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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ARRIS INTERNATIONAL PLC, ARRIS GLOBAL LTD.,
`PACE AMERICAS, LLC,
`PACE AMERICAS HOLDINGS, INC.,
`& PACE AMERICAS INVESTMENTS, LLC,
`Petitioners,
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`v.
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`SONY CORPORATION,
`Patent Owner.
`____________
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`Case IPR2016-00835
`Patent 6,084,643
`____________
`
`Record of Oral Hearing
`Held: June 29, 2017
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`BEFORE: JENNIFER S. BISK, BART A. GERSTENBLITH,
`and CHARLES J. BOUDREAU, Administrative Patent Judges.
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`Case IPR2016-00835
`Patent 6,084,643
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
`BRETT SCHUMAN, ESQ.
`RACHEL M. WALSH, ESQ.
`Goodwin Procter LLP
`Three Embarcadero Center
`San Francisco, California 94111
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`ON BEHALF OF PATENT OWNER:
`SCOTT A. MCKEOWN, ESQ.
`LISA M. MANDRUSIAK, ESQ.
`Oblon, McClelland, Maier & Neustadt, L.L.P.
`1940 Duke Street
`Alexandria, Virginia 22314
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`The above-entitled matter came on for hearing on
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`Thursday, June 29, 2017, commencing at 11:16 a.m., at the U.S.
`Patent and Trademark Office, 600 Dulany Street, Alexandria,
`Virginia.
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`Case IPR2016-00835
`Patent 6,084,643
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`P R O C E E D I N G S
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`JUDGE BOUDREAU: This is the oral hearing in Case
`IPR2016-00835, captioned Arris International, PLC, Arris Global
`Ltd., Pace Americas, LLC, Pace Americas Holdings, Inc., and
`Pace Americas Investments, LLC, vs. Sony Corporation.
`Could we have counsel for each of the parties come up
`again and enter an appearance, and state your names for the
`record?
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`MS. WALSH: Rachel Walsh from Goodwin Procter on
`behalf of Petitioner Arris International, PLC, et al., and we have
`as lead counsel Jennifer Albert.
`JUDGE BOUDREAU: Thank you, Ms. Walsh.
`MR. MCKEOWN: Scott McKeown and Lisa
`Mandrusiak of the Oblon firm on behalf of Patent Owner, Sony
`Corporation.
`JUDGE BOUDREAU: Thank you, Mr. McKeown.
`Again, we set out the procedure for today's hearing in
`the trial order, which in this case was Paper 33. Petitioner and
`Patent Owner will each have 30 minutes to present arguments.
`Petitioner will go first and present its case regarding the
`challenged claims and may reserve time for rebuttal. Patent
`Owner will then respond to Petitioners' presentation.
`I believe Petitioner filed a motion to exclude evidence
`in this case. Is that correct?
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`MS. WALSH: No, we did not, Your Honor.
`JUDGE BOUDREAU: Not in this case, okay. Thank
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`you.
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`So just a reminder that any time that you refer to
`evidence or demonstratives, please call out the slide number,
`figure number, exhibit and page number for the record.
`And with that, we may proceed, Ms. Walsh.
`MS. WALSH: I have hard copies of the demonstratives
`if the Panel would like them.
`JUDGE BOUDREAU: Yes, please.
`MS. WALSH: May I approach?
`JUDGE BOUDREAU: Yes, please. Thank you.
`Before you begin, how much time would you like to
`reserve for rebuttal, if any?
`MS. WALSH: I would like to reserve ten minutes,
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`please.
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`With respect to this IPR, the Petitioners have shown that
`the references in the two instituted grounds, ground one with
`Wasilewski, Rosenberger, and Ishikawa, and ground two, with
`Wasilewski and Ejima, disclose each limitation of the challenged
`claims, claims 1 through and 4 of the '643 patent.
`At this point in this proceeding, the dispute has become
`very narrow because Sony disputes that only one claim limitation
`has not been met, the control means limitation.
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`Sony and the Board, in terms of claim construction,
`have contended that this limitation requires an algorithm
`disclosed in the specification --
`JUDGE BISK: So I have a question. Does Petitioner
`not agree with that construction?
`MS. WALSH: For purposes of the trial, Petitioners
`agree with that construction.
`JUDGE BISK: Okay.
`MS. WALSH: And Petitioners argue that they have
`shown that that limitation is met under the Board and Sony's
`interpretation as well, including the algorithm.
`By contrast, Sony does not present any evidence that the
`references don't meet this limitation. Of course, the burden is on
`Petitioner, but there are no -- essentially no factual disputes to
`resolve it. Sony only contends that it didn't have notice of the
`Petitioners' understanding of the claims and how the claims read
`on art and how the references read on the claims; however, this
`argument has been rejected twice by the Board, and the petition
`should be granted as to grounds 1 and 2, and the claims should be
`cancelled.
`By way of background, U.S. Patent Number 6,084,643,
`as shown here on slide 1, discloses a digital satellite receiver that
`allows a user to flip or to scroll or to quickly move through
`channels. Essentially, it's intended to solve a problem of channel
`lag, where it takes more time to actually tune in a channel than it
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`does to flip between them. It describes a process where the user
`can hold down a channel up or down key, and the display will flip
`through channel numbers, the channel numbers being what's
`displayed on the screen, for example, channel 702, 703, 704,
`while the actual channel selection or the program that is on each
`of those channels is not being displayed.
`So basically what happens is that all the channels in the
`interim are not tuned to. When the user releases his or her finger
`from the key, the channel selection or the program that
`corresponds to the channel number that was showing when the
`key was released is tuned; for example, the user proceeds to
`channel 720, where they wish to watch the Giants game, they let
`off the key, and the channel is tuned.
`And just by way of terminology, the '643 patent
`generally refers to channel numbers as what's displayed on the
`screen and channel selections as the actual programs, and I will
`attempt to be consistent with that terminology.
`Here on slide 2, claims 1 through 4 of the '643 patent
`are at issue, claim 1 being the only independent claim. All
`limitations, save one, are written in means-plus-function format,
`and as I've mentioned before, the dispute has essentially narrowed
`to the control means limitation because Sony does not dispute --
`JUDGE BISK: I have a question about that statement.
`MS. WALSH: Sure.
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`JUDGE BISK: Is that -- that "wherein" clause, is that
`part of the control means limitation or are you saying that's a
`whole separate limitation?
`MS. WALSH: As it is shown and as the paragraphs are
`broken out in the patent, which is Exhibit 1001, that is a separate
`paragraph, so I have treated that as a limitation, and we have
`done -- we have treated that as a different limitation in our
`briefing and analysis.
`JUDGE BISK: Okay.
`JUDGE BOUDREAU: Is there any dispute as to that
`"wherein" clause?
`MS. WALSH: There has not been any dispute as to that
`"wherein" clause. In terms of the Board's construction and the
`construction that was proposed by both parties, the function of the
`control means was basically limited to the portion that's before
`the "wherein" clause, so the function was --
`JUDGE BISK: But I think -- well, I think that the
`algorithm actually -- that we all pointed to, or at least Sony and
`the Board pointed to, talked about lifting up the finger, the user
`lifting up the finger, and that is only in the "wherein" clause. It's
`not actually in -- right?
`MS. WALSH: Is the -- is the process of the user lifting
`off the button --
`JUDGE BISK: Yeah.
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`MS. WALSH: That is correct, that it is -- well, so, I
`would -- I would submit that the "wherein" clause is talking about
`the channel numbers being switched without displaying the
`program selection itself.
`JUDGE BISK: Okay.
`MS. WALSH: I think that the control means is
`discussing about -- well, just to back up a little bit, the function of
`the control means corresponds to controlling the transmission
`signal receiving means to receive the transmission signal of a
`channel indicated by the channel number being displayed when
`the command received by the command receiving means is
`broken.
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`JUDGE BISK: Um-hum.
`MS. WALSH: The way the algorithm and the way the
`patent --
`JUDGE BISK: But the function doesn't include the
`"wherein" clause, then.
`MS. WALSH: No. The function does not include the
`"wherein" clause.
`JUDGE BISK: Okay.
`MS. WALSH: The function does talk about essentially
`tuning the channel when the command is broken, which when
`you're looking at the algorithm and when you're looking at the
`patent corresponds to when the user lets off the button and the IR
`signal is no longer sent from the --
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`JUDGE BISK: I see, okay. So you are saying that the
`difference is the "wherein" clause is talking more about what's
`displayed, doesn't really have anything to do with the finger.
`MS. WALSH: That is correct.
`JUDGE BISK: Okay.
`MS. WALSH: Yeah, the wherein clause is describing
`what's happening on screen or at the little LED that's in the corner
`of the screen.
`JUDGE BISK: Yes, okay.
`MS. WALSH: And then dependent claims 2 through 4
`are also at issue here. Those add certain limitations to
`independent claim 1, and none of those are in dispute as well.
`JUDGE BISK: Can we talk about claim 2?
`MS. WALSH: Sure.
`JUDGE BISK: So I'm wondering, what are you relying
`on for the -- in any of the prior art -- let's just go for the first
`ground first, for the order of magnitude limitation.
`MS. WALSH: So in terms of order of magnitude, we
`are -- we are relying on the fact that the references are disclosing
`running through the channels kind of in sequential order, order of
`magnitude, so 701, 702 --
`JUDGE BISK: So "order of magnitude" equals
`sequential?
`MS. WALSH: Yes, that is how we've interpreted it.
`JUDGE BISK: Okay.
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`JUDGE BOUDREAU: It doesn't mean exponential?
`MS. WALSH: I mean, I don't believe so, not in the
`context of cable channels. I don't think there's quite that many
`channels yet.
`JUDGE BISK: I notice, though, that in one of the --
`one of the grounds -- it might be the second one -- you note that
`the prior art goes from 1 to 10, channel 1 -- goes from channel 1
`to 10, and --
`MS. WALSH: Are you referring to ground 2,
`Wasilewski and Ejima?
`JUDGE BISK: Yeah.
`MS. WALSH: That is possible, and that is potentially
`another interpretation of order of magnitude, because that would
`be a base 10 sort of order of magnitude.
`JUDGE BISK: Right.
`MS. WALSH: Just based on the specification, it
`appears that that limitation is met just by running through in
`order.
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`JUDGE BISK: Okay.
`MS. WALSH: And previously the Board has instituted
`on two grounds, grounds 1 and 2, two of three of the grounds that
`are presented. First, obviousness in view of Wasilewski,
`Rosenberger, and Ishikawa, claims 1 through 4; and then
`obviousness in view of Wasilewski and Ejima, also on claims 1
`through 4.
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`And as mentioned before, there are many things that
`have essentially dropped out of this trial proceeding, because
`Sony does not dispute any of the following. They don't dispute
`that the references can be combined, that were presented by
`Petitioners, and they don't dispute that five of six of the
`limitations are met by the references that are presented by
`Petitioners. And they also don't dispute that the additional
`limitations that we just discussed of the dependent claims are met
`as well.
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`So the parties' dispute here is confined to the control
`means limitation, and as I mentioned before, the Board's
`construction was that this is governed by Section 112.6,
`paragraph 6, which is not in dispute here, and the function
`corresponds to controlling the transmission signal receiving
`means to receive the transmission signal of a channel indicated by
`the channel number being displayed when the command received,
`by the command receiving means, is broken.
`And then the structure that corresponds to that function
`is a CPU implementing the algorithm at column 7, lines 58
`through 8 -- excuse me, through column 8, line 10, and parts
`thereof, and that's from the Board's decision on institution in
`Paper 10.
`Essentially --
`JUDGE BISK: Can I ask a question? I'm sorry, I know
`I'm interrupting your flow here, but I have a few questions I need
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`answered. One of them is, are the -- do you -- is it your position
`that the challenged claims are limited to compressed digital
`content, or do the claims include -- do they cover analog also?
`MS. WALSH: So claim 4 definitely is restricted to
`digital signals. I think that the claims --
`JUDGE BISK: That's what made me ask when I looked
`at claim 4 and saw that and thought, oh -- but the spec -- I think
`the spec only discusses compressed digital.
`MS. WALSH: That is correct. The spec discusses
`compressed digital signals, and when you're looking at some of
`the other elements, since claim 1 is written mostly in
`means-plus-function, for example, the first limitation is a
`transmission signal receiving means for receiving transmission
`signals, including a plurality of channels, and I don't remember
`the precise structure that Petitioner has proposed off the top of my
`head, but I believe that that's the digital tuner, a digital satellite
`tuner.
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`JUDGE BISK: I have just a front end comprising a
`tuner or equivalent.
`MS. WALSH: Yeah, and --
`JUDGE BISK: Does that mean digital tuner?
`MS. WALSH: Yes, that would mean a digital tuner.
`JUDGE BISK: Okay. The reason I ask is for the
`rationale to combine, because if the claims are limited to
`compressed digital content or just digital content, I'm wondering
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`why a person of ordinary skill in the art would combine the
`analog references with the digital references. Do you have any
`evidence?
`MS. WALSH: So we have -- we have presented the
`declaration of our expert, and that is discussed -- it's Exhibit
`1003, and that is described at -- the motivation to combine is
`described in the petition at pages 34 through 36, and in the
`declaration of our expert, in paragraphs 200 through 211, and that
`is for ground 1, Wasilewski, Rosenberger, and Ishikawa.
`And then with respect to ground 2 --
`JUDGE BISK: But I think that -- I don't know that
`there's anything in that -- I'm looking at 103 -- Exhibit 103,
`paragraphs 200 and so on, that are the motivation to combine
`Wasilewski, Rosenberger, and Ishikawa, and I don't know that
`there's -- I could find anything where they specifically talk about
`why you would -- so I guess this is what we've got.
`At the time of the alleged invention, the problem of the
`time required to change and tune channels in a digital system had
`been recognized in the field, which was significantly longer in the
`digital world rather than the analog world. So there it's talking
`about analog.
`And then it says this problem had been solved in the
`analog world. Accordingly, one of ordinary skill in the art would
`have been motivated to look to the teachings of Rosenberger to
`solve this problem in a digital system.
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`And that -- and I -- I'm a little -- I'm just wondering if
`that's enough. Do we have enough of a connection, why you
`would be looking to an analog -- because it -- what I'm wondering
`is, do we have to add a little common sense in here or --
`MS. WALSH: So I think the answer to that can be
`found in the specification of the '643, because that describes a
`very similar problem. Basically you had the channel change lag
`problem --
`JUDGE BISK: Well, yeah, I think everyone agrees that
`the problem also existed in analog, and -- but the patent itself
`kind of says this -- this -- this existed in the analog world, and
`they had solved it, but now our invention is resolving it for the
`digital world. And then the prior art is the one with, you know,
`the algorithm, I'm going to say, and that one is analog. So I'm
`just trying to get from here to there. How do get from some --
`why would it be obvious for someone to look to the analog
`reference?
`MS. WALSH: So I believe that that is because at the
`time of the alleged invention in the '643 patent, both systems
`were present and around, and so one of ordinary skill in the art
`would have been conversant in both the analog and the digital
`receiver world.
`JUDGE BISK: Okay. I see, okay. So in 204, there is --
`one of ordinary skill would have been fluent or knowledgeable
`about both.
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`MS. WALSH: That's correct.
`JUDGE BISK: All right. Thank you.
`MS. WALSH: And as discussed before, Sony's chief
`argument in response to Petitioners' petition appears to be that the
`Petitioners did not adequately show that the algorithm that's
`described in the control means is also in the prior art and that
`Sony did not have notice of how the Petitioners are interpreting
`those references. And to date, this argument has been rejected
`twice by the Board, both on the decisions in institution and the
`decisions on Sony's petition for rehearing.
`Though Petitioners' original construction didn't use the
`words "algorithm," it was discussed in the context of describing
`that claim construction, and it was also described when
`Petitioners went through the references and linked up the steps in
`the algorithm with the steps that are shown in the references.
`And then slide 10 itself shows the algorithm that's
`associated with the control means. The algorithm that's described
`in the specification is relatively simple and centers on Figure 8 of
`the '643 patent, as well as column 7, lines 58, through column 8,
`line 10. It centers on steps S16 and S11 of the flow chart.
`At step S16, the CPU determines whether a key is being
`pressed and held down. If the key is detected to be held down by
`the CPU, the flow goes to step S11 and continues to process
`channel numbers. That's what's being displayed on the screen,
`and the system keeps scrolling rapidly through those channel
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`numbers. If the key is released at step 16, it goes to step S17 and
`does the channel processing and tunes to the correct channel.
`And slide 11 quotes the Board's decision on rehearing and
`basically just describes that process in prose.
`Turning to ground 1 and Petitioners' evidence, as we
`went a little bit into before on the discussion of motivation to
`combine, Petitioners rely on Wasilewski, which discloses a
`digital system and a digital satellite tuner, which uses a digital
`system data processor as a CPU, that tunes the channels,
`interprets commands, does those functions. And Wasilewski is at
`Exhibit 1004, and the discussion of Wasilewski is at Exhibit
`1003, in paragraph 161. Wasilewski can be combined with
`Rosenberger and its microcomputer to teach the algorithm.
`If we look at the algorithm in slide 14, Rosenberger
`describes the process of detecting whether a key has been
`pressed. The microcomputer receives the command from a
`remote control. Rosenberger's microcomputer continues to
`process channel numbers if the key is pressed, continues running
`upward through the channel numbers as described at Exhibit
`1007, in column 3, which is detected on slide 14, and then
`Rosenberger's microcomputer detects if a key is released or if the
`user lets off the key and changes the channel.
`JUDGE BISK: Can I ask you a quick question? Would
`you agree that the algorithm -- that the structure of the control
`means includes both the algorithm that you were discussing on --
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`in column 8 and also column 9, 15 through 30? And that refers
`to -- it's very similar, but instead of Figure 8, it refers to Figure 9,
`I believe.
`MS. WALSH: And so I think that with respect to --
`well, just to back up, I think that the language in column 9 is
`another example of this, and it's clearly a different embodiment. I
`believe that with respect to the specific steps that are being
`discussed at column 9, lines 15 through 30, those are similar
`steps, because, again, as -- the discussion of column -- excuse me,
`of Figure 8, it's discussing the step of inputting a channel and then
`determining whether the input for that channel is finished, and
`then if yes, then selecting the selection.
`JUDGE BISK: I just want to be clear, because I think
`in the decision to institute it referred only to the column 8
`algorithm and Figure 8, but I believe Sony, in its preliminary
`response, actually did point to column 9, lines 15 through 30, and
`I just want to make sure we're all on the same page.
`MS. WALSH: I believe that's correct.
`JUDGE BISK: Okay.
`MS. WALSH: And I believe that there are some
`interim steps in Figure 9 that don't bear on the control means
`limitation that are different from what's in Figure 8.
`JUDGE BISK: Right. Right, thank you.
`JUDGE BOUDREAU: We are starting to go into your
`rebuttal time, so if you want to just wrap up.
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`MS. WALSH: Okay. As I mentioned before, in
`Wasilewski and Ejima, Ejima, when combined with Wasilewski,
`discloses a controlling tuner that does the same steps as what's
`described in the algorithm. For example, at paragraph 15 of
`Ejima, that's Exhibit 1010, and this is described in slide 16,
`Ejima's tuning controller detects whether a key is pressed, and
`then Ejima's tuning controller continues processing the channel
`numbers when it moves into what Ejima refers to as a high-speed
`channel-up mode, and then Ejima's tuning controller detects if the
`key is released and tunes the channel that is described at
`paragraph 20.
`With that, I will submit that Petitioners have carried
`their burden to show that claims 1 through 4 are unpatentable.
`JUDGE BOUDREAU: Thank you, Ms. Walsh.
`Mr. McKeown?
`MR. MCKEOWN: Good morning. May it please the
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`Board.
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`I just want to reiterate some objections that we had to
`slides 10 through 11, 14 to 16, as being an entirely new claim
`mapping that was nowhere in the petition, and, again, just want to
`emphasize that, again, a little bit surprised that we're talking
`about an algorithm here today when the construction that was
`offered in the petition was that the control means was a CPU,
`period.
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`JUDGE BISK: Right, but you -- you brought up the --
`you pointed to the algorithm and said that --
`MR. MCKEOWN: Right. What I'm saying is there was
`never an algorithm in the petition, which was their burden, and
`now today we're talking about it.
`JUDGE BISK: Okay. Well, can we look at the
`petition, please, pages 18 to 19? It's the -- I'm interested in the
`paragraph that starts on page 18 and goes over to page 19. Is this
`not discussing the algorithm that is the structure?
`MR. MCKEOWN: I think it's a high-level description
`of what's going on. Is it a discussion of the algorithm in terms of
`how it is a structural equivalent to the one in this patent? No, it's
`not.
`
`JUDGE BISK: Well, so this is the claim construction
`section, I think. So -- but I'm -- doesn't this put you on notice
`that -- that how it does it -- they understood how it does it the
`same way you do. They didn't use the words "here is the
`algorithm that is part of the structure," I understand that, but I'm
`just having a hard time understanding how you didn't know that's
`what they meant.
`MR. MCKEOWN: Sure. Well, let me put it to you this
`way, if we can pull up slide 10. I think when you compare slide
`10 to what's on that page, I think perhaps the differences can be
`appreciated a little bit more. There was no red circles of specific
`steps, and there was a question earlier today about what would --
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`what should the claim chart look like. It should have looked like
`this. This is what is going on in the patent. This is the structure
`we need to map to.
`JUDGE BISK: But I guess the thing I'm having a hard
`time with here is the algorithm here is not rocket science. The
`algorithm is sending a signal, when the user lifts their finger, to
`let them to know change the channel, and it's -- I mean, I realize
`that -- it's almost the same. The algorithm is almost the same as
`the function. So it's really hard for me to --
`MR. MCKEOWN: Well, sure, let me make two points.
`JUDGE BISK: Okay.
`MR. MCKEOWN: First, you know, how simple the
`algorithm is is not an excuse to address it. If they wanted to say
`this algorithm is so simple that the basic steps of this figure are
`identical, therefore, it's a structural equivalent, period, then they
`should have said that. They didn't do that, and while we have this
`slide --
`
`JUDGE BISK: I don't know what you mean by it's a
`"structural equivalent." Is it the same structure?
`MR. MCKEOWN: Well, does it function in the same
`way to provide the same result, that's --
`JUDGE BISK: Right, and I think in your surreply you
`mention -- you go through, well, now there's a problem because
`the Petitioner never did the function way result analysis, but if the
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`structures are the same, why -- you don't have to do a function
`way results.
`MR. MCKEOWN: I agree, but you have to at least say
`here are the structures and they are the same.
`JUDGE BISK: Okay, all right. So 18 and 19 is the
`claim construction section. What -- let's now move to page 23 of
`the petition, and this is where it's talking about what Wasilewski
`does. And I'm wondering -- or I'm sorry -- yes, so Wasilewski
`discloses this control means decoder, and then if you continue on,
`it talks about Rosenberger, which now it's talking about the
`algorithm that Rosenberger goes through.
`Why is -- why -- why is this not notice that this is
`what -- this algorithm is the same structure as that that's in the
`patent, even though -- I realize they did not use those words.
`MR. MCKEOWN: Right. And I think, again, this gets
`to what is going on from the perspective of the user in terms of
`pressing buttons, and we're talking about what a controller is
`doing, and --
`JUDGE BISK: But wait a minute. So -- but isn't that
`the same way that the patent describes the algorithm as to what
`the user's doing?
`MR. MCKEOWN: Right, but we're talking about the
`algorithm of the processor, not necessarily what buttons are being
`pushed. We're talking about how it's operating internally.
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`JUDGE BISK: Right, and -- but I'm saying that -- what
`is the difference between the way Rosenberger operates internally
`and the algorithms that are the structure?
`MR. MCKEOWN: Well, let me go back to slide 10,
`because I think there's an important point here with respect to
`what the difference is.
`JUDGE BISK: Okay.
`MR. MCKEOWN: So we've heard today that, you
`know, the algorithm is this figure, and it's also the corresponding
`portion of the specification, and so if you -- at the bottom of
`that -- that red circle, circle step S17, and if you look over in the
`description of the specification, it states that S17 executes
`selection processing, and in this channel selection processing, the
`confirmation of the CA (conditional access) condition, and the
`encoding of the MPEG data are executed.
`JUDGE BISK: Okay.
`MR. MCKEOWN: Where is that in any of these slides
`today? Where is that in the petition? If you're adopting now, at
`the end of this trial, and you're circling specific steps in figures,
`and you're saying step S17 corresponds to this point in the
`specification, and what step S17 is doing, when it's doing tuning,
`is doing the specific MPEG processing, at a minimum, we would
`have expected in the petition to see some kind of analysis of,
`okay, the patent requires the specific structure and the specific
`MPEG processing, where is that in the prior art?
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`We didn't get that. So that's what I mean when I say
`there was no algorithm in the petition. It's one thing to sort of
`point back and forth to, well, your patent pushes a button, this
`patent pushes a button. You have got to walk through the
`algorithmic analysis, because that's what's required. That's how
`you get the structural equivalency. We don't know what the prior
`art does in this respect. Is there MPEG processing in there? Yes.
`Is it mapped to this claim element? No.
`There's analog systems, there's digital systems, and
`there was a point made earlier, we didn't challenge the
`combination. How can we challenge a combination of references
`when we don't understand the basic theory and fundamental steps
`are missing?
`JUDGE BISK: So I asked a couple of questions to
`Petitioner that I would like to ask to you as well. So do you --
`you agree with the claim construction in the decision to institute,
`although you would include the -- column 9, 15 through 30, and
`Figure 9 as well. Is that correct?
`MR. MCKEOWN: Well, we -- I guess our -- our
`agreement would be that certainly the control means requires a
`processing element that implements an algorithm, and we
`identified that in the preliminary response, which includes this.
`JUDGE BISK: Right, and you agree with that. You
`still agree with that.
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`MR. MCKEOWN: Yeah. In terms of specific steps,
`again, we didn't see this until the end of the trial, so we haven't
`had a chance to really brief that or consider it.
`JUDGE BISK: Okay. So my next question is, in your
`perspective, are the claims limited to compressed digital content?
`digital content? any kind of content?
`MR. MCKEOWN: I think, at a minimum, there has to
`be MPEG processing. Now, whether you get to that point --
`JUDGE BISK: Well, I'm just talking -- not about the
`control means limitation, but just in general.
`MR. MCKEOWN: Rig
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