UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Unified Patents Inc.

Petitioner

v.

Dragon Intellectual Property, LLC. Patent Owner

IPR2014- _____

Patent 5,930,444

____________

PETITION FOR INTER PARTES REVIEW

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

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TABLE OF CONTENTS

I. INTRODUCTION ........................................................................................... 1

II. MANDATORY NOTICES ............................................................................. 2

A. Real Party-in-Interest ............................................................................ 2

B. Related Matters ...................................................................................... 4

C. Identification of Lead and Back-Up Counsel........................................ 5

D. Service Information ............................................................................... 5

III. PAYMENT OF FEES ..................................................................................... 5

IV. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 5

A. Grounds for Standing ............................................................................ 5

B. Statement of Precise Relief Requested (37 C.F.R. 42.22(a)) and Identification of Challenges (37 C.F.R. 42.104(b)) .................... 6

C. How the Construed Claims are Unpatentable under the Statutory Grounds identified in 37 C.F.R. 42.104(b)(2) and Supporting Evidence Relied upon to Support the Challenge ................ 6

D. Threshold Showing of Reasonable Likelihood That Petitioner Would Prevail With Respect To At Least One Challenged Claim (35 U.S.C. 314(a)) Has Been Met ........................................... 7

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

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

B. The State of the Art as of 1992 ............................................................. 8

C. The Challenged 444 Patent ................................................................ 14

D. Prosecution History ............................................................................. 15

VI. CLAIM CONSTRUCTION (37 C.F.R. 42.104(B)(3)) .............................. 18

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A. Support for claim construction ............................................................ 19

VII. THE GROUNDS SHOWING THAT PETITIONER HAS A REASONABLE LIKELIHOOD OF PREVAILING .................................... 24

A. The Prior Art Discloses Each Claimed Feature and One of Ordinary Skill Would be Led to Form This Combination .................. 24

1. Reasons to Combine Ulmer and Goldwasser ........................... 25

2. The Combination of Ulmer and Goldwasser Disclose the Claimed Keyboard .................................................................... 27

3. Ulmer Necessarily Discloses the Control Circuit of the Claims ....................................................................................... 29

4. Ulmer Discloses Simultaneous Recording and Playback ......... 29

5. Ulmer Discloses "One Button Playback": Ulmer Discloses Playback with Sole Actuation of the Playback Key, and With an Interval of Time Delay Being the Same as the Time Elapsed Between the Actuation of the Record Key and the Actuation of the Playback Key ................ 31

6. One-Button Playback Would Necessarily Be Supported By the Control Circuit ............................................................... 32

7. Claim 1s Means for Powering Is Necessarily Present in Ulmer and Goldwasser .............................................................. 33

8. Ulmer Discloses Claim 8s Key Means .................................... 34

B. Claim Chart and Analysis Demonstrating How the Proposed Combination Renders Obvious Claims 1, 2, 7, 8, 10, 13, and 14 ....... 35

1. Ulmer and Goldwasser Render Claim 14 Obvious ................... 57

VIII. CONCLUSION .............................................................................................. 59

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I. INTRODUCTION

Pursuant to the provisions of 35 U.S.C. 311-319, Unified Patents, Inc.,

(Unified or Petitioner) hereby petitions the Patent Trial and Appeal Board to

institute inter partes review of claims 1, 2, 7, 8, 10, 13, and 14 of U.S. Patent No.

5,930,444 to Camhi, et al. (the 444 Patent, Ex. 1001).

In short, the 444 Patent describes a digital VCR, in which the video is

recorded not on magnetic videotape, but on a digital memory unit which is

described as a random access device. A feature of the memory unit is that it

provides the capability of simultaneous read/write, which enables the digital VCR

to record and playback at the same time. This provides the user with the ability to,

for example, pause viewing during the recording of a program, and then

immediately begin viewing again from the paused location while the recording

continues. The device is controlled by a remote control with buttons, including a

record key and a playback key. The device/remote control also includes common

VCR functions such as fast forward and reverse, pause, and single-frame advance.

Ex. 1013, at 7; Ex. 1001, at Abstract; 2:37-37; 3:11-22; 3:54-4:8.

During a Supplemental Examination, the PTO concluded that the 444

Patent was originally granted because the prior art did not disclose the ability to

initiate playback of a video after recording had begun using a single button

activation, which Petitioners declarant, Dr. Hemami, describes as one-button

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playback. The prior art relied upon herein discloses one-button playback and

also fills the gap that the Examiner found in the prior art during the Supplemental

Examination.

The Petitioner relies upon Ulmer (PCT Publication WO 89/12896) and

Goldwasser (U.S. Pat. No. 5,241,428) to demonstrate that the challenged claims

are unpatentable as being obvious. Ulmer was never considered by the Office, but

Goldwasser was part of the Supplemental Examination. Here, Petitioner relies

upon Ulmer in view of Goldwasser, a combination never considered by the Office,

which casts Goldwasser in a new light.

II. MANDATORY NOTICES

Pursuant to 37 C.F.R. 42.8(a)(1), Unified Patents provides the following

mandatory disclosures.

A. Real Party-in-Interest

Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Unified Patents is

the real party-in-interest, and further certifies that no other party exercised control

or could exercise control over Unified Patents participation in this proceeding, the

filing of this petition, or the conduct of any ensuing trial.

Unified Patents was founded by intellectual property professionals over

concerns with the increasing risk of non-practicing entities (NPEs) asserting poor

quality patents against strategic technologies and industries. The founders thus

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created a first-of-its-kind company whose sole purpose is to deter NPE litigation

by protecting technology sectors, like content delivery, the technology at issue in

the 444 Patent. Companies in a technology sector subscribe to Unifieds

technology specific deterrence, and in turn, Unified performs many NPE-deterrent

activities, such as analyzing the technology sector, monitoring patent activity

(including patent ownership and sales, NPE demand letters and litigation, and

industry companies), conducting prior art research and invalidity analysis,

providing a range of NPE advisory services to its subscribers, sometimes acquiring

patents, and sometimes challenging patents at the United States Patent and

Trademark Office (USPTO). Since its founding, Unified is 100% owned by its

employees; subscribers have absolutely no ownership interest.

Unified has sole and absolute discretion over its decision to contest patents

through the USPTOs post-grant proceedings. Should Unified decide to challenge

a patent in a post-grant proceeding, it controls every aspect of such a challenge,

including controlling which patent and claims to challenge, which prior art to apply

and the grounds raised in the challenge, and when to bring any challenge.

Subscribers receive no prior notice of Unifieds patent challenges. After filing a

post-grant proceeding, Unified retains sole and absolute discretion and control over

all strategy decisions (including any decision to continue or terminate Unifieds

participation). Unified is also solely responsible for paying for the preparation,

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

associated with the proceeding.

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

deciding to file this petition against the 444 Patent, including paying for all fees

and expenses. Unified shall exercise sole and absolute control and discretion of

the continued prosecution of this proceeding (including any decision to terminate

Unifieds participation) and shall bear all subsequent costs related to this

proceeding. Unified is therefore the sole real-party-in-interest in this proceeding.

B. Related Matters

Dragon Intellectual Property, LLC (Dragon) has asserted the 444 Patent

in ten litigations in Delaware District Court, all filed on December 20, 2013 and all

are pending. Unified is not a party to any of these litigations.

Dragon v. Charter Communications Inc., 1-13-cv-02062 Dragon v. DirecTV LLC, 1-13-cv-02065 Dragon v. Sirius XM Radio Inc., 1-13-cv-02067 Dragon v. Apple Inc., 1-13-cv-02058 Dragon v. Cox Communications Inc., 1-13-cv-02064 Dragon v. Comcast Cable Communications LLC, 1-13-cv-02063 Dragon v. DISH Network LLC, 1-13-cv-02066 Dragon v. Time Warner Cable Inc., 1-13-cv-02068 Dragon v. Verizon Communications, Inc., 1-13-cv-02069 Dragon v. AT&T Services Inc., 1-13-cv-02061

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C. Identification of Lead and Back-Up Counsel

Pursuant to 37 C.F.R. 42.8(b)(3), Petitioner provides the following

designation of counsel: Lead counsel is Michael L. Kiklis (Reg. No. 38,939) and

back-up counsel is Scott A. McKeown (Reg. No. 42,866).

D. Service Information

Pursuant to 37 C.F.R. 42.8(b)(4), papers concerning this matter should be

served on the following:

Address: Michael L. Kiklis or Scott McKeown Oblon Spivak 1940 Duke Street Alexandria, VA 22314

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

Telephone: (703) 413-2707/(703)413-3000 (main) Fax: (703) 413-2220

III. PAYMENT OF FEES

The undersigned authorizes the Office to charge the required fees as well as

any additional fees that might be due to Deposit Account No. 15-0030.

IV. REQUIREMENTS FOR INTER PARTES REVIEW

As set forth below and pursuant to 37 C.F.R. 42.104, each requirement for

inter partes review of the 444 Patent is satisfied.

A. Grounds for Standing

Petitioner certifies pursuant to 37 C.F.R. 42.104(a) that the 444 Patent is

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

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requesting inter partes review challenging the patent claims on the grounds

identified herein.

B. Statement of Precise Relief Requested (37 C.F.R. 42.22(a)) and Identification of Challenges (37 C.F.R. 42.104(b))

Petitioner requests inter partes review and cancellation of claims 1, 2, 7, 8,

10, 13, and 14 of the 444 Patent as being obvious under 35 U.S.C. 103 in view

of the following PCT publication and U.S. patent, each of which is prior art

pursuant to 35 U.S.C. 102(b) or 102(e):

1. PCT Publication WO 89/12896 to Ulmer, published December

28, 1989 (Ulmer)(Ex. 1002); and

2. U.S. Pat. No. 5,241,428 to Goldwasser, et al., filed March 12, 1991

(Goldwasser)(Ex. 1003).

C. How the Construed Claims are Unpatentable under the Statutory Grounds identified in 37 C.F.R. 42.104(b)(2) and Supporting Evidence Relied upon to Support the Challenge

The challenged claims are to be construed as indicated in Section VI, below.

Pursuant to 37 C.F.R. 42.104(b)(4), an explanation of how the challenged claims

are unpatentable under the statutory ground identified above, including the

identification of where each element of the claim is found in the prior art, is

provided in Section VII, below, in the form of a claim chart and analysis. Pursuant

to 37 C.F.R. 42.104(b)(5), the appendix numbers of the supporting evidence

relied upon to support the challenges and the relevance of the evidence to the

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challenges raised, including identifying specific portions of the evidence that

support the challenges, are provided in Section VII, below, in the form of a claim

chart and analysis.

D. Threshold Showing of Reasonable Likelihood That Petitioner Would Prevail With Respect To At Least One Challenged Claim (35 U.S.C. 314(a)) Has Been Met

The information and evidence presented in this Petition, including

unpatentability ground detailed in Section VII, below, establishes a reasonable

likelihood that Petitioner will prevail with respect to at least one of the challenged

claims. See 35 U.S.C. 314(a). Indeed, that section, supported by the Hemami

declaration (Ex. 1013) demonstrates that the challenged claims are obvious in view

of the relied upon prior art.

V. FACTUAL BACKGROUND

A. Declaration Evidence

This Petition is supported by the declaration of Professor Sheila S. Hemami,

Ph.D. from Northeastern University (attached as Ex. 1013). Dr. Hemami offers her

opinion with respect to the skill level of one of ordinary skill in the art (Ex. 1013,

23 and 24), the content and state of the prior art (Ex. 1013, 25-41), the

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

Exs. 1002-1003 (Ex. 1013, pps. 21-64), the reasons for combining the teachings

from Exs. 1002-1003 (Ex, 1013, 50-73), and the manner in which one of

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ordinary skill would combine those teachings (Ex. 1013, pps. 26-64). Dr. Hemami

is Professor of Electrical and Computer Engineering at Northeastern University in

Boston, Massachusetts and Chair of the Department of Electrical & Computer

Engineering. She has over twenty years of experience in multimedia systems. See

Ex. 1013.

B. The State of the Art as of 1992

VCR Functionality in 1992

By March, 1992, infrared remotes were commonplace, programming to

record at a later time was commonplace, and controlling fast forward or reverse or

frame advance (jog-shuttle) was commonplace. Programming the VCR to record a

future program was also commonplace. Ex. 1013, at 25; Ex. 1004.

The '444 Patent itself admits to well-known "enhanced playback features"

provided by the invention when describing the user's ability to control the unit via

fast forward, reverse, pause, and frame advance at 6:27-41:

The enhanced remote control has additional function keys intended

for use during time delay playback by recorder 10, as described above

and initiated by user actuation of playback key 20. These additional

function keys include fast forward 52 and reverse 54, pause 56, and

frame advance 58. Control circuit 14 is adapted to respond to user

actuation of these keys by controlling the rate and sequence with

which stored information retrieved from memory unit 12 is transferred

to outputs 24 for display. This enables the recorder of the instant

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invention to approximate the enhanced playback features which have

become well known from their presence on all but the least expensive

VCR's presently known and marketed.

Ex. 1013, at 26.

Remote controls in 1992:

Remote controls for televisions and VCRs were well established in the

1970's and IR remote controls had replaced the previous ultrasonic-based remote

controls by the mid-80's. Many patents were filed and issued around 1980

pertaining to infrared technology and its use in television and VCR (or VTR, for

video tape recorder, as they were also known). Ex. 1013, at 27.

Remote controls at the time the '444 Patent was filed provided keys to

enable enhanced playback features, as recited in the '444 Patent itself at 6:27-41

(reproduced above). A person of ordinary skill would understand that a remote

control had keys or buttons with which the user interfaced with the remote control,

and such keys would include the well-known keys that the 444 Patent mentions

above, such as fast forward, rewind, frame advance, and pause. Ex. 1013, at 28.

Random access memory allowing simultaneous read and write

Dual-ported RAM allows Read and Write to happen on the same clock

cycle. Video RAM is a well-known example. Both were well established and well

known in 1992. Furthermore, multi-head disk drives that achieved simultaneous

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read and write operations through the use of multiple heads were also known, see,

e.g., U.S. Patent 5,134,499 to Sata et al. (Ex. 1005) entitled "Video Recording

Apparatus Having Control Means Provided Therein for Independently Controlling

the Writing Head and the Reading Head," which was considered by the examiner

during prosecution of the 444 Patent, and also U.S. Patent No. 4,972,396 to

Rafner entitled "Multiple Independently Positionable Recording Reading Head

Disk System" (Ex. 1013). Ex. 1013, at 30.

Application of Random-Access Memory to Provide Simultaneous Read/Write Capabilities in a Digital VCR

The idea of a digital VCR was not new. U.S. Patent 5,625,464 to Compoint

entitled "Continuous Television Transmission Reproduction and Playback"

(priority date March 5, 1991) continuously records an incoming television signal

by digitizing it and writing it to a two-headed hard disk, which enables

simultaneous reading and writing. Ex. 1013, at 31; Ex. 1007.

U.S. Patent 4,972,396 to Rafner entitled "Multiple Independently

Positionable Recording-Reading Head Disk System" (issued November 20, 1990)

describes a multi-headed hard disk system in which reading from and writing to the

disk can occur at the same time. Ex. 1013. Rafner provides an example of use of

the device to provide VCR-type functionality, where compressed digital video is

stored and provides a contrast with conventional tapes because viewing can begin

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prior to termination of recording due to the use of separate read/write heads. Ex.

1013, at 32.

U.S. Patent 5,134,499 to Sata entitled "Video recording apparatus having

control means provided therein for independently controlling the writing head and

the reading head" (filed August 3, 1989) describes an apparatus in which viewing

can begin prior to the termination of recording using two separate read/write heads,

with a RAM allowing writing to a buffer when the write head is traversing and not

writing to disk. Ex. 1013, at 33; Ex. 1005.

PCT Publication WO 89/12896 to Ulmer entitled "Device for simultaneous

recording and playback of television images" (published December 28, 1989)

allows users to perform VCR-like functionality on television signals. Ex. 1002.

Ulmer discloses a device having a remote control that allows playback of a

recorded video signal while the recording is still taking place. The video is stored

in a digital random-access memory, which enables simultaneous recording and

playback. Ulmer discloses user control of the unit through a remote control, and

clearly indicates the simple operation of the device: record, wait for a user-

selected interval of time, playback. Ulmer describes extensively the operation of

the control circuit that allows for not only simultaneous reading and writing but

also providing the enhanced playback features of fast forward, reverse, pause, and

frame-by-frame playback. Ex. 1013, at 34.

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U.S. Patent No. 5,241,428 to Goldwasser entitled "Variable-delay video

recorder" (filed March 12, 1991) describes a video recorder and playback device

allowing simultaneous recording and playback and allowing for a user-controlled

time delay between the recording and the playback. Ex. 1003. A user can pause

the playback of a signal being recorded for an arbitrary amount of time, and then

resume playback. Goldwasser describes a video recorder and playback device

allowing for a user-controlled time delay between the recording and the playback.

The video is stored in a digital random-access memory, allowing simultaneous

recording and playback. A user can pause the playback of a signal being recorded

for an arbitrary amount of time, and then resume playback. Goldwasser includes a

user control panel and a control circuit coupled to the user control panel and the

memory. In addition to pausing, Goldwasser also includes fast forwarding and

rewinding. Ex. 1013, at 35.

Control circuitry in a VCR responsive to the remote control commands

Independent claims 1 and 14 in the 444 Patent include a "control circuit"

that is coupled to the "keyboard." This control circuit provides "selective storage

or retrieval of information or both, to and from memory unit 12 as the case may be.

Control circuit 12 is in turn responsively coupled to keyboard 16. . . ." Ex. 1001, at

3:60-65. It is further described at 6:34-37 as "Control circuit 14 is adapted to

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respond to user actuation of these keys by controlling the rate and sequence with

which stored information retrieved from memory unit 12 is transferred to output 24

for display." A person of ordinary skill would understand that such a control

circuit is not a novel feature, but is a requirement for any remote-

controlled/keyboard-controlled device, as the receipt of the command at the player

itself is not sufficient to control the device; the received command needs to be

passed on to the electronics that control the device itself, e.g., executing commands

that result in the actual execution of play, fast forwarding, etc. Rather, the

command "receiver" at the device would decode the received signal and then pass

on the requested command to a device controller. Ex. 1013, at 36.

Such control circuitry is described in many patents pertaining to

VTRs/VCRs operated by remote control, e.g. U.S. 4,885,579 A, entitled "Device

for the remote control of a videorecorder or a videoreceiver" (issued December 5,

1989)(Ex. 1008); U.S. 4,866,542, "Remote-controlling commander with a multi-

function rotatry dial" (issued September 12, 1989)(Ex. 1009); and U.S. 4,426,662

A, "IR Remote control detector/decoder" (issued January 17, 1984)(Ex. 1010).

While these patents apply to magnetic-tape based VCRs/VTRs, it would be readily

apparent to one of ordinary skill that the need for and operation of such a control

device would be independent of the actual storage media. The 444 Patent itself

teaches multiple storage media (semiconductor memory, optical disks, magnetic

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disks) and therefore the disclosed control unit must be in fact media-independent.

Ex. 1013, at 37.

In conclusion, the state of the art as of 1992 was that all the features of the

contested claims were well known to those of ordinary skill in the art. VCR

functionality and control via a remote control were well known. The existence of

control circuitry to execute commands on the recorder apparatus when those

commands were received from the remote control was also well understood. Use

of random-access memories to provide simultaneous reading and writing was well

known, and the application of these memories to provide simultaneous recording

and playback in a digital VCR was established art. A person of ordinary skill was

well aware of these features, and in designing a digital VCR, they would select

these features readily and with ease to suit their design goals. Ex. 1013, at 38.

C. The Challenged 444 Patent

The 444 Patent describes essentially a digital VCR, in which the video

signal (and associated audio) is recorded not on magnetic videotape, but on a

digital memory unit which is described as a random access device. A feature of

the memory unit is that it provides the capability of simultaneous read/write, which

enables the digital VCR to record and playback at the same time. This provides

the user with the ability to, for example, pause viewing during the recording of a

program, and then immediately begin viewing again from the paused location. The

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device is controlled by a remote control with buttons, including "at least one record

key and at least one playback key." The device/remote control also includes

common VCR functions such as fast forward and reverse, pause, and single-frame

advance. Ex. 1013, at 7; Ex. 1001, at Abstract; 2:37-37; 3:11-22; 3:54-4:8.

The contested claims include the following features: a remote control, a

memory unit providing random access, and a memory control circuit providing

simultaneous read and write capabilities. As Dr. Hemami testifies, all the features

of the contested claims were well known to one of ordinary skill in the art as of the

earliest priority date of the 444 Patent. Ex. 1013, at 8.

D. Prosecution History

The Patent Owner filed a request for Supplemental Examination based, in

part, on Goldwasser. In the Supplemental Examination, the Examiner made the

following observations about the original prosecution:

[I]ndependent claims 1 and 14 of the '444 Patent were allowed

because none of the references of record taught or suggested a control

circuitry being configured so that substantially simultaneous recording

and playback of program information is achieved when said record

key is first actuated to being a recording by initiating storage of the

broadcast program information in said memory unit, and said

playback key is subsequently and solely actuated to begin time delay

playback of the recording from the beginning thereof by initiating

retrieval of the stored program information in said memory unit, with

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the interval of the time delay being the same as the time elapsed

between the actuation of said record key and the subsequent actuation

of said playback key. Ex. 1011, at 15.

Dr. Hemami refers to the above operation as providing "one-button playback,"

which she describes as, after recording has begun, the user can initiate playback by

simply commanding playback with a single button activation (in contrast to VCRs,

where a "stop" was required to initiate playback, the "stop" being the cessation of

recording). Ex. 1013, at 44.

During Supplemental Examination, the Examiner found that Goldwasser,

taken alone, did not raise a substantial new question of patentability because

Goldwasser failed to expressly teach or suggest:

a) a keyboard having a record key and a playback key; and

b) a control circuit, coupled to the keyboard, being configured so that

substantially simultaneous recording and playback of program

information is achieved when said record key is first actuated to being

a recording by initiating storage of the broadcast program information

in said memory unit, and said playback key is subsequently and solely

actuated to begin time delay playback of the recording from the

beginning thereof by initiating retrieval of the stored program

information in said memory unit, with the interval of the time delay

being the same as the time elapsed between the actuation of said

record key and the subsequent actuation of said playback key. Ex.

1011, at 31.

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In other words, the Patent Office found that Goldwasser alone did not provide

"one-button playback." Ex. 1013, at 45-46.

The Examiner also found that Goldwasser, in combination with Smith did

not raise a substantial new question of patentability because Smith lacked a control

circuit that performed one-button playback. See Ex. 1011, at 6, 25; Ex. 1013,

at 47.

As Dr. Hemami testifies, Smith teaches a remote control only, without any

discussion of the corresponding control circuit at the remotely controlled

apparatus, let alone a control circuit that performed one-button playback.

Goldwasser provides a control circuit, but the "one-button playback" operation is

not described. Similarly, the examiner found that the combination of Sata and

Smith did not provide "one-button playback." As such, none of the prior art

combinations disclosed a control circuit that performed one-button playback. Ex.

1013, at 48.

In contrast, one of ordinary skill in the art would recognize that Ulmer

explicitly teaches "one-button playback" and discloses a control circuit which

implements this function. Both Ulmer and Goldwasser are directed toward

simultaneous recording and playback in a unit providing VCR-like functionality

with digital video. While the Patent Office looked to Goldwasser to provide "one-

button playback," this function is instead provided by Ulmer in Dr. Hemamis

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combination. The combination of Ulmer and Goldwasser discloses all features of

each contested claim. Ex. 1013, at 49.

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

Pursuant to 37 C.F.R. 42.204(b)(3), the claims subject to inter partes review

shall receive the broadest reasonable construction in light of the specification of

the patent in which [they] appear[]. See 42 C.F.R. 100(b). For the purposes of

this petition, the Petitioner adopts the plain meaning for all claims terms. The

Petitioner proposes a specific construction for several terms below:

Claim Term Proposed construction Keyboard (claims 1, 2, 8, and 14) the buttons or keys used to control

the device Means for powering the apparatus (claim 1)

Function: powering the apparatus Structure: batteries for the remote control and AC power for the recorder

Key means for enabling user control of the rate or sequence or both of transfer of program information from said memory unit to the user's display device (claim 8)

Function: enabling user control of the rate or sequence or both of transfer of program information from said memory unit to the user's display device Structure: the fast forward, reverse, pause, and frame advance buttons (or "keys") on the remote control

Frame advance key (claim 10) "a button that, when activated, performs frame-by-frame playback"

Timer circuit (claim 13) a circuit for implementing a timer function

Control circuit (coupled responsively to the keyboard) (claim 1) (coupled also

a circuit for controlling operations of

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to the memory unit, claim 1) the recorder

A. Support for claim construction

Keyboard (claims 1, 2, 8, and 14): Dr. Hemami testifies that one of ordinary skill

in the art would interpret this term to mean "the buttons or keys used to control the

device." She notes that these keys can be either located on the recorder or on a

remote control. The specification discloses in Fig. 1 that the keys used to control

the device (e.g., record and play) are on the device itself. In Figs. 3 and 4, these

keys are disclosed as being on a remote control. One of ordinary skill would

therefore understand that the term keyboard was intended to cover both

embodimentswhen the keys are on the device itself and when the keys are on a

remote controland that the use of this term in the specification is not necessarily

inconsistent with the ordinary meaning of the term. At 6:7-12 and 6:66-67, the

444 Patent supports this construction and clarifies that keyboard refers to the

keys on the remote control. Ex. 1013, at 10-12.

Moreover, the doctrine of claim differentiation dictates this result. Claim 1

recites a keyboard and a control circuit coupled responsively to said keyboard

and claim 2, which depends from claim 1, adds a remote control and recites

wherein said keyboard is housed in said remote control. Thus, the term

keyboard as used in the claims must be broad enough to cover keys that are on

the device as well as keys that are on a remote control. Additionally, and for the

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same reason, the recitation a control circuit coupled responsively to said

keyboard would be understood by one of ordinary skill in the art to cover both a

local direct coupling as well as a remote coupling. Ex. 1013, at 12.

Means for powering the apparatus (claim 1): This element is a means-plus-

function element. The function is powering the apparatus. The structure that

performs this function in the patent is batteries for the remote control and AC

power for the recorder itself, as stated at 6:19-24: "It should be noted that the

power source contemplated for remote control unit 46 is batteries, as opposed to

AC power source contemplated for recorder 10. . . ." Dr, Hemami notes that the

444 Patent discloses no other structure for this function. Ex. 1013, at 13.

The 444 Patent does not specifically provide details of the way in which

batteries are used for the remote and the way in which AC power is used for the

device. Dr. Hemami therefore concludes that the way is merely using some sort of

battery power source for the remote and an AC power source for the device itself.

The specification provides no more details that allows her to perform a more

detailed analysis. The result of the means for powering limitation is that the

apparatus receives power so that it is rendered operational. Ex. 1013, at 14.

Key means for enabling user control of the rate or sequence or both of

transfer of program information from said memory unit to the user's display

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device (claim 8): This element is also a means-plus-function claim element. The

function is enabling user control of the rate or sequence or both of transfer of

program information from said memory unit to the user's display device. The

structure that corresponds to this function is the fast forward, reverse, pause, and

frame advance buttons (or "keys") on the remote control. In fact, when referring to

these buttons on the remote control, the 444 Patent states:

The enhanced remote control has additional function keys intended

for use during time delay playback by recorder 10, as described above

and initiated by user actuation of playback key 20. These additional

function keys include fast forward 52 and reverse 54, pause 56, and

frame advance 58. Control circuit 14 is adapted to respond to user

actuation of these keys by controlling the rate and sequence with

which stored information retrieved from memory unit 12 is transferred

to outputs 24 for display. Ex. 1001, at 6:28-41(emphasis added).

Figure 5 shows 6 keys, labeled "rec," "play," "ff," "rev," "pause," "f.adv", and

"terminate." The specific keys that correspond to controlling the rate or sequence

would be understood by one of ordinary skill in the art to be "ff," "rev," pause

and "f.adv." These buttons correspond to their expected functionality from a VCR,

as stated in the patent at 6:36-40. Ex. 1013, at 15; see also Ex. 1001, at 6:24-56.

The way this structure (the "ff," "rev," pause and "f.adv." keys) works is

just like their conventional VCR counterpart and as each keys name implies: ff

22

fast forward; rev reverse; pause pause playback; and f.adv. advance one

frame at a time. The result of this means-plus-function element is the manipulation

of playback speed. Ex. 1013, at 16.

Frame advance key (claim 10): Claim 10 further defines the key means to

include a frame advance key for advancing the transfer of program information to

the user's display device at a rate sufficiently slowly so that a user may review the

content of the program information transferred from said memory unit on a frame

by frame basis. Ex. 1001, at 9:28-33. One of ordinary skill in the art would

recognize that this term means a button that, when activated, performs frame-by-

frame playback. This is consistent with the specification which describes a

button that enables users to review the content of a program on a frame-by-frame

basis, called the "f.adv" button (or "key") on a remote control. Ex. 1013, at 17;

1001, at 6:24-56.

Timer circuit (claim 13): This term does not appear in the specification, only

claim 13. A person of ordinary skill in the art would understand this term to mean

a circuit for implementing a timer function. The 444 Patent at 7:10-24 refers to

a timer consistent with this definition, although it does not specifically refer to a

timer circuit. One of ordinary skill would also understand that such a circuit can

be fully specified by its functionality and that the term circuit is very broad and

can encompass discrete electronic components, a microprocessor or other

23

programmable chip or chipset implementing an algorithm, a custom or semi-

custom integrated circuit, combinations of the above hardware, or other electronic

means of implementing a control algorithm. Ex. 1013, at 18.

Control circuit (coupled responsively to the keyboard) (claim 1) (coupled also

to the memory unit, claim 1): A person of ordinary skill would understand the

control circuit to mean a circuit for controlling operations of the recorder. The

operations of the recorder, for example, include play, record, reverse, etc., as

indicated by the user control through the keyboard. One of ordinary skill would

also understand that such a circuit can be fully specified by its operation or

functionality (i.e., by the control algorithm that it implements) and that the term

circuit is very broad, as stated above. The existence of such a control circuit is

required in order for the device to operate, and as such, a control circuit, whether it

is expressly disclosed in a reference or not, is necessarily present and inherent.

The control circuit implements an algorithm, and as such, specification of an

algorithm is sufficient for one of ordinary skill in the art to understand that such a

control circuit must exist in order to execute the algorithm. While the '444 Patent

discusses the operation of the control circuit extensively (e.g., 3:54-67; 4:53-58;

5:5-36), no actual hardware comprising the circuit or in fact anything other than

the box labeled "control" in the figures (Figs. 7-9) is disclosed, which supports the

24

conclusions in this paragraph. As stated above, the coupled responsively to said

keyboard includes both a direct coupling or remote coupling. Ex. 1013, at 19.

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

A. The Prior Art Discloses Each Claimed Feature and One of Ordinary

Skill Would be Led to Form This Combination

Ulmer in view of Goldwasser render claims 1, 2, 7, 8, 10, 13, and 14 obvious

and there is a strong motivation for combining these references.

Ulmer describes a "Device for simultaneous recording and playback of

television images" which allows users to perform VCR-like functions on television

signals such as record, pause, play, and rewind. Ulmer's device includes a remote

control by which a user can control the device. The device has a reading

mechanism and a recording mechanism described as "being separate and

independent, capable of operating simultaneously" and therefore allows the user to

skip commercials. Ulmer explicitly describes user control of the device as starting

recording, waiting some amount of time, and then starting playback. Ex. 1002, at

1-2 and 81; Ex. 1013, at 40.

1These page numbers refer to the page numbers of the English translation part of

Ex. 1002.

25

Goldwasser describes a "Variable-delay video recorder" which effectively

implements a digital VCR providing simultaneous recording and playback. Under

the control of a user, an input video signal is converted from analog to digital,

compressed, and written into a random-access memory which allows simultaneous

read and write. Playback occurs by retrieving the compressed digital video,

decompressing it, and converting it back to an analog signal for display.

Goldwasser discloses that the viewer can begin watching a recording before it

completes; that a viewer can pause playback of a program as it is being recorded to

take a phone call and then resume viewing after a delay which is the length of the

phone call; and that a viewer can fast-forward through commercials and catch up to

the live broadcast. Ex. 1013, at 41;Ex. 1003, at Abstract; 1:55-3:38; 6:22-58;

Fig. 3.

1. Reasons to Combine Ulmer and Goldwasser

As an initial matter, one of ordinary skill in the art would be motivated to

combine Ulmer and Goldwasser because they both address the same problem:

providing simultaneous recording and playback as a mechanism to allow a viewer

to skip commercials. Such a person would readily recognize that the

implementation details of Ulmer's and Goldwasser's apparatus overlap

significantly, and that Goldwasser's functional block diagram provided in figure 3

could be used to implement Ulmer's described apparatus and control circuit. In

26

other words, one of ordinary skill in the art would recognize the great similarity

between Ulmer and Goldwasser and would be led to use some of Goldwassers

design details during implementation, as Dr. Hemami does. Given the very close

relationship between Ulmer and Goldwasser, one of ordinary skill would be

motivated to combine features of Goldwasser with Ulmer and look to various

design details of Goldwasser when implementing the Ulmer/Goldwasser

combination. Ex. 1013, at 50.

Ulmer and Goldwasser each individually teaches many of the claimed

features and are very similar. Both Ulmer and Goldwasser teach a device for

simultaneous recording and playback of video (claim 1 generally), using a random

access memory for storing the video comprising semiconductor memory, magnetic

memory, or optical memory (claims 6 and 7). Both Ulmer and Goldwasser teach

an input coupled to the memory and the memory coupled to the output, allowing

recording to and playback from the memory (claims 1(e)2 and 1(f)). Both Ulmer

and Goldwasser teach user control of the device, and that the delay between the

recording and the playback is controlled by the user and is variable (claim 1(f)).

Both Ulmer and Goldwasser teach a control circuit coupled to the memory unit

2Petitioner has lettered each element of the independent claims for ease of

reference, and this convention is followed in the below claim chart.

27

(claim 1(d)). Both Ulmer and Goldwasser teach that the user can control the rate

and sequence of the video during playback (claim 8). Ex. 1013, at 51.

Ulmer teaches a remote control coupled to the control circuit (claim 1(c);

Ulmer's keyboard would be understood by one of ordinary skill in the art as being

necessarily present). Ulmer teaches "one-button playback" - that after recording

has been started, playback can be initiated with the press of a single button (claim

1(f)). Ulmer teaches that the playback can be frame-by-frame (claim 10). Ex.

1013, at 52.

Goldwasser teaches a timer circuit so that the device can be preprogrammed

(claim 13). One of ordinary skill in the art would combine Goldwassers timer

circuit with Ulmer to provide the benefit of delayed recording. This was a

common and important feature of VCRs in 1992, and users would simply demand

such functionality if it were not already provided. Ex. 1013, at 53.

Ulmer's one-button playback and remote control would be seen as desirable

improvements over Goldwasser's system, leading one of ordinary skill to focus on

the Ulmer teachings as supplemented in various respects by Goldwasser. For

example, one of ordinary skill would readily recognize Goldwasser's timer circuit

as being a desirable enhancement to Ulmer's system. Ex. 1013, at 54.

2. The Combination of Ulmer and Goldwasser Disclose the Claimed Keyboard

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Remote controls in 1992 necessarily had buttons, or a "keyboard" as used in

the specification. The buttons serve as the user interface for the remote controls.

A person of ordinary skill would understand that buttons would be necessarily

present on a remote control, such as Ulmers. As such, the '444 Patent's keyboard

is necessarily present in the Ulmer/Goldwasser combination. Ex. 1013, at 59.

Additionally, Remote control functions for VCR-like operation were well

known and acknowledged by the '444 Patent (Ex. 1001, at 6:37-41). Ulmer

specifically teaches such functionality as is recited in Claims 8 and 10 (fast

forward, reverse, pause, frame-by-frame playback). Ex. 1002, at 3(the copy of

the television images can be made in one of the following modes: normal forward

speed, accelerated forward speed, slow forward speed, normal reverse speed,

accelerated reverse speed, slow reverse speed, freezing on image, image by image

forward, image by image in reverse). Ulmer also teaches that the user controls

the device through a remote control. Ex. 1002, at 1(it is he or she who controls

the device of the invention, for example with a remote). A person of ordinary

skill would therefore understand that Ulmer's remote control necessarily would

have keys for providing these functions. Ex. 1013, at 60.

Moreover, Goldwasser teaches a user control panel by which a user can

control the apparatus. A person of ordinary skill in the art would readily

understand that the user control panel could be a remote control and that the

29

connection between the user control panel and the control circuit need not be

physical. Ex. 1013, at 58.

3. Ulmer Necessarily Discloses the Control Circuit of the Claims

A person of ordinary skill would understand that such a control circuit is not

a novel feature of the 444 Patent, but is a requirement for any remote-

controlled/keyboard-controlled device, as the receipt of the command at the player

itself is not sufficient to control the device; the received command needs to be

passed on to the electronics that control the device itself, e.g., executing commands

that result in the actual execution of play, fast forwarding, etc. Rather, the

command "receiver" at the device would decode the received signal and then pass

on the requested command to a device controller. Ex. 1013, at 61.

Ulmer's remote control allows user control of the device. As explained

supra at VI(A), a control circuit is required for the operation of the device to

execute the commands from the remote control. Therefore, the control circuit is

coupled responsively to the keyboard and one of ordinary skill would understand

that it is inherently present in Ulmer. Ex. 1013, at 62.

4. Ulmer Discloses Simultaneous Recording and Playback

Ulmer discloses simultaneous recording and playback:

A device for recording television images and reproducing them after

playback, characterized in that it uses a recording medium of the

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direct-access memory type; in that it includes a playback mechanism

and a recorder mechanism, wherein the playback mechanism and the

recorder mechanism are separate and independent, can operate

simultaneously and can be placed and displaced independently of one

another on the recording medium . . . Ex. 1002, at 8 (emphasis

added).

Ulmer teaches a "double-gate linear memory of semiconductor or other

type." Ulmer's document is a translation and one of ordinary skill in the art would

immediately recognize that "double gate" refers to "dual port" because of not only

the similarities of the words but also the context, in that this memory is described

as "permitting simultaneous write and read access." Such memory was well

known at the time of the '444 filing. Because this operation is fully supported by

the memory, further explanation of the memory's functionality is not necessary.

Ex. 1013, at 64.

Ulmer provides a detailed explanation of the control circuit, explaining how

it accesses the memory to provide the various VCR-like functions of recording,

playback, reverse playback, fast forward or fast reverse, slow forward or slow

reverse, freeze frame, and single frame advance or reverse. Ex. 1002, at 4-5.

Ulmer provides an example of the control circuit in providing simultaneous

recording and playback: "For reading, the RAR is initialized...to the value of the

RAR minus 1, if it is wished to reproduce what is in the course of being recorded."

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Ex. 1002, at 4. In other words, Ulmer teaches that for immediate playback of the

current recording, the immediately-previously recorded information is immediately

read out. Ex. 1013, at 65.

5. Ulmer Discloses "One Button Playback": Ulmer Discloses Playback with Sole Actuation of the Playback Key, and With an Interval of Time Delay Being the Same as the Time Elapsed Between the Actuation of the Record Key and the Actuation of the Playback Key

Ulmer describes the operation of the device as under user control and

performing the operations of recording, and then playback from the beginning of

the recording following a user-selected time interval. Ex. 1013, at 66; Ex. 1003,

at 1.

Ulmer states that the user controls the device of the invention with a remote

control. Ex. 1002, at 1. A person of ordinary skill would understand that the

operations described in the remainder of the invention would all be performed only

following the issuance of a command by a user, which would be executed through

using keys on the remote control. Ex. 1013, at 67.

Ulmer describes the operation of the device with a simple 5-step operation:

- recording a television broadcast on the recording medium; - waiting for a time T that corresponds almost to the duration of all of the advertising breaks that it is wished to eliminate from the broadcast that it is desired to watch; - starting playback of the recording medium in order to

32

reproduce the recorded images on a television screen; - at the beginning of each advertising break, reproducing the

images by playback at acclerated speed so that the end of the advertising break can be identified;

- at the end of the advertising break, reproducing the recorded images at normal speed. Ex. 1002, at 2 (emphasis added).

Of relevance to the "one-button playback" feature with the interval of time

delay are the first 3 steps. "Recording a television broadcast" would be understood

by one of ordinary skill in the art as the user initiating recording by pressing a

record key on the remote control. Waiting for a time T, which is user-controlled,

provides the delay between the initiation of the recording and the next step. The

next step is starting playback, which would be understood by one of skill in the art

to consist of depressing the playback key only. As Ulmer teaches that the

recording and playback occur simultaneously, one of ordinary skill would

understand that it was wholly unnecessary to issue any command other than

"playback" in order to commence playback. See Ex. 1002, at Title (Device for

Simultaneous Recording and Playback of Television Images). Because the device

supports simultaneous recording and playback, one of ordinary skill in the art

would recognize that there is no need to stop, pause, or otherwise disturb the

recording operation simply because playback is desired. Ex. 1013, at 68-69

6. One-Button Playback Would Necessarily Be Supported By the Control Circuit

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Ulmer provides an extensive description of the control circuit. Given the

discussion at VI(A) and VII(A)(3-5), it would be readily apparent to one of

ordinary skill that one-button playback (and all other functionality) would

necessarily be supported by and provided by a control circuit. In other words, a

control circuit that implemented the one-button playback as well as all other

functionality of the device would be inherently present in Ulmer. Ex. 1013, at 70.

7. Claim 1s Means for Powering Is Necessarily Present in Ulmer and Goldwasser

One of ordinary skill would understand that the means for powering

limitation is inherently present in both Ulmer and Goldwasser. First, both Ulmer

and Goldwasswer are consumer electronic devices and are designed to be plugged

into a wall outlet in the users home, which is AC. Also, one of ordinary skill in

the art would understand that Ulmers remote control is powered by batteries

because, in the 1992 time frame, virtually all remote controls were powered by

batteries. Thus, Ulmer and Goldwasser both necessarily provide the structure of

the means for powering element. Moreover, both Ulmer and Goldwasser

necessarily disclose the same way that the means for powering element is

performed because they necessarily use some battery power source (Ulmers

remote) and AC power source (Ulmers and Goldwassers recorder). Lastly, the

function is necessarily present because both Ulmers and Goldwassers apparatus

34

are powered, and the result of the means for powering element is also necessarily

present in both references because those devices are rendered operational. Ex.

1013, at 71.

Furthermore, during prosecution, the applicant conceded that the inclusion

of the means for powering element would be obvious to one of ordinary skill in

the art and the Patent Owner cannot now claim otherwise:

With regard to Satas failure to explicitly teach means for powering

the apparatus, applicant again concedes that it would be obvious to

include such, and that the inclusion thereof is implied. Ex. 1012, at 2.

8. Ulmer Discloses Claim 8s Key Means

Ulmer discloses this limitation because Ulmer discloses a remote control

with the same keys as those that serve as the structure for this limitation (i.e., fast

forward, reverse, pause, and frame advance) and they operate in the same way:

- a method with which the copy of the television images can be made in one of the following modes: normal forward speed, accelerated forward speed, slow forward speed, normal reverse speed, accelerated reverse speed, slow reverse speed, freezing on image, image by image forward, image by image in reverse; Ex. 1002, at 3.

It is pointed out that it is the television viewer himself or herself who identifies the start and end of the advertising break that he or she wishes to eliminate, and that it is he or she who controls the device of the invention, for example with a remote. Ex. 1002, at 1.

One of ordinary skill in the art would understand that these functions are inherently

35

provided by keys on the remote control. See supra VII(A)(2). Such keys perform

the same function as the key means limitation because they enable the user to

control the rate or sequence or both of transfer of program information from the

memory unit to the displayin other words, the user can control the rate of

playback. Also, the result is the same in that the playback speed is manipulated.

Ex. 1013, at 73.

B. Claim Chart and Analysis Demonstrating How the Proposed Combination Renders Obvious Claims 1, 2, 7, 8, 10, 13, and 14

The following claim chart and analysis demonstrates, on a limitation-by-

limitation basis, how claims 1, 2, 7, 8, 10, 13, and 14 of the 444 Patent are

rendered obvious by Ulmer in view of Goldwasser. This claim chart is directly

supported by Dr. Hemamis declaration and includes her testimony. Ex. 1013, at

pp. 37-63. That is, Dr. Hemamis declaration provides a claim chart that

corresponds directly to the one below, claim-by-claim and element-by-element. Id.

US Patent 5,930,444

PCT Publication WO 89/12896 to Ulmer in view of US Patent 5,241,428 to Goldwasser

1. A recording and playback apparatus for the substantially immediate and seamless resumption of

Ulmer provides a recording and playback apparatus for audio or video signals. Ulmer teaches that the input is a television signal:

To this end, the present invention relates to a method for recording and reproducing television images and for eliminating the advertising breaks and other sequences from a television broadcast, characterized in that it

36

interrupted perception of program information based upon audio or video signals, or both, without missing the program information presented during the interruption, comprising:

includes the following steps: (Ex. 1002, at 2) Goldwasser provides a recording and playback apparatus for audio or video signals. Goldwasser teaches that the input is a broadcast program, which a person of ordinary skill would understand to be a television program with audio and video. Goldwasser later abbreviates this by using the term "video" alone which a person of ordinary skill would understand to include the associated audio.

A user can arrange to start recording a broadcast program (while the user is not at home, for example) in the conventional way via stored instructions, and then begin watching the recording several minutes or hours later, before the program is over, without stopping the recording. (Ex. 1003, at Abstract) In the broadcast industry, audio and video recording and playback machines have been used to delay live broadcasts by several seconds to permit deletion of inappropriate language or gestures. These machines provide a fixed delay between the recording and playback of a given section of audio and/or video. (Ex. 1003, at 1:13-18) A principal object of the present invention is to provide an improved video recorder and playback device that can be used to record and playback video material independently, for example, so as to allow the viewer to pause the playback for a variable period of time without interrupting the recording. (Ex. 1003, at 1:55-60)

Goldwasser provides for the substantially immediate and seamless resumption of interrupted perception of program information without missing the program information presented during the interruption:

Similarly, often one will be watching a particular program when one must temporarily cease watching it, for example, to take a telephone call or the lake. It would obviously be convenient to be able to record the program from that point forward, complete the telephone call, and simply watch the remainder delayed

37

by the length of time of the interruption. (Ex. 1003, at 1:43-49) A principal object of the present invention is to provide an improved video recorder and playback device that can be used to record and playback video material independently, for example, so as to allow the viewer to pause the playback for a variable period of time without interrupting the recording. (Ex. 1003, at 1:55-60)

(a) means for powering the apparatus;

Both Ulmer's and Goldwasser's devices are electronic and a means for powering the apparatus would be necessarily present. See supra, at VII(A)(7); Ex. 1013, at 71-72.

(b) a keyboard having a record key and a playback key;

Ulmer discloses a keyboard having a record key and a playback key. Ulmer discloses a remote control and teaches that the user controls the device of the invention using the remote control, and also teaches that the user can record and the user can playback. The remote control therefore necessarily has record and playback keys. The user controls the device:

It is pointed out that it is the television viewer himself or herself who identifies the start and end of the advertising break that he or she wishes to eliminate, and that it is he or she who controls the device of the invention, for example with a remote. (Ex. 1002, at 1)

The operations of the device are recording and playback: To this end, the present invention relates to a method for recording and reproducing television images and for eliminating the advertising breaks and other sequences from a television broadcast, characterized in that it includes the following steps: - recording a television broadcast on the recording medium; - waiting for a time T that corresponds almost to the duration of all of the advertising breaks that it is wished to eliminate from the broadcast that it is desired to watch;

38

- starting playback of the recording medium in order to reproduce the recorded images on a television screen; (Ex. 1002, at 2) Device for simultaneous recording and playback of television images. (Ex. 1002, at title)

Goldwasser teaches a user control panel which allows the user to execute commands. A person of ordinary skill would understand that the keys on the control panel could be used on a remote control.

User control panel 50 in Figure 3, 6:44-58: "The locations at which the digitized video samples are stored in the random access memory 53 are controlled by an address controller 58, which in turn is responsive to commands received from a user control panel 50."

[C]ontrol means further comprises means responsive to user commands for determining the sequence and rate of retrieval of the stored digital samples . . . (Ex. 1003, at 10:64-68)

At 7:54-58, Goldwasser describes user commands: The system's response to user commands would be much faster than experienced with conventional video recorders. "Fast forwarding", for example, would be accomplished simply by jumping ahead in the list of addresses.

(c) a control circuit coupled responsively to said keyboard;

See supra at VI(A) and VII(A)(3-6); see also Ex. 1013, at 19, 61-62, and 70. Ulmer discloses a control circuit coupled responsively to said keyboard. Ulmer's remote control allows user control of the device. As explained above, a control circuit is required for the operation of the device, to execute the commands from the remote control. The user can control both recording and playback. Therefore, the control circuit is coupled responsively to the keyboard. The operation of the control circuit and control of the

39

record/playback as well as enhanced features (fast forward, reverse, pause, frame-by-frame playback) are described in detail at pages 4-5:

The direct-access memory of the recording medium comprises a double-gate linear memory of semiconductor or other type, permitting simultaneous write and read access. It has a large number of memory cells, wherein each cell may contain a television image (and the associated audio signals), formatted in appropriate manner. Each cell is accessed via its address contained in the Write Address Register (WAR) for the recorder mechanism and in the Read Address Register (RAR) for the playback mechanism. Intermediate buffer memories are used for formatting, synchronization and speed matching. The functioning of such a device is described hereinafter: For recording, the WAR is initialized: - to zero if the memory is to be used from its beginning, - to the value that it had at the end of the last recording, if it is wished to record following the previous recording, - to the current value of the RAR, if it is wished to record following the last image that was read, or - to any other value making it possible to achieve a useful function. Recording includes the following steps: - as soon as a video image (with the associated audio signals) is received by the receiver of the television set, it is stored after any necessary formatting in the memory cell indicated by the WAR; - then "1" is added to the value of the WAR, so that the next video image will be written in the next memory cell. For reading, the RAR is initialized: - to zero if image reproduction is to start at the

40

beginning of the memory; - to the value that it had at the end of the last playback, if it is wished to reproduce following the last image that was read, - to the value of the RAR minus 1, if it is wished to reproduce what is in the course of being recorded, or - to any other value making it possible to achieve a useful function. Playback includes the following steps: - the video image (with the associated audio signals) indicated by the RAR is read in order to store it in the buffer memories; - then, after any necessary formatting, the image is transmitted to the screen of the television set for reproduction, at the rate of F video images per second; - then "1" is added to the value of the RAR so that the next video image will be read from the next memory cell. To read at normal reverse speed, the procedure for forward playback is followed, except that "1" is subtracted from instead of added to the value of the RAR, in order that the next video image will be read from the previous memory cell. To read forward or in reverse at speed accelerated N times, the procedure for reading at normal speed is followed, except that "N" instead of "1" is respectively added to/subtracted from the value of the RAR, so that the next video image will be read from the Nth memory cell following/preceding the cell that has just been read. To read forward or in reverse at speed decelerated N times, the procedure for reading at normal speed is followed, except that the video image is transmitted N times to the television set for reproduction before "1" is respectively added to/subtracted from the value of the RAR, so that the same video image will be reproduced N times before the next is reached. To reproduce an image by freezing, the same video

41

image identified by the current value of the RAR is transmitted continuously. To reproduce image by image in forward or reverse, the same video image identified by the current value of the RAR is transmitted continuously and on demand "1" is respectively added to/subtracted from the value of the RAR, in order to reproduce the next or previous image. To advance the recorder mechanism or the playback mechanism rapidly forward or in reverse, N is added to/subtracted from the WAR or RAR respectively, where N is the number of video images that it is wished to skip in order to resume recording or playing back at N video images farther on.

Goldwasser teaches a control circuit coupled to the user control panel 50 which is address control 58. (Ex. 1003, at Fig. 3)

(d) a memory unit coupled responsively to said control circuit, said memory unit having a medium for storage of information, said storage medium having structure which enables substantially random access to information stored in said medium for retrieval of the stored information from said storage medium;

Ulmer's device has a memory unit having a storage medium for information, said storage medium having structure which enables substantially random access to information stored in said medium for retrieval of the stored information from said storage medium. Ulmer's device has random access memory unit:

The present invention also relates to a device for recording television images and reproducing them after playback, characterized in that it uses a recording medium of the direct-access memory type and that it includes a playback mechanism and a recorder mechanism, wherein the playback mechanism and the recorder mechanism are separate and independent, can operate simultaneously and can be placed and displaced independently of one another on the recording medium, and in that it includes buffer memories for synchronization and speed matching. (Ex. 1002, at 3) The direct-access memory of the recording medium comprises a double-gate linear memory of

42

semiconductor or other type, permitting simultaneous write and read access. (Ex. 1002, at 4) Other embodiments of the device according to the invention consist in replacing the linear memory as recording medium with a direct-access rotating memory, such as a bubble memory, a magnetic disk, an optical disk, an opto-magnetic disk or any other technology. (Ex. 1002, at 6) 5) A device for recording television images and reproducing them after playback, characterized in that it uses a recording medium of the direct-access memory type; in that it includes a playback mechanism and a recorder mechanism, wherein the playback mechanism and the recorder mechanism are separate and independent, can operate simultaneously and can be placed and displaced independently of one another on the recording medium; and in that it includes buffer memories for synchronization and speed matching. (Ex. 1002, at 8)

Ulmer teaches that the memory unit is coupled to the control circuit by describing control of the memory unit at pages 4-5:

The direct-access memory of the recording medium comprises a double-gate linear memory of semiconductor or other type, permitting simultaneous write and read access. It has a large number of memory cells, wherein each cell may contain a television image (and the associated audio signals), formatted in appropriate manner. Each cell is accessed via its address contained in the Write Address Register (WAR) for the recorder mechanism and in the Read Address Register (RAR) for the playback mechanism. Intermediate buffer memories are used for formatting, synchronization and speed matching. The functioning of such a device is described hereinafter: For recording, the WAR is initialized:

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- to zero if the memory is to be used from its beginning, - to the value that it had at the end of the last recording, if it is wished to record following the previous recording, - to the current value of the RAR, if it is wished to record following the last image that was read, or - to any other value making it possible to achieve a useful function. Recording includes the following steps: - as soon as a video image (with the associated audio signals) is received by the receiver of the television set, it is stored after any necessary formatting in the memory cell indicated by the WAR; - then "1" is added to the value of the WAR, so that the next video image will be written in the next memory cell. For reading, the RAR is initialized: - to zero if image reproduction is to start at the beginning of the memory; - to the value that it had at the end of the last playback, if it is wished to reproduce following the last image that was read, - to the value of the RAR minus 1, if it is wished to reproduce what is in the course of being recorded, or - to any other value making it possible to achieve a useful function. Playback includes the following steps: - the video image (with the associated audio signals) indicated by the RAR is read in order to store it in the buffer memories; - then, after any necessary formatting, the image is transmitted to the screen of the television set for reproduction, at the rate of F video images per second; - then "1" is added to the value of the RAR so that the next video image will be read from the next memory cell.

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To read at normal reverse speed, the procedure for forward playback is followed, except that "1" is subtracted from instead of added to the value of the RAR, in order that the next video image will be read from the previous memory cell. To read forward or in reverse at speed accelerated N times, the procedure for reading at normal speed is followed, except that "N" instead of "1" is respectively added to/subtracted from the value of the RAR, so that the next video image will be read from the Nth memory cell following/preceding the cell that has just been read. To read forward or in reverse at speed decelerated N times, the procedure for reading at normal speed is followed, except that the video image is transmitted N times to the television set for reproduction before "1" is respectively added to/subtracted from the value of the RAR, so that the same video image will be reproduced N times before the next is reached. To reproduce an image by freezing, the same video image identified by the current value of the RAR is transmitted continuously. To reproduce image by image in forward or reverse, the same video image identified by the current value of the RAR is transmitted continuously and on demand "1" is respectively added to/subtracted from the value of the RAR, in order to reproduce the next or previous image. To advance the recorder mechanism or the playback mechanism rapidly forward or in reverse, N is added to/subtracted from the WAR or RAR respectively, where N is the number of video images that it is wished to skip in order to resume recording or playing back at N video images farther on.

Goldwasser's device has a memory unit having a storage medium for information, said storage medium having structure which enables substantially random access to information stored in said medium for retrieval of the

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stored information from said storage medium. Goldwasser clearly indicates that a random access memory unit (RAM 53) is coupled the memory unit is coupled to the control circuit (address control 58) in Figure 3.

(e) at least one input, said input being connected to a user's audio/video program signal source and also being coupled to said memory unit so as to enable program information presented by the signal source to be transferred to and stored in said memory unit; and

Ulmer teaches at least one input, and that the input is an audio/video program signal. Ulmer teaches that the input is a television signal:

To this end, the present invention relates to a method for recording and reproducing television images and for eliminating the advertising breaks and other sequences from a television broadcast, characterized in that it includes the following steps: - recording a television broadcast on the recording medium; (Ex. 1002, at 2)

Ulmer teaches that the input connected to a user's audio/video program signal is also coupled to the memory unit so as to enable program information presented by the signal source to be transferred to and stored in said memory unit:

Recording includes the following steps: - as soon as a video image (with the associated audio signals) is received by the receiver of the television set, it is stored after any necessary formatting in the memory cell indicated by the WAR; (Ex. 1002, at 4)

Goldwasser teaches at least one input, and that the input is an audio/video program signal. Goldwasser teaches that the input is a broadcast program, which a person of ordinary skill would understand to be a television program with audio and video. Goldwasser later abbreviates this by using the term "video" alone which a person of ordinary skill would understand to include the associated audio.

A user can arrange to start recording a broadcast program (while the user is not at home, for example) in the conventional way via stored instructions, and then begin watching the recording several minutes or hours later, before the program is over, without stopping the

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recording. (Ex. 1003, at Abstract) In the broadcast industry, audio and video recording and playback machines have been used to delay live broadcasts by several seconds to permit deletion of inappropriate language or gestures. These machines provide a fixed delay between the recording and playback of a given section of audio and/or video. (Ex. 1003, at 1:13-18) A principal object of the present invention is to provide an improved video recorder and playback device that can be used to record and playback video material independently, for example, so as to allow the viewer to pause the playback for a variable period of time without interrupting the recording. (Ex. 1003, at 1:55-60)

Goldwasser teaches that the input connected to a user's audio/video program signal is also coupled to the memory unit so as to enable program information presented by the signal source to be transferred to and stored in said memory unit:

In this embodiment, the recording device (FIG. 3) includes a signal sampling circuit 51 and an analog-to digital converter 52 which together create digital samples of the video signal being recorded, which are stored in a random access memory 53. Ex. 1003, at 6:25-29; see also Fig. 3.

Goldwasser Figure 3 shows the video signal in (source) going into 51 signal sample (input) which is connected to a memory unit through a data compressor 57, which is the same as Figure 2 in the 444 Patent.

(f) at least one output, said output being connected to a user's audio or video display device or both, said output further being connected to

See supra at VII(A)(4-6); see also Ex. 1013, at 61-70. Ulmer teaches at least one output, said output being connected to a user's audio/video display or both. Ulmer teaches that the output of the device is connected to a user's audio/video display:

- starting playback of the recording medium in order to reproduce the recorded images on a television screen;

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said memory unit so as to enable the transfer of program information from said memory unit to the user's display device, said control circuit being configured so that substantially simultaneous recording and playback of program information is achieved when said record key is first actuated to begin a recording by initiating storage of the broadcast program information in said memory unit, and said playback key is subsequently and solely actuated to begin time delay playback of the recording from the beginning thereof by initiating retrieval of the stored program information in said memory unit, with the interval of the time delay being the same as the

(Ex. 1002, at 2) Ulmer teaches that the output is further connected to said memory unit so as to enable the transfer of program information from said memory unit to the user's display device. And, Ulmer teaches that the output of the device is connected to the user's display and to the memory unit and that the contents of the memory unit are output on the display:

Playback includes the following steps: - the video image (with the associated audio signals) indicated by the RAR is read in order to store it in the buffer memories; - then, after any necessary formatting, the image is transmitted to the screen of the television set for reproduction, at the rate of F video images per second; - then "1" is added to the value of the RAR so that the next video image will be read from the next memory cell. (Ex. 1002, at 4-5)

Ulmer teaches simultaneous recording and playback: The present invention also relates to a device for recording television images and reproducing them after playback, characterized in that it uses a recording medium of the direct-access memory type and that it includes a playback mechanism and a recorder mechanism, wherein the playback mechanism and the recorder mechanism are separate and independent, can operate simultaneously and can be placed and displaced independently of one another on the recording medium, and in that it includes buffer memories for synchronization and speed matching. (Ex. 1002, at 3)(emphasis added)

The direct-access memory of the recording medium comprises a double-gate linear memory of semiconductor or other type, permitting simultaneous write and read access. (Ex. 1002, at 4)

5) A device for recording television images and

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time elapsed between the actuation of said record key and the subsequent actuation of said playback key.

reproducing them after playback, characterized in that it uses a recording medium of the direct-access memory type; in that it includes a playback mechanism and a recorder mechanism, wherein the playback mechanism and the recorder mechanism are separate and independent, can operate simultaneously and can be placed and displaced independently of one another on the recording medium; and in that it includes buffer memories for synchronization and speed matching. (Ex. 1002, at 8)

Ulmer teaches that said control circuit being configured so that substantially simultaneous recording and playback of program information is achieved when said record key is first actuated to begin a recording by initiating storage of the broadcast program information in said memory unit. Ulmer clearly indicates that operation comprises two interactions with the remote control, with a "waiting" period of a length of time selectable by the user in between, and that it is the user that controls the device (and hence the recording, waiting, and playback):

To this end, the present invention relates to a method for recording and reproducing television images and for eliminating the advertising breaks and other sequences from a television broadcast, characterized in that it includes the following steps: - recording a television broadcast on the recording medium; - waiting for a time T that corresponds almost to the duration of all of the advertising breaks that it is wished to eliminate from the broadcast that it is desired to watch; - starting playback of the recording medium in order to reproduce the recorded images on a television screen; (Ex. 1002, at 2)(emphasis added)

Ulmer teaches that, and said playback key is subsequently and solely actuated to begin time delay playback of the

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recording from the beginning thereof by initiating retrieval of the stored program information in said memory unit. (See quote reproduced immediately above, Ex. 1002, at 2) Ulmer teaches that the interval of the time delay being the same as the time elapsed between the actuation of said record key and the subsequent actuation of said playback key. This interval is the time period T that the user waits prior to commencing playback:

To this end, the present invention relates to a method for recording and reproducing television images and for eliminating the advertising breaks and other sequences from a television broadcast, characterized in that it includes the following steps: - recording a television broadcast on the recording medium; - waiting for a time T that corresponds almost to the duration of all of the advertising breaks that it is wished to eliminate from the broadcast that it is desired to watch; - starting playback of the recording medium in order to reproduce the recorded images on a television screen; (Ex. 1002, at 2; see also Ex. 1002, at 1)

Goldwasser teaches that the output is connected to both the display and the memory: At 6:29-36, Goldwasser teaches:

Playback is accomplished by retrieving these stored samples from memory 53 and converting them back via a digital-to analog converter 54 to an analog video signal. The reconstituted analog video signal is supplied to a video signal generator 55 which outputs a conventional video signal which can be displayed on a standard TV display 56.

Goldwasser Figure 3 shows the RAM connected to a

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decompressor whose output is displayed on a video display 56. Goldwasser teaches simultaneous recording and playback:

A video recorder and playback device allowing simultaneous recording and playback of program material, including means for controllably varying a time delay between the recording and playback of recorded material. This allows, for example, playback of previously recorded material to be temporarily stopped and then resumed without interrupting the recording of new material. (Ex. 1003, at Abstract)

These objects are achieved, according to the present invention, by recording video on a recording medium while simultaneously playing back previously recorded video from the medium, while allowing control of a variable time delay between recording and playback. (Ex. 1003, at 2:3-7)

Recording and playback may be done essentially simultaneously by multiplexing writing to and reading from the memory 53. (Ex. 1003, at 6:36-38)

Goldwasser teaches a user-controlled delay between recording and playback:

means for controlling operation of said means for storing and said means for playback such that said converted signal can be continuously stored on said storage medium during either continuous or intermittent reconstitution of the stored signal as a video signal, whereby a user can control a variable delay between the storage and playback of a particular portion of a given video signal. (Ex. 1003, at 9:51-58) A video recorder and playback device allowing simultaneous recording and playback of program material, including means for controllably varying a

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time delay between the recording and playback of recorded material. This allows, for example, playback of previously recorded material to be temporarily stopped and then resumed without interrupting the recording of new material. A user can arrange to start recording a broadcast program (while the user is not at home, for example) in the conventional way via stored instructions, and then begin watching the recording several minutes or hours later, before the program is over, without stopping the recording. The user can also interrupt the playback of a program that is being recorded as it is being watched (to take a telephone call, for example), and then resume playback of the program (after the phone call is over) without stopping the recording. The user