`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner
`
`v.
`
`ROVI GUIDES, INC.,
`Patent Owner
`
`
`________________
`
`Case No.: IPR2017-00744
`Patent No. 8,621,512
`________________
`
`SECOND DECLARATION OF VERNON THOMAS RHYNE, PH.D., P.E.,
`R.P.A., IN SUPPORT OF PETITIONER COMCAST CABLE
`COMMUNICATIONS, LLC’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`Comcast, Exhibit-1112
`Comcast v. Rovi
`IPR2017-00744
`
`
`
`
`
`TABLE OF CONTENTS
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`Page
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`I.
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`INTRODUCTION ........................................................................................... 2
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`II. MATERIALS REVIEWED ............................................................................ 2
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`III. UNDERSTANDING OF APPLICABLE LEGAL STANDARDS ................ 3
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`IV. CLAIM CONSTRUCTION AND THE PRIOR ART .................................... 4
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`V.
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`THE ’512 CLAIMS ARE OBVIOUS IN VIEW OF NAGANO-
`ALEXANDER AND NAGANO-CHUN ......................................................11
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`VI. THE CITED PRIOR ART DISCLOSES THE LIMITATIONS IN THE
`DEPENDENT CLAIMS ................................................................................17
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`VII. CONCLUSION ..............................................................................................30
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`1
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`
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`SECOND DECLARATION OF VERNON THOMAS RHYNE, PH.D., P.E.,
`R.P.A., IN SUPPORT OF PETITIONER COMCAST CABLE
`COMMUNICATIONS, LLC’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`I, Vernon Thomas Rhyne, III, declare that I have personal knowledge of the
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`facts set forth in this, my Second Declaration, and if called to testify as a witness,
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`could and would do so competently.
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`I.
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`INTRODUCTION
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`1.
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`I have been retained as an expert witness on behalf of the Petitioner,
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`Comcast Cable Communications, LLC, for the above-referenced inter partes review
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`proceeding.
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`2.
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`3.
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`I reside in Austin, Texas.
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`I have been asked to provide an additional declaration for responding
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`to the arguments raised by the Patent Owner, Rovi and its technical expert, Dr. Ravin
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`Balakrishnan.
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`4.
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`I am being compensated for my time at a rate of $695 USD per hour,
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`plus actual expenses. My compensation is in no way dependent upon my opinions
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`or testimony or the outcome of this proceeding.
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`II. MATERIALS REVIEWED
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`5.
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`The analysis that I provide in this Declaration is based on my education
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`and experience in the fields of electrical and computer engineering, as well as the
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`documents I have considered, including the ’512 patent, Ex. 1101.
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`2
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`6.
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`I have also reviewed various relevant publications from the art at the
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`time of the alleged invention of the ’512 patent, to which this Declaration relates.
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`These publications include those referenced below:
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`Exhibit Description
`1101 U.S. Patent No. 8,621,512 (“the ’512 patent”)
`1102 U.S. Prov. App. No. 60/089,487 (“the ’487 Provisional”)
`1103 Prosecution History of U.S. Patent No. 8,621,512
`1104 U.S. Patent No. 6,240,240 (“Nagano”)
`1105 U.S. Patent No. 6,177,931 (“Alexander”)
`1106 U.S. Patent No. 5,506,628 (“Chun”)
`1107 Declaration of Vernon Thomas Rhyne, Ph.D., P.E., R.P.A.
`Modern Cable Television Technology (excerpts from chapters 1, 18 &
`19) (i.e., pp. 4, 9, 10, 747, 757-767, 778-779)
`1109 U.S. Prov. App. No. 60/055,761 (“the ’761 Provisional”)
`1110
`ITC—Commission Opinion
`1111 Deposition Transcript of Dr. Balakrishnan
`
`1108
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`
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`III. UNDERSTANDING OF APPLICABLE LEGAL STANDARDS
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`7.
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`Although I am not an attorney, I have a general understanding of the
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`applicable legal standards pertaining to the patentability issues presented in this
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`proceeding. I set forth that understanding in my previous Declaration. In addition
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`to that understanding, I understand that an invention might not be obvious if: (1) a
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`combination of references requires relying on the challenged patent itself as a
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`roadmap, (2) the prior art teaches away from the claimed invention, (3) a proposed
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`modification changes the principle of operation of the prior art being modified, or
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`(4) a proposed modification renders the prior art inoperable for its intended purpose.
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`3
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`Person Having Ordinary Skill in the Art
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`8.
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`It is my understanding that an assessment of claims of the ’512 patent
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`must be undertaken from the perspective of what would have been known or
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`understood by a person having ordinary skill in the art, upon reading the ’512 patent
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`on its relevant filing date and in light of the specification and file history of that
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`Patent. I refer to such a person as a “POSITA” herein. I provided my definition of
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`a POSITA in my prior Declaration.
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`IV. CLAIM CONSTRUCTION AND THE PRIOR ART
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` The ’512 Claims Are Not Limited To The Present Time
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`9.
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`It is my understanding that Rovi has taken the position that the claims
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`of the ’512 patent must be interpreted to cover only conflicts that arise when the
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`tuners in the interactive program guide (IPG) system disclosed in the ’512 patent are
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`being assigned conflicting functions, i.e., only at the present time. However, the
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`’512 specification clearly is not limited to such at-present conflicts. For example,
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`the ’512 patent notes at 4:15-18 that the IPG “includes television program listings
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`data for current and future television programs,” showing that program listings for
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`multiple future programs are provided by the system’s IPG. That clearly provides
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`users with information about future programs they would like to record, thereby
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`possibly creating a tuner conflict in the future.
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`4
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`10. Also, at 10:10-24 the ’512 specification discloses that the IPG
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`“provides the user with an opportunity to view program listings for current and
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`future programs as well as to initiate the recording process by selecting a program
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`to be recorded.” That disclosure shows that the user can select a program for
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`recording that is one of the “future” programs provided by the IPG.
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`11. Further, FIG. 4(a) of the ’512 patent depicts an example in which the
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`user has selected program 10 for recording by highlighting region 402. Program 10
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`will be broadcast on channel 4 at 7:30 – a future time. See id. at 7:12-27; I note the
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`error in the heading of FIG. 4(a). This means that at 7:30 the IPG system of the ’512
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`patent will assign either a set-top box tuner or the internal tuner of VCR 114 to tune
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`to channel 4 before initiating the record sequence. Ex. 1101 at 10:19-24. The record
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`sequence may be performed while the user is watching a television program different
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`from the program being recorded (id.), thereby creating what Rovi now calls a
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`“timer” conflict (a term never actually used in the ’512 patent).
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`12.
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`In addition, at 10:25-45 the ’512 specification discloses that, “FIG. 4(b)
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`shows an illustrative interactive television program guide viewer option for
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`secondary function use (PIP cancellation) screen 410 which acts to alert the viewer
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`to a conflict in tuner allocation and usage,” while 10:46-49 discloses that, “FIG. 4(c)
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`shows illustrative interactive television program guide viewer option for secondary
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`function use (record cancellation) display screen 420 which acts to alert the viewer
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`5
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`to a conflict in tuner allocation and usage.” It is my opinion that neither of those
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`disclosures is restricted to the “allocation” of a tuner at the present time because the
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`’512 patent also contemplates the scheduling of programs in the future that may
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`cause a tuner conflict when those programs become available for recording.
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`
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`The Prior Art Does Not Distinguish Between Tuner And Timer
`Conflicts
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`13.
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`In my opinion, the prior art does not make a distinction between tuner
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`and timer conflicts as Rovi now asserts. The key here is whether or not the user of
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`a television system such as a set-top box has an unassigned tuner available when he
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`or she wants the system to perform an additional service such as recording a new
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`program. That situation can occur immediately, as when a user of a two-tuner
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`system has already assigned tasks to both of those tuners (e.g., recording two
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`different programs or watching one program while recording it or a different
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`program), and then tries to view or record a third program. That situation can also
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`occur when a user has scheduled the recording of two different programs in the
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`future and then tries to schedule a third recording that overlaps the future time when
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`both tuners will already be recording a program as scheduled. In that case, the
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`conflict can be recognized at the time of scheduling, or it can arise later when the
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`overlapped situation arises, as for example if the user is watching a third program
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`when the two scheduled recordings are broadcast. In both cases, the conflict arises
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`6
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`when an N-tuner system is asked to perform N+1 functions. The time frame – now
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`or in the future – is not the issue. What is the issue is the lack of a sufficient number
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`of tuners to meet the user's requests, and the prior art, by teaching the inclusion of at
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`least two tuners in the user's system, shows how the conflict problem can be made
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`less troublesome than with a one-tuner system.
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`14.
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`In seeking to draw a distinction between a tuner conflict and a timer
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`conflict, Rovi’s expert, Dr. Balakrishnan, has opined that scheduling a recording
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`only one second in the future is indistinguishable from a tuning operation such as a
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`channel change. Ex. 1110 at p. 32. I disagree with Dr. Balakrishnan's contrived
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`interpretation. As I explained above, the time when a conflict occurs, whether at the
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`present, one second in the future, or a week into the future, is not the issue behind
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`the conflict, and the simple fact taught by the prior art addressed in my prior
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`Declaration (Ex. 1107) and the Petition is that adding a second tuner greatly reduces
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`the likelihood of such a conflict arising now or in the future. Further, should a
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`conflict occur with two tuners, a user has three basic options to resolve it: cancel the
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`function of the first tuner, cancel the function of the second tuner, or cancel the
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`requested tuner operation.
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`15. With respect to Nagano, in my opinion that reference describes the very
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`thing that Rovi now alleges to be a tuner conflict, thus rendering any timer versus
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`tuner distinction moot. Nagano, for example, provides an alert in the event of a user
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`7
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`seeking to make overlapping recordings. See Ex. At 1104, FIG. 13-16, 4:26-35, and
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`8:51-12:67. Nagano does not place any limitation on when the scheduling of the
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`times of recording is determined, however, and a set of overlapping recordings could
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`certainly be set at the current time.
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` The Tuner in Nagano Cannot Always Be Available
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`16. Rovi also asserts that the only function of the Nagano system is to
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`record a selected program, and, as a result, “[t]here is no reason to determine tuner
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`availability because the Nagano tuner is always available whenever the recording
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`circuit is available to record.” Response at p. 1. That assertion appears to assume
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`that a user of the Nagano system would never watch a television program that has
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`also been scheduled for recording. Nagano discloses such viewing and recording,
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`however. See Ex. 1104, 1:23-38 (underlining added):
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`For easy searching of a desired program, the method described herein
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`under has been used, that is, data of the program table of each channel
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`is inserted in the vertical blanking interval of the video signal of a
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`specific channel so that the insertion does not disturb the television
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`signal of the program, and such data is transmitted to users, a user
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`views the transmitted program table data on a television display, and
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`searches the channel to select the desired program of the channel.
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`This program table data is referred to as electronic program guide, the
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`electronic program guide can be displayed on a screen for individual
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`8
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`categories of program such as sports, news, and movies, and on the
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`display of the electronic program guide on a screen, a user can select
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`a program for receiving and can reserve for recording of a program.
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`17. As disclosed above, Nagano discloses the use of a specific channel for
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`communicating the IPG data, but assures that the “television signal of the program”
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`being carried on that channel is undisturbed for viewing if the user selects that
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`program for receiving. Thus, Rovi is incorrect in asserting that Nagano fails to
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`disclose using its picture recorder for viewing programs. Response at p. 28. Rather,
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`a POSITA would understand that Nagano’s system is designed to view programs as
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`well as to record them. Rovi’s assertion makes no sense; there would be no reason
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`to record a program without the capability to view the program at a later time.
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`18. Further, since the selection of the specified IPG channel for
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`downloading the data defining the program guide ties up Nagano’s single tuner for
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`that purpose, the utility of adding a second tuner as I explained in my first
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`Declaration is clear, since having that second tuner will allow a user of the Nagano
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`system to view or record a television program being carried on one of the other
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`channels while the data defining the guide are being received. Ex. 1107 at ¶¶ 98-
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`102.
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`9
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` Alexander Is A Two-Tuner System
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`19. Rovi also contends that one of the two tuners disclosed in the Alexander
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`reference can only be used to display a received channel in a picture-in-picture (PIP)
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`window. Response at pp. 28-29; Rovi Ex. 2108, Declaration of Ravin Balakrishnan,
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`¶ 82. First, even if that were correct, the display of a program in a PIP window does
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`not preclude recording that program at the same time. See Ex. 1105 at 14:35-41.
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`Second, Rovi’s assertion, however, is incorrect. See Alexander at 14:26-41 which
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`explains that the “Windows 95 operating system … allows the PC user to control the
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`size and position of various functional windows [not just a PIP window] … while
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`the television monitor continues to receive a second video signal of a second
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`television channel tuned by a second television tuner.” That disclosure shows the
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`usefulness of having a second tuner as disclosed by the Alexander system. For
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`example, if the program being displayed in Alexander’s PIP window was being
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`recorded [similar to the channel carrying the IPG data in Nagano], Alexander’s
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`Record Instruction Conflict Resolution function would alert the user to any
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`conflicting recording requests. Ex. 1105 at 12:52-64.
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`20. As to Alexander’s disclosure of detecting conflicts in “future-scheduled
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`programming,” Rovi asserts that this feature [which I did not rely on regarding
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`adding Alexander’s second tuner to Nagano] “can include 'incompletely executed'
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`record instructions like an instruction to regularly record a series in which there are
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`10
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`future episodes to be recorded.” Response at pp. 39-40. While that can certainly be
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`an example of an incompletely recorded program, that term can also apply to the as-
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`yet incomplete recording of a program that is currently in progress.
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`V. THE ’512 CLAIMS ARE OBVIOUS IN VIEW OF NAGANO-
`ALEXANDER AND NAGANO-CHUN
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` Ground 1: Modifying The Single Tuner Conflict Resolution
`System of Nagano With The Second Tuner Of Alexander Would
`Have Been Obvious To A POSITA
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`21. Rovi asserts that Petitioner, including my opinions as explained in my
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`first Declaration, failed to demonstrate a motivation to combine Nagano and
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`Alexander (Ground 1). Response at p. 45. In making that assertion, Rovi ignored
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`my statements that it would have been obvious to a POSITA to modify the IPG-
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`enabled conflict-resolution method and system of Nagano with the multiple-tuner
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`method and system of Alexander to provide a user with a simplified capability to
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`correct programming conflicts, such as canceling a requested tuner function. Ex.
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`1107 at ¶ 83. Adding a second tuner to Nagano would consist of simply replicating
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`the tuner circuitry that Nagano already had, and given the nature of those conflict-
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`resolution systems, in my opinion since the first tuner is controlled by software in a
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`microprocessor, adding the capability of detecting conflicts with two tuners would
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`be a straightforward programming task, something well within the capabilities of a
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`POSITA. Those modifications would only involve use of prior art elements such as
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`11
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`Nagano’s first tuner and microprocessor controller, according to their established
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`functions.
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`22. Further, in my opinion as I explained in my first Declaration, a POSITA
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`would have found performing functions such as determining a conflict, providing an
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`alert, and canceling a tuner function for a second tuner to be easily implemented in
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`view of Nagano’s teachings for performing such functions with a single tuner and a
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`programmable controller. Ex. 1107 at ¶¶ 83, 126-127. Thus, applying such
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`techniques to a second tuner would yield the expected results.
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`23.
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`In my first Declaration, I also explained my opinion that after adding a
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`second tuner to Nagano, as disclosed by Alexander, it would be a straightforward
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`programming process to respond to the reception of a user selection to not cancel the
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`function of the second tuner in a conflict situation, thereby having the second tuner
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`continue to perform the function previously assigned to it. Ex. 1107 at ¶¶ 87-89. As
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`I also explained in my earlier Declaration, Nagano’s single-tuner system already
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`discloses that a user, after receiving a conflict alert, can choose to cancel the
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`requested action or to proceed with a previously scheduled tuner function.
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`Expanding that concept to two tuners would have been a routine use of the prior art
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`elements according to their established functions. Ex. 1107 at ¶ 89.
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`24. Rovi is also incorrect in asserting that Petitioner and I never addressed
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`Nagano and Alexander as a whole, or the technical obstacles to modifying Nagano’s
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`12
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`recorder to add another tuner from Alexander or Chun. See Response at p. 45. First,
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`I did not apply Alexander “as a whole” to Nagano; I only used it as evidence that a
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`POSITA would know the utility of adding a second tuner to Nagano. Second, as I
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`explained above, there are few, if any, “technical obstacles” to replicating Nagano’s
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`first tuner or to adding expanded conflict-resolution programming to the software
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`already used to control Nagano’s first tuner.
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`25. Further, having used Alexander’s teaching regarding the usefulness of
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`adding a second tuner to Nagano, in my opinion a POSITA would have understood
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`that instead of looking at conflicts only for recordings in the two-tuner system, the
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`Nagano IPG could look for a conflict between assigning a tuner to perform other
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`typical functions (e.g., channel change, PIP requests, etc.) that can create conflicts
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`between the two tuners. A POSITA would therefore be motivated to make such a
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`change because the addition of the second tuner provides an improved user
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`experience by allowing uninterrupted viewing of one television program, even while
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`recording a second program or performing a secondary function such as PIP.
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`26. Rovi also asserts that Nagano does not teach viewing a live program.
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`Response at p. 28. Nagano’s FIG. 1, however, clearly shows TUNER CIRCUIT 2
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`output, which outputs VIDEO to DISPLAY CIRCUIT 7-2. I pointed out above
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`disclosures regarding viewing a television program in Nagano. See ¶¶ 16-17.
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`Having used Alexander’s teaching regarding the usefulness of adding a second tuner
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`13
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`to Nagano, in my opinion a POSITA would have easily modified Nagano’s control
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`software to assign one tuner to viewing a first television program, the second tuner
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`to recording a second program, and then recognizing that a conflict would be created
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`if and when a user requested viewing or recording a third television program.
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`27. Rovi also asserts that Nagano does not teach cancelling the viewing of
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`a currently viewed program. Response at pp. 38-40. Having used Alexander’s
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`teaching regarding the usefulness of adding a second tuner to Nagano, in my opinion
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`a POSITA would have easily modified Nagano’s control software to provide the user
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`the opportunity to cancel the function of either the first or second tuner when the
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`function of one of those tuners is the viewing a television program. In my opinion,
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`a POSITA would therefore be motivated to make such a change because the
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`modification furthers the goal of providing an improved user experience by allowing
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`uninterrupted viewing of television programming.
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`28. Rovi also asserts that Nagano does not teach displaying a conflict alert
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`due to a tuning operation in the form of a display on display screen that provides the
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`user with a first option to continue to perform the function of the second tuner or as
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`a second option to cancel the function of the second tuner to perform the requested
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`tuning operation so as to resolve a conflict. See Response at pp. 32-40. Having used
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`Alexander’s teaching regarding the usefulness of adding a second tuner to Nagano,
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`in my opinion a POSITA would have easily modified Nagano’s control software to
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`14
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`provide the user the opportunity to cancel or maintain the function of the second
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`tuner. In my opinion, a POSITA would be motivated to make such a change because
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`the modification furthers the same goal of providing an improved user experience
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`by simplifying the control over desired television programming and by allowing
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`uninterrupted viewing of television programming.
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`Predictable Use Of The Prior Art Elements
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`29. Rovi also asserts that Petitioner and I in my prior Declaration failed to
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`explain what the “predictable use” of prior art elements in each proposed
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`combination of references would be. Response at pp. 46-47. I disagree. In fact, I
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`pointed out that adding a second tuner to Nagano as disclosed by Alexander would
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`increase the viewable and recordable content available to the user, including
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`explaining that a POSITA would have found performing functions such as
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`determining a conflict, providing an alert, and canceling a tuner function for a second
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`tuner to be obvious in view of Nagano’s teachings for performing such functions
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`with a single (i.e., the first) tuner. See e.g., Ex. 1107 at ¶¶ 66, 70, 83, 101, 116, 121.
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`Rovi also asserted that modifying Nagano to add a second tuner was unnecessary
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`since “Nagano's recorder . . . already includes an EPG that serves that purpose for
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`the recorder.” Response at p. 46. That assertion ignores the benefits I identified that
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`would come from having a two-tuner system. Further, the addition of a second tuner
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`to Nagano is a simple substitution of one known element for another to obtain
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`15
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`predictable results. For example, the substitution of the tuner in Nagano with a
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`second tuner, as taught by Alexander and Chun, using the same technique taught by
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`Nagano to resolve a conflict, is a simple substitution of one known element for
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`another that yields predictable results and is a predictable use of the prior art
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`elements.
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`30. Rovi also asserts that in my prior Declaration I failed to explain how
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`the addition of a second tuner could increase the content available to the user.
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`Response at pp. 48-49. That assertion shows a surprising lack of understanding
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`about the way television programming is transmitted over the air or cable. At any
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`given time, multiple programs are carried in parallel over such media, and a one-
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`tuner system can only select one of those programs for viewing or recording. A two-
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`tuner system will allow the user to select one channel for recording and later viewing,
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`while simultaneously viewing a second channel. That doubles the content available
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`to the user.
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`31. Rovi also asserts that “to the extent that Alexander discloses two tuners,
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`they are television tuners, not tuners of a recorder.” Response at p. 47. That
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`assertion is far off target from a technical viewpoint. A “tuner” selects a single
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`channel from a signal carrying multiple channels, and the selected channel can then
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`be recorded or viewed. A given tuner can serve either purpose.
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`16
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` Ground 2: Modifying The Single Tuner Conflict Resolution
`System of Nagano With The Second Tuner Of Chun Would Have
`Been Obvious To A POSITA
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`32.
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`I discussed Nagano in detail in my first Declaration. I also described
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`the Chun system as describing a self-contained, multi-tuner system with a PIP
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`function that can be implemented by using either tuner. Ex. 1107 at ¶ 60. In the
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`Ground 2 combination, I used Chun only to teach the usefulness of having a second
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`tuner and a PIP capability. Thus, Rovi's assertion that “Chun has no disclosure of
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`using its tuners for recording” is of no relevance, nor is Chun's lack of disclosure of
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`any form of conflict detection. Response at p. 31. Those capabilities are already
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`provided by Nagano.
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`33. Rovi also asserts that Petitioner and I failed to show how Chun's
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`microprocessor and its control signals could be used in combination with Nagano.
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`Response at pp. 52-53. There, once again, however, Rovi ignores the fact that there
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`is no need to bring Chun's microprocessor into the Nagano system since Nagano
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`already has a microprocessor available to control its first tuner and an added second
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`tuner.
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`VI. THE CITED PRIOR ART DISCLOSES THE LIMITATIONS IN THE
`DEPENDENT CLAIMS
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`34. As an initial matter, Rovi has not disputed that the additional limitations
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`of dependent claims 3 and 15, 4 and 16, 5 and 17, 11 and 23, as well as 12 and 24
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`17
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`are disclosed by the prior art combinations of Nagano/Alexander and Nagano/Chun.
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`I address the dependent claims that Rovi has disputed below.
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`A. Claims 2 and 14
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`35. Claims 2 and 14 depend from claims 1 and 13 and further require:
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`receiving a user selection to not cancel the function of the second
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`tuner; and in response to the user selection to not cancel the function
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`of the second tuner, continuing to perform the function of the second
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`tuner.
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`36.
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`It is my opinion, as explained in my first Declaration, that Alexander
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`discloses that the “EPG’s Record Function recognizes conflicts in viewer record
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`instructions” and Alexander’s IPG “prompts the viewer to resolve the conflict,”
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`where that conflict could be resolved by the user choosing not to cancel the requested
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`function of the second tuner, thereby allowing that tuner to continue to record or to
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`execute some other tuner function. Ex. 1107 at ¶ 57. Given the disclosures identified
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`above, it is my opinion that Nagano in view of Alexander or Chun invalidates claims
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`2 and 14 of the ’512 patent through obviousness. In making that combination, a
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`POSITA would simply modify Nagano by adding a second tuner as taught by
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`Alexander or Chun, to obtain a more capable system by using standard engineering
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`techniques to replicate the microprocessor-controller tuner Nagano already had.
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`Further, extending Nagano’s conflict resolution software to allow it to operate with
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`18
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`a two-tuner system would have been readily done since identifying a tuner conflict
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`is a straightforward problem, and “continuing to perform the function of the second
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`tuner” is an obvious way to resolve such a conflict.
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`37.
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`I note that a POSITA can only choose from a finite number of possible
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`solutions to resolve conflicts in a two-tuner system: the function of the first tuner
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`can be cancelled or continued, the function of the second tuner can be cancelled or
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`continued, or the new request can be cancelled or continued. In other words, if a
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`user chooses to continue a current tuner function, then either the request must be
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`cancelled or the function of the other tuner must be cancelled. If the user chooses to
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`continue with the new request, then one of the current tuner functions must be
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`cancelled.
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`38. Extending Nagano’s conflict resolution system to recognize conflicts
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`with a second tuner, as taught by Alexander or Chun, would be a simple modification
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`to Nagano’s preexisting control software to respond to a conflict by giving the user
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`the opportunity to cancel a new request or, alternatively, to maintain the function
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`assigned to the second tuner. Such a modification of Nagano would clearly improve
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`a user’s viewing experience by allowing uninterrupted viewing of television
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`programming even while the recording of a second program takes place.
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`B. Claims 6 and 18
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`39. Claims 6 and 18 depend from claims 1 and 13 and further require:
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`19
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`wherein a function of the first tuner is viewing a first television
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`program, the function of the second tuner is performing a secondary
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`tuner function, and the requested tuning operation is recording a
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`second television program.
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`40. As I explained in my first Declaration, Nagano discloses a single-tuner
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`system with a conflict identification capability, wherein the tuner functions that can
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`create a conflict include receiving and viewing a program, recording a program, and
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`retrieval of EPG data. Alexander and Chun both disclose providing a second tuner,
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`something I previously explained would also be beneficial to add to the Nagano
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`system. In so doing, however, I proposed simply to add that second tuner to Nagano.
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`Even so, Rovi has criticized my position by considering Alexander and Chun
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`individually, rather than considering only the specific nature of my proposed
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`combinations. Thus, Rovi’s assertion that neither Nagano, Alexander, nor Chun
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`individually discusses resolving a conflict involving the second tuner is irrelevant.
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`What Rovi should have considered is the system that results when a second tuner is
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`added to Nagano as taught by Alexander and Chun. As explained in my first
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`Declaration, the tuners taught by Alexander and Chun have secondary tuning
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`functions such as PIP, functions which can then be implemented with Nagano once
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`a second tuner is provided to the Nagano system. Ex. 1107 at ¶¶ 55 and 60.
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`41. Further, once the second tuner is added to Nagano, instead of looking
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`at conflicts only for recordings, the Nagano IPG could readily be reprogrammed to
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`20
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`recognize a conflict based upon any function (e.g., channel change, PIP requests,
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`etc.) that involves those two tuners. Modifying Nagano’s conflict resolution system
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`with a second tuner, as well as adding secondary tuning functions (i.e., PIP) which
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`are taught by Alexander and Chun, would only require a simple modification to
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`Nagano’s control software.
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`42. On page 45 of its Response, Rovi asserts that I “never address[ed] the
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`references as a whole or the technical obstacles to modifying Nagano’s recorder to
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`add another tuner from Alexander or Chun.” I disagree. In my prior Declaration, I
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`addressed in detail what the combinations of the cited references disclose, as well as
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`the manner in which a POSITA would readily be able to make those combinations.
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`Alexander, for example, teaches that both of his system’s tuners can display video,
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`and that the program displayed in the PIP window can also be recorded. Ex. 1105
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`at 14:35-41. Chun also teaches a system with two tuners and a secondary tuner
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`function of displaying a PIP. In fact, Chun’s “Background of the Invention” section
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`clearly states that the “invention utilizes the picture-in-picture (PIP) function of
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`existing and well-known television and video cassette recorder (VCR) technology.”
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`Ex. 1106 at 1:18-20. That clearly teaches displaying a PIP as an aspect of a
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`television system.
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`43.
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`In my opinion, a POSITA would be motivated to modify the system of
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`Nagano with the multiple tuners taught by both Alexander and Chun because adding
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`21
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`a second tuner to the Nagano system furthers the same goal of providing an improved
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`user experience by increasing access to additional programming content, and
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`allowing for the uninterrupted viewing of one television program while recording
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`another.
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`44. Rovi also asserts that Chun does not disclose a recorder receiving input
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`from one of its tuners, but there, too, Rovi has addressed an aspect of Chun that I did
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`not rely on when prop
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