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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`CUSTOMPLAY, LLC,
`Patent Owner.
`
`
`
`
`IPR2018-01498
`Patent 9,380,282
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`
`
`DECLARATION OF ALAN C. BOVIK IN SUPPORT OF
`AMAZON’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`Amazon Ex. 1102
`Amazon.com v. CustomPlay
`IPR2018-01498
`
`
`
`I.
`
`TABLE OF CONTENTS
`
`CLAIMS 4, 7-9, 12, 14, 16, AND 18-19 WOULD HAVE
`BEEN OBVIOUS TO A PERSON OF ORDINARY SKILL ----------------- 2
`A. Overview of the Petition ---------------------------------------------------- 2
`B.
`Claims 4, 9, 12, 14, 16, and 19 Would Have Been
`Obvious in View of McIntire and Dey ------------------------------------ 2
`1.
`Claim 4 ---------------------------------------------------------------- 2
`a. McIntire and Dey Disclose the “Retrieving”
`Limitations ----------------------------------------------------- 6
`b. McIntire and Dey Disclose, or Render
`Obvious, the “Contemporaneously
`Displaying” Limitation --------------------------------------- 9
`i.
`McIntire and Dey Disclose the
`Limitation ---------------------------------------------- 9
`Combining McIntire and Dey ---------------------- 18
`ii.
`Claims 9, 12, 14, and 19 -------------------------------------------- 18
`2.
`Claim 16 -------------------------------------------------------------- 19
`3.
`Claims 7-8 and 18 Would Have Been Obvious in View
`of McIntire, Dey, and Abecassis ------------------------------------------ 21
`1.
`Claim 7 --------------------------------------------------------------- 21
`2.
`Claims 8 and 18 ------------------------------------------------------ 27
`Claims 4, 9, 12, 14, 16, and 19 Would Have Been
`Obvious in View of Bergen and Reimer --------------------------------- 27
`1.
`Claim 4 --------------------------------------------------------------- 27
`a.
`Combining Bergen and Reimer ---------------------------- 27
`b.
`The Combination Does Not Change
`Bergen’s Principle of Operation --------------------------- 31
`-i-
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`D.
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`C.
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`
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`c.
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`b.
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`c.
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`Bergen Discloses Identifying the Request
`Location ------------------------------------------------------- 32
`Bergen Discloses the Retrieving Limitations ------------ 35
`d.
`Bergen Discloses the Displaying Limitation ------------- 36
`e.
`Claims 9, 12, 14, 16, and 19 --------------------------------------- 38
`2.
`Claims 7-8 and 18 Would Have Been Obvious in View
`of Bergen, Reimer, and Abecassis ---------------------------------------- 39
`1.
`Claims 7 and 8 ------------------------------------------------------- 39
`2.
`Claim 18 -------------------------------------------------------------- 40
`Claims 4, 9, 12, 14, 16, and 19 Would Have Been
`Obvious in View of Armstrong ------------------------------------------- 40
`1.
`Claim 4 --------------------------------------------------------------- 40
`a.
`Armstrong Discloses Identifying a Request
`Location ------------------------------------------------------- 40
`Armstrong Discloses the Retrieving
`Limitations ---------------------------------------------------- 41
`Armstrong Discloses the Displaying
`Limitations ---------------------------------------------------- 45
`Claims 9, 12, 14, and 19 -------------------------------------------- 49
`2.
`Claim 16 -------------------------------------------------------------- 49
`3.
`Claim 7 Would Have Been Obvious in View of
`Armstrong and Abecassis -------------------------------------------------- 53
`CONCLUSION --------------------------------------------------------------------- 55
`
`G.
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`E.
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`F.
`
`II.
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`
`-ii-
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`IPR2018-01498
`Amazon.com v. CustomPlay
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`I, Alan C. Bovik, do hereby declare:
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`1.
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`In preparing this Declaration, I considered the Declaration of Clifford
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`Reader (Ex. 2021), the exhibits cited therein, and all other references identified
`
`herein.
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`2.
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`I understand that my prior declaration was submitted as Exhibit 1002,
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`and I refer to certain portions of that declaration. I remain unaware of any evidence
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`that would suggest that the claims of the ’282 patent would not have been obvious.
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`3.
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`I understand that Dr. Reader has applied a slightly different definition
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`than I have for a person of ordinary skill in the art. Ex. 2021 ¶51. While I disagree
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`with Dr. Reader as to that definition, my opinions would not change under his defi-
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`nition.
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`4.
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`In this Declaration, I provide opinions and enumerate ways in which I
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`disagree with Dr. Reader and his opinions as stated in his Declaration (Ex. 2021).
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`However, this Declaration does not enumerate all ways in which I disagree with Dr.
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`Reader, and the fact that I do not address some of Dr. Reader’s statements should
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`not be taken to mean that I agree with them.
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`
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`
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`-1-
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`IPR2018-01498
`Amazon.com v. CustomPlay
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`I. CLAIMS 4, 7-9, 12, 14, 16, AND 18-19 WOULD HAVE BEEN
`OBVIOUS TO A PERSON OF ORDINARY SKILL.
`A. Overview of the Petition
`
`5.
`
`In ¶¶67-71, Dr. Reader makes broad criticisms of alleged failings of the
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`prior art references and combinations thereof. In many cases Dr. Reader fails to
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`identify specific failings with respect to those references or combinations. Dr.
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`Reader also often fails to explain the basis for, or provide any support for, his opin-
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`ions, and so it is not clear what Dr. Reader’s opinion is based on. However, to the
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`extent Dr. Reader’s declaration makes statements about specific prior art references
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`(e.g., in ¶¶70-71), or combinations thereof, I address those statements in the para-
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`graphs below.
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`B. Claims 4, 9, 12, 14, 16, and 19 Would Have Been Obvious in View
`of McIntire and Dey.
`1.
`
`Claim 4
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`6.
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`In ¶72, Dr. Reader states that “McIntire’s method 800 determines cor-
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`responding segment identifiers to the point in time where the first signal was re-
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`ceived, which may be adjusted by a built-in time delay.” I disagree to the extent that
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`Dr. Reader suggests that this is the only disclosure McIntire provides regarding the
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`user-delay problem. McIntire also discloses identifying multiple articles “appearing
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`in the media stream at or around the point in time at which the first signal was
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`received.” Ex. 1004 ¶[0310] (emphasis added). Supplemental content relating to
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`-2-
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`IPR2018-01498
`Amazon.com v. CustomPlay
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`those articles may be retrieved. Id. ¶[0311]. The system matches “one or more”
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`segment identifiers relating to the one or more articles around the point in time at
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`which the first signal was received. Id. (emphasis added). A person of ordinary skill
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`would have understood that, to perform such a matching, the system necessarily re-
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`trieved “one or more” segment identifiers (e.g., first and second frame identifiers).
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`Thus, in addition to the disclosure Dr. Reader identified, McIntire discloses retriev-
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`ing multiple segment identifiers (e.g., frame numbers) at once when the system re-
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`trieves supplemental content for multiple articles depicted around the time of the
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`user’s first signal. Ex. 1004 ¶¶[0310]-[0311].
`
`7.
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`In ¶73, Dr. Reader states that a person of ordinary skill in the art would
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`not have been motivated to combine another reference (such as Dey) with McIntire
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`because “McIntire’s determination of corresponding segment identifiers to the time
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`in the video where the first signal was received” fails to suggest it. I disagree. I
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`provided numerous reasons why a person of ordinary skill would have been moti-
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`vated to combine McIntire with Dey in my previous declaration. Ex. 1002 ¶¶61-70.
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`Whether or not McIntire’s disclosure expressly suggests it, a person of ordinary skill
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`in the art would have been motivated to look for improvements to McIntire’s system,
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`such as those suggested by Dey.
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`8.
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`In ¶74, Dr. Reader states that “McIntire is based on segment definitions,
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`which includes ‘one or more articles appearing in the media stream at or around the
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`-3-
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`IPR2018-01498
`Amazon.com v. CustomPlay
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`point in time at which the first signal was received,’ which is adjustable by a built-
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`in time delay.” To the extent that Dr. Reader suggests that these are the only em-
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`bodiments described in McIntire, I disagree. First, as I have discussed above in ¶6,
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`McIntire discloses that the user-delay problem may be solved by retrieving identifi-
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`ers from “around the point in time” of the user’s request, and by retrieving “one or
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`more” identifiers. This embodiment is disclosed in McIntire and a person of ordi-
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`nary skill would have understood that it is an alternative to the “built-in time delay”
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`referenced by Dr. Reader. Furthermore, McIntire’s “segment identifiers” may iden-
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`tify individual frames. Ex. 1004 ¶¶[0088] (“identifiers are assigned to filmed seg-
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`ments (e.g., individual frames)”), [0135] (segment may comprise one or more
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`frames). Thus, McIntire’s disclosure of “one or more articles appearing in the media
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`stream at or around the point in time at which the first signal was received,” in the
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`embodiment where segment identifiers identify individual frames, discloses identi-
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`fying separate segments (frames).
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`9.
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`In ¶75, Dr. Reader states that “McIntire fails to provide the need for a
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`different methodology than the one recited, and therefore teaches away from the
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`claimed methodology of the ’282 Patent.” I understand that a reference does not
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`teach away if it does not criticize, discredit, or otherwise discourage investigation
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`into the invention claimed. I further understand that a teaching away requires an
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`active statement, not simply a failure to provide a reason to include a feature or the
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`-4-
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`IPR2018-01498
`Amazon.com v. CustomPlay
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`like. Based on this understanding, I disagree with Dr. Reader that McIntire teaches
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`away from the claimed methodology of the ’282 patent. McIntire discloses a user-
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`delay problem and discloses ways of solving that problem, but it does not criticize,
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`discredit, or otherwise discourage other ways of solving the problem. In fact, a per-
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`son of ordinary skill would have known there were only two methods of solving the
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`user-delay problem McIntire describes, namely (1) mapping supplemental content
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`to the segment (e.g., frame) where the article appears and subsequent segments (e.g.,
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`frames), or (2) retrieving multiple segment identifiers (frame identifiers) and the cor-
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`responding supplemental content. McIntire’s disclosure of one alternative (e.g.,
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`mapping supplemental content to longer segments) would not preclude or dissuade
`
`a skilled artisan from considering another alternative that is also disclosed in McIn-
`
`tire (i.e., retrieving multiple segment identifiers) to solve the same problem. As dis-
`
`cussed above in ¶6, McIntire discloses retrieving “one or more” identifiers from
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`“around the point in time at which the first signal was received.” Ex. 1004 ¶¶[0310]-
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`[0311]. Thus, McIntire discloses retrieving multiple segment identifiers from both
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`before and after the request location.
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`10.
`
`In ¶76, Dr. Reader states that “McIntire’s methodology fails to recite
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`any structure or methodology in its disclosure that anticipates or renders obvious the
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`claimed subject matter of the ’282 Patent.” Dr. Reader then identifies the “retriev-
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`-5-
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`IPR2018-01498
`Amazon.com v. CustomPlay
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`ing” and “contemporaneously displaying” limitations, as well as the “additional in-
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`formation” limitation of claim 16, as the limitations he believes are missing from
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`McIntire. Ex. 2021 ¶¶77-84, 90-92. I disagree for the reasons identified below in
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`¶¶11-36.
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`a. McIntire and Dey Disclose the “Retrieving”
`Limitations.
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`11.
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`In ¶77, Dr. Reader states that “McIntire’s various annotated media
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`stream methodologies fail to disclose or render obvious the above claimed limita-
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`tion.” Dr. Reader’s reasons are provided in ¶¶78-81. I disagree with Dr. Reader’s
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`opinions as set forth below.
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`12.
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`In ¶78, Dr. Reader states that in McIntire, “a segment comprises a first
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`video frame identifier and a second video frame identifier . . . resulting in both the
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`first video frame identifier and the second video frame identifier being part of a seg-
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`ment that is responsive to the request location.” Then, in ¶79, Dr. Reader states that
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`both the first and second video frame identifiers are “responsive to the request loca-
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`tion” because “both video frame identifiers are . . . part of a segment that is respon-
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`sive to a request location[.]” I disagree for several reasons. First, McIntire does not
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`only disclose retrieving supplemental content for a single segment. McIntire dis-
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`closes retrieving multiple segment identifiers and then retrieving the supplemental
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`content associated therewith. Ex. 1004 ¶[0311] (the remote server “matches one or
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`more segment[] identifiers identifying segments that correspond to viewer signals
`-6-
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`IPR2018-01498
`Amazon.com v. CustomPlay
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`to the appropriate supplemental content” (emphasis added)), ¶[0312] (disclosing dis-
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`playing articles appearing in an associated “portion”—not single segment—of a me-
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`dia stream).
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`13.
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` Second, as I discussed above in ¶8, McIntire’s “segment identifiers”
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`may identify individual frames. Ex. 1004 ¶¶[0088] (“identifiers are assigned to
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`filmed segments (e.g., individual frames)”), [0135] (segment may comprise one or
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`more frames). Thus, McIntire discloses that each “segment identifier” may identify
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`a single video frame and thus comprise only one video frame identifier. In that em-
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`bodiment, only the first video frame identifier would be responsive to the request
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`location, and McIntire discloses that additional retrieved segments would comprise
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`video frame identifiers responsive to other locations near the request location, as I
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`discuss in further detail below in ¶¶14-15.
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`14. Third, Dr. Reader ignores McIntire’s disclosure of retrieving multiple
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`segment (video frame) identifiers “around” the time of the user’s request, and re-
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`trieving supplemental content associated with those identifiers. Ex. 1004 ¶¶[0088]-
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`[0091], [0310]-[0311]. Where McIntire’s segments are individual frames, McIn-
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`tire’s system retrieves, from a plurality of video frame identifiers (all video frame
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`identifiers for the video), a first video frame identifier (first segment identifier that
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`identifies the current frame) that is responsive to the request location, and contem-
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`poraneously retrieving a second, different video frame identifier that is responsive
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`-7-
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`IPR2018-01498
`Amazon.com v. CustomPlay
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`to a location that is prior to the request location (a second video frame identifier that
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`identifies a single prior frame “around” the time of the request).
`
`15.
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`In ¶80, Dr. Reader states that “McIntire’s utilization of a first and sec-
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`ond video frame identifier being responsive to a request location requires the re-
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`trieval of a segment that is responsive to a request location renders the retrieval of
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`all the frames in the segment responsive to the request location.” This statement is
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`unclear, but to the extent Dr. Reader contends that McIntire only discloses embodi-
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`ments in which all frames are responsive to a request location, I disagree. As I have
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`stated above in ¶8, McIntire discloses an embodiment in which each segment in-
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`cludes only one frame of the video. In such an embodiment, McIntire discloses that
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`the first and second video frame identifiers are separate segments, only the first of
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`which is responsive to the request location. Furthermore, because McIntire also dis-
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`closes retrieving multiple segment (video frame) identifiers “around” the time of the
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`user’s request, and retrieving supplemental content associated with those identifiers,
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`McIntire discloses retrieving frame identifiers that are both before and after the re-
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`quest location. Accordingly, McIntire discloses that the second video frame identi-
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`fier is responsive to a location near to, and before, the request location. Ex. 1004
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`¶¶[0088]-[0091], [0310]-[0311]. Furthermore, McIntire discloses that all of the
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`frame identifiers are retrieved in a single step—that is, contemporaneously. Id.
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`¶[0311].
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`-8-
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`IPR2018-01498
`Amazon.com v. CustomPlay
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`16.
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`In ¶81, Dr. Reader concludes that McIntire fails to disclose these limi-
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`tations because they “require[] the first and second video frame identifiers to be re-
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`trieved contemporaneously, but where the second video frame identifier is respon-
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`sive to a location that is prior to the request location.” I disagree for the reasons in
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`¶¶11-15 above.
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`b. McIntire and Dey Disclose, or Render Obvious, the
`“Contemporaneously Displaying” Limitation.
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`17.
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`In ¶82, Dr. Reader states that “neither McIntire or Dey, alone or in com-
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`bination, discloses, teaches, suggests, or renders obvious” this limitation for the rea-
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`sons provided in ¶¶83-86. I disagree with Dr. Reader’s opinions in ¶¶83-86, and his
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`conclusion in ¶82, for the reasons stated below in ¶¶18-31.
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`i. McIntire and Dey Disclose the Limitation.
`
`18.
`
`In ¶83, Dr. Reader states that “Petitioner has failed to demonstrate that
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`McIntire and/or Dey contemplated the contemporaneous display of different infor-
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`mation associated with different frame identifiers.” To the extent that Dr. Reader is
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`suggesting that McIntire and Dey do not disclose the “contemporaneously display-
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`ing” limitation, I disagree because McIntire and Dey both disclose the limitation.
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`19. As I have discussed above in ¶8, McIntire discloses that each segment
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`identifier may identify a single frame. Supplemental content is linked to each indi-
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`vidual segment (frame) identifier. Ex. 1004 ¶¶[0277] (“Supplemental content [] is
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`mapped to the corresponding segment identifier.”), [0312]. As I have also discussed
`-9-
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`IPR2018-01498
`Amazon.com v. CustomPlay
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`above in ¶¶6-9 and 12-15, McIntire discloses retrieving multiple segment identifiers
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`(frame identifiers) “around” the time of the user’s request, and retrieving supple-
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`mental content associated with those identifiers. Ex. 1004 ¶¶[0088]-[0091], [0310]-
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`[0311]. A person of ordinary skill in the art would have understood that the articles
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`being shown, and therefore the associated supplemental content, associated with
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`these identifiers would change from identifier to identifier because the content in the
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`video to which the supplemental content is responsive would change frame by frame
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`and, therefore, segment by segment. Indeed, the very purpose of McIntire’s system
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`was to associate certain supplemental content with particular portions (e.g., frames)
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`of the video.
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`20. McIntire recognized, however, that the changing information would re-
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`sult in a user-delay problem. Id. ¶[0272] (“the viewer’s reaction time is slower than
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`the progression of the media stream”). That problem could be overcome by retriev-
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`ing not only the supplemental content associated with the current location, but also
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`the (different) supplemental content for frame identifiers “around” (e.g, prior to) the
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`current location, as I have discussed above in ¶¶6-9 and 12-15. Indeed, identifying
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`additional frame identifiers “around” the current location and for multiple segments
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`would have no purpose if it simply resulted in providing the same information. The
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`purpose of identifying additional frame identifiers “around” and prior to the current
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`-10-
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`IPR2018-01498
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`location is to solve the user-delay problem by retrieving additional, different infor-
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`mation that is associated with previously depicted items that are not associated with
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`the current location, and thus is responsive to locations prior to the request location.
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`21. McIntire also discloses displaying the retrieved content. Ex. 1004, Fig.
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`9 (“display retrieved information”), Fig. 8 (“display supplemental content”). I note
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`that Dr. Reader has not provided any reason to think that McIntire retrieves the in-
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`formation associated with multiple video frame identifiers, as it discloses, but does
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`not display it. Indeed, McIntire discloses displaying information relating to a “por-
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`tion of,” and not just a single segment of, the video. Id. ¶[0313]. McIntire also
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`discloses displaying the information associated with those video frame identifiers in
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`a single step. Id. ¶[0312]. Accordingly, McIntire discloses contemporaneously re-
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`trieving the video frame identifiers and contemporaneously displaying the infor-
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`mation associated with those identifiers. McIntire also discloses the display of mul-
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`tiple items at the same time. Id. ¶[0312]. Thus, at a minimum, McIntire discloses
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`the option to display the information associated with multiple video frame identifiers
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`contemporaneously.
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`22.
`
`In relying on “step 910” of “method 900,” see id. ¶¶[0311]-[0312], I
`
`note that both “method 800” and “method 900” disclosed by McIntire are methods
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`“for providing annotated media streams to viewers[.]” Id. ¶¶[0265], [0308]. As
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`shown by the annotated figures below where like colors represent similar steps, the
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`-11-
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`IPR2018-01498
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`two methods are highly similar and would have been understood by a person of or-
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`dinary skill in the art to be essentially interchangeable and intercompatible.
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`
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`Id., Figs. 8-9.
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`23. For the reasons I have stated above in ¶¶19-22, McIntire expressly dis-
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`closes this limitation. But, at a minimum, it would have been obvious to a skilled
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`artisan to use McIntire’s process to contemporaneously display information from
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`multiple video frame identifiers where the information associated with one video
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`frame identifier was different from the information associated with the other video
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`frame identifier because McIntire suggests doing so. In addition, the user-delay
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`-12-
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`IPR2018-01498
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`problem was known in the art, and contemporaneously displaying different infor-
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`mation associated with a different, prior video frame identifier was one of two
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`known ways for solving that problem.
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`24.
`
`In ¶83, Dr. Reader also states that “The Petition cites to Dey’s disclo-
`
`sure regarding displaying documents . . . but this portion of Dey does not meet the
`
`claim limitations.” I disagree because Dey discloses this limitation. Dey recognizes
`
`the same user-delay problem that McIntire identifies, and solves the problem by re-
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`trieving any supplemental content associated with a portion of video immediately
`
`preceding the user’s request (e.g., 30 seconds prior). Ex. 1023, 7:41-45 (“it is as-
`
`sumed that there is a delay between the material of interest first being presented to
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`the user, and the indication of interest, and it is further assumed that the user is in-
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`terested in material which extends over a period of time.”), Abstract, 6:54-7:58, 4:8-
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`21, 4:56-5:4, 7:59-8:9, Fig. 3. While Dey discloses embodiments where the system
`
`does not retrieve the content “at the instant” interest is expressed (id., 7:37-41), Dey
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`also discloses that the “more realistic model” assumes that there is “some but lesser
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`interest” in material between t1 (the end time of the user’s maximum interest) and
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`the time of the request (id., 7:59-66). See also id., 4:60-65 (interest may “decrease
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`from t1 until the time of the signal … and may be zero for all other times”), 5:2-4
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`(“W(t) may equal 0 for all times earlier than 30 seconds before the signal of interest
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`is given, and later than the signal of interest.” (emphasis added)). Dey expressly
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`-13-
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`IPR2018-01498
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`discloses an embodiment where the user’s interest at the time of the request is non-
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`zero, in Figure 5:
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`
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`Id., Fig. 5. A person of ordinary skill in the art familiar with McIntire’s system and
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`wanting to solve the user-delay problem would understand, based on Dey, that the
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`user is likely to have some interest in what was displayed on the screen at the time
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`of the request and for 30 seconds prior.
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`25. Dey further discloses that t1, where there is assumed to be significant
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`interest, is, in some embodiments, just 0.0001 milliseconds prior to the request time.
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`IPR2018-01498
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`Id., 8:30-35. Accordingly, Dey discloses that there is at least “some” interest in
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`material that is within 0.0001 milliseconds of the request time. In the video context,
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`video is often played at 30 frames per second. Therefore, a frame commonly occu-
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`pies 33 milliseconds. A person of ordinary skill in the art would have understood
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`that identifying a play location down to a millisecond would identify a specific
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`frame. Because a video frame occupies 33 milliseconds, retrieving and displaying
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`information within 0.0001 milliseconds of the request is, therefore, for purposes re-
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`lating to video, at the request location. Accordingly, to a skilled artisan reading the
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`’282 patent, retrieving and displaying supplemental content within 0.0001 millisec-
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`onds of the request location constitutes retrieving and displaying information asso-
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`ciated with the frame number (video frame identifier) that is responsive to the re-
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`quest location. Thus, Dey discloses this limitation and does not teach away from it.
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`26. Additionally, Dey provides that the time of interest may vary based on
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`“considerations which will be apparent to one of ordinary skill in the art.” Ex. 1023,
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`9:50-62. A skilled artisan providing supplemental content as described in McIntire
`
`would have understood, based on McIntire’s disclosure, that the supplemental con-
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`tent should include the content mapped to the current frame and prior frames.
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`27. Even if neither McIntire nor Dey disclosed the contemporaneously dis-
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`playing limitation, it would have been obvious to a person of ordinary skill in the art
`
`in view of those references. While McIntire teaches at least providing supplemental
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`IPR2018-01498
`Amazon.com v. CustomPlay
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`content associated with the request location and “around” the request location, Dey
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`explicitly teaches that, when addressing the user-delay problem, the relevant mate-
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`rial is from prior to—not just generally “around”—the request location. A person
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`of ordinary skill would have been motivated to use McIntire’s system in such a way
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`that the information “around” the request location included information from “prior
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`to” the request location. And, because McIntire discloses that a segment may be a
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`single frame, a person of ordinary skill would have understood that McIntire’s sys-
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`tem would use a second video frame identifier (e.g., prior frame number) to retrieve
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`supplemental content from before the request location (as taught by Dey), and to
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`display the information associated with the current location and prior location con-
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`temporaneously so that the user could see the information that they are most inter-
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`ested in. Thus, the claim would have been obvious even if neither McIntire nor Dey
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`individually disclose the contemporaneously displaying limitation.
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`28.
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`In ¶84, Dr. Reader states that “Dey merely discloses a technique to
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`identify text that is of interest to a user, which is then ‘returned to the user’ through
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`a series of steps; however, such methodology does not by itself lead to the displaying
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`of the desired documents or text[.]” I disagree for several reasons. First, Dey’s
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`system does not merely identify “text” as Dr. Reader suggests. Dey discloses that
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`“documents” are returned, and Dey’s disclosure defines “documents” broadly to in-
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`clude audio or visual recordings, interactive web pages, and the like. E.g., Ex. 1023,
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`IPR2018-01498
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`2:7-10 (defining “temporal documents” to include “multimedia material such as
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`video and audio programming), 11:7-14 (documents may include web pages). Sec-
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`ond, a person of ordinary skill in the art would have understood that displaying a
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`document is one way to “return” it to the user, as Dey discloses. Id., 10:58-63, Fig.
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`10. Finally, even if Dey did not disclose displaying the documents to the user, a
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`person of ordinary skill in the art would nevertheless have found the claim to be
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`obvious because McIntire discloses displaying supplemental information to the user,
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`as I have discussed above in ¶21.
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`29.
`
`In ¶84, Dr. Reader further states that Dey’s disclosure does not “require
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`displaying documents that may have information associated with a first location of
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`a temporal document (video) contemporaneously with other information from the
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`same and/or a different one of the returned documents containing a second location
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`of the temporal document prior to the first location.” I disagree for at least two
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`reasons. First, as I have discussed above in ¶¶24-26, Dey discloses a user’s interest
`
`in information associated with both the request location and a prior location. Sec-
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`ond, even if Dey did not disclose this limitation, it would have been obvious in view
`
`of McIntire and Dey because McIntire at least discloses displaying information re-
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`sponsive to the request location and Dey at least discloses providing information
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`responsive to a location prior to the request location, as I have also discussed above
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`in ¶27.
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`IPR2018-01498
`Amazon.com v. CustomPlay
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`ii.
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`Combining McIntire and Dey
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`30.
`
`In ¶85, Dr. Reader states that “Petitioner’s proposed combination of
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`Dey with McIntire impermissibly requires a change in the principle of operation [of]
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`McIntire because the McIntire and Dey systems . . . retrieve supplemental infor-
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`mation on two completely different modes of operation.” I disagree. Dr. Reader
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`appears to misunderstand my opinion. I have not proposed a physical combination
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`of Dey’s system with McIntire’s system. Rather, I have stated that a person of ordi-
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`nary skill in the art would have been motivated to combine Dey’s teachings with
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`McIntire’s teachings in order to modify McIntire’s system to contemporaneously
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`display information responsive to the request location (as disclosed in McIntire
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`and/or Dey) and a location prior to the request location (as disclosed at least in Dey).
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`A person of ordinary skill would have been motivated to use McIntire’s system to
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`perform the retrieving and displaying limitations based on Dey’s teaching that a
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`viewer would be interested in supplemental content for locations prior to the request
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`location.
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`31.
`
`In ¶86, Dr. Reader concludes that “Dey fails to remedy McIntire’s de-
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`ficiencies.” I disagree for the reasons set forth above in ¶¶24-30.
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`2.
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`Claims 9, 12, 14, and 19
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`32.
`
`In ¶¶87-89, Dr. Reader states that McIntire alone, or in combination
`
`with Dey, does not render claims 9, 12, 14, and 19 unpatentable for the same reasons
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`IPR2018-01498
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`as claim 4. I disagree with Dr. Reader for the reasons I have discussed for claim 4
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`above in ¶¶6-31.
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`3.
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`Claim 16
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`33.
`
`In ¶90, Dr. Reader states that “McIntire fails to disclose displaying ad-
`
`ditional information.” I disagree. McIntire discloses that, after receiving initial in-
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`formation (e.g. images of the articles with associated supplemental content), the user
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`may request “additional information,” e.g., from the World Wide Web. Ex. 1004
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`¶¶[0278]-[0283]; see also id. ¶¶[0283] (subsequent user request “may trigger a push
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`of additional supplemental content” such as including user reviews or the user’s pur-
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`chase history), [0155], Figs. 27-28. McIntire further discloses that “the additional
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`supplemental content provides an opportunity for the viewer to view” the content.
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`Id. ¶[0283]. Thus McIntire discloses displaying additional information.
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`34.
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`In ¶90, Dr. Reader further states that “McIntire fails to disclose or ren-
`
`der obvious providing a user the opportunity to request additional information relat-
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`ing to the information associated with the second video frame identifier.” I disagree.
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`McIntire discloses that a viewer may request additional information regarding any
`
`displayed item, regardless of whether that information was associated with the first
`
`or second video frame identifier. At a minimum, it would have been obvious to a
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`person of ordinary skill that a viewer may request additional information relating to
`
`the information associated with the second video frame identifier.
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`IPR2018-01498
`Amazon.com v. CustomPlay
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`35.
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`In ¶91, Dr. Reader states that “McIntire does not all
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