ipr2015-01519

UNITED STATES PATENT AND TRADEMARK OFFICE ____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

UNIFIED PATENTS INC., Petitioner

v.

TransVideo Electronics, Ltd. Patent Owner

____________

IPR2015-01519

Patent No. 5,594,936 Filing Date: July 2, 1993

Issue Date: January 14, 1997

Global Digital Video News Distribution System ____________

PETITION FOR INTER PARTES REVIEW

OF U.S. PATENT 5,594,936

IPR2015-01519, Petition Patent 5,594,936

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TABLE OF CONTENTS I. INTRODUCTION ......................................................................................... 1

II. STATEMENT OF PRECISE RELIEF REQUESTED ............................. 2

A. CLAIMS FOR WHICH REVIEW IS REQUESTED .................................................... 2

B. STATUTORY GROUNDS OF CHALLENGE ............................................................ 2

C. THE LEVEL OF ORDINARY SKILL IN THE ART AT THE TIME OF THE CLAIMED

INVENTION ............................................................................................................... 3

D. STATE OF THE ART AT THE TIME OF THE CLAIMED INVENTION ......................... 4

III. SUMMARY OF THE 936 PATENT .......................................................... 5

A. SPECIFICATION AND CLAIMS OF THE 936 PATENT ........................................... 5

B. THE 936 PATENT PROSECUTION ...................................................................... 7

C. CLAIM CONSTRUCTION ..................................................................................... 8

1. Master Communications Means (Claim 1) .................................................. 9 2. Distribution Amplifier Means (Claim 1) ..................................................... 9 3. Plurality of Communications Means (Claim 1) ........................................... 9 4. Master Controller Means (Claim 1) ............................................................. 9 5. Converting Means (Claim 2) ......................................................................10 6. Input Means (Claim 3) ...............................................................................10 7. Display Means (Claim 6) ...........................................................................10 8. Equalizing Means (Claim 8) ......................................................................10

IV. CLAIMS 14 AND 9-12 OF THE 936 PATENT ARE ANTICIPATED

BY SUTHERLAND (EX. 1004) .............................................................................10


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A. OVERVIEW OF SUTHERLAND (EX. 1004) ..........................................................10

B. CLAIM CHARTS ...............................................................................................15

V. CLAIMS 15 AND 9-13 ARE OBVIOUS OVER SUTHERLAND (EX.

1004) IN VIEW OF GELMAN (EX. 1006) ...........................................................29

A. OVERVIEW OF GELMAN ARTICLE ....................................................................29

B. MOTIVATION TO COMBINE SUTHERLAND AND GELMAN ...................................30

C. CLAIM CHARTS ...............................................................................................32

VI. CLAIMS 6 AND 7 ARE OBVIOUS OVER SUTHERLAND (EX. 1004)

IN VIEW OF MATSUZAKI (EX. 1014), AND/OR SUTHERLAND (EX. 1004)

IN VIEW OF GELMAN (EX. 1006) AND MATSUZAKI (EX. 1014) ................45

A. OVERVIEW OF MATSUZAKI ...............................................................................45

B. MOTIVATION TO COMBINE SUTHERLAND AND GELMAN, AND MATSUZAKI ........46

C. CLAIM CHARTS ...............................................................................................47

VII. CLAIMS 8 AND 14 ARE OBVIOUS OVER SUTHERLAND (EX. 1004)

IN VIEW OF BERGENDAHL (EX. 1015), AND/OR SUTHERLAND (EX.

1004) IN VIEW OF GELMAN (EX. 1006) AND BERGENDAHL (EX. 1015) .48

A. OVERVIEW OF BERGENDAHL ...........................................................................48

B. MOTIVATION TO COMBINE SUTHERLAND AND GELMAN, AND BERGENDAHL ....49

C. CLAIM CHARTS ...............................................................................................49


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VIII. CLAIMS 1-14 ARE OBVIOUS UNDER 35 U.S.C. 103(A) OVER

SUTHERLAND (EX. 1004) IN VIEW OF ARDON (EX. 1020) AND/OR THE

ABOVE-DISCUSSED COMBINATIONS OF SUTHERLAND (EX. 1004),

GELMAN (EX. 1006), MATSUZAKI (EX. 1014), AND/OR BERGENDAHL

(EX. 1015), FURTHER IN VIEW OF ARDON (EX. 1020) ...............................50

A. OVERVIEW OF ARDON .....................................................................................51

B. MOTIVATION TO COMBINE SUTHERLAND AND ARDON .....................................52

IX. GROUNDS FOR STANDING ....................................................................52

X. MANDATORY NOTICES .........................................................................53

A. REAL PARTYININTEREST ............................................................................53

B. RELATED MATTERS ........................................................................................53

C. LEAD AND BACK-UP COUNSEL; CONSENT TO ELECTRONIC SERVICE ..............54

XI. FEE PAYMENT ..........................................................................................55

XII. CONCLUSION ............................................................................................55


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LIST OF EXHIBITS Exhibit Description Ex. 1001 U.S. Patent No. 5,594,936 (filed Jul. 2, 1993) (the 936 patent) Ex. 1002 Declaration of Dr. Charles Eldering, Ph.D. Ex. 1003 File History of The 936 Patent Ex. 1004 U.S. Patent No. 5,181,106 (filed July 31, 1991) to Sutherland

(Sutherland) Ex. 1005 U.S. Patent No. 5,161,152 (filed Dec. 15, 1989) to Czerwiec et al

(Czerwiec) Ex. 1006 A.D. Gelman et al, A Store-And-Forward Architecture for Video-on-

Demand Service, Bellcore Publication, 1991, pp. 842-846 (Gelman) Ex. 1007 Reserved Ex. 1008 Unified Patents Inc. Voluntary Interrogatories Ex. 1009 Complaint for Patent Infringement filed by TransVideo Electronics,

Ltd. against Hulu (1:13-cv-01399-LPS, D. Del.) Ex. 1010 Complaint for Patent Infringement filed by Trans Video Electronics,

Ltd. against Amazon.com (1:13-cv-00061-LPS, D. Del.) Ex. 1011 Complaint for Patent Infringement filed by Trans Video Electronics,

Ltd. against Netflix (1:12-cv-01743-LPS, D. Del.) Ex. 1012 U.S. Patent No. 5,740,214 to Rebec (FWC of Appln. No. 47/089) Ex. 1013 Trans Video Electronics, Ltd. v. Sony Electronics Inc. et al., 3:09-cv-

03304, Memorandum And Order Re Claim Construction, (N.D. Cal. May 8, 2011)

Ex. 1014 U.S. Patent No. 4,887,152 to Matsuzaki et al (Matsuzaki) Ex. 1015 Johan Bergendahl et al., Transport Network Development, Ericsson

Review, No. 2, Vol. 67 (1990), pp. 54-108 (Bergendahl) Ex. 1016 IEEE Explore Abstract - A Store-And-Forward Architecture for

Video-on-Demand Service (June 26, 2015), http://ieeexplore.ieee.org/application/enterprise/entconfirmation.jsp? arnumber=162477

Ex. 1017 IEEE Explore Abstract - Operations and Services Systems Technical Architecture (OSS-TA) (June 26, 2015), http://ieeexplore.ieee.org/xpl/login.jsp?tp=&arnumber=116550

Ex. 1018 IEEE Explore Abstract - SONET now its the standard optical network (June 26, 2015), http://ieeexplore.ieee.org/xpl/login.jsp?tp=&arnumber=20262

Ex. 1019 Declaration of Carlos Rosario Ex. 1020 U.S. Patent No. 5,115,425 to Ardon (Ardon)


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I. INTRODUCTION

Petitioner Unified Patents Inc. (Unified) requests Inter Partes Review

(IPR) of claims 114 of U.S. Patent No. 5,594,936 (the 936 patent) assigned

to TransVideo Electronics, Ltd. (TVE) in accordance with 35 U.S.C. 311-319

and 37 C.F.R. 42.100 et seq.

TVE, through its litigations against various content providers, appears to

believe it invented on-demand content delivery over a network. See Ex. 1009

(accusing Hulu of infringing by providing free on-demand video and [its] paid

subscription on-demand video (through Defendants HuluPlus service)); Ex.

1010 (accusing Amazon.com of infringing by providing an information

distribution system for a network, consisting of digital storing units,

communications unit groups, and a menu storing unit, through its on-demand video

service, Amazon Instant Videos); and Ex. 1011 (accusing Netflix of infringing by

providing an information distribution system for a network, consisting of master

communication means, distribution amplifiers, communications unit groups, and a

master controller means through its on-demand video service).

But systems like Video On Demand, Pay Per View, and other content

purchaseandrental systems over digital networks existed well before the priority

date of the 936 patent. Ex. 1002 at 22. Likewise, there is nothing new about an

information distribution system using a digital network that includes a


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synchronous digital signal, distribution amplifiers, or a means of controlling

[a] plurality of communications units from a central location. Ex. 1001 at

Abstract. It is a fundamental principle of networks to employ technologies such as

a central communication hub, synchronous digital signals, a distribution amplifier,

a plurality of additional communications means, and a central means for

controlling the additional communications means. Ex. 1002 at 3238. In short,

the claims of the 936 patent combine old technologies in obvious ways to get

expected results. Unified respectfully requests that the Board institute IPR, review

this patent, and cancel the claims.

II. STATEMENT OF PRECISE RELIEF REQUESTED

A. Claims for Which Review Is Requested

Petitioner requests IPR and cancellation of claims 114 of the 936 patent

under 35 U.S.C. 311.

B. Statutory Grounds of Challenge

Petitioner requests that the Board institute trial on the following grounds:

Claims 14 and 912 are anticipated under 35 U.S.C. 102(e) by

Sutherland (Ex. 1004);

Claims 15 and 9-13 are obvious under 35 U.S.C. 103(a) over

Sutherland (Ex. 1004) in view of Gelman (Ex. 1006);

Claims 6 and 7 are obvious under 35 U.S.C. 103(a) over Sutherland


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(Ex. 1004) in view of Matsuzaki (Ex. 1014), and/or Sutherland (Ex.

1004) in view of Gelman (Ex. 1006) and Matsuzaki (Ex. 1014); and

Claims 8 and 14 are obvious under 35 U.S.C. 103(a) over

Sutherland (Ex. 1004) in view of Bergendahl (Ex. 1015), and/or

Sutherland (Ex. 1004) in view of Gelman (Ex. 1006) and Bergendahl

(Ex. 1015).

Claims 1-14 are obvious under 35 U.S.C. 103(a) over Sutherland

(Ex. 1004) in view of Ardon (Ex. 1020) and/or the above-discussed

combinations of Sutherland (Ex. 1004), Gelman (Ex. 1006),

Matsuzaki (Ex. 1014), and/or Bergendahl (Ex. 1015), further in view

of Ardon (Ex. 1020).

C. The Level of Ordinary Skill in the Art at the Time of the Claimed Invention

The 936 patent was filed on July 2, 1993, as a continuation-in-part of parent

Utility Application No. 08/047,089, filed April 16, 1993. A person having ordinary

skill in the art (POSA) of video distribution in 1993 would have (i) a B.S. degree

in Electrical Engineering or equivalent training, and (ii) approximately two years

of direct experience in networked content delivery technologies. See Ex. 1002 at

21.


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D. State of the Art at the Time of the Claimed Invention

As Dr. Charles Eldering explains, the field of video distribution had

exploded well before the filing of the 936 patent. For years prior to 1993, industry

showed a tremendous interest in architectures and methods for distributing both

video and audio content using the digital networks, methods of commercializing it,

and methods of distributing information using a central distributor, asynchronous

networks, and additional communications distributors to deliver that content. See

id. 1002 at 22-31. Dr. Eldering designed and analyzed these networks,

publishing several articles on their architectures. Id. at 57.

Dr. Eldering explains how digital network content delivery systems allowed

parties to receive content on their viewing devices via a network. Id. at 23. At the

same time, industry developed for purchase of all types of digital content using the

same and similar transaction architectures. See, e.g., Ex. 1004 (Sutherland) and Ex.

1006 (Gelman) (discussing Video On Demand systems, Pay per view, interactive

TV). Those systems generally distributed video through a variety of

communication means. Ex. 1002 at 24 and 27. The features included in the 936

patent, such as a central communication means, asynchronous signals, distribution

amplifiers, and a central means for controlling the various devices were widely

known at the time of invention. Id. at 30.


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Thus, both the network architecture and video distribution approaches of the

936 patent were well known prior to April 16, 1993.

III. SUMMARY OF THE 936 PATENT

A. Specification and Claims of the 936 Patent

The 936 patent issued from a continuation-in-part (CIP) of a parent

application Utility Application No. 08/047,089, filed April 16, 1993 (priority

application), which was abandoned in favor of a File Wrapper Continuation

application that issued as U.S. Patent No. 5,740,214 on April 14, 1998 (Ex. 1012).

The 214 patent is directed to a satellite communications system that is quite

different from the systems described in the subject 936 patent. Id. at Abstract.

During prosecution of the application that issued as the 936 patent, for example,

Applicant referred to Figures 1B, 3, and 5, inter alia, as showing support for the

claims in response to the examiners rejection under section 112. Ex. 1003 at 98-

104 (Request for Reconsideration, dated October 2, 1995). These figures are not

present in the priority application, the text of which appears in Ex. 1012.

Therefore, the claims of the 936 patent pertain to the new matter added to the

specification at the time of the CIP application. Accordingly, the claims of the 936

patent should be given an effective filing date of July 2, 1993, the date of the CIP

application which led to the 936 patent. See Litton Sys., Inc. v. Whirlpool Corp.,

728 F.2d 1423, 1438 (Fed. Cir. 1984); MPEP 201.08.


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The 936 patent purports to disclose a Global Distribution Video News

System. Ex. 1001 at Title. The disclosed systems purportedly provide an

information distribution system which can disseminate information from one point

to a plurality of receivers. Id. at 1:61-64. Devices described in the 936 include a

master communications unit for establishing communications with [a digital]

network, receive a synchronous digital signal, and request the transaction

server to authorize download of the selected file. Id. at Abstract. The master

communications unit provides video via a synchronous digital signal to a

distribution amplifier, which then sends the video to a plurality of communications

means which further distribute the video to a plurality of receiving stations. Id. at

Abstract, Fig. 1, and Claim 1. The system also includes a master controller for

controlling the plurality of communications units. Id. at Abstract.

The 936 patent thus effectively describes a conventional content delivery

system, while describing an assemblage of deviceswherein some devices can be

centrally controlled. The configurations contemplated by the 936 patent are not

materially different from those publicly available prior to the priority date of the

936 patent, such as a myriad of other video on demand systems, pay-per view-

systems, and interactive television systems. Ex. 1002 at 22-31; see Ex. 1004

(Sutherland) at Figs. 1-11 (synchronous digital network architecture including


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distribution amplifiers, a central control, and receiving stations); Ex. 1006

(Gelman) (digital network architecture discussing video on demand distribution

systems).

B. The 936 Patent Prosecution

The 936 patent was filed in 1993 and issued in January 1997. Ex. 1001.

Claims 1-15 (and new claims 16 and 17) were subjected to a restriction

requirement, and applicant chose to prosecute claims 1-8 and 10-15, drawn to a

digital distribution network. See Ex. 1003. at 71-78 (Amendment, dated November

9, 1994). The examiner rejected claims 1-8 and 10-15 under 35 U.S.C. 112. Id. at

90-93 (Office Action, dated April 10, 1995).

In its response dated September 28, 1995, the applicant made a number of

representations regarding what it considered the claimed invention. Id. at 100-01.

In addition to amending the drawings to address the rejections under 35 U.S.C.

112, the applicant represented that network 170 represented some external

digital network. Id. at 100. Applicant further argued CSU/DSUs are

communications units which perform hand-shaking functions to initiate and sustain

communications between synchronous digital equipment but may be used to

interconnect asynchronous equipment to synchronous equipment. Id. According

to applicant, CSU/DSUs were well known to one of ordinary skill in the art (Id.


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at 100-01), and were well known to be interactive, programmable devices which

respond to a users commands without that user having to understand the internal

structure of the CSU/DSUs. Id. at 102. The applicant provided examples of how

switched digital access device[s] would be known by one of skill in the art. Id. at

101. The applicant further conceded that the [t]he distribution amplifier/equalizer

is merely a signal amplifier and signal splitter. Id. at 103 (emphasis added).

Shortly thereafter, the examiner withdrew the rejections under 35 U.S.C. 112 and

allowed the application after applicant cancelled claims 9, 16, and 17. Id. at 105

(Communication, dated December 12, 1995).

C. Claim Construction

The 936 patent expired on January 14, 2014, and therefore is not subject to

amendment. For purposes of this Petition, the claims are construed pursuant to

Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (words of a claim

are generally given their ordinary and customary meaning as understood by a

person of ordinary skill in the art in question at the time of the invention).

The following terms and phrases from the claims of the 936 patent require

construction for this proceeding. These terms are all means-plus-function

limitations, construed to cover the structure disclosed in the specification and

structural equivalents thereof corresponding to the claimed function. See 35 U.S.C.

112, 6. Phillips requires all other terms be given their ordinary and accustomed


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meanings.1

1. Master Communications Means (Claim 1)

Function: establishing communications with the network in order to receive

a synchronous direct signal. Corresponding structure: master CSU/DSU 108. Ex.

1001 at Figs. 1B and 2, and 3:56-63; 5:31-34.

2. Distribution Amplifier Means (Claim 1)

Function: receiving and dividing a synchronous digital signal into a plurality

of synchronous signals. Corresponding structure: distribution amplifier/equalizer

112 / 531A-525H. Id. at 1B, 2, 3A, 3B, 4:65-5:1, and 5:65-6:6.

3. Plurality of Communications Means (Claim 1)

Function: establishing communications with a plurality of receiving stations

and for receiving and outputting synchronous signals to the receiving stations.

Corresponding structure: plurality of CSU/DSUs 116 / 516. Id. at Figs. 1B, 2, 4, 5,

and 3:59-63.

4. Master Controller Means (Claim 1)

Function: controlling the plurality of communications means. Corresponding

1 Because the IPR procedure does not permit challenges under 35 U.S.C. 112,

Petitioner has not included any indefiniteness arguments herein. Petitioner reserves the

right, however, to raise such arguments in other proceedings.


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structure: master controller 126. Id. at Figs. 1B, 2, 4, 5:58-64 and 6:7-18.

5. Converting Means (Claim 2)

Function: converting at least one of said plurality of synchronous signals

into at least one asynchronous signal. Corresponding structure: signal converter

450T / 550R. Id. at Figs. 1C, 1D, 4:47-50; 5:13-25.

6. Input Means (Claim 3)

Function: inputting instructions to control said plurality of communications

means. Corresponding structure: keypad 132. Id. at Figs. 1B, 2, and 4, 2:48-51.

7. Display Means (Claim 6)

Function: displaying information associated with said plurality of

communications means. Corresponding Structure: display 128. Id. at Fig. 1B and

3:65.

8. Equalizing Means (Claim 8)

Function: equalizing respective amplitudes of said plurality of synchronous

signals. Corresponding structure: Described at 2:56-59: an equalizing unit for

equalizing respective amplitudes of the plurality of synchronous signals.

IV. CLAIMS 14 AND 9-12 OF THE 936 PATENT ARE ANTICIPATED BY SUTHERLAND (EX. 1004)

A. Overview of Sutherland (Ex. 1004)

Sutherland was filed on July 31, 1991, and is prior art under pre-AIA 35

U.S.C. 102(e). Ex. 1003 and Ex. 1004. Sutherland was not cited by the


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Applicants or considered by the Examiner during prosecution of the 936 patent.

Ex. 1001.

Sutherland describes a telecommunications network providing video

services subscribers. See generally Ex. 1004. The system described in Sutherland

allows for a larger number of video channels than previously offered services,

while keeping equipment costs to a minimum. Id. at 3:18-22. The system described

in Sutherland was designed around a family of SONET (Synchronous Optical

Network) access products and was sold by Alcatel NA Network Systems Corp. Id.

at 3:37-39. Figure 1 of Sutherland illustrates a network architecture designed to

distribute data comprising a Central Office 10, Remote Terminals 12, Optical

Network Units 16, and Set-Top Converters 21. Id. at 3:57-4:65 and 6:5-43.

Sutherland incorporates by reference a number of applications, including

U.S. Patent Application No. 452,291 (now U.S. Patent No. 5,161,152) by Czerwiec

et al. (Czerwiec, Ex. 1005), entitled High-Speed Synchronous Transmission Line

Across Terminal, and U.S. Patent Application No. 07/738,111 (now U.S. Patent

No. 5,572,347) by Burton, entitled Switched Video Architecture for an Optical

Fiber-To-the-Curb Telecommunications System. Ex. 1004 at 1:9-1:26. Czerwiec

is included in Sutherland and describes the functionality of synchronous digital

networks. See generally Ex. 1005. Material not explicitly contained in a single,


12

prior art document may still be considered for purposes of anticipation if that

material is incorporated by reference into the document. Advanced Display Sys.,

Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). Incorporation by

reference provides a method for integrating material from various documents into a

host documenta patent or printed publication in an anticipation determination

by citing such material in a manner that makes clear that the material is effectively

part of the host document as if it were explicitly contained therein. Id.

The system disclosed in Sutherland provides an integrated platform for

switched video and standard narrowband telephone services. Therefore, it is an

information distribution system for a digital network. See Ex. 1004 at 3:1-8.

Sutherland utilizes a Loop Carrier Cross-connect-Fiber-To-the-Curb (LCX-FTC)

system that offers telephone companies access to narrowband and broadband

functionality. Id. at 3:32-37.


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Id. at Fig. 1. Referring to Figure 1, Sutherland discloses a distribution

system wherein a Central Office (CO) 10 provides data over a SONET network

(e.g., a digital synchronous network) to Remote Terminals (RTs) 12. Id. at Fig. 2,

3:57-60, and 6:5-6. Once data, such as a video clip, reaches an RT, the RT can

amplify and distribute the data to a plurality of other devices. Id. at 6:49-58, 11:25.

The system uses a distribution network where optical fibers radiate from an RT to

Optical Network Units (ONUs) 16. Id. at Fig. 2, 3:63-66, and 6:28-31. Each ONU

can distribute data to multiple living units 20 (which contain set-top converters 21).

Id. at Figs. 2 and 11, 3:65-67, and 13:42-44. In addition to these devices, a core 24

can be included in various devices, and accessed by a Broadband Network


14

Management OS/ operations support unit 167 to control information sent to and/or

received by COs, RTs, ONUs, etc. Id. at Fig. 9A and 12:17-19.

Using this type of architecture, services such as basic programming,

premium programming, Pay-Per-View, and Video On Demand can be accessed by

a subscriber from multiple service providers. Id. at 4:37-44. As shown in Figure 7,

a Video On Demand service provider 96 and/or a Video Headend 92 can provide

video and audio data to a CO 10. Id. at Fig. 7, 10:8-16. Further, this architecture

can allow for either analog or digital television signals to be delivered to the

subscriber. Id. at 4:42-44.

In addition, Sutherland discloses a number of other features associated with

synchronous digital signals and Video On Demand networks. For instance, set-top

converters are disclosed which are similar to pre-1993 set-top converters. Id. at

Fig. 11, 11:64-66. Czerwiec, incorporated by reference into Sutherland, discloses

synchronous and asynchronous signals. Ex. 1005 at 3:51-55. Sutherland discloses

means for backing up data using a multitude of devices such as a digital loop

carrier system or redundant lines. Ex. 1004 at 7:36-39, 8:15-18.

Thus, Sutherland teaches a system where a Central Office 10 receives data

from a network (e.g., from a video head or video on demand service provider),

then sends the data to at least one Remote Terminal 12 to amplify and distribute


15

the data, each of which then send the data to at least one Optical Network Unit 16,

which each in turn then send the data to one or more set-top converters 21 such

that a subscriber can access the data. Id. at Figs. 1, 7, and 11, 3:33-4:65. In addition

to these devices, a Broadband Network Management OS 167 is able to control

many of the devices and determines which device receives particular data. Id. at

Fig. 9A and 12:17-19.

B. Claim Charts

The claim charts below lay out in detail where each element of the claims 1-

4 and 9-12 are disclosed by Sutherland.

936 Patent

Independent Claim 1

Disclosure of Sutherland

[1.0] An information distribution system for a digital network, comprising:

Sutherland: An information distribution system for a digital network (id. at 4:42-44 (the technology used allows either analog or digital television signals to be delivered to the subscriber) see also id. at Figs. 1, 7, 9A, 9B, and 11, and 6:5-31 and 3:32-4:50; see also id. at 10:31-34 (The FM system . . . is therefore compatible with more HDTV formats that have been proposed, both analog and digital)), comprising: See also Ex. 1002 at 55-57.

[1.1] master communications means coupled to the digital network for establishing communications with the network in

Sutherland: master communications means (id. at 6:5 (Referring to Fig. 1 there is shown a CO [Central Office] 10) coupled to the digital network (id. at 6:6 (via SONET)) for establishing communications with the network in order to receive a synchronous digital signal; (id. at 6:5-6 (Referring to Fig. 1 there is shown a CO 10, connected to remote terminals [RTs] via SONET [Synchronous Optical network]); id. at 10:9-12 (The CO 10 receives a plurality of video channels from a video headend 92 connected to the CO 10 via an optical link 94);


16

order to receive a synchronous digital signal;

id. at 10:26-34 (the FM platform); id. at Figs. 1 and 7). See also Ex. 1002 at 58-61.

[1.2] distribution amplifier means coupled to said master communications means for receiving and dividing said

Sutherland: distribution amplifier means (Remote Terminal, RT 12, of Sutherland as shown in Fig. 1 and described at least in 3:57-60 and 7:1-3) coupled to said master communications means (SONET connections to CO); id. at 6:5-6 (Referring to Fig. 1 there is shown a CO 10, connected to remote terminals via SONET)) for receiving and dividing said synchronous digital signal into a plurality of synchronous signals (id. at 6:33-34 (The RT serves the ONUs [Optical Network Units 16] through the optical links 18) see also id. at 1:40-43, 8:39-43,11:42-49


17

synchronous digital signal into a plurality of synchronous signals;

(these communications include digital signals); id. at Figs. 9A, 9B, and 11:25 (RTs 12 include a video line shelf (VLS) for amplifying the video signal and distributing/dividing it into a plurality of signals); id. at 10:25-34 (VLSs support the transmission of digital signals); id. at Fig. 1); See also Ex. 1002 at 62-66.

[1.3] plurality of communications means coupled to said distribution amplifier means for establishing communications with a

Sutherland: plurality of communications means (Optical Network Units, ONUs 16, Fig. 1 and described at least in 7:27-35 and 3:63-67 (The system uses a star distribution network where the optical fibers radiate from the RT to active Optical Unit Network Units (ONU) via point to point optical links with each residential ONU serving up to eight living units with three DS0 (64 Kb/s) channels) act as a communications means) coupled to said distribution amplifier means (Remote Terminal, RT 12, of Sutherland as shown in Fig. 1 and described at least in 3:57-60 and 7:1-3) for establishing communications with a plurality of receiving stations (set-top converters 21 within living units 20 as


18

plurality of receiving stations and for receiving and outputting said plurality of synchronous signals to the plurality of receiving stations; and

shown in Figs. 1 and 11 and described at least in 6:36-38 and 11:6212:4 ) and for receiving and outputting said plurality of synchronous signals to the plurality of receiving stations (id. at 13:42-44: Referring to FIG. 11, the 24 channels from the primary fiber 18 are demultiplexed via the ODU [Optical Distribution Unit] 70 and converted for subscribers 1-4 by the SVD [Switched Video Distribution card] 74; Fig. 1; Figs. 1, and 11; id at 3:63-68 (The system uses a star distribution network where the optical fibers radiate from the RT to active Optical Network Units (ONU) via point to point optical links with each residential ONU serving up to eight living units with three DS0 (64 Kb/s) channels); and See also Ex. 1002 at 67-69.


19

[1.4] master controller means coupled to said plurality of communications means for controlling said plurality of communications means from a central location.

Sutherland: master controller means (Broadband Network Management OS 167 (a/k/a operations support unit 167); Figs. 9A-9B) coupled to said plurality of communications means (ONUs 16) for controlling said plurality of communications means (ONUs 16) from a central location (id. at 12:17-19 (The core 24 receives broadband network management and SONET overhead signals from an operations support unit 167); id. at 6:44-45 (Referring to FIG. 2 there is shown greater detail of the LCX-50 core 24 as used in the CO 10 and RT 12); id. at 7:16-19 (In the RT 12, the core 24 is connected to an Optical Distribution Shelf (ODS) 30 which provides the housing for plug-in electronics that provide fiber-optic interfaces to the ONUs); id. at 12:17-24 (as shown in Fig. 9A, the Broadband Network Management OS 167 acts as a master controller); id. at Figs. 2 and 9A-9B). See also Ex. 1002 at 70-71.


20


21

Claim 2 2. The information distribution system, as claimed in claim 1, wherein said distribution amplifier means further includes converting means for converting at least one of said plurality of synchronous

Sutherland: The information distribution system, as claimed in claim 1, (see Claim 1, supra) wherein said distribution amplifier means (RTs, see Claim 1, supra) further includes converting means for converting at least one of said plurality of synchronous signals into at least one asynchronous signal (id. at Figs. 1 and 7 (Sutherland teaches a remote terminal that distributes and amplifies a synchronous signal into a plurality of synchronous signals) and id. at 9:1-4(the data channel,D-channel for ISDN, is capable of transmitting synchronous and asynchronous signals)). Alternatively, Sutherland at 1:13 incorporates Czerweic by reference; Czerwiec at 3:51-53 (A low speed interface


22

signals into at least one asynchronous signal.

supports up to 28 DS1 low-speed ports operating in either synchronous or asynchronous fashion).2 See also Ex. 1002 at 72-73.

Claim 3 3. The information distribution system, as claimed in claim 1, wherein said master controller means further includes input means for inputting instructions to control said plurality of communications means.

Sutherland: The information distribution system, as claimed in claim 1, (see Claim 1, supra) wherein said master controller means (Broadband Network Management OS / Operations Support Unit 167; Fig. 9) further includes input means for inputting instructions to control said plurality of communications means (id. at 12:17-19 (The core 24 receives broadband network management and SONET overhead signals from an operations support unit 167).3 See also Ex. 1002 at 74-76.

2 It is clear from Sutherland that the synchronous signals are converted to asynchronous

signals. Ex. 1002 at 73 and 130-133. This is supported by the fact that Czerwiec

illustrates that a synchronous or asynchronous signal can be converted into the correct

signal in order for the interface device to operate correctly. Id. The conversion of a

synchronous signal into an asynchronous signal would be performed by a converter. Id.

3 In order for the Broadband Network Management OS to control a plurality of

communication means, it must have had an input means for inputting instructions. Ex.

1002 at 75. Regardless of where it stores the input, or when it receives the input, it must

have some type of input to acquire the information used to control the nodes in a network

Id. (citing Fig. 9A).


23

Claim 4 4. The information distribution system as claimed in claim 2, further comprising a first back-up memory for receiving and storing said at least one asynchronous signal.

Sutherland: The information distribution system as claimed in claim 2, (see Claim 2, supra) further comprising a first back-up memory for receiving and storing said at least one asynchronous signal (id. at 8:15-17 (redundancy is carried through the LCX-50 core, this redundancy acts as back-up memory)). Alternatively, Czerwiec teaches redundant processors at 3:29-39 and asynchronous DS-1 signals at 3:49-54: A low speed interface supports up to 28 DS1 low-speed ports operating in either synchronous or asynchronous fashion. See also Ex. 1002 at 77-78.

Independent Claim 9

[9.0] A method for distributing information to various locations in a digital network, comprising the steps of:

See supra Claim 1.0. Sutherland: A method for distributing information to various locations in a digital network (id. at 4:42-44: the technology used allows either analog or digital television signals to be delivered to the subscriber; id. at Fig. 1, and 6:5-31 and 3:32-4:50; id. at 4:42-44 and 3:57-60 (the technology used in the telecommunications architecture / system delivers analog or digital television signals [] to the subscriber)), comprising the steps of: See also Ex. 1002 at 79-80.

[9.1] establishing communications with the network in order to receive a synchronous digital signal from the network;

See supra Claim 1.1. Sutherland: establishing communications with the network in order to receive a synchronous digital signal from the network (see SONET; id. at 6:5-6 (Referring to Fig. 1 there is shown a CO 10, connected to remote terminals via SONET); id. at Fig. 1); See also Ex. 1002 at 81-82.


24

[9.2] receiving and dividing the synchronous digital signal into a plurality of synchronous signals;

See supra Claim 1.2. Sutherland: receiving and dividing the synchronous digital signal into a plurality of synchronous signals (Sutherland teaches receiving and dividing the synchronous digital signal into a plurality of digital signals at 6:33-34 (The RT serves the ONUs [Optical Network Units] through the optical links 18); id. at Fig. 1); See also Ex. 1002 at 83-85.

[9.3] establishing communications with a plurality of receiving stations;

See supra Claim 1.3. Sutherland: establishing communications with a plurality of receiving stations (Sutherland teaches receiving and dividing the synchronous digital signal into a plurality of digital signals; ONUs that receive a signal from a remote terminal provide that signal to set-top converters 21 within living units 20 as shown in Figs. 1 and 11 and described at least in 6:36-38 and 11:62-12:4); See also Ex. 1002 at 86-87.


25

[9.4] receiving and outputting a respective one of the plurality of synchronous signals to a respective receiving station; and

See supra Claim 1.3. Sutherland: receiving and outputting a respective one of the plurality of synchronous signals to a respective receiving station (id. at 13:42-44 (Referring to FIG. 11, the 24 channels from the primary fiber 18 are demultiplexed via the ODU [Optical Distribution Unit] 70 and converted for subscribers 1-4 by the SVD [Switched Video Distribution card] 74); id. at Fig. 1; Fig. 11; id. at 3:63-68 (The system uses a star distribution network where the optical fibers radiate from the RT to active Optical Network Units (ONU) via point to point optical links with each residential ONU serving up to eight living units with three DS0 (64 Kb/s) channels); id. at 12:1-4 (further, the set top boxes require downstream data in order to provide menu services, and customer features for software upgrades, patches, and general operation and maintenance); and See also Ex. 1002 at 88-89.


26

[9.5] controlling said

See supra Claim 1.4. Sutherland: controlling said receiving and outputting step


27

receiving and outputting step with a controller unit at a central location.

with a controller unit at a central location (Broadband Network Management OS 167 (a/k/a operations support unit 167; id. at 12:17-19 (Sutherland teaches controlling the receiving and outputting step with a controller at a central location); id. at Figs. 9A-9B; the cores receive an overhead SONET signal from the operations unit 167 which acts as a controller). See also Ex. 1002 at 90-91.


28

Claim 10 10. The method for distributing information as claimed in claim 9, further including the step of converting at least one of said plurality of synchronous signals into at least one asynchronous signal.

See supra Claim 2. Sutherland: The method for distributing information as claimed in claim 9, (see Claim 9, supra) further including the step of converting at least one of said plurality of synchronous signals into at least one asynchronous signal (id. at Figs. 1 and 7 (Sutherland teaches the step of converting at least one of the plurality of synchronous signals into at least one asynchronous signal); id. at 1:13 incorporates Czerweic by reference; Czerwiec at 3:51-53 (A low speed interface supports up to 28 DS1 low-speed ports operating in either synchronous or asynchronous fashion)). See also Ex. 1002 at 92-93.

Claim 11 11. The method for distributing information as claimed in claim 9, further comprising the step of converting at least one of said plurality of synchronous signals into at least one asynchronous signal.

See supra Claims 2 and 10. See also Ex. 1002 at 94-95.

Claim 12 12. The method for distributing information as claimed in claim 11, further comprising the

See supra Claim 4. Sutherland: The method for distributing information as claimed in claim 11, (see Claim 11, supra) further comprising the step of storing the at least one asynchronous signal in a memory4 (id. at 8:15-28 (the OC-1 feeder line is redundant); id. at 1:13 which incorporates

4 The asynchronous signal would need to be stored in buffer memory of one of the

distribution nodes or a set top box. All of these components would have memory, and be

able to store an asynchronous signal. Ex. 1004 at 8:15-28.


29

step of storing the at least one asynchronous signal in a memory.

Czerweic by reference; Czerwiec at 3:51-53: A low speed interface supports up to 28 DS1 low-speed ports operating in either synchronous or asynchronous fashion). See also Ex. 1002 at 96-97.

V. CLAIMS 15 AND 9-13 ARE OBVIOUS OVER SUTHERLAND (EX. 1004) IN VIEW OF GELMAN (EX. 1006)

Although Petitioner believes that Sutherland discloses video recorders and

video storage (See e.g., Ex. 1004 at 6:4-8), to the extent the Board concludes this

feature is not expressly disclosed, it certainly would have been obvious from

Sutherland alone, or Sutherland combined with the Gelman article, as further

explained below.

A. Overview of Gelman Article

The Gelman article, A Store-And-Forward Architecture for Video-on-

Demand Service, was published in June 1991 by Bellcore, and is therefore prior art

under 102(b). Ex. 1006; Ex. 1016.

Gelman describes a data distribution architecture that can provide video-on-

demand services over a synchronous digital network. Id. at 842. Gelman, as with

Sutherland, discloses video-on-demand services distributed over a synchronous

digital network that includes Information Warehouses, Central Office (CO) service

circuits, and customer premise equipment. Id. Gelman describes a number of

mediums for storing video data, from non-random access for archival material,


30

video juke-boxes for medium speed access, and magnetic disk drives for on-line

popular material. Id. at 843. Further, Gelman describes the transmission of data

using a SONET interface over a DS-1 (a/k/a T1) stream. Id. at 844.

B. Motivation to Combine Sutherland and Gelman

Sutherland teaches a network architecture for distributing data such as video

to a plurality of living spaces. Ex. 1004 at 3:32-4:65. Sutherland employs SONET

networks to distribute video from a central office to remote terminals, from the

remote terminals to optical network units, and finally to set-top receivers. Id. In the

SONET networks described in Sutherland, users are able to select data they would

like to consume using a video on demand system. Id. at 10:14-16.

A POSA would have been motivated, with a reasonable expectation of

success, to use the various video distribution architecture, such as that described in

Gelman to transmit video in an on demand system efficiently. Ex. 1002 at 102-

105. The video on demand system in Sutherland illustrated various devices and

distributors to deliver video on demand. Ex. 1004 at Fig. 1. But one of skill in the

art would have been motivated to apply the teachings of Gelman to Sutherland to

further increase the speed in which video could be provided to subscribers, as

described in Gelman:

The mass storage technology has to meet several requirements within

the context of the VOD [Video On Demand] services discussed in this


31

paper. It is assumed that each IWH [Information Warehouse] contains

several thousand video programs, with lengths ranging from a few

minutes to several hours. Some of the programs may require dedicated

drives, due to heavy demand at the time, so as to guarantee random

access with only a few millisecond access times to those programs.

However, most other programs might be handled in a jukebox

fashion using, for instance, optical disks. This arrangement implies

several seconds access to the disks, and milliseconds access times

within a particular medium. High-capacity optical or magnetic tape

may also be used for the archival storage in the IWH, Fig.3.

See Ex. 1006 at 845.

At the time of filing, and based on Gelman, the use of video on demand

systems and synchronous digital distribution networks was well known. A POSA

would have known to apply the teaching of Gellmans network architecture for the

distribution of video clips via a plurality of communications means as described in

Sutherland. Ex. 1002 at 102-105.

The architecture described in Gelman is designed to provide an

infrastructure for information networking for a mass information providing service.

Ex. 1006 at 846. One of skill in the art at the time of the filing would have been

motivated to record and/or store media files over a star distribution network to

provide video on demand services to a large number of subscribers. As explained


32

by Dr. Eldering as consistent with synchronous digital networks at the time, files

distributed over a SONET architecture would need to be stored in various devices

in order to increase the speed of delivery. Ex. 1002 at 25-27. A POSA would

have known to apply the teachings of Gelman to the system of Sutherland to obtain

the claimed feature of distribution systems comprising a recorder, back-up

memory, or the like. Id. at 102-105.

C. Claim Charts

The claim charts below lay out in detail where each element of the claims 1-

4 and 9-13 are disclosed by Sutherland and/or Gelman.

936 Patent Independent Claim 1

Disclosures of Sutherland and Gelman

[1.0] An information distribution system for a digital network, comprising:

Sutherland: An information distribution system for a digital network (id. at 4:42-44 (the technology used allows either analog or digital television signals to be delivered to the subscriber) see also id. at Figs. 1, 7, 9A, 9B, and 11, and 6:5-31 and 3:32-4:50; see also id. at 10:31-34 (The FM system . . . is therefore compatible with more HDTV formats that have been proposed, both analog and digital)), comprising: See also Ex. 1002 at 106-110.

[1.1] master communications means coupled to the digital network for establishing communications with the network in order to receive

Sutherland: master communications means (id. at 6:5: Referring to Fig. 1 there is shown a CO [Central Office] 10; Fig. 1) coupled to the digital network (id. at 6:6: via SONET) for establishing communications with the network in order to receive a synchronous digital signal (id. at 6:5-6: Referring to Fig. 1 there is shown a CO 10, connected to remote terminals [RTs] via SONET [Synchronous Optical network] ); id. at 10:9-12 (The CO 10 receives a plurality of video channels from a video headend 92 connected to the CO 10 via an optical link 94); id. at 10:26-34 (the FM platform); id. at Fig. 1 and 7);


33

a synchronous digital signal;

See also Ex. 1002 at 111-117.

[1.2] distribution amplifier means coupled to said master communications means for receiving and dividing said synchronous digital signal into a plurality

Sutherland: distribution amplifier means (Remote Terminal, RT 12, of Sutherland as shown in Fig. 1 and described at least in 3:57-60 and 7:1-3) coupled to said master communications means (SONET connections to CO) (id. at 6:5-6 (Referring to Fig. 1 there is shown a CO 10, connected to remote terminals via SONET)) for receiving and dividing said synchronous digital signal into a plurality of synchronous signals (id. at 6:33-34 (The RT serves the ONUs [Optical Network Units 16] through the optical links 18) see also id. at 1:40-43, 8:39-43,11:42-49 (these communications include digital signals); id. at Figs. 9A, 9B, and 11:25 (RTs 12 include a video line shelf (VLS) for amplifying the video signal and distributing/dividing it into a


34

of synchronous signals;

plurality of signals); id. at 10:25-34 (VLSs support the transmission of digital signals); id. at Fig. 1); See also Ex. 1002 at 118-122.


35

[1.3] plurality of communications means coupled to said distribution amplifier means for establishing communications with a plurality of receiving stations and for receiving and outputting said plurality of

Sutherland: plurality of communications means (Optical Network Units, ONUs 16, Fig. 1 and described at least in 7:27-35 and 3:63-67 (The system uses a star distribution network where the optical fibers radiate from the RT to active Optical Unit Network Units (ONU) via point to point optical links with each residential ONU serving up to eight living units with three DS0 (64 Kb/s) channels) act as a communications means) coupled to said distribution amplifier means (Remote Terminal, RT 12, of Sutherland as shown in Fig. 1 and described at least in 3:57-60 and 7:1-3) for establishing communications with a plurality of receiving stations (set-top converters 21 within living units 20 as shown in Figs. 1 and 11 and described at least in 6:36-38 and 11:6212:4 ) and for receiving and outputting said plurality of synchronous signals to the plurality of receiving stations (id. at 13:42-44: Referring to FIG. 11, the 24 channels from the


36

synchronous signals to the plurality of receiving stations; and

primary fiber 18 are demultiplexed via the ODU [Optical Distribution Unit] 70 and converted for subscribers 1-4 by the SVD [Switched Video Distribution card] 74; Figs. 1, and 11; id at 3:63-68 (The system uses a star distribution network where the optical fibers radiate from the RT to active Optical Network Units (ONU) via point to point optical links with each residential ONU serving up to eight living units with three DS0 (64 Kb/s) channels); and Gelman: Alternatively At the user's local CO, the information is buffered, the data-rate is then converted to the video coding rate (i.e. DS-l), and then possibly decoded to the original video signal form (e.g. analog). The video signal is then transported to the user in the form which corresponds to the local access switching and transmission parameters and the user's CPE capabilities. In this paper we assume that all users possess terminal equipment which accepts either compressed or non-compressed signals. The DS-1 video decoder may therefore be located at the CPE or be a part of a service circuit pool at the CO. In either case, the matching of video rates would be done at the CO and the channel from the CO to the subscriber is real-time. Pg. 843-44. See also Fig. 1. See also Ex. 1002 at 123-126.


37


38

[1.4] master controller means coupled to said plurality of communications means for controlling said plurality of communications means from a central location.

Sutherland: master controller means (Broadband Network Management OS 167 (a/k/a operations support unit 167); Figs. 9A-9B) coupled to said plurality of communications means (ONUs 16) for controlling said plurality of communications means (ONUs 16) from a central location (id. at 12:17-19 (The core 24 receives broadband network management and SONET overhead signals from an operations support unit 167); id. at 6:44-45 (Referring to FIG. 2 there is shown greater detail of the LCX-50 core 24 as used in the CO 10 and RT 12); id. at 7:16-19 (In the RT 12, the core 24 is connected to an Optical Distribution Shelf (ODS) 30 which provides the housing for plug-in electronics that provide fiber-optic interfaces to the ONUs); id. at 12:17-24 (as shown in Fig. 9A, the Broadband Network Management OS 167 acts as a master controller); id. at Figs. 2 and 9A-9B). See also Ex. 1002 at 127-128.


39

Claim 2 2. The information distribution system, as claimed in claim 1, wherein said distribution amplifier means further includes converting means for converting at least one of said plurality of synchronous signals into at least one asynchronous signal.

Sutherland: The information distribution system, as claimed in claim 1, (see Claim 1, supra) wherein said distribution amplifier means (RTs, see Claim 1, supra) further includes converting means for converting at least one of said plurality of synchronous signals into at least one asynchronous signal (id. at Figs. 1 and 7 (Sutherland teaches a remote terminal that distributes and amplifies a synchronous signal into a plurality of synchronous signals) and id. at 9:1-4: D-channel for ISDN, is capable of transmitting synchronous and asynchronous signals)). Alternatively, Sutherland at 1:13 incorporates Czerweic by reference; Czerwiec at 3:51-53 (A low speed interface supports up to 28 DS1 low-speed ports operating in either synchronous or asynchronous fashion). 5 Gelman: Ex. 1006 at 844 and Fig. 4 (in light of the availability of ATM/SONET (or synchronous to asynchronous converters) at the time of the filing of the 936 patent, the devices described would have included a converter). See also Ex. 1002 at 129-133.

Claim 3 3. The information distribution system, as claimed in claim 1, wherein said master

Sutherland: The information distribution system, as claimed in claim 1, (see Claim 1, supra) wherein said master controller means (Broadband Network Management OS / Operations Support Unit 167; Fig. 9)

5 It is clear from Sutherland that the synchronous signals are converted to asynchronous

signals. Ex. 1002 at 73. This is supported by the fact that Czerwiec illustrates that a

synchronous or asynchronous signal can be converted into the correct signal in order for

the interface device to operate correctly. Id. The conversion of a synchronous signal into

an asynchronous signal would be performed by a converter. Id.


40

controller means further includes input means for inputting instructions to control said plurality of communications means.

further includes input means for inputting instructions to control said plurality of communications means (id. at 12:17-19 (The core 24 receives broadband network management and SONET overhead signals from an operations support unit 167). 6 See also Ex. 1002 at 134-136.

Claim 4 4. The information distribution system as claimed in claim 2, further comprising a first back-up memory for receiving and storing said at least one asynchronous signal.

Sutherland: The information distribution system as claimed in claim 2, (see Claim 2, supra) further comprising a first back-up memory for receiving and storing said at least one asynchronous signal (Sutherland at 8:15-17 (redundancy is carried through the LCX-50 core, this redundancy acts as back-up memory). Alternatively, Czerwiec teaches redundant processors at 3:29-39 and asynchronous DS-1 signals at 3:49-54: A low speed interface supports up to 28 DS1 low-speed ports operating in either synchronous or asynchronous fashion. Gelman also discloses at pages 843-44 backup memory in the form of multiple information warehouses and central office circuits as shown in Fig. 1. Gelman also describes how multiple COs can receive material, and that programs can be stored on various CO circuits at various times. See also Ex. 1002 at 137-139.

6 In order for the Broadband Network Management OS to control a plurality of

communication means, it must have had an input means for inputting instructions. Ex.

1002 at 75. Regardless of where it stores the input, or when it receives the input, it must

have some type of input to acquire the information used to control the nodes in a

network. Id. (citing Fig. 9A).


41

Claim 5 5. The information distribution system as claimed in claim 2, further comprising a recorder for receiving and storing said at least one asynchronous signal.

Sutherland: The information distribution system as claimed in claim 2, (see Claim 2, supra) further comprising a recorder for receiving and storing (id. at 11:64-67 The set-top converter may be similar in design to pre-existing converters, but must be adapted to select one of 192 program channels available at the RT video transport equipment 102) said at least one asynchronous signal (id. at 1:13 incorporates Czerweic by reference; Czerwiec at 3:51-53: A low speed interface supports up to 28 DS1 low-speed ports operating in either synchronous or asynchronous fashion). Alternatively, Gelman: Magnetic disk recording technology (e.g., Winchester disk drives) is the most mature technology for on-line playback (storage to network) purposes. It has access times of a few to 10s of milliseconds, and can reach 100s Mb/s transfer rates using parallel head systems or arrays of disk drives. Pg. 845.7 See also Ex. 1002 at 140-142.

Independent Claim 9

[9.0] A method for distributing information to various locations in a digital network, comprising the steps of:

See supra Claim 1.0. Sutherland: A method for distributing information to various locations in a digital network, (id. at 4:42-44: the technology used allows either analog or digital television signals to be delivered to the subscriber; id. at Fig. 1, and 6:5-31 and 3:32-4:50; id. at 4:42-44 and 3:57-60 (the technology used in the telecommunications architecture / system delivers analog or digital television signals [] to the subscriber)),

7 The magnetic disks of Gelman would necessarily need to have their content converted

into a synchronous signal to transmit over a synchronous optical network such as

SONET, described in both Sutherland (at least at 3:57-60) and Gelman (at least at 845).

Ex. 1002 at 142.


42

comprising the steps of: See also Ex. 1002 at 143-145.

[9.1] establishing communications with the network in order to receive a synchronous digital signal from the network;

See supra Claim 1.1. Sutherland: establishing communications with the network in order to receive a synchronous digital signal from the network (see SONET; id. at 6:5-6 (Referring to Fig. 1 there is shown a CO 10, connected to remote terminals via SONET); id. at Fig. 1); See also Ex. 1002 at 146-150.

[9.2] receiving and dividing the synchronous digital signal into a plurality of synchronous signals;

See supra Claim 1.2. Sutherland: receiving and dividing the synchronous digital signal into a plurality of synchronous signals (Sutherland teaches receiving and dividing the synchronous digital signal into a plurality of digital signals; id. at 6:33-34 (The RT serves the ONUs [Optical Network Units] through the optical links 18); id. at Fig. 1); See also Ex. 1002 at 151-155.

[9.3] establishing communications with a plurality of receiving stations;

See supra Claim 1.3. Sutherland: establishing communications with a plurality of receiving stations (Sutherland teaches receiving and dividing the synchronous digital signal into a plurality of digital signals; ONUs that receive a signal from a remote terminal provide that signal to set-top converters 21 within living units 20 as shown in Fig. 1 described at least in 6:36-38 and 11:62-12:4); Gelman also teaches establishing communications with the network in order to receive a synchronous digital signal from the network. For example, page 842 of Gelman indicates that the basis for the architecture disclosed is in part a Store-And-Forward technique employed by an ATM/SONET public network. Gelman also teaches video data stored in Information Warehouses to provide data to multiple central office circuits. Id. at p. 845. Gelman also teaches a store-and-forward architecture where communications are established between a local CO and a plurality of users. See id. at Fig. 1. The video signal is then transported to the users customer premise equipment.


43

See also Ex. 1002 at 156-158. [9.4] receiving and outputting a respective one of the plurality of synchronous signals to a respective receiving station; and

See supra Claim 1.3. Sutherland: receiving and outputting a respective one of the plurality of synchronous signals to a respective receiving station (id. at 13:42-44 (Referring to FIG. 11, the 24 channels from the primary fiber 18 are demultiplexed via the ODU [Optical Distribution Unit] 70 and converted for subscribers 1-4 by the SVD [Switched Video Distribution card] 74); id. at 3:63-68 The system uses a star distribution network where the optical fibers radiate from the RT to active Optical Network Units (ONU) via point to point optical links with each residential ONU serving up to eight living units with three DS0 (64 Kb/s) channels); id. at 12:1-4 (further, the set top boxes require downstream data in order to provide menu services, and customer features for software upgrades, patches, and general operation and maintenance); and See also Ex. 1002 at 159-161.

[9.5] controlling said receiving and outputting step with a controller unit at a central location.

See supra Claim 1.4. Sutherland: controlling said receiving and outputting step with a controller unit at a central location (Sutherland teaches controlling via a Broadband Network Management OS 167 (a/k/a operations support unit 167) at a central location; id. at 12:17-19; Figs. 9A-9B; the cores receive an overhead SONET signal from the operations unit 167 which acts as a controller). See also Ex. 1002 at 162-163.

Claim 10 10. The method for distributing information as claimed in claim 9, further including the step of converting at least one of said plurality of synchronous

See supra Claim 2. Sutherland: The method for distributing information as claimed in claim 9, (see Claim 9, supra) further including the step of converting at least one of said plurality of synchronous signals into at least one asynchronous signal (id. at Figs. 1 and 7 (Sutherland teaches the step of converting at least one of the plurality of synchronous signals into at least one asynchronous signal); id. at 1:13 incorporates Czerweic by reference; Czerwiec at 3:51-53 (A low speed interface supports up to 28 DS1 low-speed ports


44

signals into at least one asynchronous signal.

operating in either synchronous or asynchronous fashion)). See also Ex. 1002 at 164-166.

Claim 11 11. The method for distributing information as claimed in claim 9, further comprising the step of converting at least one of said plurality of synchronous signals into at least one asynchronous signal.

See supra Claims 2 and 10. See also Ex. 1002 at 167-168.

Claim 12 12. The method for distributing information as claimed in claim 11, further comprising the step of storing the at least one asynchronous signal in a memory.

See supra Claim 4. Sutherland: The method for distributing information as claimed in claim 11, (see Claim 11, supra) further comprising the step of storing the at least one asynchronous signal in a memory8 (id. at 8:15-28 (the OC-1 feeder line is redundant); id. at 1:13 which incorporates Czerweic by reference; Czerwiec at 3:51-53: A low speed interface supports up to 28 DS1 low-speed ports operating in either synchronous or asynchronous fashion). See also Ex. 1002 at 169-171.

Claim 13 13. The method for distributing information as claimed in claim 11, further

See supra Claim 5. Sutherland: The method for distributing information as claimed in claim 11, (see Claim 11, supra) further comprising the step of recording the at least one asynchronous signal with a back-up recorder. (id. at 11:64-67 The set-top converter may be similar in design to pre-existing converters, but must be adapted to select one of 192 program channels available at the RT video transport

8 The asynchronous signal would need to be stored in buffer memory of one of the

distribution nodes or a set top box. All of these components would have memory, and be

able to store an asynchronous signal. Ex. 1004 at 8:15-28.


45

comprising the step of recording the at least one asynchronous signal with a back-up recorder.

equipment 102; id. at 1:13 incorporates Czerweic by reference; Czerwiec at 3:51-53: A low speed interface supports up to 28 DS1 low-speed ports operating in either synchronous or asynchronous fashion). Gelman teaches storing an asynchronous memory in a buffer (or memory) in Fig. 4. Figure 4 shows either an ATM (asynchronous) signal within a SONET (synchronous) signal entering a Central Office circuit which transmits data into a buffer, which must include a memory.9 See also Ex. 1002 at 172-174.

VI. CLAIMS 6 AND 7 ARE OBVIOUS OVER SUTHERLAND (EX. 1004) IN VIEW OF MATSUZAKI (EX. 1014), AND/OR SUTHERLAND (EX. 1004) IN VIEW OF GELMAN (EX. 1006) AND MATSUZAKI (EX. 1014)

Although Petitioner believes that Sutherland discloses a display and a

keyboard (See e.g., Ex. 1004 at 11:62-12:4), to the extent the Board concludes this

feature is not disclosed, it would have been obvious from Matsuzaki in

combination with Sutherland and/or Sutherland and Gelman, as further explained

below.

A. Overview of Matsuzaki

Matsuzaki was filed on January 26, 1988, and is prior art under 102(b). Ex.

1014 at Abstract and 1:8-16. The system described in Matsuzaki transmits video

from a head end apparatus to terminal units. Id. at 1:42-2:9. Most importantly,

9 Gelman teaches storing the signal in both Information Warehouses and various Central

Office Circuits, thus creating numerous copies of the data. Ex. 1002 at 174.


46

Matsuzaki describes a master controller that controls the overall system and is

connected with a display 81 and a keyboard 82. Id. at 4:16-20 and Fig. 8. The

master controller described in Matsuzaki can control the terminal units in

response to a command from the keyboard and supplies control data which can

be monitored by the display 81 connected to the master controller. Id. at 4:20-30

and Fig. 8.

B. Motivation to Combine Sutherland and Gelman, and Matsuzaki

Sutherland teaches a network architecture for distributing data such as video,

that includes a network management controller. Ex. 1004 at 3:32-4:65 and 12:17-

19. Similarly, the architecture described in Gelman is designed to provide an

infrastructure for distributing video. Ex. 1006 at 846; see also discussion above at

V.B.

Matsuzaki also describes video distribution systems controlled with a master

controller, for example, within vehicles, stadiums, theaters, etc. Ex. 1014 at 1:8-16,

Fig. 8. One of skill in the art at the time of the filing would have been motivated to

control the system from a central location using a keyboard and display. As

explained by Dr. Eldering as consistent with network transmission systems at the

time, a master controller would be connected to a keyboard to control network

activity, as well as a display to view network activity. Ex. 1002 at 25. A POSA


47

would have known to apply the teachings of Matsuzaki to the system of Sutherland

or Gelman to allow a system administrator to control the system. Id. at 178-179.

C. Claim Charts

The claim charts below lay out in detail where each element of claims 6 and

7 are disclosed by Sutherland, Gelman, and/or Matsuzaki.

936 Patent Claim 6 Disclosures of Sutherland, Gelman, and Matsuzaki

6. The information distribution system as claimed in claim 1, wherein said master controller means comprises display means for displaying information associated with said plurality of communications means.

Sutherland: The information distribution system as claimed in claim 1, (see Claim 1, supra) wherein said master controller means (Broadband Network Management OS 167, Fig. 9 of Sutherland; and/or Master Controller 8 of Matsuzaki) comprises display means for displaying information associated with said plurality of communications means (Broadband Network Management OS 167 of Sutherland provides or is connected to display means for controlling. Additionally or alternatively, display 81 of Matsuzaki can display data associated with controlling various terminals at 4:16-30 and Fig. 8). See also Ex. 1002 at 180-181.


48

Claim 7 7. The information distribution system as claimed in claim 3, wherein said input means comprises a keyboard.

Sutherland: The information distribution system as claimed in claim 3, (see Claim 3, supra) wherein said input means comprises a keyboard (Broadband Network Management OS 167 provides or is connected to a keyboard for controlling devices in the network. Additionally or alternatively, keyboard 82 of Matsuzaki can be used to control the master controller at 4:16-30 and Fig. 8). See also Ex. 1002 at 182-183.

VII. CLAIMS 8 AND 14 ARE OBVIOUS OVER SUTHERLAND (EX. 1004) IN VIEW OF BERGENDAHL (EX. 1015), AND/OR SUTHERLAND (EX. 1004) IN VIEW OF GELMAN (EX. 1006) AND BERGENDAHL (EX. 1015)

Although Petitioner believes that Sutherland discloses at least one device

that equalizes signals (See e.g., Ex. 1004 at 7:16-19), to the extent the Board

concludes this feature is not disclosed, it would have been obvious from

Bergendahl in combination with Sutherland and/or Sutherland and Gelman, as

further explained below.

A. Overview of Bergendahl

Bergendahl is an article included in the Ericsson Review, which was

available to the public for subscription in 1990. Ex. 1015 at Inner Cover

(Subscription one year $30). It is therefore prior art under 102(b). Bergendahl

describes synchronous transmission networks that can branch and form various

configurations. See Ex. 1015 at 59 and 60. The networks described in Bergendahl


49

describe equalizing synchronous digital signals. Id. at 69 (rate, when necessary, is

equalized so that it can be synchronized).

B. Motivation to Combine Sutherland and Gelman, and Bergendahl

Sutherland teaches a network architecture for distributing data using

synchronous digital signals. Ex. 1004 at 1:40-43, 8:39-43, and 11:42-49. Similarly,

the architecture described in Gelman is designed to provide an infrastructure for

distributing signals. Ex. 1006 at 846; see also discussion above at V.B.

Bergendahl also describes networks that transmit synchronous digital

signals. Ex. 1015 at 50. One of skill in the art at the time of the filing would have

been motivated to equalize synchronous digital signals, which is a part of a process

called grooming associated with digital signals. As explained by Dr. Eldering as

consistent with network transmission systems at the time, a synchronous digital

signal would commonly be groomed and equalized by various devices in order to

communicate with other network devices. Ex. 1002 at 187-188. A POSA would

have known to apply the teachings of Bergendahl to the system of Sutherland or

Gelman to allow a system to transmit signals over a synchronous digital network.

Id.

C. Claim Charts

The claim charts below lay out in detail where each element of claims 8 and

14 are disclosed by Sutherland, Gelman, and/or Bergendahl.


50

936 Patent Claim 8 Disclosures of Sutherland, Gelman, and Berghendal

8. The information distribution system as claimed in claim 1, wherein said distribution amplifier means comprises equalizing means for equalizing respective amplitudes of said plurality of synchronous signals.

Sutherland: The information distribution system as claimed in claim 1, (see Claim 3, supra) wherein said distribution amplifier means comprises equalizing means for equalizing respective amplitudes of said plurality of synchronous signals (the plug-in electronics that provide the fiber optic interfaces to the ONUs of Sutherland provide equalization to comply with the SONET standard taught by Sutherland. In addition or alternatively, Bergendahl explicitly teaches equalizing synchronous signals at 69 and 98 (rate, when necessary, is equalized so that it can be synchronized); further still, Gelman teaches that an equalizer should be included, at least for the purpose of cleaning a signal at 841-42.). See also Ex. 1002 at 189-191.

Claim 14 14. The method for distributing information as claimed in claim 11, further comprising the step of equalizing respective amplitudes of the plurality of synchronous signals.

See supra Claim 8. Sutherland: The method for distributing information as claimed in claim 11, (see Claim 11, supra) further comprising the step of equalizing respective amplitudes of the plurality of synchronous signals (the plug-in electronics that provide the fiber optic interfaces to the ONUs of Sutherland provide equalization to comply with the SONET standard taught by Sutherland; In addition or alternatively, Bergendahl explicitly teaches equalizing synchronous signals at 69 and 98 (rate, when necessary, is equalized so that it can be synchronized); further still, Gelman teaches that an equalizer should be included, at least for the purpose of cleaning a signal at 841-42.). See also Ex. 1002 at 192-194.

VIII. CLAIMS 1-14 ARE OBVIOUS UNDER 35 U.S.C. 103(A) OVER SUTHERLAND (EX. 1004) IN VIEW OF ARDON (EX. 1020) AND/OR THE ABOVE-DISCUSSED COMBINATIONS OF SUTHERLAND (EX. 1004),


51

GELMAN (EX. 1006), MATSUZAKI (EX. 1014), AND/OR BERGENDAHL (EX. 1015), FURTHER IN VIEW OF ARDON (EX. 1020)

As discussed above, Petitioner believes that Sutherland discloses the

claimed master communications means. See e.g., Ex. 1004 at Fig. 1 and 3:57-69.

Petitioner notes that the district court in the TransVideo v. Sony case construed the

term Master Communications Unit in U.S. Patent No. 5,991,801 to mean A unit

that performs handshaking functions between digital equipment and a digital

network in order to receive a synchronous digital signal from the network. Ex.

1013. To the extent TVE argues that master communications means here should

similarly be construed to mean a unit that performs handshaking functions

between digital equipment and a digital network in order to receive a synchronous

digital signal from the network, it would have been obvious to modify Sutherland

itself or any of the modified versions of Sutherland in the above-discussed grounds

to include such a unit, since such handshaking was well known in the art, as

described below.

A. Overview of Ardon

U.S. Patent No. 5,115,425 to Ardon (Ardon) issued May 19, 1992, and is

prior art under at least pre-AIA 35 U.S.C. 102(a). Ex. 1020. Ardon discloses A

handshake protocol is effected between the module control units of the two


52

[switching modules] involved in a [sic] inter-module call such that they do not

each assign the same channel to different calls. Ex. 1020 at 9:26-29.

B. Motivation to Combine Sutherland and Ardon

Ardons disclosure relates to a SONET system, the same type of network

system Sutherland was designed around. Compare Ex. 1020 at 11:57-60 with Ex.

1004 at 3:32-37. Based on Ardons handshake disclosure, a POSA would have

been motivated to modify Sutherland itself or any of the modified versions of

Sutherland in the above-discussed grounds to include a unit that performs

handshaking functions between digital equipment and a digital network in order to

receive a synchronous digital signal from the network. Ex. 1002 at 196 (citing Ex.

1020 at 9:26-29). As explained by Dr. Eldering and as was well known in the art, a

POSA would have done so to facilitate communication between particular devices

without causing other devices to undertake unnecessary processing of the

communication. Id.

IX. GROUNDS FOR STANDING

Petitioner certifies that the 936 patent is available for IPR and that the

Petitioner is not barred or estopped from requesting IPR challenging the 936

patent on the grounds identified. See 37 C.F.R. 42.104(a).


53

X. MANDATORY NOTICES

A. Real PartyinInterest

Petitioner certifies that Unified is the real party-in-interest, and further

certifies that no other party exercised control or could exercise control over

Unifieds participation in this proceeding, the filing of this petition, or the conduct

of any ensuing trial. See Ex. 1008.

B. Related Matters

Petitioner identifies the following USPTO and district court proceedings

involving the 936 patent: TVE v. Apple, Inc., 1-12-cv-00402 (D. D. C. March 15,

2012); TVE v. Nintendo of America Inc. et al., 1-12-cv-00403 (D. D. C. March 15,

2012); TVE v. Google, Inc., et al., 1-12-cv-00404 (D. C. March 15, 2012); Trans

Video Electronics, Ltd v. Time Warner Cable Inc., 1-12-cv-01740 (Dec. 20, 2012);

TVE v. Vudu, Inc., 1-12-cv-01741 (D. Del. Dec. 20, 2012); TVE v. Verizon

Wireless Inc., 4-15-cv-01742 (D. Del. Dec. 20, 2012); TVE v. Netflix, Inc., 1-12-

cv-01743 (D. Del. Dec. 20, 2012); TVE v. Amazon.com, Inc., 4-15-cv-00599 (Jan.

8, 2013); ActiveVideo Networks, Inc. v.TVE, 4-15-cv-00592 (N.D. CA, Apr. 30,

2013); TVE v. Hulu, LLC, 1-13-cv-01399 (D. Del. Aug. 7, 2013).


54

C. Lead and Back-up Counsel; Consent to Electronic Service

Lead Counsel Backup Counsel P. Andrew Riley

Reg. No. 66,290

Finnegan, Henderson, Farabow,

Garrett & Dunner, LLP

901 New York Avenue, NW

Washington, DC 20001-4413

Telephone: 202.408.4000

Facsimile: 202.408.4400

E-mail: [email protected]

Joshua L. Goldberg

Reg. No. 59,369



901 New York Avenue, NW

Washington, DC 20001-4413

Telephone: 202.408.4000

Facsimile: 202.408.4400


Carlos J. Rosario

Reg. No. 67,922



3300 Hillview Avenue

Palo Alto, CA 94034-1203

Telephone: 650.849.6600

Facsimile: 650.849.6666



55

Jonathan R. Stroud

Reg. No. 72,518

Unified Patents, Inc.

1875 Connecticut Ave. NW, Floor 10

Washington, DC 20009

Telephone: 650.999.0455

Facsimile: 650.887.0349


Petitioner consents to electronic service at:

[email protected]

XI. FEE PAYMENT

The required fees are submitted under 37 C.F.R. 42.103(a) and 42.15(a).

If any additional fees are due during this proceeding, the office may charge such

fees to deposit account no. 060916

XII. CONCLUSION

Petitioner respectfully requests inter partes review of claims 114 of U.S.

Patent No. 5,594,936 for the foregoing reasons.


56

Respectfully submitted, June 29, 2015 By: /P. Andrew Riley/ P. Andrew Riley, Reg. No. 66,290


57

CERTIFICATE OF SERVICE

The undersigned certifies that the foregoing Petition for Inter Partes Review

and the associated Exhibits 1001 through 1006, Exhibits 1008 through 1020, and

Power of Attorney were served on June 29, 2015, by Overnight Express Mail at the

following address of record for the subject patent.

Rene A. Vasquez Sinergia Technology Law Group, PLLC

18296 St. Georges Court Leesburg, VA 20176

/Bradley Moore/ Bradley J. Moore Litigation Clerk FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.

I. INTRODUCTIONII. Statement of precise relief requestedA. Claims for Which Review Is RequestedB. Statutory Grounds of ChallengeC. The Level of Ordinary Skill in the Art at the Time of the Claimed InventionD. State of the Art at the Time of the Claimed Invention

III. Summary of the 936 PatentA. Specification and Claims of the 936 PatentB. The 936 Patent ProsecutionC. Claim Construction1. Master Communications Means (Claim 1)2. Distribution Amplifier Means (Claim 1)3. Plurality of Communications Means (Claim 1)4. Master Controller Means (Claim 1)5. Converting Means (Claim 2)6. Input Means (Claim 3)7. Display Means (Claim 6)8. Equalizing Means (Claim 8)

IV. Claims 14 AND 9-12 OF the 936 Patent Are ANTICIPATED BY sUTHERLAND (EX. 1004)A. Overview of Sutherland (Ex. 1004)B. Claim Charts

V. Claims 15 and 9-13 are Obvious over Sutherland (EX. 1004) in view of Gelman (EX. 1006)A. Overview of Gelman ArticleB. Motivation to Combine Sutherland and GelmanC. Claim Charts

VI. Claims 6 and 7 are Obvious over Sutherland (EX. 1004) IN VIEW OF matsuzaki (Ex. 1014), AND/OR Sutherland (EX. 1004) in view of Gelman (EX. 1006) and matsuzaki (Ex. 1014)A. Overview of MatsuzakiB. Motivation to Combine Sutherland and Gelman, and MatsuzakiC. Claim Charts

VII. Claims 8 and 14 are Obvious over Sutherland (EX. 1004) IN VIEW OF bergendahl (Ex. 1015), AND/OR Sutherland (EX. 1004) in view of Gelman (EX. 1006) and bergendahl (Ex. 1015)A. Overview of BergendahlB. Motivation to Combine Sutherland and Gelman, and BergendahlC. Claim Charts

VIII. Claims 1-14 are obvious under 35 U.S.C. 103(a) over Sutherland (Ex. 1004) in view of Ardon (Ex. 1020) and/or the above-discussed combinations of Sutherland (Ex. 1004), Gelman (Ex. 1006), Matsuzaki (Ex. 1014), and/or Bergendahl (Ex. 1015), furt...A. Overview of ArdonB. Motivation to Combine Sutherland and Ardon

IX. Grounds for StandingX. Mandatory NoticesA. Real PartyinInterestB. Related MattersC. Lead and Back-up Counsel; Consent to Electronic Service

XI. Fee PAYMENTXII. Conclusion

ipr2015-01519

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