UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`NETFLIX, INC.,
`
`Petitioner
`
`v.
`
`VIDEOLABS, INC.,
`
`Patent Owner
`
`_________________________
`
`IPR2023-00628
`U.S. Patent 7,233,790
`_________________________
`
`DECLARATION OF DR. MICHAEL T. GOODRICH
`
`VIDEOLABS, INC. EX2020
`NETFLIX, INC. v. VIDEOLABS, INC.
`IPR2023-00628
`
`

`

`Case IPR2023-00628
`Patent No. 7,233,790
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. MATERIALS CONSIDERED ........................................................................ 1
`III. BACKGROUND AND QUALIFICATIONS ................................................. 1
`IV. LEGAL PRINCIPLES APPLIED IN THIS DECLARATION ...................... 6
`A.
`Claim Construction ............................................................................... 6
`B.
`Patentability ........................................................................................... 7
`1.
`Anticipation ................................................................................. 8
`2.
`Obviousness ................................................................................ 8
`3.
`Prior Art .................................................................................... 13
`BACKGROUND ........................................................................................... 14
`A. Overview of the ’790 Patent (EX1001) .............................................. 14
`B.
`The Claims of the ’790 Patent ............................................................. 17
`C. Overview of Mehta (EX1003) ............................................................. 18
`D. Overview of Schalpfer (EX1009) ....................................................... 21
`VI. PRIORITY DATE OF THE ’790 PATENT ................................................. 21
`VII. LEVEL OF ORDINARY SKILL .................................................................. 21
`VIII. CLAIM CONSTRUCTION .......................................................................... 23
`IX. ANTICIPATION AND OBVIOUSNESS ANALYSIS ................................ 23
`A. Ground 1: Mehta Does Not Anticipate Any Claim of the ’790
`Patent. .................................................................................................. 23
`
`V.
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`Patent No. 7,233,790
`1. Mehta Does Not Disclose a Plurality of Different
`Implementations of At Least One of the Items of Digital
`Content. ..................................................................................... 23
`2. Mehta Does Not Disclose the Product Catalog Including,
`in Association with Each Item of Content, a Reference to
`Each Implementation of Said Item of Content. ........................ 35
`3. Mehta Does Not Disclose That the Selected Portion, As
`Presented to the Subscriber, Provides Only a Single
`Description of Each Item of Digital Content in Said
`Portion, Regardless of the Number of Implementations of
`Each Said Item. ......................................................................... 41
`4. Mehta Does Not Disclose Selecting an Implementation of
`the Requested Item of Digital Content, Based on Device
`Capabilities of the Wireless Device Used by the
`Subscriber. ................................................................................. 43
`B. Ground 2: Mehta And Schlapfer Do Not Render Obvious Any
`Claim of the ’790 Patent. ..................................................................... 47
`1. Mehta and Schlapfer Do Not Suggest or Teach a Plurality
`of Different Implementations of At Least One of the
`Items of Digital Content. ........................................................... 47
`2. Mehta and Schlapfer Do Not Suggest or Teach the
`Product Catalog Including, in Association with Each
`Item of Content, a Reference to Each Implementation of
`Said Item of Content. ................................................................ 47
`3. Mehta and Schlapfer Do Not Suggest or Teach That the
`Selected Portion, As Presented to the Subscriber,
`Provides Only a Single Description of Each Item of
`Digital Content in Said Portion, Regardless of the
`Number of Implementations of Each Said Item. ...................... 48
`4. Mehta and Schlapfer Do Not Suggest or Teach Selecting
`an Implementation of the Requested Item of Digital
`Content, Based on Device Capabilities of the Wireless
`Device Used by the Subscriber. ................................................ 53
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`Patent No. 7,233,790
`5. Mehta Does Not Disclose Each Of The Provisioning
`Models Corresponding To or Based on Device
`Capabilities. ............................................................................... 54
`6. Mehta and Schlapfer Do Not Teach or Suggest a
`Corresponding Set of Provisioning Attributes and
`Descriptors. ............................................................................... 60
`CONCLUSION .............................................................................................. 63
`
`X.
`
`
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`Case IPR2023-00628
`Patent No. 7,233,790
`
`
`
`I.
`
`I, Dr. Michael T. Goodrich, hereby declare as follows:
`
`INTRODUCTION
`1.
`I have been asked by Patent Owner VideoLabs, Inc. (“Patent Owner”)
`
`to offer my expert opinions in the above-captioned matter. In particular, have been
`
`asked to analyze the anticipation analysis based on U.S. Patent Application
`
`Publication No. 2002/0131404 (“Mehta”) and the obviousness analysis based on
`
`Mehta and a paper entitled “Mobile Applications with J2ME” to Schlapfer
`
`(“Schlapfer”) that are set forth in Petitioner Netflix, Inc.’s (“Petitioner”) petition for
`
`inter partes review of the U.S. Patent No. 7,233,790 (the ’790 patent) (“Petition”)
`
`and the supporting declaration of Mr. Anthony Wechselberger.
`
`II. MATERIALS CONSIDERED
`2.
`In providing my expert opinions in this matter, I have reviewed the
`
`Petition and exhibits thereto, the ’790 patent, the file history for the ’790 patent,
`
`Mehta, Schlapfer, Mr. Wechselberger’s declaration, the transcript for the deposition
`
`of Mr. Wechselberger, Mr. Wechselberger’s supplemental declaration and any
`
`materials cited or referenced herein.
`
`III. BACKGROUND AND QUALIFICATIONS
`3.
`Attached hereto as Appendix A is a true and correct copy of my
`
`Curriculum Vitae (“CV”). I received a Bachelor of Arts degree in Mathematics and
`
`Computer Science from Calvin University in 1983, a Master of Science in Computer
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`Case IPR2023-00628
`Patent No. 7,233,790
`Science from Purdue University in 1985, and a Ph.D. in Computer Science from
`
`Purdue University in 1987.
`
`4.
`
`I am a Distinguished Professor in the Department of Computer Science
`
`at the University of California, Irvine, where I have been a faculty member since
`
`2001. The Distinguished Professor title at University of California, Irvine is a
`
`campus-level distinction reserved for above-scale faculty who have achieved the
`
`highest levels of scholarship over the course of their careers and have earned national
`
`and international distinctions and honors of the highest level. I was a professor in
`
`the Department of Computer Science at Johns Hopkins University from 1987-2001.
`
`5.
`
`I have authored and coauthored over 350 publications, including
`
`several widely adopted books, such as Introduction to Computer Security and
`
`Algorithm Design and Applications. My research includes contributions to data
`
`structures and algorithms, information security and privacy, networking, graph
`
`algorithms, computational geometry, distributed and parallel algorithms, and cloud
`
`security. For example, I have published research articles on topics in cloud
`
`computing and storage, hashing, data structures, and network and distributed
`
`computing. Using the indexing scheme of my CV, examples of such publications
`
`include P-3, P-5, B-1, B-3 through B-14, Ch-4, Ch-7, Ch-8, Ch-10, Ch-12, J-7, J-26,
`
`J-36, J-38, J-41, J-45, J-56, J-60, J-69, J-72, J-78, J-83, J-84, C-41, C-43, C-51, C-
`
`53, C-62, C-63, C-64, C-72, C-77, C-78, C-85, C-105, C-106, C-109, C-112, C-123,
`
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`Patent No. 7,233,790
`C-126, C-134, C-148, C-152, C-153, C-154, C-156, C-157, C-160, C-162, C-163,
`
`C-164, C-166, C-168, C-169, C-172, C-173, C-175, C-181, C-183, C-194, C-200,
`
`C-201, C-203, C-208, C-210, and C-211. Further, I have published research articles
`
`on topics in audio and video creation, encoding, and distribution, as well as authoring
`
`research videos, including publications P-5, B-14, J-20, J-37, J-65, J-66, J-68, J-72,
`
`C-36, C-38, C-54, C-64, C-74, C-113, C-121, C-124, and C-160.
`
`6.
`
`In addition, I have consulting experience in matters involving
`
`algorithms, cryptography, machine learning, digital rights management, computer
`
`security, networking, software, video distribution, and storage technologies.
`
`7.
`
`I am a Fellow of the American Association for the Advancement of
`
`Science (AAAS), a Fulbright Scholar, a Fellow of the Institute of Electrical and
`
`Electronics Engineers (IEEE), and a Fellow of the Association for Computing
`
`Machinery (ACM). I am a foreign member of the Royal Danish Academy of Science
`
`and Letters. I am also a recipient of the IEEE Computer Society Technical
`
`Achievement Award and the Pond Award for Excellence in Undergraduate
`
`Teaching.
`
`8. My research has been supported by the Defense Advanced Research
`
`Projects Agency (DARPA), the National Science Foundation (NSF), the Office of
`
`Naval Research (ONR), the Army Research Office (ARO), and the National Security
`
`Agency (NSA). For example, I was co-principle investigator on an approximately
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`$700K NSF grant funding (grants 6 and 19 in my CV) to build distributed data
`
`repositories and network query infrastructures for astrophysical data; a $350K NSF
`
`grant to build out network connectivity and applications at Johns Hopkins University
`
`(CV, grant 11); a $900K grant from NSF to study high-bandwidth distributed
`
`computing (CV, grant 24); an approximately $500K grant from the ONR to study
`
`scalable methods for the analysis of network-based data (CV, grant 31); a $500K
`
`grant from NSF to study trustworthy cloud computing (CV, grant 33); an
`
`approximately $400K NSF grant to study privacy-preserving cloud computing (CV,
`
`grant 34); and an approximately $150K grant from NSF to study security protocols
`
`for advanced data structures (CV, grant 37).
`
`9.
`
`I am a co-inventor on several U.S. patents, including U.S. Patent No.
`
`7,257,711, “Efficient Authenticated Dictionaries with Skip Lists and Commutative
`
`Hashing,” which discloses secure distributed data authentication schemes based on
`
`cryptographic hash functions and digital signatures; U.S. Patent No. 7,299,219,
`
`“High Refresh-Rate Retrieval of Freshly Published Content using Distributed
`
`Crawling,” which discloses a technology for quickly retrieving website data that can
`
`change frequently, so as to be stored in a search engine; U.S. Patent No. 8,681,145,
`
`“Attribute Transfer Between Computer Models Including Identifying Isomorphic
`
`Regions in Polygonal Meshes,” which teaches how to map one mesh-based
`
`computer model to another, with applications to animated video creation; and U.S.
`
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`Patent No. 7,233,790
`Patent No. 9,152,716, “Techniques for Verifying Search Results Over a Distributed
`
`Collection,” which discloses a system for searching the Internet so as to produce
`
`cryptographically verifiable search results that can be produced by a search engine.
`
`10.
`
`I have taught courses at Johns Hopkins University, Brown University,
`
`and University of California, Irvine, at both the undergraduate and graduate levels.
`
`Topics of my courses have included computer security, algorithms, data structures,
`
`networking, algorithm engineering, computational geometry, computer graphics,
`
`and parallel processing. In addition, I have mentored 25 Ph.D. students over the
`
`years, who have written their Ph.D. theses on topics in algorithms, data structures,
`
`networking, parallel processing, and computer security and privacy.
`
`11.
`
`I have served as an editor on several technical journals, including
`
`Computational Geometry: Theory and Applications, Journal of Computer & System
`
`Sciences, Journal of Graph Algorithms and Applications, Int. Journal of
`
`Computational Geometry & Applications, and Information Processing Letters. I
`
`have also served on many program committees (PCs) for top conferences and
`
`workshops in Computer Science, including serving as PC chair in several instances,
`
`including ACM Symposium on Computational Geometry (SoCG), ACM
`
`Symposium on Theory of Computing (STOC), Workshop/Symposium on
`
`Algorithms and Data Structures
`
`(WADS), Algorithm Engineering and
`
`Experimentation (ALENEX, which I co-founded with Dr. Catherine McGeoch in
`
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`Case IPR2023-00628
`Patent No. 7,233,790
`1999), IEEE Symposium on Foundations of Computer Science (FOCS), ACM-
`
`SIAM Symposium on Discrete Algorithms (SODA), International Symposium on
`
`Graph Drawing (GD), International Colloquium on Automata, Languages, and
`
`Programming (ICALP), ACM Conference on Computer and Communications
`
`Security (CCS), European Symposium on Algorithms (ESA), IEEE International
`
`Parallel and Distributed Processing, Symposium (IPDPS), ACM Symposium on
`
`Parallel Algorithms and Architectures (SPAA), ACM Symposium on Advances in
`
`Geographic Information Systems (GIS), IEEE Symposium on Security and Privacy
`
`(S&P), IEEE International Conference on Big Data, IEEE International Conference
`
`on Data Engineering (ICDE), and International Symposium on Algorithms and
`
`Computation (ISAAC).
`
`IV. LEGAL PRINCIPLES APPLIED IN THIS DECLARATION
`12. Counsel for Patent Owner has informed me of the legal principles that
`
`apply for purposes of my declaration.
`
`A. Claim Construction
`13.
`I understand that the words of a claim are generally given their ordinary
`
`and customary meaning, which I understand is the meaning that the term would have
`
`to the person of ordinary skill in the art in question at the time of the invention. I
`
`understand that the person of ordinary skill in the art is deemed to read the claim
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`Patent No. 7,233,790
`term not only in the context of the particular claim in which the disputed term
`
`appears, but in the context of the entire patent, including the specification.
`
`14.
`
`I understand that claim construction focuses on the “intrinsic evidence,”
`
`which consists of the claims themselves, the specification, and the prosecution
`
`history. I understand that the claims can provide helpful context for how the claim
`
`term is used. I understand that the specification is highly relevant to the claim
`
`construction analysis and usually dispositive concerning the meaning of a claim
`
`term. I further understand, however, that it is inappropriate to import limitations
`
`from preferred embodiments recited in the specification into the claim language.
`
`15.
`
`I understand that “extrinsic evidence” may also be considered when
`
`determining the meaning of a claim. I understand that there are different sources of
`
`extrinsic evidence, including dictionaries, inventor testimony, expert testimony, and
`
`learned treatises. I understand that intrinsic evidence is generally favored over
`
`extrinsic evidence, and that extrinsic evidence may not be used to contradict the
`
`meaning of the claim term when read in light of the intrinsic evidence.
`
`B.
`Patentability
`16. While I am not an attorney, I have been informed that a patent is
`
`presumed valid, and that each claim of a patent (whether an independent or
`
`dependent claim) is presumed valid independently of the validity of other claims. I
`
`understand that the Patent Office will find a patent claim unpatentable in an inter
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`Patent No. 7,233,790
`partes review if it concludes that it is more likely than not that the claim is
`
`unpatentable.
`
`17.
`
`I understand that during an inter partes review proceeding, the standard
`
`for finding claims of an issued U.S. patent unpatentable is the “preponderance of the
`
`evidence standard.”
`
`18.
`
`I understand that issues of patentability relating to the claims of the ’790
`
`patent challenged in the Petition are to be considered under the relevant pre-AIA
`
`sections of Title 35 of the United States Code. I have been provided an
`
`understanding of those sections as noted below.
`
`1.
`Anticipation
`I understand for a claim to be unpatentable as anticipated under 35
`
`19.
`
`U.S.C. § 102, every element and limitation of the claimed invention must be found
`
`in a single prior art reference, but also it must describe those elements arranged or
`
`combined as required in the claim. Although anticipation can be based on inherency,
`
`the missing disclosure must be necessarily present, not merely probably or possibly
`
`present, in the prior art.
`
`2. Obviousness
`I understand for a claim to be unpatentable as obvious under 35 U.S.C.
`
`20.
`
`§ 103, the differences between the claimed invention and the prior art must be such
`
`that the claimed invention as a whole would have been obvious before the effective
`
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`Patent No. 7,233,790
`filing date of the claimed invention to a person of ordinary skill in the art to which
`
`the claimed invention pertains.
`
`21.
`
`I understand that in considering whether a claimed invention is obvious,
`
`one may consider whether there was a reason that would have prompted a person
`
`having ordinary skill in the art to which the claim invention pertains to combine
`
`known elements in a way the claimed invention does, taking into account such
`
`factors as: (1) whether the claimed invention was merely the predictable result of
`
`combining familiar prior art elements according to their known function(s); (2)
`
`whether the prior teaches or suggests the desirability of combining elements claimed
`
`in the invention; (3) whether prior art teaches away from combining elements in the
`
`claimed invention; and (4) whether a person having ordinary skill in the art had used
`
`a known technique to improve similar devices in the same way. I am informed that
`
`it is not sufficient to merely assert that it was obvious to try a combination of prior
`
`art elements in hindsight; knowledge of a problem and motivation to solve it are
`
`entirely different from a motivation to combine particular references.
`
`22.
`
`I am informed that objective factors tending to show that a patent is not
`
`obvious include, among others: (1) evidence of copying the claimed invention(s);
`
`(2) long-felt but unmet need for the claimed invention(s); (3) commercial success of
`
`the claimed invention(s); (4) skepticism as to the solution; (5) industry acceptance
`
`of the claimed invention(s); and (6) praise by others for the claimed invention(s). I
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`Patent No. 7,233,790
`understand all these factors may bear on whether a patent holder can overcome an
`
`initial impression of obviousness, subject to the requirement that the patent holder
`
`establish a nexus—in other words, a direct connection or link—between the adduced
`
`evidence and claimed invention’s merits.
`
`23.
`
`I understand that obviousness cannot be predicated on the mere
`
`identification in the prior art of individual components of claimed limitations. It is
`
`not appropriate to pick and choose among the individual elements of assorted prior
`
`art references to recreate the claimed invention. It is also not enough to show that
`
`the prior art references can be combined (i.e., are combinable). Rather, to prove
`
`obviousness, there must have been sufficient motivation at the time of the invention
`
`for a person of ordinary skill in the art to combine or modify the references in the
`
`manner proposed to arrive at the claimed invention. I also understand that
`
`motivation may not be gleaned from impermissible hindsight reasoning. For
`
`example, the reason to combine the prior art to arrive at the claimed invention cannot
`
`be based in whole or in part on what the patent in question teaches or discloses. I
`
`understand that the inquiry into secondary considerations is one way to test hindsight
`
`analysis.
`
`24.
`
`I understand that it is Petitioner’s burden to prove that a person of
`
`ordinary skill in the art would have been motivated to combine prior art references.
`
`I understand that the motivation to combine must be supported by evidence and
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`Patent No. 7,233,790
`articulated explanation. When considering obviousness, I understand that it is
`
`insufficient to simply say that a skilled artisan, once presented with a combination
`
`of references, would have understood that they could be combined.
`
`25. Rather, Petitioner must show that a person of ordinary skill in the art
`
`would have been motivated to combine or modify the prior art to arrive at the
`
`claimed invention. Conclusory statements alone are insufficient, and any
`
`obviousness analysis must be supported by a reasoned explanation as to why a
`
`person of ordinary skill in the art would have been motivated to combine the prior
`
`art. For example, “common sense” or “intuition” alone cannot support a motivation
`
`to combine without explaining why they would lead a person of ordinary skill in the
`
`art to solve the problem at hand with the particular elements of the claimed invention
`
`at the time of invention.
`
`26.
`
`I understand that there is no motivation to combine references when a
`
`feature from one reference would be redundant or superfluous in the other reference.
`
`I further understand that obviousness cannot be found in an absence of a specific
`
`explanation as to why a particular combination is not redundant.
`
`27.
`
`I understand that there is no motivation to combine when the
`
`combination would be inoperable and, thus, “teaches away” from the combination.
`
`To the extent that references teach away from the claimed invention, they cannot
`
`establish obviousness. Prior art teaches away from an invention when a person of
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`Patent No. 7,233,790
`ordinary skill would be discouraged or diverted from following the path leading to
`
`the invention. I also understand that if a proposed combination would require
`
`modification of prior art and that modification would render the prior art
`
`unsatisfactory for its intended purpose, then there is no motivation to make the
`
`proposed combination and modification. I also understand that when prior art
`
`teaches away from combining prior art references, the discovery of a successful way
`
`to combine them is unlikely to be obvious.
`
`28.
`
`I understand that to determine the scope and content of the prior art, one
`
`must consider whether the prior art was reasonably relevant to the particular problem
`
`the inventors faced in making the claimed invention.
`
`29. To determine whether any material differences existed between the
`
`scope and content of the prior art and each asserted claim, one must consider the
`
`claimed invention as a whole to determine whether or not the claim would have been
`
`obvious in light of the prior art. If the prior art discloses all the elements in separate
`
`references, I must consider whether it would have been obvious to combine those
`
`references. I understand that a claim is not obvious just because all elements of a
`
`claim already existed.
`
`30.
`
`I understand that a motivation to conduct further testing or research that
`
`may lead to the claimed invention does not necessarily render a claim obvious. I
`
`further understand that an invention is not necessarily rendered obvious simply
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`because a party asserts it was obvious to try a certain combination. Rather, the
`
`question is whether a person of ordinary skill would have had good reason to pursue
`
`the known options within his or her technical grasp, and whether such pursuit would
`
`have led to anticipated success. I understand that an invention would not have been
`
`obvious to try to a person or ordinary skill in the art if any of those findings cannot
`
`be made.
`
`3.
`Prior Art
`I understand that a product, patent, or other publication must first
`
`31.
`
`qualify as prior art before it can be used to challenge a patent claim. I further
`
`understand that in an inter partes review, petitions may only challenge the
`
`patentability of a claim on grounds that could be raised under § 102 or § 103 and
`
`only on the basis of prior art consisting of patents or printed publications.
`
`32. For the purposes of this Declaration, I generally understand that prior
`
`art is the body of knowledge publicly available to a person skilled in the particular
`
`art or field of the invention at the time the invention was made or one year prior to
`
`the filing of the patent application for the asserted patent.
`
`33. More particularly, I have been informed that prior art is defined as any
`
`reference that satisfies any of the pre-AIA § 102 subsections (a), (b), (e) and (g). I
`
`understand that Petitioner’s grounds for petition pertain only to subsections (b)
`
`and (e).
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`Patent No. 7,233,790
`34. Prior art under pre-AIA § 102 (b) includes an invention that was: (a)
`
`patented, or (b) described in a printed publication anywhere in the world, or (c) in
`
`public use in the United States, or (d) on sale in the United States more than one year
`
`before the application filing date to which the applicant is entitled to claim priority
`
`in the United States. For this purpose, the applicant is entitled to claim the benefit
`
`of the filing date of its earliest provisional or non-provisional application for which
`
`the disclosure of the application provides support for the claims at issue.
`
`35. Prior art under pre-AIA § 102 (e) includes (1) published application for
`
`patent by another filed in the United States before the invention by the applicant for
`
`patent, or (2) a patent granted on an application for patent by another filed in the
`
`United States before the invention by the applicant for patent.
`
`V. BACKGROUND
`A. Overview of the ’790 Patent (EX1001)
`36. U.S. Patent No. 7,233,790 was filed June 19, 2003 and issued June 19,
`
`2007. It lists Rikard M. Kjellberg, Sheng Liang, Tomas G. Lund, William Chan,
`
`Ramakrishna Chinta, and Xinbi Chen as inventors. It claims priority to Provisional
`
`application No. 60/393,024, filed on June 28, 2002; provisional application No.
`
`60/392,383, filed on Jun. 28, 2002; provisional application No. 60/393,041, filed on
`
`Jun. 28, 2002; and provisional application No. 60/392,999, filed on Jun. 28, 2002.
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`In the early 2000s, around the time of the ’790 patent invention, there
`
`37.
`
`was an explosion of computing devices such as laptops, PDAs, mobile phones, and
`
`other wireless devices that entered the market, each with different capabilities, as
`
`well as a vast increase in the number of content providers offering digital content.
`
`EX1001, 1:22-25, 1:40-2:17, 3:45-60. The inventors of the ’790 patent realized that,
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`if content providers wanted to ensure that content would work properly on a range
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`of devices, they either had to make separate items of content for each device or they
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`had make multiple different “implementations” (or versions) of each item of content.
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`Id., 9:49-62. Additionally, each implementation had to be “provisioned” differently
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`for different devices, (id., 1:60-2:7) and each piece of content might require different
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`“packaging,” (id., 1:63-27, 12:65-13:15).
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`38. The result was highly fragmented digital storefronts for purchasing
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`content. See id., 1:50-59 (describing the prior art storefronts)). Each store had to
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`provide content for every device that it wanted to sell its products to. See id., 1:60-
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`63. Unless customers already knew which content store had appropriate content for
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`their device, they would have to visit multiple stores to find one that had device-
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`appropriate content.
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`39. The ’790 patent addresses these problems with a “download manager,”
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`which utilizes the distinction between content generally and the various
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`implementations of that content. EX1001, 3:63-4:8. For example, Lion King is a
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`Patent No. 7,233,790
`piece of content. The various versions of Lion King (such as an .mp3 file or an .mov
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`file) are the implementations of Lion King. For another example, Microsoft Word
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`is another piece of content, while the versions of Microsoft Word for Windows and
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`Microsoft Word for Apple Macs are different implementations. The download
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`manager is a unique innovation that manages the various relationship between the
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`content, the implementations of that content, the device capabilities suitable for each
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`implementation, the packaging and provisioning options for each implementation of
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`content, and the device capabilities suitable for each packaging and provisioning
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`option. Id., 4:9-25.
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`40. By storing and maintaining these relationships, the ’790 patent creates
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`a centralized, scalable store in which the user is only presented with the items of
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`content, while the store maintains references to each implementation, unbeknownst
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`to the user. This store allows the users to only have to deal with the item of content
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`themselves, while ensuring they always receive the correct implementation of that
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`content. Id., 1:50-2:17, 8:66-9:12. Continuing the first example above, the user can
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`select the Lion King but will actually be delivered the particular implementation of
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`the Lion King (e.g., an .mp3 file) that works on their device. In the second example,
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`the user can select “Microsoft Word” and will be delivered, for example, Microsoft
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`Word for a Mac (if you have an Apple Mac). Ultimately, this dynamic store is made
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`possible by the ’790 patent’s novel multi-layer system which conceptually divides,
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`on the one hand, the items of content and, on the other hand, the implementations of
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`that content.
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`B.
`The Claims of the ’790 Patent
`41. The ’790 patent has four independent claims, claims 1, 2, 8, and 9.
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`Claim 2 is an exemplary method that reflects the above-described invention:
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`2. A method of providing access to digital content for use on
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`wireless communication devices, the method comprising:
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`receiving and storing in a server system a plurality of items of
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`digital content to be made available for use in wireless communication
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`devices used by a plurality of wireless services subscribers, including
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`receiving and storing a plurality of different implementations of at least
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`one of the items of digital content, where each implementation of any
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`given item of digital content corresponds to a different set of device
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`capabilities
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`operating the server system to maintain a product catalog
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`containing a description of the items of digital content, wherein the
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`product catalog includes, in association with each item of digital
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`content, a reference to each implementation of said item of digital
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`content;
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`receiving a request from a wireless device used by one of the
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`subscribers;
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`in response to the request, selecting a portion of the product
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`catalog to be presented to the subscriber, based on device capabilities
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`of the wireless device used by the subscriber; and
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`presenting the selected portion of the product catalog to the
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`subscriber via a wireless network, such that the selected portion, as
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`presented to the subscriber, provides only a single description of each
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`item of digital content in said portion, regardless of the number of
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`implementations of each said item.
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`42. EX1001, claim (cl.) 2. The dependent claims 3-8 and 10-14 also add
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`additional limitations relevant to my analysis.
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`C. Overview of Mehta (EX1003)
`43. Mehta is U.S. Patent Application Publication No. 2002/0131404,
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`entitled “Method and System for Maintaining and Distributing Wireless
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`Applications,” which was filed November 28, 2001.
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`44. Mehta provides a system for maintaining and provisioning wireless
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`applications. EX1003, Abstract. In particular, Mehta is directed to addressing the
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`problem that “[c]ontent providers, who wish to develop applications for such
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`wireless devices, must do so for each device they wish to su