UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Unified Patents Inc.,

Petitioner

v.

Broadband iTV, Inc. Patent Owner

IPR2014- _____

Patent 7,631,336

____________

PETITION FOR INTER PARTES REVIEW

Mail Stop PATENT BOARD, PTAB Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450

ii

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........................................ 4

D. Service Information ............................................................................... 4

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)) .................... 5

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 ........................................... 6

V. FACTUAL BACKGROUND .......................................................................... 7

A. Declaration Evidence ............................................................................ 7

B. The State of the Art as of 2004 ............................................................. 7

C. The Challenged 336 Patent ................................................................ 12

D. Prosecution History ............................................................................. 12

VI. CLAIM CONSTRUCTION (37 C.F.R. 42.104(B)(3)) .............................. 14

A. Support for claim construction ............................................................ 14

iii

VII. THE GROUNDS SHOWING THAT PETITIONER HAS A REASONABLE LIKELIHOOD OF PREVAILING .................................... 16

A. The Prior Art Discloses Each Claimed Feature and One of Ordinary Skill Would be Led to Form This Combination .................. 16

1. Reasons to Combine White with Dunn and Shoff .............................. 18

2. Reasons to Combine White with Samaan ........................................... 20

3. The Combination of White and Samaan and The Video Content Database .............................................................................................. 21

4. The Combination of Samaan's Bookmarks with White ...................... 22

5. URL in Claim 3 ................................................................................... 23

6. Link in Claim 9 .................................................................................... 23

B. Claim Chart Demonstrating How the Proposed Combination Renders Obvious Claims 1-4 and 7-11 of the 336 Patent .................. 24

VIII. CONCLUSION .............................................................................................. 60

1

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 1-4 and 7-11 of US Patent No. 7,631,336 to

Perez (the 336 Patent, Ex. 1001).

In short, the 336 Patent is directed to uploading content via the Internet to a

video-on-demand (VOD) server so that it can be viewed by users of the VOD

system. Ex. 1001, at Abstract. Although the inventor represented to the Patent

Office that he was the first to merge the Internet and TV Applicants invention

created a bridge between the two industries for the first timethe 336 Patent itself

even admits that he was not the first to form this merger: internet connected

DVRs, such as those sold by Tivo. . . . Ex. 1001, at 20:36-40. As described

below, the prior art also demonstrates that the inventor was certainly not the first to

combine the Internet and TV.

The prior art relied upon hereinwhich was not before the Examiner

demonstrates that the 336 Patents claimed features were well known before July

30, 2003, one year before the 336 Patents earliest priority date. At that time,

Microsoft was busy developing and patenting its Web TV portal, as described by

U.S. Pat. No. 6,804,258 (White) as well as two patents incorporated by reference

by White (U.S. Pat. No. 5,648,824 (Dunn) and U.S. Pat. No. 5,758,258

2

(Shoff)), and uploading video content to the Internet was also well-known, as

described by U.S. Pat. Pub. No. US 2002/0138843 (Samaan). The skilled artisan

thus already had at his or her disposal all of the 336 Patents claimed features with

a strong motivation for forming the combination. The combination of White,

Dunn, Shoff and Samaan renders claims 1-4 and 7-11 unpatentable as being

obvious.

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

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 336 patent. Companies in a technology sector subscribe to Unifieds

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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,

filing, and prosecution of any post-grant proceeding, including any expenses

associated with the proceeding.

4

In the instant proceeding, Unified exercised its sole discretion and control in

deciding to file this petition against the 336 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

The 336 Patent has been asserted in Broadband iTV, Inc., v. Hawaiian

Telecom, Inc., et al., 1-14-cv-00169 (HID), filed April 9, 2014. Unified is not a

party to that litigation.

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: cpdocketkiklis@oblon.com and cpdocketmckeown@oblon.com

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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 336 patent is satisfied.

A. Grounds for Standing

Petitioner certifies pursuant to 37 C.F.R. 42.104(a) that the 336 Patent is

available for inter partes review and that Petitioner is not barred or estopped from

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 1-4 and 7-

11 of the 336 patent as being obvious under 35 U.S.C. 103 in view of the

following patent publication and patents, each of which is prior art pursuant to 35

U.S.C. 102(b) and/or 102(e):

1. US Pat. No. 6,804,825 to White, et al., filed November 30,

1998 (White)(Ex. 1002);

6

2. US Pub. No. 2002/0138843 to Samaan, et al., published September

26, 2002 (Samaan)(Ex. 1003);

3. US Pat. No. 5,648,824 to Dunn, et al., issued July 15, 1997

(Dunn)(Ex. 1004);

4. US Pat. No. 5,758,258 to Shoff, et al., issued May 26, 1998

(Shoff)(Ex. 1005).

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 grounds 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. 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 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.

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 grounds detailed in Section VII, below, establishes a reasonable

7

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. 1006) 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. 1006). Dr. Hemami offers her

opinion with respect to the skill level of one of ordinary skill in the art (Ex. 1006,

14 and 15), the content and state of the prior art (Ex. 1006, 16-30), the

teachings and suggestions that one of ordinary skill would understand based on

Exs. 1002-1005 (Ex. 1006, pps. 16-59), the reasons for combining the teachings

from Exs. 1002-1005 (Ex, 1006, 35-42), and the manner in which one of

ordinary skill would combine those teachings (Ex. 1006, pps. 16-59). 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. 1006.

B. The State of the Art as of 2004

Video-on-demand was prevalent

8

By 2004, video-on-demand (on television) was provided in various ways to

end users. In cable and satellite systems, some channels were dedicated to on-

demand programming, which was transmitted with access-control information such

that authenticated set top boxes could view the content. Service providers had a

database of video content stored on a video server (typically on geographically

distributed multiple servers), the availability of which was provided to users

through a menu or electronic program guide (EPG). Viewers selected

programming using their remote controls to navigate the EPG, and upon selection

of content, the service provider would deliver the programming to the user's set-top

box and it started immediately (hence the name "on-demand"). In 2004, major US

cable providers prominently featured video-on-demand. Ex. 1006, at 16-17;

Exs. 1008 and 1009.

Digital video was widespread in 2004

Compression: By 2004, virtually all digital video being transmitted over a

communication system for distribution/delivery was compressed. The file size and

data rate required to save and transmit raw video (pixels as they are acquired) is

too high to be practical; furthermore, video contains many redundancies which can

be reduced or eliminated to reduce the file size and required data rate. Common

video compression standards in use in 2004 included the MPEG family,

standardized by the International Standards Organization (MPEG-1, MPEG-2,

9

MPEG-4) and the H.26X family, standardized by the International

Telecommunications Union (H.263, and H.264). Service providers in 2004

typically used MPEG-2, which provides both video and audio compression and

also packetization standards for transmission. Both cable companies and non-cable

companies were providing such functionality. For example, RealNetworks was

streaming video using a proprietary compression algorithm in this timeframe. Ex.

1006, at 18.

Indexing and retrieval: The MPEG-7 standard was adopted in 2002,

standardizing the content description for digital video. This effort stemmed from

the growth of video archives/libraries/databases, which had a need for efficient

indexing and retrieval of video content. Index terms are metadata associated with

the video data itself. Ex. 1006, at 19.

Video libraries and databases: Many digital video libraries and databases

had been proposed by the digital video community. These systems generally

allowed for addition/upload of video content, indexing/labeling of video content

(especially in an automated manner), and video search and retrieval. One approach

to search was to simply search the metadata, e.g., index terms. More sophisticated

search strategies involved searching based on structural characteristics of the video

(e.g., scene changes) and querying by content ("find videos that look like this

video" or "find videos that have content similar to this still image"). The

10

presentation of search results to database users was an active research area. Ex.

1006, at 20.

Acquisition/generation: By 2004, digital video could be directly acquired

digitally: professional/studio digital acquisition, analog video could be converted

via an analog-to-digital converter. Studios delivered digital content to service

providers. Consumers could use webcams directly connected to their computers,

and digital camcorders existed. In either case, content could be edited in home

computers using commercially available software (e.g., Apple's FinalCut). Ex.

1006, at 21.

Video-over-the-Internet in 2004 was commonplace

Delivery of video to users over the internet was commonplace in 2004.

Broadband bandwidths in 2004 were 1-2 Mbps which could support services such

as RealNetwork's subscription-based video service, in which video from the major

television networks and other sources was streamed to user computers.

RealNetworks hosted this content and presented it in an organized manner for

users to access. Ex. 1006, at 22.

Similarly, the uploading of video by users to web sites and services that

allowed storing, editing, and sharing of video content was also common. For

example, VideoFarm.com was such a service. Ex. 1006, at 23; Ex. 1010.

11

Lastly, videos were simply files, and could of course be transmitted via

ordinary file delivery mechanisms, such as FTP (file transfer protocol), SCP

(secure copy protocol), or as email attachments. Ex. 1006, at 24.

The confluence of the Internet and television in 2004

Although the inventor claimed to have invented the first bridge between the

Internet and TV, he was not. First, he admitted in his patent that he was not. Ex.

1001, at 20:36-40. And, the industry already had products that accomplished that

merger. WebTV and UltimateTV were Microsoft/DirecTV products that allowed

users to receive digital television via the DirecTV satellite network and access the

internet through the television, using a wireless keyboard and the television as the

display. Ex. 1006, at 28-29. Contrary to the inventor's representations to the

Patent Office, he was not the first to merge the Internet and TV.

By 2004, the state of the art was that all the features of the 336 Patents

claims were well known to those of ordinary skill in the art. Video-on-demand

systems were commonplace, and systems existed to allow users to upload video via

the Internet to a database and share it with others through the exchange of URLs

(i.e., bookmarks). A person of ordinary skill was well aware of these features, and

in designing a video-on-demand system with uploadable content, they would

readily and easily pick and choose these features to suit their design goals. Ex.

1006, at 30.

12

C. The Challenged 336 Patent

The '336 patent generally addresses adding content via the Internet to a

video database that can be viewed via a video-on-demand system. More

specifically, the '336 patent provides a method by which video content can be

added to a video database/server. Categories for the video can be specified and the

video is selectable based on navigation through menus of categories and

subcategories, using an electronic program guide (EPG). Viewers can select

content to watch on their television based upon navigating through the categories

displayed in the EPG, and they can also "bookmark" EPG content and share the

bookmarks with other viewers. Ex. 1001, at Abstract; Ex. 1006, at 7.

The features that the claims include are:

uploading video via the Internet for distribution in a VOD system; labeling the uploaded video in the VOD system according to categories and

subcategories that the users specified, to allow video selection by users; and

a bookmarking feature by which users are able to return to favorite videos. As Dr. Hemami testifies, all of the 336 Patents claimed features were well known

to one of ordinary skill in the art as of the earliest priority date of the 336 patent.

Ex. 1006, at 8.

D. Prosecution History

13

The 336 Patent is a continuation in part of an application filed on June 30,

2004. During prosecution of the 336 Patent both the inventors attorney as well as

the inventor himself stressed that the 336 Patent reflected the first merger of the

Internet and TV:

Applicant's invention created a bridge between the two industries for

the first time. Applicant devised the specific technical solution not

recognized up until then by either industry of enabling video content

to be uploaded with metadata from the Internet to the VOD platform

of a discrete digital TV service provider network and automatically

positioned on the electronic program guide for the VOD platform

using the hierarchical categories specified in the accompanying

metadata.

Ex. 1007, at 4-5 (emphasis in original). Furthermore, the inventor submitted

an affidavit, in which he testified as follows:

In my background and experience in the industry to July 2004, no

prior system had been developed for uploading of video content via

internet for viewing in a cable TV system in a non-linear format using

drill-down navigation. Internet-TV websites existed but were entirely

different from the cable TV ("CATV") environment, and there was no

crossover of content or business between them to my knowledge.

Ex. 1007, at 12. After these representations, the Examiner found the claims

patentable over the prior art of record.

14

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 Web-based content management server (claims 1, 2, 3, 10 and 11)

an Internet-based server that stores content

Video content database (claim 1) a database that stores video content Standard TV digital format (claim 1) any digital video format Bookmark (claims 7-11) "a piece of information stored locally

to enable the user to revisit the video and to share the video by sending the information to another user"

A. Support for claim construction

Web-based content management server: Dr. Hemami testifies that one of

ordinary skill in the art would understand the meaning of this term to be an

Internet-based server that stores content. She notes that the specification refers to

this term as being used in this manner. See Ex. 1001, at 2:59-64;2:65-3:3;5:23-

27;19:52-57. Furthermore, the specification does not provide any special meaning

for this term. Ex. 1006, at 10.

15

Video content database: Dr. Hemami testifies that one of ordinary skill in the art

would understand the meaning of this term to be a database that stores video

content. She reaches this conclusion because the specification refers to this term

as being used simply as a video content repository. See Ex. 1001, at Abstract;

2:65-3:3;3:14-22;7:33-36;14:45-54;17:3-22. Furthermore, the specification does

not provide any special meaning for this term. Ex. 1006, at 10.

Standard TV digital format: Dr. Hemami testifies that one of ordinary skill in

the art would understand the meaning of this term to be any digital video format.

She testifies that one of ordinary skill in the art would understand that the 336

Patent addresses both storage and transmission of digital video to end users that

then view that video. The 336 Patent does not indicate any specific video format

that was available at the time. Rather, the 336 Patent simply refers to this format

generically. Therefore, Dr. Hemami believes that one of ordinary skill would

understand this term to mean simply any digital video format. This construction

is consistent with the way it is used in the 336 Patents specification. Ex. 1006, at

10; Ex. 1001, at 2:65-3:3;17:3-7.

Bookmark: Dr. Hemami testifies that one of ordinary skill in the art would

understand this term to mean "a piece of information stored locally to enable the

user to revisit the video and to share the video by sending the information to

16

another user." This is consistent with the way in which the 336 Patent uses this

term. Ex. 1001, at 3:53-61;18:28-32;18:60-64; Ex. 1006, at 10.

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

White in view of Dunn, Shoff, and Samaan render claims 1-4 and 7-11

obvious and there is a strong motivation for combining these references. White is

entitled "Video on demand methods and systems" and describes a video-on-

demand platform that includes a web interface to allow the viewer to view HTML

content on their television, thus providing "html-based video services." Ex. 1002,

at 6:26. The terminal is described as a WebTV terminal (Ex. 1002, at 2:58-60)

which would have been known to one of ordinary skill in the art as a web-enabled

set top box that not only provided ordinary cable or satellite television service but

also the ability to access the internet on the television. Such terminals were well

known in 2004 and such services included WebTV (MSNTV) and UltimateTV.

The user interfaced with the device through both a remote control and a wireless

keyboard. White describes a system which provides (1) video-on-demand, in

which users select videos from an electronic program guide which is organized by

categories to facilitate selection, and (2) HTML-based video services, in which

content is presented to users in selectable categories. Ex. 1006, at 31-32.

17

White describes the confluence of the Internet and TV:

Providing a television-like interaction for video is one thing;

extending that experience to HTML-based video services is another.

In the following discussion, several different HTML-based services

are described. Various techniques are employed in such services to

contribute to a television-like experience. Ex. 1002, at 6:23-29.

White also teaches "By techniques such as these, viewers encounter

interactive video entertainment and conventional television programming in a

seamless, familiar context." (Ex. 1002, at 6:65-67) One method by which White

provides such a seamless, familiar context is by including the HTML-based

content in the electronic program guide of the video-on-demand system (Ex. 1002,

at 6:60-64). Ex. 1006, at 33. White thus discloses the merger of the Internet and

TV long before the 336 Patent.

Samaan is entitled "Video distribution method and system" and provides a

solution enabling sharing of video content among users via an Internet accessible

library with uploaded content. Users upload video to a central location where it is

converted into a common format, stored, and indexed into categories such that they

can share the content with other users ("recipients"). Users can also revisit the

uploaded content by visiting a web page which presents their videos. Recipients

retrieve the video by accessing a web page that presents links to one or more

videos; this web page provides a hosting feature by which information of value is

18

presented to recipients. Samaan describes sharing videos by sharing web links via

email, both from the system to a recipient and directly from a user to a recipient,

and therefore provides the feature of bookmarking. Video clips can be

downloaded alone (Ex. 1003, at 0090) or in the context of a multimedia

presentation. Ex. 1006, at 34.

Samaan also discloses the merger of the Internet and TV long before the

336 Patent:

However, what is needed is a mechanism for combining the user-

friendly visual experience of television with the vast information

resources of the Internet while removing the seemingly complex

intricacies of the Internet. Technology is at a point where consumers

can now begin to leverage the power of the Internet and video, but

first they must learn to use various tools.

Ex. 1003, at 0005. In fact, Samaan discloses precisely video-on-demand over the

Internet:

The method and the system of the present invention facilitate the use

of "on-demand" (as oppose to "broadcast") video programming by

consumers over the Internet.

Ex. 1003, at 0055; Ex. 1006, at 34.

1. Reasons to Combine White with Dunn and Shoff

19

Strong motivation exists to combine all the prior art relied upon herein:

White, Dunn, Shoff, and Samaan. As an initial matter, one of ordinary skill in the

art would be led to combine White with Dunn and Shoff because White

incorporates those patents by reference. First, White incorporates by reference

Dunn (US Pat. No. 5,648,824) for additional details related to VOD systems and

user interfaces. Dr. Hemami thus relies upon Dunn for its disclosure in this regard

just as one of ordinary skill in the art would do:

To provide a comprehensive disclosure without unduly lengthening

this specification, applicants incorporate by reference the disclosure of

U.S. Pat. No. 5,648,824, which discloses additional details related to

video-on-demand systems-and related user interfaces.

Ex. 1002, at 10:53-57 (emphasis added). Second, White also incorporates Shoff by

reference for further details on program guides. Dr. Hemami therefore relies upon

Shoff for these purposes just as one of ordinary skill in the art would do:

Electronic program guides are familiar to those skilled in the art, so

are not belabored here. Exemplary program guides are shown, e.g., in

U.S. Pat. Nos. 5,815, 5,758,258, 5,585,838, 5,654,748, 5,526,036, and

application Ser. Nos. 08/969,979 and 08/968,386 (the disclosures of

which are incorporated by reference).

Ex. 1002, at 6:3-6 (emphasis added). Dr. Hemami also testifies that additional

reasons exist for combining White with Dunn and Shoff. For example, White,

Dunn, and Shoff are all assigned to Microsoft, and White, Dunn, and Shoff all

20

appear to be directed to different aspects of the same system. Thus, there is a

strong motivation to combine White with Dunn and Shoff, in the manner that Dr.

Hemami does. Ex. 1006, at 35.

2. Reasons to Combine White with Samaan

One of ordinary skill would also be motivated to combine White with

Samaan. White is entitled "Video on demand methods and systems," and describes

a video-on-demand head-end that includes HTML (i.e., web) content. Samaan is

entitled "Video distribution system and method" and provides a solution enabling

sharing of video content among users via an Internet accessible library with

uploaded content. As Dr. Hemami testifies, a person of ordinary skill in the art

would naturally see many advantages in forming this combination. For example,

the video content in the Internet library of Samaan would provide relevant and

appropriate HTML content for delivery to end-users in the video-on-demand

system of White. Such an inclusion would broadly increase the available

programming to viewers, and would also provide a rich source of new content

because of the inclusion of uploaded content in Samaan. One of ordinary skill

would strive to provide greater and richer content, because a system with greater

content would be seen as one of higher value. The added functionality of

supporting uploaded content would thus be seen as a strong benefit to the system

21

of White. Moreover, both White and Samaan are directed to the merger of the

Internet and TV to provide Internet content to TV viewers. Perhaps most

importantly, White is directed to providing Internet content as Video-on-demand to

TV viewers and Samaan facilitates "the use of 'on-demand' . . . video programming

by consumers over the Internet." Ex. 1006, at 36; Ex. 1003, at 0055; Ex. 1002,

at Abstract.

3. The Combination of White and Samaan and The Video Content Database

Claim 1 of the 336 Patent requires a Web-based content management server

that converts the uploaded content into a standard TV digital format and also

requires a video content database that stores the uploaded content after conversion.

The combination of White and Samaan both converts the uploaded data and stores

that data into a single video database. The use of a single repository or multiple

repositories for these purposes is a trivial and obvious matter of design choice and

well within the skill level of one of ordinary skill in the art. Ex. 1006, at 37-39.

The '336 Patent provides a VOD database hosting all videos, including those

that have been uploaded and converted into the common format. The combination

of White and Samaan by one of ordinary skill in the art includes one storage entity

in which the converted uploaded videos reside and a separate storage entity in

which the non-user-uploaded videos in the VOD system reside. It would be a

22

simple and obvious matter of design choice for a person of ordinary skill in 2004 to

use a single database containing both the non-uploaded content and the uploaded

content. Also, one of ordinary skill in the art would consider it to be a simple and

obvious matter of design choice for the non-uploaded and uploaded content to be

either housed in a single storage device or distributed over multiple storage

devices. Such distributed databases were well understood in 2004. Whether the

videos were stored in one, two, or more storage entities comprising a single

database does not impact the ability of the system to provide navigation by content,

nor transmission upon selection of content. These options are well within the skill

level of one of ordinary skill in the art, and it would be a trivial matter for the

skilled artisan to adopt either approach based on their needs. Ex. 1006, at 38-

39.

4. The Combination of Samaan's Bookmarks with White

One of ordinary skill the art would also combine Samaan's bookmarks with

White so that the user could identify their favorite content and quickly return to

that content. It would also allow users to share their favorites (or other content of

interest) with their friends, colleagues, or others. In fact, White describes at 4:30-

39 content navigation, and the inclusion of bookmarks would only serve to better

improve this functionality. Also, at 5:17-21, White describes a user storing his/her

location in a program so that they can take a break and return to that location in the

23

program. This is a form of a bookmark, and Samaan's bookmarks would serve to

improve this functionality. Additionally, White includes HTML-based video

services, and bookmarks are a natural fit for such systems as demonstrated by their

incorporation into the earliest of Internet browsers. Ex. 1006, at 40.

5. URL in Claim 3

Samaan describes accessing video content via the world-wide web, but does

not explicitly use the word "URL." See e.g., Ex. 1003, at 0075. At 0075,

Samaan says that "Server computer 12 maintains a site on the World Wide Web

which is accessible to various user computers 16 and recipient computers 18." One

of ordinary skill in the art would understand that this accessibility is necessarily

implemented using URLs per claim 3 and is thus inherent. When implementing

this accessibility, one of ordinary skill in the art would naturally be led to using a

URL. Ex. 1006, at 41.

6. Link in Claim 9

Additionally, Samaan doesn't explicitly state that an email contains a link to

content. See e.g., 1003, at 0091. However, one of ordinary skill in the art would

understand that the sentence The email messages contain directions instructing

the identified or authorized recipients as to the procedure for obtaining access to

the uploaded video clips teaches use of a link. Id. One of ordinary skill in the art

would understand that, in this context, when Samaan is referring to directions, he is

24

necessarily referring to a link per claim 9 and thus this feature is inherent if not

explicitly disclosed. The inclusion of a URL would be a natural implementation

by one of ordinary skill in the art. Ex. 1006, at 42.

B. Claim Chart Demonstrating How the Proposed Combination Renders Obvious Claims 1-4 and 7-11 of the 336 Patent

The following claim chart demonstrates, on a limitation-by-limitation basis,

how claims 1-4 and 7-11 of the 336 Patent are rendered obvious by White in view

of Dunn, Shoff, and Samaan. This claim chart is directly supported by Dr.

Hemamis declaration. Ex. 1006, at pp. 26-59. 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 7,631,336

White in combination with Dunn, Shoff, and Samaan

1. A method for automatically enabling the converting, navigating and displaying of video content from a video content provider on an open online network to a

White teaches automatically enabling the converting, navigating (using a program guide), and displaying of video content using a digital TV.

An entertainment head-end provides broadcast programming, video-on demand services, and HTML-based interactive programming through a distribution network to client terminals in subscribers' homes. A number of different features are provided, including novel user interfaces, enhanced video-on-demand controls, a variety of interactive services (personalized news, jukebox, games, celebrity chat), and techniques that combine

25

discrete digital TV service provider network which is of the type employing a closed system of pre-screened and pre-programmed video content selectable for viewing by TV service subscribers inputting keypresses on their TV remote control units to set-top boxes connected to their TV equipment, which predetermined video content is listed by title for selection from an electronic program guide for a video-on-demand (VOD) platform of a the discrete digital TV service provider comprising:

to provide user experiences evocative of conventional television.

(Ex. 1002, at Abstract)

White teaches the use of a TV remote control (remote control 52):

(Ex. 1002, at Fig. 3)

The WebTV serves content from an online open network (the Internet) to a discrete TV service provider network:

Referring to FIG. 1, an exemplary interactive video system 10 includes a entertainment head-end 12 and one or more client terminals 14 intercoupled through a network 16.

The network 16 typically comprises coaxial cable or optical fiber 18, extending from the head-end 12 to distribution nodes 20 within various neighborhoods. From the distribution nodes, further cables 22 couple to individual subscriber premises.

(Ex. 1002, at 2:4-12)

26

An entertainment head-end provides broadcast programming, video-on demand services, and HTML-based interactive programming through a distribution network to client terminals in subscribers' homes.

(Ex. 1002, at Abstract)

Head-end 12 also includes one or more interactive services servers 30, which output HTML-based programming (e.g. customized news, celebrity chat, interactive jukebox, and interactive games), as further detailed below.

(Ex. 1002, at 2:29-33)

White teaches a set-top box connected to a TV (Fig. 3, 14) and is called a client terminal or an enhanced WebTV terminal:

Each client terminal 14 is an enhanced WebTV terminal that includes a CPU 38, RAM memory 40, non-volatile memory 42, a display screen 44, display driver circuitry 46, a speaker 48 with an associated audio stage 50, a remote control 52, an infrared interface 54, a user interface (UI) 56, a dial-up interface 58, a cable interface 60, and an MPEG decoder 62 (FIG. 3). (The artisan is presumed familiar with Web TV terminals from their many descriptions in the patent and technical literature, and their widespread availability / use.)

(Ex. 1002, at 2:58-67)

Samaan discloses users uploading videos via the Internet to a server that are then distributed to viewers:

27

(Ex. 1003, at Fig. 1)

[0072] FIG. 1 depicts a server computer 12 linked to the Internet 14 for carrying out a video distribution process wherein individual users of the process upload video clips to server computer 14 from their respective personal computers 16 via the Internet 14. Subsequently, server computer 12 selectively transmits the uploaded video clips to personal computers 18 of recipients designated by the users. Server computer organizes and controls the storage and distribution of multiple video clips uploaded from each user computer 16.

(Ex. 1003, at 0072); (See also, Ex. 1003, at 36, 51, 52, and 56.)

Samaan discloses "video on demand" to consumers over the Internet:

[0055] The method and the system of the present invention facilitate the use of "on-demand" (as oppose to "broadcast") video programming by consumers over the Internet. The method and the system allow any consumer with access to a video camera and the Internet the ability to archive, post, distribute, and view any video content they desire (e.g., wedding clips, little league highlights, baby video, sweet 16's, etc.) on the

28

Internet. The method and the system allow the user to share the video clips with friends, family or anyone in a systematic manner. Large volumes of video may be archived online. The video volumes can take the form of an online video diary or journal, thus providing the organization and eliminating the "randomness" of the Internet. The method and the system provide consumers with a new and powerful educational and entertainment medium. The method and the system allow consumers to post and view content over the Internet easily, inexpensively and efficiently and with the knowledge that the content of the consumer's videos is secure from unwanted viewers.

(Ex. 1003, at 0055)

White teaches a subscriber inputting keypresses on their TV remote control units to set-top boxes connected to their TV equipment.

Remote control 52, and corresponding IR interface 54, are generally conventional, and serve to relay user commands to the terminal in accordance with user manipulation of buttons on the remote control 52.

(Ex. 1002, at 3:27-30)

White teaches an electronic program guide at (5:66) through (6:9):

The illustrated system includes an electronic program guide that can be selectively displayed on-screen to facilitate viewer program selection. Electronic program guides are familiar to those skilled in the art, so are not belabored here. Exemplary program guides are shown, e.g., in U.S. Pat. Nos. 5,815, 5,758,258, 5,585,838, 5,654,748, 5,526,036, and application Ser. Nos. 08/969,979 and 08/968,386 (the disclosures of which are incorporated by reference). Desirably, when an on-demand video is selected, the title of the video appears

29

in the electronic program guide, in association with the VIDEO viewer channel.

(Ex. 1002, at 5:66-6:9)

See element 1(b) below for support for "converting to digital format"

(a) enabling the uploading of video content in a digital video format via an online network to a Web-based content management server that is connected to the VOD platform of the discrete digital TV service provider network, along with a title and a hierarchical address of hierarchically-arranged categories and subcategories as metadata for categorizing a hierarchical ordering for the title for the video content;

White describes several systems for uploading video content including one that comprises a Web Based HTML head-end.

Additionally, head-end 12 includes fast digital disk arrays and/or optical storage 28 for storage of MPEG-encoded digital video for on-demand delivery. Head-end 12 also includes one or more interactive services servers 30, which output HTML-based programming (e.g. customized news, celebrity chat, interactive jukebox, and interactive games), as further detailed below.

(Ex. 1002, at 2:27-33)

White teaches how the content can be selected by a variety of categories including the title of the video:

On the VIDEO channel, the user is presented an introductory UI screen 64 of the sort shown in FIG. 4. This screen includes four components: a topical listing of movie categories 66; a feature 68 permitting the user to search a database of available videos by title, actor, director, keywords, etc; a promotion 70 of one of more featured video titles; and other advertising 72. This screen is defined by HTML primitives sent over the network 16, as rendered by the client terminal 14.

(White, 4:19-27)

White teaches categories (channels) and subcategories (categories within a channel):

30

A second exemplary interactive service is NEWS. This viewer channel delivers personalized news information in a television-like format. The channel is organized like CNN Headline News, with a small number of news categories that are continuously cycled-through several times an hour. Categories can include, e.g., headlines, sports, weather, traffic, and financial. The presentations in each category can be static (e.g. text articles), but more typically include streaming video excerpts.

An exemplary presentation of NEWS is shown in FIG. 6. In addition to showing part of the current Headline category, the screen 80 gives the user the option of switching imme-diately to any other category (sports, weather, or stocks in the illustrated screen). Again, such selection is made by the user with arrow keys on the remote control, by moving highlighting to the desired choice and pressing the "Go" button.

(White, 7:44-59)

Dunn (incorporated by reference in White for its details) teaches that continuous media servers are connected to a network for managing the video content.

31

(Ex. 1004, at Fig. 2)

Samaan teaches enabling the uploading of video content in a digital video format via an online network to a Web-based content management server.

[0027] It is to be noted that the video clips uploaded to the central location and distributed to the second parties may incorporate audio as well as video.

(Ex. 1003, at 0027)

[0072] FIG. 1 depicts a server computer 12 linked to the Internet 14 for carrying out a video distribution process wherein individual users of the process upload video clips to server computer 14 from their respective personal computers 16 via the Internet 14. Subsequently, server computer 12 selectively transmits the uploaded video clips to personal computers 18 of recipients designated by the users. Server computer organizes and controls the storage and distribution of multiple video clips uploaded from each user computer 16.

(Ex. 1003, at 0072)

[0073] The video clips, optionally including audio, are initially generated by video cameras 20. Video cameras 20 are connected to respective user computers 16 which are used in part to prepare the clips for uploading via the Internet 14 to server computer 12. Where cameras 20 generate analog video signals, an analog-to-digital converter (not shown) may be provided for transforming the analog video signal into digital format. One or more user computers 16 may be additionally connected, if only temporarily, to a photography camera 22 and/or a scanner 24 for enabling the uploading of one or more background images to server computer 12 for inclusion in a personal Web page or journal display for the individual

32

user.

(Ex. 1003, at 0073)

Samaan teaches uploading of a multiplicity of video clips and describes their categorization in detail:

[0034] Pursuant to the present invention, any particular first party may upload a multiplicity of video clips to the central location, those video clips being grouped in a plurality of sets identified by the respective first party. Thus, a user of a video distribution service embodying the invention may upload a first set video clips categorized as birthdays, a second set of video clips categorized as weddings, a third set of video clips classified as vacations, and a fourth set of video clips categorized as Independence Day celebrations. The user may further customize the archiving and distribution of his or her video clips by dividing any set of clips into subsets corresponding exemplarily to a respective event. For instance, the clips in the birthday category may be further organized into subsets corresponding to the individual birthdays, such as Melinda's third birthday, Jackie's fifth birthday, Tom's eleventh birthday, etc. The video clips in anyone of these event subsets represent individual scenes or specific episodes at the respective event. For instance, the subset of video clips of Jackie's fifth birthday may include a first clip showing Jackie in her new birthday dress, a second clip showing Jackie blowing out the candles, a third clip showing Jackie opening a present, and a fourth clip showing Jackie with chocolate cake on her birthday dress. The user or respective first party who uploaded these clips to the central location is provided with an opportunity to name the clips for purposes of facilitating access to the clips by a second party authorized by the user to download the clips.

(Ex. 1003, at 0034)

33

Samaan teaches the uploading of category information (subject matter category) along with the uploaded video content. (see 0034 reproduced immediately above)

See also, 0077 and 0085 for additional support for metadata for categorical information:

[0077] Server computer 12 further includes a Web page data store or database 32 operatively connected to Web site manager 26 for storing identification information pertaining to the various users and their designated video clip recipients. Web page data store 32 also contains (a) memory locations of the users' video clips in video database 28, (b) names or identifiers of categories defined by the various users for organizing their uploaded video clips, (c) the identities of the video clips in the selected categories, (d) e-mail addresses of authorized recipients, ( e) identities of the video clips permissibly viewed by the designated or authorized recipients, and (f) the construction of the users' web pages, including the background images and category names or identifiers provided by the users.

[0085] In response to instructions received from a user computer 16 via the Internet 14 and decoder 46, video clip categorizer 48 may impose several levels of organization on a collection uploaded by the respective user. Each clip may itself be one of a plurality of "entries" in a video clip group or set called an "event." Several events each comprising one or more entries may in turn be grouped in a "category." Accordingly, a user's entire library of uploaded video clips may include several categories each comprising a set of one or more events which in turn are sets or groups of one or more video clip entries. In an example of video clip organization, categories of video clips may include birthdays, weddings, vacations, picnics, and Labor Day celebrations. The video clips in the birthday category may be further organized into subsets corresponding to events such as individual birthdays (Jerry's third

34

birthday, Ellie's fifth birthday, Gary's eleventh birthday, etc.). The video clip entries in anyone of these event subsets represent individual scenes or specific episodes at the respective event. For instance, the subset of video clips of Ellie's fifth birthday may include a first clip showing Ellie in a new birthday dress, a second clip showing her blowing out candles on a cake, a third clip showing her with a friend, and a fourth clip showing her with ice cream in her hair. The particular user provides names for the categories, events and entries, for example, "Jerry's Third Birthday" and "Jerry Falling in Cake."

Samaan at [0104-0110] discuss selecting categories and uploading category information in detail.

[0104] Further customization processes (mostly not illustrated) pertain to the selection and modification of video clip category names or identifiers. Pursuant to the data contained in Web page data store 32 for a particular user, Web page generator 44 causes the display on the user's computer monitor of existing category names for that user's journal display or personal Web page. As implied above, once a user signs up as a member or subscriber to the video distribution service, a standard or default personal Web page or journal display is assigned to the user. The default categories are then registered in data store 32. To change the listing of video clip categories in the standard journal page or to change a previously customized category, the user selects the desired category and chooses an option taken from the following: (a) adding and modifying the category, (b) copying the category, ( c) deleting the category, (d) reclassifying events in the category, (e) maintaining an access control list, and (t) colinking video clips.

[0105] In adding a video clip category to a particular user's personal Web page or journal display, Web page generator 44 presents a user with a blank category form

35

with fields to be filled in by the particular user. Where the user desires to modify a category, Web page generator 44 consults data store 32 to display category information on the user's machine. The user then selects an edit option and a category to modify.

[0106] Where a user wishes to set up another video clip category, he or she may select a preexisting category, copy that category, and then modify the copy. When copying a category which includes one or more event subsets, the user is presented with the option of copying the event names as well.

[0107] Where a user has selected a menu option to delete a video clip category, Web page generator 44 consults data store 32 to determine whether the selected category has associated events. These events, if any, are listed on the user's computer monitor to provide the user with the option of deleting the events or moving the events to one or more different categories.

[0108] If a user wishes to reclassify one or more video clips ( events) from a first category to a second category, Web generator 44 presents to the user a list of the events in the first category to thereby enable the user to select the clip or clips the user wishes to reclassify under the second category. The user can either establish the second category as a new category or select a previously created category for receiving the reclassified video clip(s).

[0109] FIG. 5 depicts a flow chart diagram executed by server computer 12 for maintaining an access control list of any particular user. This list identifies those recipients who are authorized to view video clips of the particular user. In a first step 126, decoder 46 recognizes that the particular user wishes access to his or her access control information. Subsequently, in response to a signal from decoder 36, Web page generator 44 provides the particular user in a step 128

36

with selectable options including viewing the user's access control log and making changing in the user's access control list. Web page generator 44 consults Web page data store 32 to determine the user's access control log, which is presented to the user upon request in a step 130. Where the user wishes to modify the access control list, as determined by decoder 46 in step 128, server computer 12 (e.g., Web page generator 44 and decoder 46) determines in an inquiry 132 whether the particular user wishes to change access control information pertaining to a recipient who is already identified on the access control log. If the desired change pertains to adding a new recipient to the list of recipients authorized to receive video clips of the particular user, server computer 12 implements the addition to the access control log in a step 134. If the desired change pertains to a pre-existing authorized recipient, as determined at inquiry 132, server computer 12 obtains a selection of a listed recipient from the user in a step 136. Upon selection of a listed authorized recipient by the user, a determination is then made by server computer 12 at a decision junction 138 whether the user wishes to delete the selected authorized recipient or to change the access of the selected authorized recipient. A desire to delete results in a warning issued by server computer 12 to the user in a step 140, a check 142 that the user wishes to continue with the deletion, and a deletion step 144. Where the particular user wishes to change the access of the selected authorized recipient to the user's collection of uploaded video clips, the addition or removal of authorization or permission to selected video clip categories (and/or events and/or entries) is undertaken in a step 146. Server computer 12 then inquires at 148 whether the user wishes to have an e-mail invitation sent to the recipient whose access authorization has just been modified. An affirmative response from the user results in dispatch of the e-mail invitation pursuant to a routine 150. Then the revised access control list or log

37

is displayed to the user for review in a step 152.

[0110] Server computer 12 may provide to any given user the option of linking his or her personal Web journal page or one or more uploaded video clips to another Web site on the Internet 14, for purposes of enabling access from that other site via a hypertext link. Server computer 12 obtains a URL for the target video clip of the given user and the user enters an expiration date for the link. The link information is saved by server computer 12, while the URL is presented to the given user to copy and paste into the other Web site.

Samaan teaches that categories can be assigned to video content. See Samaan, at 0034, 0077, 0085, and 0104-0110 reproduced above.

Samaan teaches that categories are stored in a database (Web-page data store).

[0086] Video clip categorizer 48 stores, in Web page data store 32, the names or identifiers of video clip groupings as defined by the individual users. Data store 32 is linked to Web page generator 44 in part for supplying that unit with (a) an address of a background image selected by a user for his or her Web page, (b) the grouping names or identifiers, and (3) the locations and formats of the identifiers on the selected background image. The selection of the background image, as well as the locations and formats of the video clip grouping identifiers on the selected background image, is implemented via a Web-page set-up module 50. Module 50 is operatively connected to Web page generator 44, decoder 46, and video clip categorizer 48 for cooperating with those modules in setting up a user's Web page.

(Ex. 1003, at 0086)

38

(b) converting the content uploaded to the Web-based content management server into a standard TV digital format used by the discrete digital TV service provider network and storing a local instance thereof at a video ID (VID) address in a video content database of the VOD platform, wherein the VID address is linked to the title for the video content;

White teaches that content video can be encoded as MPEG for on-demand delivery:

Additionally, head-end 12 includes fast digital disk arrays and/or optical storage 28 for storage of MPEG-encoded digital video for on-demand delivery.

(Ex. 1002, at 2:27-30)

Samaan teaches conversion to a common format and then is displayed by the user as shown below in the following quotes:

[0076] As illustrated in FIG. 2, server computer 12 includes a Web site manager 26 operatively connected to the Internet 14 for generating personal Web pages and transmitting those Web pages to the various user computers 16 and recipient computers 18. Web site manager 26 also receives, from user computers 16, instructions regarding the formatting and construction of the users' personal Web pages and, from recipient computers 18, requests for access to selected user video clips. The users' video clips are stored in a video clip database 28 which is connected to the Internet 14 via a video clip processor 30. Processor 30 receives raw uploaded video clips from user computers 16 via the Internet 14 and converts the received video clips into a common predetermined format. Processor 30 is responsive to control signals received from Web site manager 26, whereby video clip processing operations are coordinated with user computers 16.

(Ex. 1003, at 0076)

[0055] The method and the system of the present invention facilitate the use of "on-demand" (as oppose to "broadcast") video programming by consumers over the Internet. The method and the system allow any consumer with access to a video camera and the Internet the ability to archive, post, distribute, and view

39

any video content they desire (e.g., wedding clips, little league highlights, baby video, sweet 16's, etc.) on the Internet. The method and the system allow the user to share the video clips with friends, family or anyone in a systematic manner. Large volumes of video may be archived online. The video volumes can take the form of an online video diary or journal, thus providing the organization and eliminating the "randomness" of the Internet. The method and the system provide consumers with a new and powerful educational and entertainment medium. The method and the system allow consumers to post and view content over the Internet easily, inexpensively and efficiently and with the knowledge that the content of the consumer's videos is secure from unwanted viewers.

(Ex. 1003, at 0055)

Dunn teaches how the video content is addressed where the pointer of the 824 patent is equivalent to the video ID (VID) address of the 336 patent:

The video data streams of the movies are stored digitally on the storage disks in predetermined or mapped locations. The locations of the video data streams are kept in a memory map and each video data stream can be accessed through pointers to the particular memory location.

(Ex. 1004, at 4:32-36)

Dunn teaches the electronic program guide is stored in a database (the database server 52).

Database server 52 stores program descriptive information used by the electronic programming guide (EPG) or other menus, such as a movie-on-demand menu.

(Ex. 1004, at 4:47-49)

40

Dunn also teaches the pointers (video ID addresses) are stored in the database server and reference the storage locations of the video streams.

Database server 52 also holds pointers to memory locations within the continuous media server 50. The pointers identify the storage locations of the video data streams of the movies. According to this interactive television system 30, 60 the viewer simply selects the movie of his/her choice from a menu on the screen and the head end server retrieves the digital video data stream from the continuous media server 50 using the pointers from database server 52 and transmits the digital video data stream to the requesting set-top box for 65 display on the associated television.

(Ex. 1004, at 4:56-65)

(c) listing the title of the video content in an electronic program guide for the VOD platform of the discrete digital TV service provider using the same hierarchically-arranged categories and subcategories as used in the uploaded metadata for the hierarchical address for the video content in the electronic program guide of

White teaches listing the title of the video content in an electronic program guide.

Desirably, when an on-demand video is selected, the title of the video appears in the electronic program guide, in association with the VIDEO viewer channel.

(Ex. 1002, at 6:6-9)

White teaches an electronic program guide displaying video content categories.

41

the VOD platform;

(Ex. 1002, at Fig. 4)

White teaches an electronic program guide:

The illustrated system includes an electronic program guide that can be selectively displayed on-screen to facilitate viewer program selection. Electronic program guides are familiar to those skilled in the art, so are not belabored here. Exemplary program guides are shown, e.g., in U.S. Pat. Nos. 5,815, 5,758,258, 5,585,838, 5,654,748, 5,526,036, and application Ser. Nos. 08/969,979 and 08/968,386 (the disclosures of which are incorporated by reference). Desirably, when an on-demand video is selected, the title of the video appears in the electronic program guide, in association with the VIDEO viewer channel.

(Ex. 1002, at 5:66-6:9).

Dunn teaches an electronic programming guide.

Head end server 32 also provides additional services, such as movie-on-demand and an electronic programming guide.

(Ex. 1004, 4:21-22)

Shoff (incorporated by White for its EPG teachings) teaches that the category and sub-category information may

42

be presented in the electronic programming guide by allowing the subscriber to request content.

In an alternative embodiment, a viewer could request from IT system 10 programming data of the type described with reference to FIG. 4 and process block 104. The viewer (e.g., a parent) could request information about the class or content of a specific program (e.g., a program that is available at a future time) or could request for a specific time a listing of programming of a specified class or with specified content. Such programming data requests in IT system 10 could be made independently of requests for programming.

(Ex. 1005, at 9:16-25)

Shoff teaches that video content may be organized by content-based characteristics (categories) such as content rating or service levels.

The content-based characteristics can include a rating of the type assigned to motion pictures by the Motion Picture Association of America (i.e., G, PG, PG-13, R, NC-17, or X, or NR if not rated), or a similar ordered rating or an unordered rating. The predefined classes of programming can relate to different types of services or programming provided by IT system 10 and may be referred to as Basic. Premium 1, or Premium 2 services.

As an example, Basic services may include mainly standard broadcast television programming. Premium 1 services may include expanded motion picture programming of the type provided by Home Box Office, Showtime or the Movie Channel, for example. Premium 2 services may include pay-per-view programming or other restricted access programming.

(Ex. 1005, at 5:56-6:3)

Shoff teaches that the content-based characteristics are

43

stored in a central control node and the data may be included in an electronic program guide (EPG) database.

Process block 104 indicates that programming data representing predetermined characteristics of programming scheduled for transmission over IT system 10 is stored in central control node 12. The predetermined characteristics include content- and class-based characterizations corresponding to those assigned to the viewers. Alternative or additional characterizations could be used. The programming data preferably are included in an electronic programming guide (EPG) database at central control node 12.

(Ex. 1005, at 6:50-58)

Samaan teaches that content is presented to a user via a web page at 0037-0038:

[0037] Pursuant to the customizable filtering technique discussed above, where a particular second party invitee or visitor to a first-party user's Web page has been restricted to only certain categories by the first party owner of that Web page, the Web page communicated to the particular second party via the Internet does not include the names of the categories (or events or entries) which have been excluded from viewing by that second party. The restricted categories (events, entries) are simply deleted or omitted from the first party user's Web page prior to its transmission over the Internet to the computer of the particular second party.

[0038] The present invention contemplates that the Web pages of the individual users (first parties) are customizable by the users. Accordingly, the method includes receiving from each individual user a selection of the background image, a selection of the video clip identifiers, and an indication of preferred locations of the video clip identifiers on the background image. The

44

providing of the respective Web page for the individual user includes superimposing the respective selected video clip identifiers on the selected background image at the locations selected by the one of the first parties. The background images may be selected from a library of background images or may be uploaded by the respective users. Alternatively, the users (first parties) may upload their own background images to the central location. Background images may be graphical or photographic so that the invention contemplates a wide variety of looks and approaches. Further examples include images of skyscrapers, architectural floor plans, family photo albums, children's swing sets, planetary systems, sailing ships and ocean liners, buildings with banners or flags, etc. In the latter case, the category, event or entry names or identifiers selected by the first parties may be superimposed on the banners or flags.

(d) providing a TV service subscriber, having a TV-equipment-connected set-top box connected to the VOD platform of the discrete digital TV service provider network, with access to the electronic program guide for the VOD platform for navigating through the hierarchically-arranged titles of video content by

White teaches providing TV service to a subscriber.

An entertainment head-end provides broadcast programming, video-on demand services, and HTML-based interactive programming through a distribution network to client terminals in subscribers' homes.

(Ex. 1002, at Abstract)

From the distribution nodes, further cables 22 couple to individual subscriber premises.

(Ex. 1002, at 2:9-11)

One day the 108-114 MHz transmission channel might be used to relay on-demand video to a subscriber.

(Ex. 1002, at 4:12-14)

White teaches a set-top box connected to a TV (Fig. 3, 14) and is called a client terminal or an enhanced WebTV terminal:

45

categories and subcategories therein in order to find the title of the video content desired for viewing on their TV equipment; and

Each client terminal 14 is an enhanced WebTV terminal that includes a CPU 38, RAM memory 40, non-volatile memory 42, a display screen 44, display driver circuitry 46, a speaker 48 with an associated audio stage 50, a remote control 52, an infrared interface 54, a user interface (UI) 56, a dial-up interface 58, a cable interface 60, and an MPEG decoder 62 (FIG. 3). (The artisan is presumed familiar with Web TV terminals from their many descriptions in the patent and technical literature, and their widespread availability / use.)

(Ex. 1002, at 2:58-67)

White teaches that the subscriber uses the program guide to navigate through categories and sub-categories (highlight the feature of interest, e.g. a particular topical category).

The viewer manipulates arrow keys on the remote control 52 to highlight the feature of interest, e.g. a particular topical category. (Highlighting here refers to a visual indicia showing that a particular screen feature, or hyperlink, has been selected for execution. Various forms of highlighting can be used, e.g. a change in color of the feature, a colored box surrounding the feature, etc.) After a desired feature has been selected, a "Go" button on the remote control is pressed, signaling the user's selection to the terminal 14.

If the "KIDS" category was highlighted, the system next presents a screen listing available children's movies (again defined by HTML from the proxy server).

(Ex. 1002, at 4:30-42)

(e) upon the TV service subscriber selecting, via their

White teaches the transmission of a video program responsive to use of a remote control.

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TV remote control unit in communication with the set-top box, the title for the video content from the hierarchically-arranged categories and subcategories of the electronic program guide, and the set-top box transmitting a request for the selected title to the VOD platform, then enabling retrieval of the selected video content stored at the VID address in the video content database of the VOD platform linked thereto, and transmission of the selected video content to the TV service subscriber's set-top box for display on the TV service subscriber's

To play the selected video, the user simply presses the "Go" button on the remote control 52, activating the initially-highlighted PLAY button 76A on the control panel 74. A corresponding instruction is sent to the head-end 12, and video delivery commences. The on-screen video control panel 74 disappears.

(Ex. 1002, at 4:66-5:4)

1. A method of operating a video on demand system comprising: transmitting user-requested video program to a predetermined client terminal over a first transmission channel;

(Ex. 1002, at 11:2-5)

The communication with the set-top box that results in the commencement of video transmission is described in White at 4:30-5:3:

The viewer manipulates arrow keys on the remote control 52 to highlight the feature of interest, e.g. a particular topical category. (Highlighting here refers to a visual indicia showing that a particular screen feature, or hyperlink, has been selected for execution. Various forms of highlighting can be used, e.g. a change in color of the feature, a colored box surrounding the feature, etc.) After a desired feature has been selected, a "Go" button on the remote control is pressed, signaling the user's selection to the terminal 14.

If the "KIDS" category was highlighted, the system next presents a screen listing available children's movies (again defined by HTML from the proxy server). Again, the viewer manipulates the remote control to select a particular choice, and then presses "Go." At this point, an optional screen can be presented confirming billing arrangements (if any).

47

TV equipment. Once a final video selection has been made, a video control panel VI 74 (FIG. 5) is presented on the screen. In the illustrated embodiment, this panel is translucent, permitting the viewer to perceive imagery "behind" the overlaid panel. (That is, the panel is rendered as a change in luminance of the underlying imagery.) The exemplary video control panel 74 of FIG. 5 includes PLAY, STOP, REWIND, FAST FORWARD, and PAUSE buttons 76A-E. (Additionally, the panel can have a textual or graphical indication 78 of the time remaining in the selected video.) The PLAY button is initially highlighted.

While the control panel is being rendered at the client (from HTML primitives stored in the non-volatile memory 42), the head-end queues the selected MPEG video for playback, and the system (either the head-end 12 or a proxy server 24) selects an available transmission channel. Data indicating the selected channel is relayed to the client terminal 14, which tunes the RF tuner in the cable interface 60 without any user action. The viewer channel, in contrast, remains unchanged at the VIDEO channel.

To play the selected video, the user simply presses the "Go" button on the remote control 52, activating the initially-highlighted PLAY button 76A on the control panel 74. A corresponding instruction is sent to the head-end 12, and video delivery commences. The on-screen video control panel 74 disappears.

Dunn teaches enabling retrieval of the selected video content at the pointer. Dunns pointer is the video ID (VID) address of the 336 patent:

The video data streams of the movies are stored digitally on the storage disks in predetermined or mapped locations. The locations of the video data streams are kept in a memory map and each video data stream can be accessed through pointers to the

48

particular memory location.

(Ex. 1004, at 4:32-36)

See element 1(d) for the title being in the categories of the EPG.

2. A method according to claim 1, wherein the video content is uploaded to the Web-based content management server connected to the VOD platform of the discrete digital TV service provider network from a computer user's computer connected to the online network.

Samaan teaches uploading to the web-based content management server from a users computer.

[0072] FIG. 1 depicts a server computer 12 linked to the Internet 14 for carrying out a video distribution process wherein individual users of the process upload video clips to server computer 14 from their respective personal computers 16 via the Internet 14. Subsequently, server computer 12 selectively transmits the uploaded video clips to personal computers 18 of recipients designated by the users. Server computer organizes and controls the storage and distribution of multiple video clips uploaded from each user computer 16.

(Ex. 1003, at 0072)

Samaan teaches the uploading from a computer connected to the online network.

[0036] Where the computer network is the Internet, the methodology of the invention further comprises providing an individual or dedicated Web page for each of the first parties.

(Ex. 1003, at 0036)

[0075] Server computer 12 maintains a site on the World Wide Web which is accessible to various user computers 16 and recipient computers 18. When a recipient wishes to view a video clip from a user, the recipient enters the video distribution Web site maintained by server computer 12 and, upon

49

communication of appropriate identification information, is presented with a Web page or journal display associated with that user. Via the presented Web page, the recipient then selects which video clip or clips he or she wishes to view and orders transmission. As discussed hereinafter, each user not only identifies authorized viewers of the user's video clips but also prescribes which video clips of the user are permissibly viewed by each authorized viewer or recipient. The user's Web page as communicated to any particular authorized viewer or recipient contains names or identifiers of only those video clip groupings or individual video clips which have been indicated by the user as permissibly viewed by that particular authorized viewer or recipient.

(Ex. 1003, at 0075)

3. A method according to claim 1, wherein the video content is uploaded to the Web-based content management server connected to the VOD platform of the discrete digital TV service provider network from a URL link to a website address from which the video content is accessible.

Samaan teaches uploading to the web-based content management server using a computer.

[0072] FIG. 1 depicts a server computer 12 linked to the Internet 14 for carrying out a video distribution process wherein individual users of the process upload video clips to server computer 14 from their respective personal computers 16 via the Internet 14. Subsequently, server computer 12 selectively transmits the uploaded video clips to personal computers 18 of recipients designated by the users. Server computer organizes and controls the storage and distribution of multiple video clips uploaded from each user computer 16.

(Ex. 1003, at 0072)

To one of ordinary skill in the art, see supra at VII(A)(5), Samaan teaches the use of standard Web techniques to upload files to a web-based content management server and such techniques would include the use of URLs. (See also,

50

Ex. 1003, at 0072).

4. A method according to claim 1, wherein the hierarchical address used in the uploaded metadata for the video content comprises a string of category and subcategory terms and the title delimited by standard delimiters that uniquely identifies the video content and its location for listing in the hierarchically-arranged categories and subcategories of the electronic program guide.

Samaan teaches the uploading of category information (e.g. weddings," birthdays), subcategories (e.g., "Melinda's third birthday," "Jackie's fifth birthday"), and title along with the uploaded video content as part of a hierarchical address:

[0034] Pursuant to the present invention, any particular first party may upload a multiplicity of video clips to the central location, those video clips being grouped in a plurality of sets identified by the respective first party. Thus, a user of a video distribution service embodying the invention may upload a first set video clips categorized as birthdays, a second set of video clips categorized as weddings, a third set of video clips classified as vacations, and a fourth set of video clips categorized as Independence Day celebrations. The user may further customize the archiving and distribution of his or her video clips by dividing any set of clips into subsets corresponding exemplarily to a respective event. For instance, the clips in the birthday category may be further organized into subsets corresponding to the individual birthdays, such as Melinda's third birthday, Jackie's fifth birthday, Tom's eleventh birthday, etc. The video clips in anyone of these event subsets represent individual scenes or specific episodes at the respective event. For instance, the subset of video clips of Jackie's fifth birthday may include a first clip showing Jackie in her new birthday dress, a second clip showing Jackie blowing out the candles, a third clip showing Jackie opening a present, and a fourth clip showing Jackie with chocolate cake on her birthday dress. The user or respective first party who uploaded these clips to the central location is provided with an opportunity to name the clips for purposes of facilitating access to the clips by a second party authorized by the user to download the clips.

51

(Ex. 1003, at 0034)(emphasis added)

The hierarchically arranged categories, subcategories and titles must have been delimited because they are stored in a database and are delimited:

[0077] Server computer 12 further includes a Web page data store or database 32 operatively connected to Web site manager 26 for storing identification information pertaining to the various users and their designated video clip recipients. Web page data store 32 also contains (a) memory locations of the users' video clips in video database 28, (b) names or identifiers of categories defined by the various users for organizing their uploaded video clips, (c) the identities of the video clips in the selected categories, (d) e-mail addresses of authorized recipients, ( e) identities of the video clips permissibly viewed by the designated or authorized recipients, and (f) the construction of the users' web pages, including the background images and category names or identifiers provided by the users.

(Ex. 1003, at 0077)

[0086] Video clip categorizer 48 stores, in Web page data store 32, the names or identifiers of video clip groupings as defined by the individual users. Data store 32 is linked to Web page generator 44 in part for supplying that unit with (a) an address of a background image selected by a user for his or her Web page, (b) the grouping names or identifiers, and (3) the locations and formats of the identifiers on the selected background image. The selection of the background image, as well as the locations and formats of the video clip grouping identifiers on the selected background image, is implemented via a Web-page set-up module 50. Module 50 is operatively connected to Web page generator 44, decoder 46, and video clip categorizer 48 for cooperating with those modules in setting up a

52

user's Web page.

(Ex. 1003, at 0086)

White discloses that the title and categorical information must have been delimited by standard delimiters (such as commas, spaces, etc.) that uniquely identify the video content because the categorical information and title are displayed in a delimited fashion:

(Ex. 1002, at Fig. 4)

7. A method according to claim 1, wherein the electronic program guide enables the TV service subscriber to store the hierarchical address for a TV program listed in the electronic

At 0110, Samaan describes giving users a URL to post on another web site to allow other users to view video. This constitutes the claimed bookmark.

[0110] Server computer 12 may provide to any given user the option of linking his or her personal Web journal page or one or more uploaded video clips to another Web site on the Internet 14, for purposes of enabling access from that other site via a hypertext link. Server computer 12 obtains a URL for the target video clip of the given user and the user enters an expiration date for the link. The link information is saved by server computer 12, while the URL is presented to the

53

program guide as a bookmark for again viewing the TV program.

given user to copy and paste into the other Web site.

(Ex. 1003, at 0110)

At 0082-0084, Samaan describes the construction of the us