A person of ordinary
skill would therefore understand that Ulmer's remote control necessarily would
have keys for providing these functions. Ex. 1013, at 60.
Moreover, Goldwasser teaches a user control panel by which a user can
control the apparatus. A person of ordinary skill in the art would readily
understand that the user control panel could be a remote control and that the
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connection between the user control panel and the control circuit need not be
physical. Ex. 1013, at 58.
3. Ulmer Necessarily Discloses the Control Circuit of the Claims
A person of ordinary skill would understand that such a control circuit is not
a novel feature of the 444 Patent, but is a requirement for any remote-
controlled/keyboard-controlled device, as the receipt of the command at the player
itself is not sufficient to control the device; the received command needs to be
passed on to the electronics that control the device itself, e.g., executing commands
that result in the actual execution of play, fast forwarding, etc. Rather, the
command "receiver" at the device would decode the received signal and then pass
on the requested command to a device controller. Ex. 1013, at 61.
Ulmer's remote control allows user control of the device. As explained
supra at VI(A), a control circuit is required for the operation of the device to
execute the commands from the remote control. Therefore, the control circuit is
coupled responsively to the keyboard and one of ordinary skill would understand
that it is inherently present in Ulmer. Ex. 1013, at 62.
4. Ulmer Discloses Simultaneous Recording and Playback
Ulmer discloses simultaneous recording and playback:
A device for recording television images and reproducing them after
playback, characterized in that it uses a recording medium of the
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direct-access memory type; in that it includes a playback mechanism
and a recorder mechanism, wherein the playback mechanism and the
recorder mechanism are separate and independent, can operate
simultaneously and can be placed and displaced independently of one
another on the recording medium . . . Ex. 1002, at 8 (emphasis
added).
Ulmer teaches a "double-gate linear memory of semiconductor or other
type." Ulmer's document is a translation and one of ordinary skill in the art would
immediately recognize that "double gate" refers to "dual port" because of not only
the similarities of the words but also the context, in that this memory is described
as "permitting simultaneous write and read access." Such memory was well
known at the time of the '444 filing. Because this operation is fully supported by
the memory, further explanation of the memory's functionality is not necessary.
Ex. 1013, at 64.
Ulmer provides a detailed explanation of the control circuit, explaining how
it accesses the memory to provide the various VCR-like functions of recording,
playback, reverse playback, fast forward or fast reverse, slow forward or slow
reverse, freeze frame, and single frame advance or reverse. Ex. 1002, at 4-5.
Ulmer provides an example of the control circuit in providing simultaneous
recording and playback: "For reading, the RAR is initialized...to the value of the
RAR minus 1, if it is wished to reproduce what is in the course of being recorded."
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Ex. 1002, at 4. In other words, Ulmer teaches that for immediate playback of the
current recording, the immediately-previously recorded information is immediately
read out. Ex. 1013, at 65.
5. Ulmer Discloses "One Button Playback": Ulmer Discloses Playback with Sole Actuation of the Playback Key, and With an Interval of Time Delay Being the Same as the Time Elapsed Between the Actuation of the Record Key and the Actuation of the Playback Key
Ulmer describes the operation of the device as under user control and
performing the operations of recording, and then playback from the beginning of
the recording following a user-selected time interval. Ex. 1013, at 66; Ex. 1003,
at 1.
Ulmer states that the user controls the device of the invention with a remote
control. Ex. 1002, at 1. A person of ordinary skill would understand that the
operations described in the remainder of the invention would all be performed only
following the issuance of a command by a user, which would be executed through
using keys on the remote control. Ex. 1013, at 67.
Ulmer describes the operation of the device with a simple 5-step operation:
- recording a television broadcast on the recording medium; - waiting for a time T that corresponds almost to the duration of all of the advertising breaks that it is wished to eliminate from the broadcast that it is desired to watch; - starting playback of the recording medium in order to
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reproduce the recorded images on a television screen; - at the beginning of each advertising break, reproducing the
images by playback at acclerated speed so that the end of the advertising break can be identified;
- at the end of the advertising break, reproducing the recorded images at normal speed. Ex. 1002, at 2 (emphasis added).
Of relevance to the "one-button playback" feature with the interval of time
delay are the first 3 steps. "Recording a television broadcast" would be understood
by one of ordinary skill in the art as the user initiating recording by pressing a
record key on the remote control. Waiting for a time T, which is user-controlled,
provides the delay between the initiation of the recording and the next step. The
next step is starting playback, which would be understood by one of skill in the art
to consist of depressing the playback key only. As Ulmer teaches that the
recording and playback occur simultaneously, one of ordinary skill would
understand that it was wholly unnecessary to issue any command other than
"playback" in order to commence playback. See Ex. 1002, at Title (Device for
Simultaneous Recording and Playback of Television Images). Because the device
supports simultaneous recording and playback, one of ordinary skill in the art
would recognize that there is no need to stop, pause, or otherwise disturb the
recording operation simply because playback is desired. Ex. 1013, at 68-69
6. One-Button Playback Would Necessarily Be Supported By the Control Circuit
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Ulmer provides an extensive description of the control circuit. Given the
discussion at VI(A) and VII(A)(3-5), it would be readily apparent to one of
ordinary skill that one-button playback (and all other functionality) would
necessarily be supported by and provided by a control circuit. In other words, a
control circuit that implemented the one-button playback as well as all other
functionality of the device would be inherently present in Ulmer. Ex. 1013, at 70.
7. Claim 1s Means for Powering Is Necessarily Present in Ulmer and Goldwasser
One of ordinary skill would understand that the means for powering
limitation is inherently present in both Ulmer and Goldwasser. First, both Ulmer
and Goldwasswer are consumer electronic devices and are designed to be plugged
into a wall outlet in the users home, which is AC. Also, one of ordinary skill in
the art would understand that Ulmers remote control is powered by batteries
because, in the 1992 time frame, virtually all remote controls were powered by
batteries. Thus, Ulmer and Goldwasser both necessarily provide the structure of
the means for powering element. Moreover, both Ulmer and Goldwasser
necessarily disclose the same way that the means for powering element is
performed because they necessarily use some battery power source (Ulmers
remote) and AC power source (Ulmers and Goldwassers recorder). Lastly, the
function is necessarily present because both Ulmers and Goldwassers apparatus
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are powered, and the result of the means for powering element is also necessarily
present in both references because those devices are rendered operational. Ex.
1013, at 71.
Furthermore, during prosecution, the applicant conceded that the inclusion
of the means for powering element would be obvious to one of ordinary skill in
the art and the Patent Owner cannot now claim otherwise:
With regard to Satas failure to explicitly teach means for powering
the apparatus, applicant again concedes that it would be obvious to
include such, and that the inclusion thereof is implied. Ex. 1012, at 2.
8. Ulmer Discloses Claim 8s Key Means
Ulmer discloses this limitation because Ulmer discloses a remote control
with the same keys as those that serve as the structure for this limitation (i.e., fast
forward, reverse, pause, and frame advance) and they operate in the same way:
- a method with which the copy of the television images can be made in one of the following modes: normal forward speed, accelerated forward speed, slow forward speed, normal reverse speed, accelerated reverse speed, slow reverse speed, freezing on image, image by image forward, image by image in reverse; Ex. 1002, at 3.
It is pointed out that it is the television viewer himself or herself who identifies the start and end of the advertising break that he or she wishes to eliminate, and that it is he or she who controls the device of the invention, for example with a remote. Ex. 1002, at 1.
One of ordinary skill in the art would understand that these functions are inherently
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provided by keys on the remote control. See supra VII(A)(2). Such keys perform
the same function as the key means limitation because they enable the user to
control the rate or sequence or both of transfer of program information from the
memory unit to the displayin other words, the user can control the rate of
playback. Also, the result is the same in that the playback speed is manipulated.
Ex. 1013, at 73.
B. Claim Chart and Analysis Demonstrating How the Proposed Combination Renders Obvious Claims 1, 2, 7, 8, 10, 13, and 14
The following claim chart and analysis demonstrates, on a limitation-by-
limitation basis, how claims 1, 2, 7, 8, 10, 13, and 14 of the 444 Patent are
rendered obvious by Ulmer in view of Goldwasser. This claim chart is directly
supported by Dr. Hemamis declaration and includes her testimony. Ex. 1013, at
pp. 37-63. That is, Dr. Hemamis declaration provides a claim chart that
corresponds directly to the one below, claim-by-claim and element-by-element. Id.
US Patent 5,930,444
PCT Publication WO 89/12896 to Ulmer in view of US Patent 5,241,428 to Goldwasser
1. A recording and playback apparatus for the substantially immediate and seamless resumption of
Ulmer provides a recording and playback apparatus for audio or video signals. Ulmer teaches that the input is a television signal:
To this end, the present invention relates to a method for recording and reproducing television images and for eliminating the advertising breaks and other sequences from a television broadcast, characterized in that it
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interrupted perception of program information based upon audio or video signals, or both, without missing the program information presented during the interruption, comprising:
includes the following steps: (Ex. 1002, at 2) Goldwasser provides a recording and playback apparatus for audio or video signals. Goldwasser teaches that the input is a broadcast program, which a person of ordinary skill would understand to be a television program with audio and video. Goldwasser later abbreviates this by using the term "video" alone which a person of ordinary skill would understand to include the associated audio.
A user can arrange to start recording a broadcast program (while the user is not at home, for example) in the conventional way via stored instructions, and then begin watching the recording several minutes or hours later, before the program is over, without stopping the recording. (Ex. 1003, at Abstract) In the broadcast industry, audio and video recording and playback machines have been used to delay live broadcasts by several seconds to permit deletion of inappropriate language or gestures. These machines provide a fixed delay between the recording and playback of a given section of audio and/or video. (Ex. 1003, at 1:13-18) A principal object of the present invention is to provide an improved video recorder and playback device that can be used to record and playback video material independently, for example, so as to allow the viewer to pause the playback for a variable period of time without interrupting the recording. (Ex. 1003, at 1:55-60)
Goldwasser provides for the substantially immediate and seamless resumption of interrupted perception of program information without missing the program information presented during the interruption:
Similarly, often one will be watching a particular program when one must temporarily cease watching it, for example, to take a telephone call or the lake. It would obviously be convenient to be able to record the program from that point forward, complete the telephone call, and simply watch the remainder delayed
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by the length of time of the interruption. (Ex. 1003, at 1:43-49) A principal object of the present invention is to provide an improved video recorder and playback device that can be used to record and playback video material independently, for example, so as to allow the viewer to pause the playback for a variable period of time without interrupting the recording. (Ex. 1003, at 1:55-60)
(a) means for powering the apparatus;
Both Ulmer's and Goldwasser's devices are electronic and a means for powering the apparatus would be necessarily present. See supra, at VII(A)(7); Ex. 1013, at 71-72.
(b) a keyboard having a record key and a playback key;
Ulmer discloses a keyboard having a record key and a playback key. Ulmer discloses a remote control and teaches that the user controls the device of the invention using the remote control, and also teaches that the user can record and the user can playback. The remote control therefore necessarily has record and playback keys. The user controls the device:
It is pointed out that it is the television viewer himself or herself who identifies the start and end of the advertising break that he or she wishes to eliminate, and that it is he or she who controls the device of the invention, for example with a remote. (Ex. 1002, at 1)
The operations of the device are recording and playback: To this end, the present invention relates to a method for recording and reproducing television images and for eliminating the advertising breaks and other sequences from a television broadcast, characterized in that it includes the following steps: - recording a television broadcast on the recording medium; - waiting for a time T that corresponds almost to the duration of all of the advertising breaks that it is wished to eliminate from the broadcast that it is desired to watch;
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- starting playback of the recording medium in order to reproduce the recorded images on a television screen; (Ex. 1002, at 2) Device for simultaneous recording and playback of television images. (Ex. 1002, at title)
Goldwasser teaches a user control panel which allows the user to execute commands. A person of ordinary skill would understand that the keys on the control panel could be used on a remote control.
User control panel 50 in Figure 3, 6:44-58: "The locations at which the digitized video samples are stored in the random access memory 53 are controlled by an address controller 58, which in turn is responsive to commands received from a user control panel 50."
[C]ontrol means further comprises means responsive to user commands for determining the sequence and rate of retrieval of the stored digital samples . . . (Ex. 1003, at 10:64-68)
At 7:54-58, Goldwasser describes user commands: The system's response to user commands would be much faster than experienced with conventional video recorders. "Fast forwarding", for example, would be accomplished simply by jumping ahead in the list of addresses.
(c) a control circuit coupled responsively to said keyboard;
See supra at VI(A) and VII(A)(3-6); see also Ex. 1013, at 19, 61-62, and 70. Ulmer discloses a control circuit coupled responsively to said keyboard. Ulmer's remote control allows user control of the device. As explained above, a control circuit is required for the operation of the device, to execute the commands from the remote control. The user can control both recording and playback. Therefore, the control circuit is coupled responsively to the keyboard. The operation of the control circuit and control of the
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record/playback as well as enhanced features (fast forward, reverse, pause, frame-by-frame playback) are described in detail at pages 4-5:
The direct-access memory of the recording medium comprises a double-gate linear memory of semiconductor or other type, permitting simultaneous write and read access. It has a large number of memory cells, wherein each cell may contain a television image (and the associated audio signals), formatted in appropriate manner. Each cell is accessed via its address contained in the Write Address Register (WAR) for the recorder mechanism and in the Read Address Register (RAR) for the playback mechanism. Intermediate buffer memories are used for formatting, synchronization and speed matching. The functioning of such a device is described hereinafter: For recording, the WAR is initialized: - to zero if the memory is to be used from its beginning, - to the value that it had at the end of the last recording, if it is wished to record following the previous recording, - to the current value of the RAR, if it is wished to record following the last image that was read, or - to any other value making it possible to achieve a useful function. Recording includes the following steps: - as soon as a video image (with the associated audio signals) is received by the receiver of the television set, it is stored after any necessary formatting in the memory cell indicated by the WAR; - then "1" is added to the value of the WAR, so that the next video image will be written in the next memory cell. For reading, the RAR is initialized: - to zero if image reproduction is to start at the
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40
beginning of the memory; - to the value that it had at the end of the last playback, if it is wished to reproduce following the last image that was read, - to the value of the RAR minus 1, if it is wished to reproduce what is in the course of being recorded, or - to any other value making it possible to achieve a useful function. Playback includes the following steps: - the video image (with the associated audio signals) indicated by the RAR is read in order to store it in the buffer memories; - then, after any necessary formatting, the image is transmitted to the screen of the television set for reproduction, at the rate of F video images per second; - then "1" is added to the value of the RAR so that the next video image will be read from the next memory cell. To read at normal reverse speed, the procedure for forward playback is followed, except that "1" is subtracted from instead of added to the value of the RAR, in order that the next video image will be read from the previous memory cell. To read forward or in reverse at speed accelerated N times, the procedure for reading at normal speed is followed, except that "N" instead of "1" is respectively added to/subtracted from the value of the RAR, so that the next video image will be read from the Nth memory cell following/preceding the cell that has just been read. To read forward or in reverse at speed decelerated N times, the procedure for reading at normal speed is followed, except that the video image is transmitted N times to the television set for reproduction before "1" is respectively added to/subtracted from the value of the RAR, so that the same video image will be reproduced N times before the next is reached. To reproduce an image by freezing, the same video
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image identified by the current value of the RAR is transmitted continuously. To reproduce image by image in forward or reverse, the same video image identified by the current value of the RAR is transmitted continuously and on demand "1" is respectively added to/subtracted from the value of the RAR, in order to reproduce the next or previous image. To advance the recorder mechanism or the playback mechanism rapidly forward or in reverse, N is added to/subtracted from the WAR or RAR respectively, where N is the number of video images that it is wished to skip in order to resume recording or playing back at N video images farther on.
Goldwasser teaches a control circuit coupled to the user control panel 50 which is address control 58. (Ex. 1003, at Fig. 3)
(d) a memory unit coupled responsively to said control circuit, said memory unit having a medium for storage of information, said storage medium having structure which enables substantially random access to information stored in said medium for retrieval of the stored information from said storage medium;
Ulmer's device has a memory unit having a storage medium for information, said storage medium having structure which enables substantially random access to information stored in said medium for retrieval of the stored information from said storage medium. Ulmer's device has random access memory unit:
The present invention also relates to a device for recording television images and reproducing them after playback, characterized in that it uses a recording medium of the direct-access memory type and that it includes a playback mechanism and a recorder mechanism, wherein the playback mechanism and the recorder mechanism are separate and independent, can operate simultaneously and can be placed and displaced independently of one another on the recording medium, and in that it includes buffer memories for synchronization and speed matching. (Ex. 1002, at 3) The direct-access memory of the recording medium comprises a double-gate linear memory of
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semiconductor or other type, permitting simultaneous write and read access. (Ex. 1002, at 4) Other embodiments of the device according to the invention consist in replacing the linear memory as recording medium with a direct-access rotating memory, such as a bubble memory, a magnetic disk, an optical disk, an opto-magnetic disk or any other technology. (Ex. 1002, at 6) 5) A device for recording television images and reproducing them after playback, characterized in that it uses a recording medium of the direct-access memory type; in that it includes a playback mechanism and a recorder mechanism, wherein the playback mechanism and the recorder mechanism are separate and independent, can operate simultaneously and can be placed and displaced independently of one another on the recording medium; and in that it includes buffer memories for synchronization and speed matching. (Ex. 1002, at 8)
Ulmer teaches that the memory unit is coupled to the control circuit by describing control of the memory unit at pages 4-5:
The direct-access memory of the recording medium comprises a double-gate linear memory of semiconductor or other type, permitting simultaneous write and read access. It has a large number of memory cells, wherein each cell may contain a television image (and the associated audio signals), formatted in appropriate manner. Each cell is accessed via its address contained in the Write Address Register (WAR) for the recorder mechanism and in the Read Address Register (RAR) for the playback mechanism. Intermediate buffer memories are used for formatting, synchronization and speed matching. The functioning of such a device is described hereinafter: For recording, the WAR is initialized:
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- to zero if the memory is to be used from its beginning, - to the value that it had at the end of the last recording, if it is wished to record following the previous recording, - to the current value of the RAR, if it is wished to record following the last image that was read, or - to any other value making it possible to achieve a useful function. Recording includes the following steps: - as soon as a video image (with the associated audio signals) is received by the receiver of the television set, it is stored after any necessary formatting in the memory cell indicated by the WAR; - then "1" is added to the value of the WAR, so that the next video image will be written in the next memory cell. For reading, the RAR is initialized: - to zero if image reproduction is to start at the beginning of the memory; - to the value that it had at the end of the last playback, if it is wished to reproduce following the last image that was read, - to the value of the RAR minus 1, if it is wished to reproduce what is in the course of being recorded, or - to any other value making it possible to achieve a useful function. Playback includes the following steps: - the video image (with the associated audio signals) indicated by the RAR is read in order to store it in the buffer memories; - then, after any necessary formatting, the image is transmitted to the screen of the television set for reproduction, at the rate of F video images per second; - then "1" is added to the value of the RAR so that the next video image will be read from the next memory cell.
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To read at normal reverse speed, the procedure for forward playback is followed, except that "1" is subtracted from instead of added to the value of the RAR, in order that the next video image will be read from the previous memory cell. To read forward or in reverse at speed accelerated N times, the procedure for reading at normal speed is followed, except that "N" instead of "1" is respectively added to/subtracted from the value of the RAR, so that the next video image will be read from the Nth memory cell following/preceding the cell that has just been read. To read forward or in reverse at speed decelerated N times, the procedure for reading at normal speed is followed, except that the video image is transmitted N times to the television set for reproduction before "1" is respectively added to/subtracted from the value of the RAR, so that the same video image will be reproduced N times before the next is reached. To reproduce an image by freezing, the same video image identified by the current value of the RAR is transmitted continuously. To reproduce image by image in forward or reverse, the same video image identified by the current value of the RAR is transmitted continuously and on demand "1" is respectively added to/subtracted from the value of the RAR, in order to reproduce the next or previous image. To advance the recorder mechanism or the playback mechanism rapidly forward or in reverse, N is added to/subtracted from the WAR or RAR respectively, where N is the number of video images that it is wished to skip in order to resume recording or playing back at N video images farther on.
Goldwasser's device has a memory unit having a storage medium for information, said storage medium having structure which enables substantially random access to information stored in said medium for retrieval of the
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stored information from said storage medium. Goldwasser clearly indicates that a random access memory unit (RAM 53) is coupled the memory unit is coupled to the control circuit (address control 58) in Figure 3.
(e) at least one input, said input being connected to a user's audio/video program signal source and also being coupled to said memory unit so as to enable program information presented by the signal source to be transferred to and stored in said memory unit; and
Ulmer teaches at least one input, and that the input is an audio/video program signal. Ulmer teaches that the input is a television signal:
To this end, the present invention relates to a method for recording and reproducing television images and for eliminating the advertising breaks and other sequences from a television broadcast, characterized in that it includes the following steps: - recording a television broadcast on the recording medium; (Ex. 1002, at 2)
Ulmer teaches that the input connected to a user's audio/video program signal is also coupled to the memory unit so as to enable program information presented by the signal source to be transferred to and stored in said memory unit:
Recording includes the following steps: - as soon as a video image (with the associated audio signals) is received by the receiver of the television set, it is stored after any necessary formatting in the memory cell indicated by the WAR; (Ex. 1002, at 4)
Goldwasser teaches at least one input, and that the input is an audio/video program signal. Goldwasser teaches that the input is a broadcast program, which a person of ordinary skill would understand to be a television program with audio and video. Goldwasser later abbreviates this by using the term "video" alone which a person of ordinary skill would understand to include the associated audio.
A user can arrange to start recording a broadcast program (while the user is not at home, for example) in the conventional way via stored instructions, and then begin watching the recording several minutes or hours later, before the program is over, without stopping the
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recording. (Ex. 1003, at Abstract) In the broadcast industry, audio and video recording and playback machines have been used to delay live broadcasts by several seconds to permit deletion of inappropriate language or gestures. These machines provide a fixed delay between the recording and playback of a given section of audio and/or video. (Ex. 1003, at 1:13-18) A principal object of the present invention is to provide an improved video recorder and playback device that can be used to record and playback video material independently, for example, so as to allow the viewer to pause the playback for a variable period of time without interrupting the recording. (Ex. 1003, at 1:55-60)
Goldwasser teaches that the input connected to a user's audio/video program signal is also coupled to the memory unit so as to enable program information presented by the signal source to be transferred to and stored in said memory unit:
In this embodiment, the recording device (FIG. 3) includes a signal sampling circuit 51 and an analog-to digital converter 52 which together create digital samples of the video signal being recorded, which are stored in a random access memory 53. Ex. 1003, at 6:25-29; see also Fig. 3.
Goldwasser Figure 3 shows the video signal in (source) going into 51 signal sample (input) which is connected to a memory unit through a data compressor 57, which is the same as Figure 2 in the 444 Patent.
(f) at least one output, said output being connected to a user's audio or video display device or both, said output further being connected to
See supra at VII(A)(4-6); see also Ex. 1013, at 61-70. Ulmer teaches at least one output, said output being connected to a user's audio/video display or both. Ulmer teaches that the output of the device is connected to a user's audio/video display:
- starting playback of the recording medium in order to reproduce the recorded images on a television screen;
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said memory unit so as to enable the transfer of program information from said memory unit to the user's display device, said control circuit being configured so that substantially simultaneous recording and playback of program information is achieved when said record key is first actuated to begin a recording by initiating storage of the broadcast program information in said memory unit, and said playback key is subsequently and solely actuated to begin time delay playback of the recording from the beginning thereof by initiating retrieval of the stored program information in said memory unit, with the interval of the time delay being the same as the
(Ex. 1002, at 2) Ulmer teaches that the output is further connected to said memory unit so as to enable the transfer of program information from said memory unit to the user's display device. And, Ulmer teaches that the output of the device is connected to the user's display and to the memory unit and that the contents of the memory unit are output on the display:
Playback includes the following steps: - the video image (with the associated audio signals) indicated by the RAR is read in order to store it in the buffer memories; - then, after any necessary formatting, the image is transmitted to the screen of the television set for reproduction, at the rate of F video images per second; - then "1" is added to the value of the RAR so that the next video image will be read from the next memory cell. (Ex. 1002, at 4-5)
Ulmer teaches simultaneous recording and playback: The present invention also relates to a device for recording television images and reproducing them after playback, characterized in that it uses a recording medium of the direct-access memory type and that it includes a playback mechanism and a recorder mechanism, wherein the playback mechanism and the recorder mechanism are separate and independent, can operate simultaneously and can be placed and displaced independently of one another on the recording medium, and in that it includes buffer memories for synchronization and speed matching. (Ex. 1002, at 3)(emphasis added)
The direct-access memory of the recording medium comprises a double-gate linear memory of semiconductor or other type, permitting simultaneous write and read access. (Ex. 1002, at 4)
5) A device for recording television images and
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time elapsed between the actuation of said record key and the subsequent actuation of said playback key.
reproducing them after playback, characterized in that it uses a recording medium of the direct-access memory type; in that it includes a playback mechanism and a recorder mechanism, wherein the playback mechanism and the recorder mechanism are separate and independent, can operate simultaneously and can be placed and displaced independently of one another on the recording medium; and in that it includes buffer memories for synchronization and speed matching. (Ex. 1002, at 8)
Ulmer teaches that said control circuit being configured so that substantially simultaneous recording and playback of program information is achieved when said record key is first actuated to begin a recording by initiating storage of the broadcast program information in said memory unit. Ulmer clearly indicates that operation comprises two interactions with the remote control, with a "waiting" period of a length of time selectable by the user in between, and that it is the user that controls the device (and hence the recording, waiting, and playback):
To this end, the present invention relates to a method for recording and reproducing television images and for eliminating the advertising breaks and other sequences from a television broadcast, characterized in that it includes the following steps: - recording a television broadcast on the recording medium; - waiting for a time T that corresponds almost to the duration of all of the advertising breaks that it is wished to eliminate from the broadcast that it is desired to watch; - starting playback of the recording medium in order to reproduce the recorded images on a television screen; (Ex. 1002, at 2)(emphasis added)
Ulmer teaches that, and said playback key is subsequently and solely actuated to begin time delay playback of the
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recording from the beginning thereof by initiating retrieval of the stored program information in said memory unit. (See quote reproduced immediately above, Ex. 1002, at 2) Ulmer teaches that the interval of the time delay being the same as the time elapsed between the actuation of said record key and the subsequent actuation of said playback key. This interval is the time period T that the user waits prior to commencing playback:
To this end, the present invention relates to a method for recording and reproducing television images and for eliminating the advertising breaks and other sequences from a television broadcast, characterized in that it includes the following steps: - recording a television broadcast on the recording medium; - waiting for a time T that corresponds almost to the duration of all of the advertising breaks that it is wished to eliminate from the broadcast that it is desired to watch; - starting playback of the recording medium in order to reproduce the recorded images on a television screen; (Ex. 1002, at 2; see also Ex. 1002, at 1)
Goldwasser teaches that the output is connected to both the display and the memory: At 6:29-36, Goldwasser teaches:
Playback is accomplished by retrieving these stored samples from memory 53 and converting them back via a digital-to analog converter 54 to an analog video signal. The reconstituted analog video signal is supplied to a video signal generator 55 which outputs a conventional video signal which can be displayed on a standard TV display 56.
Goldwasser Figure 3 shows the RAM connected to a
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decompressor whose output is displayed on a video display 56. Goldwasser teaches simultaneous recording and playback:
A video recorder and playback device allowing simultaneous recording and playback of program material, including means for controllably varying a time delay between the recording and playback of recorded material. This allows, for example, playback of previously recorded material to be temporarily stopped and then resumed without interrupting the recording of new material. (Ex. 1003, at Abstract)
These objects are achieved, according to the present invention, by recording video on a recording medium while simultaneously playing back previously recorded video from the medium, while allowing control of a variable time delay between recording and playback. (Ex. 1003, at 2:3-7)
Recording and playback may be done essentially simultaneously by multiplexing writing to and reading from the memory 53. (Ex. 1003, at 6:36-38)
Goldwasser teaches a user-controlled delay between recording and playback:
means for controlling operation of said means for storing and said means for playback such that said converted signal can be continuously stored on said storage medium during either continuous or intermittent reconstitution of the stored signal as a video signal, whereby a user can control a variable delay between the storage and playback of a particular portion of a given video signal. (Ex. 1003, at 9:51-58) A video recorder and playback device allowing simultaneous recording and playback of program material, including means for controllably varying a
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time delay between the recording and playback of recorded material. This allows, for example, playback of previously recorded material to be temporarily stopped and then resumed without interrupting the recording of new material. A user can arrange to start recording a broadcast program (while the user is not at home, for example) in the conventional way via stored instructions, and then begin watching the recording several minutes or hours later, before the program is over, without stopping the recording. The user can also interrupt the playback of a program that is being recorded as it is being watched (to take a telephone call, for example), and then resume playback of the program (after the phone call is over) without stopping the recording. The user