Case 1:15-cv-00849-RP Document 62-1 Filed 10/07/16 Page 1 of 112
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`AFFINITY LABS OF TEXAS, LLC,
`Plaintiff,
`
`v.
`NETFLIX, INC.,
`Defendant.
`
`Case No. 1:15-cv-00849-RP
`
`AMENDED DECLARATION OF NADER MIR, PH.D. IN SUPPORT OF DEFENDANT
`NETFLIX, INC.’S OPENING CLAIM CONSTRUCTION BRIEF RE U.S. PATENT NOS.
`9,094,802 AND 9,444,868
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`Affinity Labs Ex. 2001-001
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`I.
`
`INTRODUCTION
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`1.
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`My name is Nader Mir. I have been retained by Netflix, Inc. to offer an opinion
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`on the nature and level of ordinary skill in the art relevant to U.S. Patent No. 9,094,802 (“the
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`’802 patent”) and U.S. Patent No. 9,444,868 (“the ’868 patent”) and to offer an opinion on how
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`such a person would understand certain of the terms in the ’802 and ’868 patent claims. This
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`declaration sets forth my opinions concerning these matters, and I am called upon to testify, I
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`could and would testify competently thereto.
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`2.
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`My compensation is not dependent on the outcome of this proceeding, nor on my
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`reaching any particular findings or conclusions, or on any outcome in the case. The opinions
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`contained in this declaration are mine and based upon my knowledge, experience, and study of
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`the materials discussed.
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`3.
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`I am not an employee, consultant, or contractor of either Affinity Labs of Texas or
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`Netflix, and have no financial interest in either party.
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`II.
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`QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
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`4.
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`My professional career has spanned more than 30 years in design, analysis,
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`testing, teaching, research, and performance evaluation in the general fields of
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`telecommunications, wireless networks computer networks, TCP/IP, communications systems,
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`multimedia including voice and video communication and networks.
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`5.
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`I am currently a professor in the Department of Electrical Engineering at San Jose
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`State University in California and teach courses on telecommunications, wireless networks
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`computer networks, TCP/IP, VoIP and Multimedia Networks. I was previously the Associate
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`Chairman of the Electrical Engineering Department at San Jose State University. I am also the
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`Director of a number of graduate programs that San Jose State University offers to several high-
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`tech companies in Northern California.
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`6.
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`I was awarded a Ph.D. in Electrical Engineering, with a focus on computer
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`networking and communication systems and protocols, from Washington University in St. Louis
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`in 1995. I received a Master’s of Science (M.Sc.) degree in Electrical Engineering from
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`Washington University in St. Louis in 1990 and my Bachelors of Science (B.Sc.) degree, with
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`honors, in Electrical Engineering from Polytechnic University in 1985.
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`7.
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`For more than 30 years, I have studied, designed, and worked in the general fields
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`of telecommunications, computer networks and communications systems. Based on my
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`extensive research, engineering, and teaching experience in such fields, I have been recognized
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`as a specialist in the areas of computer and communication networks; networking devices;
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`protocols including (but not limited to) packet switched networks, integrated voice, video, data
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`networks, computer networking, TCP/IP, network server operations, voice over IP (VoIP),
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`content delivery networking (CDN), media streaming including adaptive bitrate streaming
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`(ABS), databases in networks, client/server, public-switched telephone networks (PSTN) and
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`SS7 protocols, telecommunication systems including PSTN and SS7 protocols, wireless
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`networks, networking devices such as switches and routers, network security, and network
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`virtualization, among others.
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`8.
`
`Prior to my current position, I was an assistant professor at the University of
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`Kentucky in Lexington. From 1994 to 1996, I was a research scientist at the Advanced
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`Telecommunications Institute, Stevens Institute of Technology, New Jersey, working on the
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`design of advanced communication systems and high-speed computer networks.
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`9.
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`From 1990 to 1994, I worked at the Computer and Communications Research
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`Center at Washington University in St. Louis as a research assistant on the design and analysis of
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`high-speed switching systems and controllers for computer networks.
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`10.
`
`From 1985 to 1988, I worked with Telecommunication Research & Development
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`Center (TRDC), Surrey, as a telecommunications system research & development engineer,
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`participating in the design of a high-speed digital telephone Private Branch Exchange (PBX).
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`11.
`
`I am the named inventor on U.S. patent No. 7,012,895 B1, a switching system for
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`use in high-speed computer networks.
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`12.
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`I hold several technical editorial positions for various journals, including IEEE
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`Communication Magazine and IEEE Communications Standards. As a Technical Editor of
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`IEEE Communication Magazine, I am responsible for accepting or rejecting scientific articles
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`submitted to the journal in the areas of computer networking and communication systems. I am
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`a senior member of the IEEE and have served as a member of the technical program committees
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`and the steering committees for a number of major IEEE communications and networking
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`conferences.
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`13.
`
`I have authored a major textbook, titled Computer & Communication Networks,
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`by Pearson Prentice-Hall publisher which is now a standard textbook adopted world-wide for
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`undergraduate and graduate courses in numerous universities and colleges. The first edition of
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`the book was published in 20061 and the second edition was published in 20152 containing 874
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`pages covering a broad range of fundamental and advanced topics in telecommunication
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`networks, computer networks on all layers of TCP/IP protocol stack, communication systems,
`
`wireless networks and network security. I have published more than 100 refereed technical
`
`1 Nader Mir, Computer and Communication Networks (Prentice-Hall, 1st ed. 2006).
`2 Nader Mir, Computer and Communication Networks (Prentice-Hall, 2nd ed. 2015).
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`journal articles and conference papers, all in the field of communication systems and computer
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`networking.
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`14.
`
`I have received a number of prestigious university, national, and international
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`awards. In particular, I have received a number of research grants from private, state, and
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`governmental funding agencies for conducting research in the fields of computers and
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`communication networks. I am also the recipient of several university teaching recognition
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`awards from San Jose State University; several research excellence awards; and the school’s
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`published book award for the year.
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`15.
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`I have been invited to give a number of talks at both national and international
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`conferences. My speeches at conferences have focused on a variety of topics in computer
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`networking including topics on TCP/IP, networked servers, multimedia networks including
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`media streaming including adaptive bitrate streaming, switching systems, and networking user
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`interfaces, packet telephony and VoIP (including SIP and IMS), TCP/IP internet, and design of
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`networking equipment, modems, switches and routers. I am the recipient of a number of
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`Outstanding Presentation awards from leading international conferences.
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`16. My qualifications, along with a full list of my publications, are set forth in more
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`detail in my curriculum vitae, attached hereto as Exhibit A.
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`III.
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`THE ASSERTED PATENTS, THE RELEVANT FIELD, AND THE LEVEL OF
`ONE OF ORDINARY SKILL IN THE ART
`
`17.
`
`I have been asked to develop and offer opinions related to how a person of
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`ordinary skill in the art would have understood the ’802 and ’868 patents. I have reviewed the
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`’802 patent and file history. A copy of the ’802 patent is attached to this declaration as Exhibit
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`B. I have also reviewed the ’868 patent and its file history. A copy of the ’868 patent is attached
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`to this declaration as Exhibit C. Additionally, I have considered my own experience and
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`expertise regarding the knowledge of persons of ordinary skill in the art in the timeframe of the
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`claimed priority date of the ’802 and ’868 patents.
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`18.
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`The ’802 patent is entitled “System and Method to Communicate Targeted
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`Information” was filed January 30, 2014, and claims priority to an application filed in March
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`2000. See generally ’802 patent.
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`19.
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`The ’802 patent generally relates to a system and method for communication of
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`information. The abstract describes the purported invention as “[a] method for targeted
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`advertising. The method includes accessing at least one piece of demographic information
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`associated with a user of a portable device, selecting an advertisement to be delivered to the user
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`based at least in part on the demographic information, and initiating communication of a version
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`of the advertisement configured for presentation at the portable device.” Id. at Abstract.
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`20.
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`The ’868 patent is entitled, “System to Communicate Media” was filed June 23,
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`2015 and claims priority to the same earlier application filed in March 2000. See generally ’868
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`patent.
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`21.
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`The ’802 and ’868 patents share the same specification (aside from the Abstract).
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`Therefore, my description of the patent disclosures will cite to the ’802 patent, but the same
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`disclosures are present in the ’868 patent specification.
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`22.
`
`The specification in either patent (hereinafter “specification”) generally describes
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`a system and method for delivering digitally stored media (i.e., audio, video, or textual
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`information) to an electronic device, and is not limited to targeted advertising. E.g. ’802 patent
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`at 1:25-27 (“The present disclosure relates to digitally stored content and, more specifically, to a
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`content delivery system and method”), 2:56-58 (“The conceptual groundwork for the present
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`invention includes wirelessly communicating selective information to an electronic device”); see
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`also id. at 10:22-30 (reference to targeted advertising implementation).
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`23.
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`The system described in the specification is made up of four main components,
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`which is illustrated in Figure 1 of the patent:
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`Id. at 3:32-44, Fig. 1.
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`24.
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`The first component is what is depicted in Figure 1 as storage device 105. The
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`patent explains that storage device 105 stores the media content (i.e. audio or video information)
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`that a user may select for transmission. Id. at 3:41-44.
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`25.
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`The second component is shown in Figure 1 as “digital engine 101.” The patent
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`states that “digital engine 101” is coupled to the storage device 105 and “maintains information
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`associated with the selected audio information.” Id. at 3:50-52. The patent explains that, “digital
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`engine 101” may be “used in association with an Internet website” that allows a user to select
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`information or content of interest, for example. Id. at 4:1-6. The patent states that the
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`information maintained by “digital engine 101” could be “several songs or titles configured as an
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`audio file and formatted in a digital format,” “a reference to a network location where an audio
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`file may be stored,” or other types of information associated with the content selected by the
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`user. Id. at 3:50-62.
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`26.
`
`The third component is shown in Figure 1 as “communications engine 102.” The
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`“communications engine 102” is coupled to the digital engine and communicates selected
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`content from an information network, such as the Internet, to an electronic device. Id. at 13:7-
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`20. The patent explains that the “communications engine 102” may “configure the information
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`located within the information network into a format operable to be transmitted via wireless
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`communication.” Id. at 4:55-57.
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`27.
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`The fourth component shown in Figure 1 is “electronic device 103.” The patent
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`states that “electronic device 103” can be configured for receiving wireless communication of
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`selected content, and may include network radios, audio systems, PDAs, or cellular phones. Id.
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`at 4:27-40.
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`28.
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`The patent explains that in certain circumstances, the system may use
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`communication networks having slower transfer rates. Id. at 5:52-53. The patent sets forth a
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`specific example in which a user selects a set of songs he or she intends to play during the drive
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`home at the end of a workday. Id. at 53-59. The patent explains that in this example because the
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`system has plenty of time to transmit the content to the receiving device, it can elect to use a
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`slower communication link. Id. at 5:63-65.
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`29.
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`In other circumstances, the patent states that the system may require use of high-
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`speed wireless communications to stream an Internet broadcast from an Internet radio station, for
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`example. Id. at 5:66-6:5.
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`30.
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`The patent also sets forth what it refers to as a hybrid approach. Under the hybrid
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`approach, the system will transmit content via a high-speed communication network until
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`enough information has been communicated to and buffered in the receiving electronic device.
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`Id. at 6:5-8. Upon communication of a certain percentage of the selected information, a slower
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`communication network may then be used to communicate additional selected information. Id.
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`at 6:8-16. There is no discussion in the patent of using different communication rates due to
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`bandwidth or processing capability concerns.
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`31.
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`The description in the specification is very generalized and refers to the
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`transmission of audio files in the context of Internet radio as the primary example in the patent.
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`Even this example, however, is described in general terms as to what the system can do,
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`disclosing intended end-results, but failing to provide any technical description or disclosure of
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`any specific equipment, programs, or algorithms to be used to achieve those results. There is no
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`disclosure of any specific technological advance to implement the system described in the
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`patents.
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`32.
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`The specification does state that “an audio file may be formatted, segmented,
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`compressed, modified, etc. for the purposes of providing or communicating the audio invention.”
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`’802 patent at 3:26-29. But other than the one sentence, there is no explanation of what type of
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`formatting, segmenting, compression, modification, etc. can be used and what the purpose would
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`be in the context of the purported invention. For example, the patent states that
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`“communications engine 102 may comprise a conduit to interface information with a wireless
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`communication network. The conduit may configure the information located within the
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`information network into a format operable to be transmitted via wireless communication.” ’802
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`patent at 4:49-57. That disclosure, however, says nothing more than the well-known and logical
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`concept of having to format data so that it can be transmitted. It does not identify what
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`equipment can be used to perform the functions of the “communications engine.” Nor does it
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`identify what the “conduit” is that interfaces with the network and configures the information.
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`33.
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`Based on my review of the patents and file histories, I believe that the relevant
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`field for the purposes of the ’802 and ’868 patents is the design and implementation of
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`packetized telecommunication networks for media delivery. I understand that Affinity Labs is
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`alleging that the ’802 and ’868 patents cover Hypertext Transfer Protocol adaptive bitrate
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`streaming (HTTP ABR) – technology that can adjust the quality of a video stream based on
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`detection of bandwidth and processing capacity. Back in March 2000, HTTP ABR technology
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`was not yet in wide use.
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`34.
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`It is my understanding that the ’802 and ’868 patents are to be interpreted based
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`on how it would be read by a person of “ordinary skill in the art” at the time of the effective
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`filing date of the application that lead to the patents, which I understand I should assume for the
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`purpose of this declaration only is March 28, 2000. It is also my understanding that factors such
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`as education level of those working in the field, the sophistication of the technology, the types of
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`problems encountered in the art, the prior art solutions to those problems, and the speed at which
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`innovations were made at that time may help establish the level of ordinary skill in the art.
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`35.
`
`I am familiar with the technology at issue and the state of the art at the earliest
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`claimed priority date of the asserted patents – March 28, 2000. In my opinion the level of
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`ordinary skill in the art for the ’802 and ’868 patents as of March 28, 2000 is an individual
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`having a Bachelor’s Degree in Electrical Engineering, Computer Science or Computer
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`Engineering, or equivalent experience, and one to two years of experience in the field of
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`computer networking and/or multimedia networks, particularly as those systems relate to media
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`streaming technology.
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`36.
`
`I am not a patent attorney and my opinions are limited to what I believe a person
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`of ordinary skill in the art would have understood from reading the patents and their file
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`histories. I understand that the terms used in the asserted patents are to be construed in
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`accordance with their plan and ordinary meaning as understood by one of ordinary skill in the art
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`in light of disclosures in the specification and file history. It is my further understanding that a
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`claim term or phrase is indefinite if it, read in light of the specification delineating the patent, and
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`the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the
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`scope of the invention.
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`IV.
`
`THE PATENT CLAIM TERMS
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`37.
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`Unlike the specification, the claims of the ’802 and ’868 patents do recite some
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`specifics of the operation of the system and method, including the requirement of having
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`“independent segment files” or “organizing an available media into a plurality of independent
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`segment files to facilitate delivery.” Id. at 18:30–32; see also ’868 patent at 18:57, 19:49.
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`38.
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`Specifically, the claims of the ’802 patent claim “[a] method to deliver media,
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`comprising: organizing an available media into a plurality of independent segment files.” Id. at
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`18:30–32. The ’802 patent further claims “[a] streaming method comprising: receiving an HTTP
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`communication at a media delivery resource (id. at 19:10-12), and “[a] system that facilitates
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`delivery of media, comprising: a media available for delivery as a series of segments, wherein at
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`least a given one of the segments is configured to allow delivery to a requesting device” (id. at
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`20:3-6). Examples of media include conventional audio (e.g., Internet radio, music, or voice
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`mails), video, and text. See id. at 3:18-23, 6:1-2, 8:12-14, 9:9:53-56. The claims also require
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`formatting the segment files for transmission at one rate and also formatting them for
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`transmission at another rate. See id. at 18:33-37, 19:17-25, 20:5-10.
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`39.
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`In addition to segmenting files, the claims also require generating and sending a
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`list that includes addresses for the segment files. Id. at 18:38-39, 19:12-13, 20:11-14. The patent
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`specification does not discuss any list with addresses or locations of segment files.
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`40.
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`Like those of the ’802 patent, the claims of the ’868 patent recite a media system,
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`comprising “a plurality of independent segment files.” ’868 patent at 18:57, 19:49. They
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`likewise require “a playlist that comprises a list, and the list includes a first URL for the given
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`segment file and a different URL for the different segment file.” Id. at 18:65-67. The ’868
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`patent further require a “communications engine” and “digital engine” for performing functions
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`such as dividing media into segment files, encoding the files, and maintaining the list of
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`addresses. Id. at 20:15-19, 34-39.
`
`A.
`
`41.
`
`“playlist”
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`Claim 14 of the ’802 patent recites a system that facilitates delivery of media that
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`comprises “a media playlist for the available media.” ’802 patent at 20:11-12.
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`42.
`
`Claim 1 of the ’868 patent requires “a playlist that comprises a list, and the list
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`includes a first URL for the given segment file and a different URL for the different segment
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`file.” ’868 patent at 18:65-67.
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`43.
`
`In the context of systems that deliver media content, a “playlist” is well-
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`understood as the list of different media files (e.g. songs, movies, books, etc.) that a user has
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`selected to be played in a particular order.
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`44.
`
`The ’802 and ’868 patents use the term “playlist” consistent with this well-
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`understood and ordinary meaning of “playlist.” Every occurrence of the term refers to a user
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`selecting a list of songs that he or she wants played. ’802 patent at 11:18-24 (“stations may
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`include . . . user customized preset information such as user selected playlists . . . top lists, group
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`playlists, artist-selected lists . . .”), 11:45-56 (“a user may select a different playlist for every day
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`of the week thereby allowing a user to listen to different songs on different days of the week”);
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`14:56-59 (“the method may proceed to step 802 where a playlist may be created that represents
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`the user’s selected audio information”), 15:4-6 (“Upon obtaining data associated with the
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`customized playlist, the method may proceed to step 804 where the user is prompted for a
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`designation for the playlist”).
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`45.
`
`There is no mention in the patent of any list of segment files or their location or
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`addresses.
`
`B.
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`“to facilitate outputting of the [given/different] segment at a [given/different
`rate] (claim 1) / “to be delivered from the media delivery resource at a
`[given/different] rate” (claim 9)
`
`46.
`
`Independent claims 1 and 9 of the ’802 patent both contain limitations that require
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`delivering or outputting files that have been formatted for transmission at one communication
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`rate, and formatted for transmission at a different communications rate. ’802 patent at 18:33-37,
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`19:16-25.
`
`47.
`
`The only disclosure in the patent specification describing transmission or
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`outputting of media files at different communication rates is the reference to use of a hybrid
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`approach, where audio information may first be transmitted “via high speed communication until
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`enough information has been wirelessly communicated and buffered,” and then a slower
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`communication speed can be used to transmit any additional information. Id. at 6:5-16. The
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`patent does not discuss changing rates in response to network conditions as change of required
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`bandwidth, or processing capabilities. Nor does it disclose any functionality for switching
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`between high speed and slower speed communication networks.
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`48.
`
`Therefore, it is my opinion that one of ordinary skill in the art would understand
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`these terms in the ’802 patent to mean sending media files from a server to a receiving device
`
`using a communication link having a given communication rate and then sending different media
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`files from a server to a receiving device using a different communication link having a different
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`communication rate.
`
`C.
`
`49.
`
`“plurality of independent segment files”
`
`Claim 1 of the ’802 patent and its independent claims recite a method to deliver
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`media that includes the requirement of “organizing an available media into a plurality of
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`independent segment files.” Id. at 18:30-32.
`
`50.
`
`Claims 1 and 7 of the ’868 patent requires a media system comprising “a plurality
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`of independent segment file.” ’868 patent at 18:57, 19:49.
`
`51.
`
`The only mention of “segment” in the specification is the one-sentence statement
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`that “an audio file may be formatted, segmented, compressed, modified, etc. for the purpose of
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`providing or communicating the audio file invention.” ’802 patent at 3:26-29.
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`52.
`
`Even if one of ordinary skill would understand what it means to organize media
`
`files into segments, it is unclear what is meant by the additional term “independent” segment
`
`files. There is nothing in the specification that helps elucidate the meaning as the patent never
`
`explanation or an example of the type of segmenting to be performed, how it is to be done, or the
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`purpose of segmenting files. There is no further explanation of how the files or segments are
`
`independent of each other, or how “independent” files or segments are distinguished from
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`“dependent” segments or files. Without such guidance, there is no way to tell what is meant by
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`“independent segment files.”
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`53.
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`Specifically, it is unclear what the term “independent” is meant to modify when
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`used in the term “independent segment files.” As there is no explanation in the patent
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`specification, one of ordinary skill in the art cannot know if the term refers to (1) independent
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`files with segments in them, meaning each file is composed of a media segment and those files
`
`are independent from each other; or (2) files that contain independent segments, meaning a file
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`contains multiple segments and the segments are independent from each other; or (3) some other
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`possibility.
`
`54.
`
`Claim 1 of the ’802 patent additionally requires the media be organized into the
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`claimed independent segment files “to facilitate delivery.” Id. at 18:31-32. The specification
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`does not, however, disclose what is the specific type of delivery that needs to be facilitated and
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`does not even mention delivering or transmitting segments, files, or segment files. Thus, it is
`
`impossible to know if there is a particular type of organization or segmenting that is required by
`
`the term “independent segment files” that would achieve the goal of facilitating delivery.
`
`55.
`
`Claim 1 of the ’802 patent also requires “generating a list that includes an address
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`for each of the plurality of independent segment files.” ’802 patent at 18:38-39. The
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`specification does not describe any list with locations or addresses of segment files. And without
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`knowing what feature of files makes them “segment files” or further makes them “independent
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`segment files,” leaves one to guess what the claimed list is, whether the generated list includes a
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`single address for all of the independent segment files or several addresses, one for each of the
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`independent segment files.
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`56.
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`Therefore, one of ordinary skill in the art, reviewing the ’802 patent, would not
`
`understand with reasonable certainty what is being claimed by the term “plurality of independent
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`segment files.”
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`D.
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`57.
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`“at or near”
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`Dependent claim 3 of the ’802 patent requires compressing the different segment
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`into a format that is configured to facilitate outputting at a playback device “at or near” the
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`different rate. Id. at 18:50-53.
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`58.
`
`There is no established meaning for “at or near” and one of ordinary skill in the
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`art would not understand what is encompassed by “at or near” a communication rate without
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`context or guidance. There is no context or guidance in the ’802 patent. The patent does not use
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`the term “at or near” anywhere in the specification and never discusses any type of range of
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`communications rates that would constitute being at or near a particular rate. The patent does
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`not even discuss how to configure and process media on a playback device so there is no
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`suggestion of how to facilitate outputting at on a playback device at a particular rate and what
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`acceptable deviation from that rate would constitute being “near” that rate.
`
`59.
`
`Being “near the different rate” is technically a communication rate that is separate
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`from the “given rate” and the “different rate” recited by the patent claims. There is no clarity
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`given as to where the line is drawn between what is “at a given rate,” what is “at a different rate,”
`
`and what is “near the different rate.”
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`60.
`
`Consequently, one of ordinary skill in the art, reading the patent, would not know
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`with reasonable certainty, what would fall under the term “at or near the different rate.”
`
`E.
`
`“in a manner that facilitates a continuous outputting of the available media
`by the requesting device”
`
`61.
`
`Claim 14 of the ’802 patent requires transmission of information to a requesting
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`device “in a manner that facilitates a continuous outputting of the available media by the
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`requesting device.” ’802 patent at 20:16-19; see also claim 18 at 20:36-38 (“to direct the
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`electronic device to continuously output the video”).
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`62.
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`There is no single understanding in the field as to what “continuous outputting” of
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`media by a device means.
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`63.
`
`The patent discusses continuous playback or outputting of media by a requesting
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`electronic device in only one context. The patent discusses “continuous” communication, play,
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`or execution by an electronic device as playing several selections of media “(e.g. several hours of
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`music, Internet broadcast, etc.)” sequentially in the form of executing a playlist. See id. at 15:57-
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`66. The patent contrasts this type of “continuous outputting” from a sequential playlist from
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`methods in which the requesting device will store or buffer the received media until a user
`
`desires execution and playback at a later time. Id. at 15:62-65.
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`64.
`
`The patent does not otherwise indicate if there is a playlist duration that is
`
`sufficient to constitute “continuous outputting” of media by the requesting device. Nor is there
`
`any discussion of whether something buffered for playback at a later point can at that later point
`
`be played continuously.
`
`65.
`
`Thus, there is nothing in the patent specification that gives any indication on the
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`bounds of what is meant by “continuous outputting” and one of ordinary skill in the art would
`
`not