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.: IPR2017-00941
`
`Patent No.: 9,172,987
`
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S SUPPLEMENTAL
`RESPONSE
`
`
`
`
`
`
`
`
`
`
`

`

`A. 
`
`B. 
`
`B. 
`
`C. 
`
`
`
`Table of Contents
`
`I. 
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`THE COMBINATION OF KAMADA WITH EITHER
`PEDRIZETTI OR WANG TEACHES THE FEATURES OF
`CLAIM 11 ....................................................................................................... 3 
`Petitioner’s Arguments With Respect to Claims 9 and 11 are
`Consistent. .................................................................................................... 3 
`Kamada in View of Either Pedrizetti or Wang Renders Claim
`11 Obvious ................................................................................................... 5 
`III.  A PHOSITA WOULD HAVE MODIFIED KAMADA WITH
`WANG’S EPG TO ARRIVE AT THE LIMITATIONS OF
`CLAIMS 5-7 AND 13-15 ................................................................................ 7 
`A.  A PHOSITA Would Have Modified Kamada With Wang’s
`EPG to Arrive at the Features Described in Claims 5-7 and
`13-15 ............................................................................................................ 8 
`Patent Owner Seeks to Dissociate an STB From its Widely
`Known Use of Displaying an EPG ............................................................ 10 
`The Combination of Kamada and Wang Teaches the
`Limitations of Claims 5 and 13 ................................................................. 15 
`1.  Claims 5 and Claim 13 Require an Updated Display
`Resulting From the Display Item Being Updated to Have
`the Second Program Function ............................................................... 15 
`2.  Claims 5 and 13 Do Not Require That The Updating Step Be
`Based On Only A Single Markup Language Document ....................... 17 
`3.  Wang Discloses An Arrangement By Theme ........................................... 19 
`D. 
`The Combination of Kamada and Wang Teaches the
`Limitations of Claims 6 and 14 ................................................................. 20 
`1.  Patent Owner’s Argument that Updating of the Display Item
`is Not Caused by the Second Program Function
`Contradicts the Express Language of Claim 6 and Similar
`Language of Claim 14 ........................................................................... 20 
`2.  Claims 6 and 14 Do Not Require That The Updating Step Be
`Based On Only A Single Markup Language Document ....................... 20 
`
`
`
`ii
`
`

`

`IV.  PETITIONER’S GERBA GROUNDS ESTABLISH THAT
`CLAIMS 1-16 ARE OBVIOUS .................................................................... 20 
`CONCLUSION .............................................................................................. 27 
`
`V. 
`
`
`
`
`
`
`
`
`iii
`
`

`

`Previously Presented:
`
`EXHIBITS
`
`Exhibit-1101:
`
`U.S. Patent No. 9,172,987 (“Lemmons”).
`
`Exhibit-1102:
`
`U.S. Patent No. 5,822,123 (“Davis”).
`
`Exhibit-1103:
`
`U.S. Patent No. 5,905,492 (“Straub”).
`
`Exhibit-1104:
`
`U.S. Patent No. 6,445,398 (“Gerba”).
`
`Exhibit-1105:
`
`Declaration of Dr. Andrew B. Lippman.
`
`Exhibit-1106:
`
`Exhibit-1107:
`
`Reply to Office Action and Amendment, date stamped June 25,
`2001, in application for U.S. Patent No 6,442,755.
`
`Microsoft Press Computer Dictionary, Fourth Ed., May 1999,
`selected portions including cover, bibliographical page, and p.
`405 (3 pages total).
`
`Exhibit-1108:
`
`U.S. Patent No. 6,772,394 (“Kamada”).
`
`Exhibit-1109:
`
`U.S. Patent No. 6,675,385 (“Wang”).
`
`Exhibit-1110:
`
`U.S. Provisional Patent Application No. 60/091,975.
`
`Exhibit-1111:
`
`U.S. Patent No. 6,151,708 (“Pedrizetti”).
`
`Exhibit-1112:
`
`Exhibit-1113:
`
`Exhibit-1114:
`
`Exhibit-1115:
`
`Non-Final Office Action dated March 16, 2012, in application
`for Lemmons patent.
`
`Reply to Non-Final Office Action, dated September 7, 2012, in
`application for Lemmons patent.
`
`Non-Final Office Action dated January 31, 2013, in application
`for Lemmons patent.
`
`Reply to Non-Final Office Action, dated May 31, 2013, in
`application for Lemmons patent.
`
`
`
`iv
`
`

`

`Exhibit-1116:
`
`Exhibit-1117:
`
`Exhibit-1118:
`
`Exhibit-1119:
`
`Exhibit-1120:
`
`Exhibit-1121:
`
`Exhibit-1122:
`
`Exhibit-1123:
`
`Exhibit-1124:
`
`Exhibit-1125:
`
`Exhibit-1126:
`
`Exhibit-1127:
`
`Final Office Action dated June 18, 2013, in application for
`Lemmons patent.
`
`Non-Final Office Action dated November 12, 2013, in
`application for Lemmons patent.
`
`Response to Office Action, dated May 9, 2014, in application
`for Lemmons patent.
`
`Final Office Action dated October 10, 2014, in application for
`Lemmons patent.
`
`Request for Continued Examination (“RCE”) Under 37 CFR
`§ 1.114 and Reply to Office Action, dated February 9, 2015, in
`application for Lemmons patent.
`
`Non-Final Office Action dated April 1, 2015, in application for
`Lemmons patent.
`
`Reply to Office Action Under 37 § CFR 1.111, dated July 1,
`2015, in application for Lemmons patent.
`
`Notice of Allowance, dated July 21, 2015, in application for
`Lemmons patent.
`
`Merriam-Webster’s Collegiate Dictionary, 10th Ed., 1998,
`selected portions including cover, title page, bibliographic page,
`and p. 711 (4 pages total).
`
`“Rags to Riches to Rags: The Rise and Fall of Internet
`Explorer,” http://www.digitaltrends.com/computing/the-rise-
`and-fall-of-internet-explorer/, April 15, 2015.
`
`U.S. Patent Application serial no. 09/018,541 (“the Gerba
`Parent”), as filed February 4, 1998.
`
`Continued Prosecution Application (CPA) filed June 8, 2001,
`during prosecution of U.S. Patent Application serial no.
`09/103,317.
`
`
`
`v
`
`

`

`Exhibit-1128:
`
`Exhibit 1129:
`
`Exhibit 1130:
`
`
`Exhibit 1131:
`
`
`Exhibit 1132:
`
`Exhibit-1133:
`
`
`Exhibit-1134:
`
`
`Exhibit-1135:
`
`
`Exhibit-1136:
`
`
`Exhibit-1137:
`
`Filed Herewith
`
`Exhibit-1138:
`
`
`
`
`
`U.S. Patent Application serial no. 09/103,317, as filed June 24,
`1998.
`
`Claim Construction Opinion and Order issued August 10, 2017,
`in Rovi Guides, Inc. v. Comcast Corporation, SDNY case no.
`1:16-cv-09278.
`
`Second Declaration of Andrew J. Lippman, Ph.D. in Support of
`Petitioner Comcast Cable Communication LLC’s Reply to
`Patent Owner Response
`
`Excerpts of the transcript of the deposition of Michael Shamos,
`Ph.D. relating to the pending district court action styled Rovi
`Guides, Inc. v. Comcast Corporation et al., U.S. District Court
`for the Southern District of New York, Case No. NYSD-1:16-
`cv09278.
`
`Declaration of Krishnan Padmanabhan
`
`Transcript of the Deposition of Brian Von Herzen, Ph.D. taken
`on February 20, 2018.
`
`Transcript of the Conference Call with Board held on May 10,
`2018
`
`Petitioner’s Demonstrative Exhibits for Oral Argument
`
`Amendment dated October 17, 2017, from the prosecution
`history of related U.S. Patent Application No. 14/873,913
`
`Final Office Action dated January 25, 2018, from the
`prosecution history of related U.S. Patent Application No.
`14/873,913
`
`Supplemental Reply Declaration of Andrew J. Lippman, Ph.D.
`in Support of Petitioner Comcast Cable Communication LLC’s
`Reply to Supplemental Patent Owner Response
`
`vi
`
`

`

`Exhibit-1139:
`
`
`Exhibit-1140
`
`Exhibit-1141
`
`Transcript of the deposition of Mr. Michael Barr taken on July
`11, 2018.
`
`“Java: Small is beautiful”, CNN.com posted 12:50 PM EDT
`Oct. 27, 1998 (available at
`http://www.cnn.com/TECH/computing/981027/embedjava.idg/i
`ndex.html)
`
`Symantec News Release dated Feb. 17, 1998
`
`
`
`
`
`vii
`
`

`

`I.
`
`INTRODUCTION
`
`Pursuant to the Board’s Orders of May 15 (Paper 34) and June 12 (Paper 48),
`
`Petitioner responds to the Supplemental Patent Owner’s Response (Supp. Resp.)
`
`dated July 5, 2018, relating to the newly instituted grounds. The grounds at issue
`
`(“newly instituted grounds”) in that response are:
`
`(1) that claim 11 is obvious over Kamada and Pedrizetti;
`
`(2) claims 5-7, 11, and 13-15 are obvious over Kamada and Wang (together,
`
`“the added Kamada grounds”); and
`
`(3) that claims 1-5, 7-13, 15, and 16 are obvious over Gerba and Straub and
`
`that claims 6 and 14 are obvious over Gerba, Straub, and Davis (together,
`
`“the added Gerba grounds”).
`
`As explained below, Patent Owner has attempted to poke holes in these
`
`grounds by misinterpreting the claim language, adding limitations not in the claim
`
`language, misapprehending the prior art, and presenting mere attorney argument
`
`against Petitioner’s expert opinions. All of Patent Owner’s arguments should be
`
`rejected.
`
`First, Patent Owner attempts to undermine Petitioner’s showing of
`
`obviousness in the added Kamada grounds with respect to claim 11 by falsely
`
`claiming that there is inconsistency between the arguments Petitioner made with
`
`
`
`1
`
`

`

`respect to claims 9 and 11. (Supp. Resp., 5-9.) There is no such inconsistency and
`
`the Board should reject Patent Owner’s argument.
`
`Second, Patent Owner asserts that a PHOSITA would not have modified
`
`Kamada with Wang’s EPG to arrive at the limitations of claims 5-7 and 13-15.
`
`(Supp. Resp., 10.) For instance, Patent Owner asserts that a PHOSITA would not
`
`have been motivated to combine Kamada and Wang. (Id., 12-17.) However, these
`
`arguments have no merit. For instance, the Petition demonstrated a strong
`
`motivation to combine Kamada with Wang’s EPG. (Petition, 43-44, 48, 51-52.)
`
`Further, Patent Owner’s arguments ignore the express teachings of Wang that STBs
`
`require EPG service. (Exhibit-1109, 2:45-46.) In essence, Patent Owner seeks to
`
`dissociate a STB from its well-known functionality of providing EPGs. The Board
`
`should, therefore, reject Patent Owner’s argument.
`
`Third, Patent Owner asserts that the combination of Kamada and Wang fail to
`
`show the limitations of claims 5-6 and 13-14 at least because the combination would
`
`allegedly require the use of two HTML documents. (Supp. Resp., 17-21.) But
`
`nothing in these claims requires that the update be based on a single HTML
`
`document. The Board should, therefore, reject Patent Owner’s argument.
`
`Fourth, Patent Owner argues that Petitioner has not offered sufficient reason
`
`for combining the Gerba and Straub references. To the contrary, Petitioner has
`
`offered several reasons (supported by expert declaratory evidence) why a PHOSITA
`
`
`
`2
`
`

`

`would have modified Gerba with Straub. Patent Owner’s unsupported attorney
`
`argument to the contrary does nothing to change this. The Board should, therefore,
`
`reject Patent Owner’s argument.
`
`II. THE COMBINATION OF KAMADA WITH EITHER PEDRIZETTI
`OR WANG TEACHES THE FEATURES OF CLAIM 11
`
`Patent Owner argues that Kamada in combination with either Pedrizetti or
`
`Wang does not render claim 11 obvious because there is an alleged inconsistency in
`
`how the Petition applies the term “display item” to claims 9 and 11. (Supp. Resp.,
`
`5.) But the arguments are, in fact, consistent.
`
`A. Petitioner’s Arguments With Respect to Claims 9 and 11 are
`Consistent.
`
`With respect to claim 9 and by way of example, the Petition identified
`
`Kamada’s “remote button identifier ‘2’ [as] a display item that, when button 2 on
`
`the remote control is selected, selects the ‘NAVIGATOR’ hotspot and activates the
`
`hot spot’s corresponding web browser.” (Petition, 25, emphasis added.) The Petition
`
`further explained that the button identifier “2” would be altered “to be assigned to
`
`the traffic hot spot” so that, when selected, it “activates a traffic function” instead of
`
`the “corresponding web browser.” (Id., 29, emphasis added.)
`
`With respect to claim 11 and by way of example, the Petition further pointed
`
`out that when the remote button identifier “2” was assigned different functionality
`
`in response to user input, the text corresponding to the button identifier “2” would
`
`
`
`3
`
`

`

`change from “NAVIGATOR” to “TRAFFIC.” (Id., 31-32.) Patent Owner asserts
`
`that these statements are somehow inconsistent. They aren’t.
`
`As an initial matter, the term “display item” is not a term that defines a specific
`
`item on a screen. Rather, a “display item” is “anything that is displayed.” (Petition,
`
`14; Exhibit-1105, ¶74; Exhibit-1138, ¶¶12-19.) And, in fact, Kamada has multiple
`
`items on its screens that would be thought of as “display items.” (Exhibit-1138,
`
`¶¶14-19.) For instance, a single numeral (e.g., “2”) is an example of a display item
`
`in Kamada. (Id.) So is the combination of a numeral and a corresponding description
`
`of a function assigned to it (e.g., “2: TRAFFIC”). (Id.)
`
`Patent Owner wrongly asserts that “Petitioner unequivocally argues that the
`
`claimed display item is only the ‘2’ displayed on the screens of Kamada Figures 1
`
`and 9.” (Supp. Resp., 8.) This is not true. Petitioner has consistently paired the
`
`“button identifier ‘2’” and its related description (e.g., “TRAFFIC”,
`
`“NAVIGATOR”, etc.) in its identification of the claimed display item. (See
`
`Petition, 24-25, 28-29, 31-32, 35-36, 41; Reply, 12-14). That is the item from
`
`Kamada that Petitioner has argued is the same as the claimed “display item” is a
`
`
`
`4
`
`

`

`semantic grouping of a numeral and its related description1. (Exhibit-1138, ¶19.) As
`
`an example, the Petition relied on “2: TRAFFIC” and “2. NAVIGATOR” from
`
`FIGs. 1 and 9 to show the same hotspot having a changing program function assigned
`
`to it. (Id.; Petition, 24-25 and 28-29.) Thus, a chief basis for Patent Owner’s
`
`arguments here relies on a misrepresentation of the record. In any event, the fact
`
`that the description associated with the numeral “2” changes does not make the
`
`display items different—they are the same display item representing the same
`
`semantic element. (Exhibit-1138, ¶¶20-25.)
`
`B. Kamada in View of Either Pedrizetti or Wang Renders Claim 11
`Obvious
`
`Kamada teaches claim 11. As explained in the Petition, Kamada discloses
`
`using a remote control button to select and activate a traffic link function. (Petition,
`
`31-32; Exhibit-1108, 5:8-25, 7:4-17.) Subsequently, when the home page is retrieved
`
`after the NAVIGATOR hot spot is selected in the initial menu screen, the textual
`
`description of the hot spots and corresponding icons (assigned to the displayed
`
`button identifiers) are updated to describe new hot spots derived from the home page.
`
`(Petition, 31-32; Exhibit-1108, 5:8-25, 7:4-17.) Each time a new HTML page is
`
`
`1 Patent Owner’s expert, Dr. Shamos, agrees, explaining “I think it is a philosophical
`
`matter. I think you can take a display item, you can change the text of the display
`
`item. It is still the same display item, but it looks different.” (Exhibit-1131, 11:7-18.)
`
`
`
`5
`
`

`

`presented, text and icons for the hot spots are changed to reflect hot spots in the new
`
`HTML page. (Exhibit-1105, ¶121.) Thus, hot spot descriptions and icons are
`
`updated based on the traffic HTML page. (Petition, 31-32, Exhibit-1108, Fig. 1, Fig.
`
`9, 6:37-59, 7:4-17, 7:55-58, 8:33-44.) For example, text and icons corresponding to
`
`button identifier “2” would be updated. (Id.) Kamada, thus, teaches causing “a
`
`display of the display item to change in response to a user input,” as recited by claim
`
`11.
`
`Patent Owner has asserted that Petitioner has argued that the claimed display
`
`item is “only” the numeral displayed on the screens of FIGs. 1 and 9 of the Kamada
`
`reference. While this statement is false for the reasons stated above, even if it were
`
`true, Kamada would still teach changing a display of the display item in response to
`
`user input.
`
`For instance, Kamada shows that the positions of numerals change between
`
`FIGs. 1 and 92.
`
`
`2 Patent Owner’s new expert, Mr. Barr, agrees, explaining during his deposition that
`
`the numerals are in different positions in FIGs. 1 and 9. (Exhibit-1139, 81:3-19.)
`
`
`
`6
`
`

`

`
`
`A PHOSITA would have understood this to be an example of changing the
`
`display (here, layout) of a display item in response to a user input. (Exhibit-1138,
`
`¶¶26-27.) Thus, even if Petitioner had relied “only” on the numerals for the display
`
`item of claim 9, the Board should still find that Kamada teaches that the “same”
`
`display item is changed in response to user input, as required by claim 1.
`
`III. A PHOSITA WOULD HAVE MODIFIED KAMADA WITH WANG’S
`EPG TO ARRIVE AT THE LIMITATIONS OF CLAIMS 5-7 AND 13-
`15
`
`The combination of Kamada and Wang teaches the features of claims 5-7 and
`
`13-15, which recite well-known features of an EPG. (Exhibit-1138, ¶28.) Kamada
`
`does not explicitly describe well-known EPG features. However, Wang teaches
`
`such features. Petitioner relied on Wang to show well-known features of an EPG
`
`including (i) updating a plurality of program listings from being displayed by
`
`channel to being displayed by theme (claims 5 and 13), (ii) updating a plurality of
`
`program listings from being displayed as a grid to being displayed as a list (claims 6
`
`and 14), and (iii) the second program function causing, in response to user input, the
`
`
`
`7
`
`

`

`updated set-top box to generate for display a program listing screen, start a recording,
`
`set a favorite channel, or set a reminder (claims 7 and 15). (See Petition, 41-52.)
`
`A. A PHOSITA Would Have Modified Kamada With Wang’s EPG
`to Arrive at the Features Described in Claims 5-7 and 13-15
`
`As explained in the Petition, a PHOSITA would have been motivated to use
`
`Wang’s well-known EPG features with Kamada’s set-top box. (Petition, 43-44, 48,
`
`51-52; Exhibit-1138, ¶29.) The motivation provided for claims 5-7 and 13-15 are
`
`substantially similar in substance. (Exhibit-1138, ¶29.)
`
`The Petition explained that “because Kamada and Wang relate to STB web
`
`browsers, a PHOSITA would have looked to Wang for features relating to browsers
`
`for use with Kamada’s STB.” (Petition, 44, citing Exhibit-1105, ¶129; Exhibit-1138,
`
`¶30.) Wang states that EPGs were known and used in STBs. (Exhibit-1109, 1:24-
`
`27; Exhibit-1138, ¶31.) Wang even states that EPG service was a required part of
`
`STBs. (Exhibit-1108, 34-35.) Because EPGs were known and a required part of a
`
`STB, a PHOSITA would have known that Kamada’s STB would have an EPG or
`
`would be readily improved by adding an EPG. (Exhibit-1138, ¶32.) The
`
`substantially similar approaches to using HTML-based user interface with the
`
`browsers of Kamada’s and Wang’s STBs further show that a PHOSITA would look
`
`to features of Wang’s browser (e.g., EPG features) when designing user interfaces
`
`for Kamada’s browser. (Id.)
`
`
`
`8
`
`

`

`Wang details numerous benefits of using a browser with a STB and such
`
`benefits would extend to Kamada’s STB. (Id., ¶33.) One benefit of using HTML to
`
`define user interface such as EPG interfaces is that the STB does not have to include
`
`or utilize a proprietary display format. (Exhibit-1109, 2:21-26.) Another benefit of
`
`using HTML is a reduction in the power and cost of the EPG. (Id., 2:45-59.)
`
`The modification of adding an EPG user interface to Kamada’s STB would
`
`be simple to a PHOSITA. (Exhibit-1138, ¶34.) By using a browser that conforms
`
`to an HTML standard, new types of program guides are easily added without having
`
`to change the browser functionality of the STB. (Exhibit-1109, 5:40-45.) Kamada’s
`
`STB includes a browser that conforms to the HTML standard and, as a result, would
`
`be easily modified to include HTML-based EPG user interfaces. (Exhibit-1138,
`
`¶34.)
`
`Based on the foregoing, Petitioner has established:
`
`combining such prior art element according to known methods, in the
`
`manner described above, yields a predictable result. [Exhibit-1105,
`
`¶129.] This is because Kamada and Wang both use HTML documents
`
`to display user interfaces, and because Kamada’s hot spots and
`
`corresponding button identifiers are analogous to Wang’s selectable
`
`icons. Id. Thus, a PHOSITA would have found claims 5 and 13 a
`
`
`
`9
`
`

`

`predictable user of prior art elements according to their established
`
`functions. Id.
`
`(Petition, 44-45; Exhibit-1138, ¶35.)
`
`B. Patent Owner Seeks to Dissociate an STB From its Widely Known
`Use of Displaying an EPG
`
`Patent Owner asserts that using Kamada’s button identifier scheme with
`
`Wang’s EPG depicted in Fig. 4 results in a complicated and unfriendly user interface.
`
`(Supp. Resp., 14-17; Exhibit-1138, ¶37.) Patent Owner asserts that using numerical
`
`button identifiers renders Wang’s EPG partially inoperable. Patent Owner asserts
`
`that Wang’s Fig. 4 EPG has allegedly 49 selectable areas, which exceeds the number
`
`of buttons on a typical TV remote control. (Id., 15-16.) As a result, the user would
`
`be required to enter multiple button presses to select, for example, button identifier
`
`49 thereby increasing the complexity of the user interface. (Id.) Patent Owner
`
`contends that the combination would require adding the ability to switch between
`
`using the remote control to select button identifiers and using the remote control to
`
`select channel numbers. (Id., 16.) Patent Owner contends that the addition of button
`
`identifiers to Wang’s FIG. 4 EPG would clutter the user interface and confuse the
`
`user as to which numbers were button identifiers rather than start times or channel
`
`numbers. (Id.) Lastly, Patent Owner contends that, if Kamada were combined with
`
`Wang, a PHOSITA would use Kamada’s other disclosure of selecting hot spots with
`
`a navigational cursor. (Id., 17.)
`
`
`
`10
`
`

`

`In an attempt to dissociate STBs from EPGs, Patent Owner provides
`
`misplaced arguments that Wang’s FIG. 4 EPG must be literally added to Kamada’s
`
`system as presented in Wang’s FIG. 4. However, a PHOSITA would use ordinary
`
`skill to apply the EPG teachings of Wang by tailoring Wang’s HTML-based EPG
`
`for use with Kamada’s button identifier / keybind system. (Exhibit-1138, ¶¶36, 38.)
`
`A PHOSITA would reduce the number of displayed selectable areas in the EPG to
`
`be equal to the number of buttons on the TV remote control for use with Kamada’s
`
`button identifier / keybind system. (Id.) The modifications are a simple matter of
`
`modifying the underlying HTML document, which is well within the level of
`
`ordinary skill in the art. (Id.)
`
`Because a PHOSITA would reduce the number of displayed selectable icons
`
`in Wang’s FIG. 4 EPG, each of Patent Owner’s arguments is incorrect. (Id., ¶39)
`
`None of the displayed selectable icons of the EPG would be inoperable. (Id.) By
`
`design, the number of button identifiers would not exceed the number buttons on the
`
`TV remote control thereby obviating the need for multiple button presses. (Id.)
`
`In Kamada’s button identifier scheme, the user would not be confused by the
`
`button identifiers. (Id., ¶40.) As shown below in Patent Owner’s annotated version
`
`of Wang’s FIG. 4 guide where Patent Owner added button identifiers in red, a
`
`PHOSITA may use color coding to indicate which numbers are button identifiers.
`
`(Id.) In the annotated FIG. 4 guide, the button identifiers are shown in a red color
`
`
`
`11
`
`

`

`while the channel numbers and start times are shown in a black color. Thus,
`
`annotated FIG. 4 guide would not confuse the user as to which numbers were button
`
`identifiers. (Id.)
`
`
`
`(Supp. Resp., 15.)
`
`Even if Wang’s FIG. 4 guide, which allegedly has 49 selectable areas, were
`
`literally added to Kamada’s STB, Patent Owner’s arguments are still incorrect. (Id.,
`
`¶¶41-44) For instance, as shown in the annotated version of Wang’s FIG. 4 guide,
`
`every alleged selectable area is still selectable when button identifiers are added.
`
`Thus, adding button identifiers would not render the FIG. 4 guide partially
`
`inoperative. (Exhibit-1138, ¶44.) In fact, now all selectable areas may be quickly
`
`and efficiently selected using simple button presses. (Id.)
`
`
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`12
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`Further, a PHOSITA may assign button identifiers to channels that match the
`
`channel number to maintain the ability to enter channel numbers to select channels.
`
`(Id., ¶45.) As an example, button identifier “6” may be assigned to channel number
`
`“6.” (Id.) As a result, if the user presses button number “6” on the remote control,
`
`button identifier 6 is selected, which is assigned to selecting channel 6. (Id.) Thus,
`
`there is no need to add an ability to switch between a channel selection mode and
`
`button identifier selection mode, contrary to Patent Owner’s assertions.
`
`In fact, Kamada discloses that letters may be used as button identifiers.
`
`(Exhibit-1108, 9:35-41.) For instance, Kamada discloses “[i]f the remote controller
`
`has symbol buttons, like ‘A’ – ‘E’ as shown in FIG. 4, hot spots can also be assigned
`
`to such symbol buttons.” (Id.) Thus, the button identifiers that are added to Wang’s
`
`Fig. 4 guide may be letters rather than numbers so that the numbers may still be used
`
`to select channels. Thus, contrary to Patent Owner’s assertion, there is no need to
`
`add an ability to switch between a channel selection mode and button identifier
`
`selection mode. (Exhibit-1138, ¶46.)
`
`Because Kamada is explicitly mimicking the selection of channel numbers for
`
`selection of button identifiers (Exhibit-1108, 1:54-57, 8:51-53), a PHOSITA would
`
`understand that Kamada may extend to include two digit button identifiers. (Exhibit-
`
`1138, ¶47.) Patent Owner contends that having two digit button identifiers increases
`
`the complexity of the user interface because the user would not have to press two
`
`
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`13
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`numbers on the remote control. (Supp. Resp., 15-16.) However, this requires the
`
`exact same number of button presses to select any two digit channel number such as
`
`channel number 49, for example. (Exhibit-1138, ¶47.) Thus, Patent Owner’s
`
`argument is misplaced.
`
`As discussed above, Patent Owner argues that, due to the complicated and
`
`unfriendly interface that would allegedly result by using the button identifiers, Patent
`
`Owner submits that a PHOSITA would instead use Kamada’s other disclosure of
`
`selecting using a navigational cursor to negate the need to display button identifiers.
`
`(Supp. Resp., 16-17.) However, for at least the foregoing reasons, the combination
`
`of Kamada’s button identifier scheme with Wang’s Fig. 4 guide would not result in
`
`an unfriendly and complicated user interface, contrary to Patent Owner’s assertions.
`
`(Exhibit-1138, ¶48.)
`
`Patent Owner submits that because Kamada’s “Guide” hot spots corresponds
`
`to a travel guide, then for this reason alone, Petitioner’s stated motivation to combine
`
`Kamada and Wang fails. However, Petitioner provided several other motivations to
`
`combine Kamada and Wang as discussed above. (Exhibit-1138, ¶49.)
`
`
`
`
`
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`14
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`C. The Combination of Kamada and Wang Teaches the Limitations
`of Claims 5 and 13
`
`1. Claims 5 and Claim 13 Require an Updated Display Resulting
`From the Display Item Being Updated to Have the Second
`Program Function
`
`Claim 5 recites:
`
`[t]he method of claim 1, wherein updating the set-top box based on the
`markup language document such that the display item has the second
`program function comprises updating a displayed plurality of program
`listings from being displayed in an arrangement by channel to the
`plurality of program listings being displayed in an arrangement by
`theme.
`(Exhibit-1101, 11:23-28, emphasis added; Exhibit-1138, ¶50.)
`
`Similarly, claim 13 recites:
`
`[t]he system of claim 9, wherein updating the set-top box comprises
`updating a displayed plurality of program listings being displayed in an
`arrangement by channel to the plurality of program listings being
`displayed in an arrangement by theme.
`(Exhibit-1101, 12:27-31, emphasis added; Exhibit-1138, ¶51.)
`
`Patent Owner improperly interprets the claims, asserting that “[t]hese claims
`
`do not require that the second program function cause the updating of the display.”
`
`(Supp. Resp., 10.) Instead, argues Patent Owner, claim 5 results in an update to the
`
`style and layout characteristics separate from the second program function. (Id..,
`
`10-11.)
`
`
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`15
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`Patent Owner’s assertion expressly contradicts the claim language of claim 5.
`
`Claim 5 begins with the term “wherein.” (Exhibit-1101 11:23.) Wherein is a term
`
`of art designed to signify that the clause following the term “wherein” is going to be
`
`further defined. Here, the clause following the term “wherein” is the entire updating
`
`step from claim 1 – that is, “updating the set-top box based on the markup language
`
`document such that the display item has the second program function.” (Id., 11:23-
`
`25.) The updating step updates the STB such that the display item has the second
`
`program function. Claim 5, by virtue of the placement of the “wherein” term, is
`
`specifically further defining the claim 1 feature of updating the STB such that the
`
`display item has the second programfunction. (Exhibit-1138, ¶¶52-54.)
`
`After reciting the updating step of claim 1 in its entirety, claim 5 recites the
`
`term “comprises.” (Exhibit-1101, 11:23-25.) The term “comprises” in conjunction
`
`with the term “wherein” signifies that the updating step is being further defined (i.e.,
`
`narrowed) to be what is defined in the clause following the term “comprises” –
`
`namely, “updating a displayed plurality of program listings from being displayed in
`
`an arrangement by channel to the plurality of program listings being displayed in an
`
`arrangement by theme.” (Exhibit-1101, 11:25-28; Exhibit-1138, ¶55.) In this
`
`instance, the display item is being further defined to be a plurality of program
`
`listings. Similarly, the updating the display to have the second program function is
`
`being further defined to be changing the display from a channel arrangement to a
`
`
`
`16
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`

`

`theme arrangement. (Exhibit-1138, ¶56.) Thus, Patent Owner’s assertion
`
`contradicts the express claim language of claim 5 and similarly the express language
`
`of claim 13. (Id., ¶¶57 and 58.)
`
`Patent Owner’s interpretation of claims 5 and 13 is, therefore, incorrect.
`
`However, under either interpretation, the combination of Kamada and Wang still
`
`teaches the limitations of claims 5 and 13, as explained below.
`
`2. Claims 5 and 13 Do Not Require That The Updating Step Be
`Based On Only A Single Markup Language Document
`
`Patent Owner submits that claims 5 and 13 each requires use of only a single
`
`markup language document or performing the update in a single step. (Supp. Resp.,
`
`18-19; Exhibit-1138, ¶59.) Patent Owner also submits that the Kamada-Wang
`
`system requires two separate markup language documents or performing the claimed
`
`update in two steps. (Id.) Claim 5 recites, in part, the updating is “based on the
`
`markup language document.” (Exhibit-1101, 11:24.) Similarly, claim 13 depends
`
`from claim 9, which recites “based on the markup language document.” (Id., 12:10-
`
`11.)
`
`Patent Owner seeks to impose an additional limitation such as “single” not
`
`found in the claims and far narrower than the broadest reasonable interpretation of
`
`the claim term “based on the markup language document.” (Exhibit-1138, ¶60.) The
`
`broadest reasonable interpretation of the claim term “based on the markup language
`
`document” is based at least in part on the markup document (e.g., based on at least
`17
`
`
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`

`

`one markup language document). (Id.) None of the following terms are found in
`
`claims 5 and 13: single, sole, only, in direct response to. (Id.) Thus, the update may
`
`be based on and still use multiple markup language documents. “Based on” does
`
`not require only editing an existing single, sole, and only markup language document
`
`previously used for the first program function as Patent Owner argues. (Id.)
`
`Even if the user in Wang navigates from the Figure 4 user interface to the
`
`Figure 6 user interface based on a first HTML document (step 1) and then from the
`
`Figure 6 user interface to the Figure 7 user interface based on a second HTML
`
`document (step 2), such disclosure still teaches the claim 5 features of “based on the
`
`markup language document.” (Id., ¶ 61.)
`
`Even if claims 5 and 13 are found to have such a requirement, the combination
`
`of Kamada and Wang still teaches such a single markup language document. For
`
`instance, a PHOSITA would understand that, through simple modifications in the
`
`HTML documents, the Figure 4 user interface may directly link to the Figure 7 user
`
`interface (without the user having to go through t