IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re application of: William Ho CHANG, et al. Attorney Docket No.: 55194-653

Patent No.: 10,346,114 Examiner: Not Yet Assigned
Issued: July 9, 2019
Group Art Unit: Not Yet Assigned
Application No.: 15/973,317
Filed: May 7, 2018 Customer No.: 21971
Title: DIGITAL CONTENT SERVICES
OVER THE INTERNET THAT
TRANSMIT OR STREAM
PROJECTED DIGITAL CONTENT
TO MOBILE DEVICES, DISPLAY
DEVICES, AUDIO OUTPUT
DEVICES, PRINTING DEVICES,
TELEVISIONS, OR TELEVISION
CONTROLLERS

FILED ELECTRONICALLY ON: APRIL 8, 2021

REQUEST FOR EX PARTE REEXAMINATION OF

U.S. PATENT NO. 10,346,114

Mail Stop Ex Parte Reexam

Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Dear Commissioner:

Pursuant to the provisions of 35 U.S.C. § 302 and 37 C.F.R. § 1.510 et seq., the

undersigned, on behalf of Unified Patents, LLC (“Requester”), requests ex parte patent

reexamination of claims 8, 13, and 14 of U.S. Patent No. 10,346,114 (“the ’114 patent,”

Exhibit A).

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Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

The ’114 patent is assigned on its face to Flexiworld Technologies, Inc. (“the Patent

Owner”). An assignment search indicates that: (i) no assignments were recorded with regard

to the application that later issued as the ’114 patent, namely U.S. Patent Application Serial

No. 15/973,317 (“the ’317 application”); and (ii) the immediate parent application of the ’114

patent, namely U.S. Patent Application Serial No. 09/992,413 (“the ’413 application”), was

assigned by named inventors William Ho Chang and Christina Ying Liu to Flexiworld

Technologies, Inc by an assignment recorded at Reel 012325 Frame 0362 on November 18,

2001.

An assignment search did not locate any later assignments of the ’114 patent.

Co-pending Litigation

Requester is Unified Patents, LLC The ’114 patent has been asserted in litigation along

with United States Patent Nos. 10,740,066 and 8,989,064 in Flexiworld Technologies, Inc. v.

Roku Inc, in the Western District of Texas as Case No. 6:20-cv-00819-ADA, filed September 8,

2020. Unified Patents, LLC is not a party to that litigation.

Because this patent is involved in concurrent litigation, USPTO should accord it priority.

MPEP § 2261 (“Any cases involved in litigation, whether they are reexamination proceedings

or reissue applications, will have priority over all other cases.”).

Ex Parte Patent Reexamination Filing Requirements

Pursuant to 37 C.F.R. § 1.510(b)(1), statements pointing out at least one substantial

new question of patentability based on material, non-cumulative prior art patents for claims

8, 13, and 14 of the ’114 patent are provided in Section V of this Request. These prior art

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Reexamination of U.S. Patent No. 10,346,114

references were not previously cited in the record during the original prosecution of the ’114

patent.

Pursuant to 37 C.F.R. § 1.510(b)(2), reexamination of claims 8, 13, and 14 of the ’114

patent is requested, and a detailed explanation of the pertinency and manner of applying the cited

prior art to claims 8, 13, and 14 is provided in Section VI of this Request.

Pursuant to 37 C.F.R. § 1.510(b)(3), copies of every patent relied upon or referred to

in the statement pointing out each substantial new question of patentability or in the detailed

explanation of the pertinency and manner of applying the cited prior art are provided as

Exhibits B, C, D, E, and G of this Request.

Pursuant to 37 C.F.R. §1.510(b)(4), a copy of the ’114 patent is provided as Exhibit A of

this Request, along with a copy of any disclaimer, certificate of correction, or reexamination

certificate issued in the patent.

Pursuant to 37 C.F.R. § 1.510(b)(5), the attached Certificate of Service indicates that a

copy of this Request, in its entirety, has been served on Patent Owner at the following address of

record for Patent Owner, in accordance with 37 C.F.R. § 1.33(c):

Chernoff, Vilhauer, McClung & Stenzel, LLP

111 SW Columbia Street, Suite 725
Portland, OR 97201

Also submitted herewith is the fee set forth in 37 C.F.R. § 1.20(c)(1).

Pursuant to 37 C.F.R. § 1.510(b)(6), Requester hereby certifies that neither the statutory

estoppel provisions of 35 U.S.C. § 315(e)(1) nor 35 U.S.C. § 325(e)(1) prohibit Requester from

filing this ex parte patent reexamination request.

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Reexamination of U.S. Patent No. 10,346,114

TABLE OF EXHIBITS

Exhibit No. Description

A United States Patent No. 10,346,114 to Chang et al.

B International Publication No. WO 00/44119 to Fung et al.

C United States Patent No. 5,926,624 to Katz et al.

D United States Patent No. 6,732,179 to Brown et al.

E United States Patent No. 7,644,018 to Yukie et al.

F Curriculum Vitae of Ralph Brown

G United States Patent Publication No. 2005/0210120 to Yukie et al.

H File History of U.S. Application No. 15/973,317

I Declaration of Ralph Brown

J Plaintiff’s Opening Claim Construction Brief at 6-7, Flexiworld

Technologies, Inc. v. Roku Inc, No. 6:20-CV-00819-ADA (W. D. Texas
Mar. 8, 2021)

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 TABLE OF CONTENTS

I. INTRODUCTION .............................................................................................................. 1
II. CITATION OF PRIOR ART PATENTS AND PRINTED PUBLICATIONS
RELIED UPON IN REQUEST FOR REEXAMINATION ............................................... 2
A. International Patent Publication No. WO 00/44119 (“Fung”) ................................ 2
B. United States Patent No. 5,926,624 (“Katz”) ......................................................... 2
C. United States Patent No. 6,732,179 (“Brown”) ...................................................... 2
D. United States Patent No. 7,644,018 (“Yukie”) ....................................................... 3
III. OVERVIEW OF THE ’114 PATENT................................................................................ 3
A. Background of the ’114 Patent & Level of Skill in the Art .................................... 3
B. Summary of the ’114 Patent ................................................................................... 4
C. Prosecution History of the ’114 Patent ................................................................... 7
IV. CLAIM CONSTRUCTION .............................................................................................. 10
V. STATEMENT POINTING OUT EACH SUBSTANTIAL NEW QUESTION OF
PATENTABILITY FOR THE CHALLENGED CLAIMS .......................................... 11
A. Subject Matter Which Raises a Significant New Question of Patentability
for the Challenged Claims .................................................................................... 11
B. Fung in View of Katz Raises a Substantial New Question of Patentability
for Claims 8 and 13 ............................................................................................... 12
C. Fung in View of Katz and Further in View of Brown Raises a Substantial
New Question of Patentability for Claims 8, 13, and 14 ...................................... 17
D. Fung in View of Katz and Further in View of Yukie Raises a Substantial
New Question of Patentability for Claims 8 and 13 ............................................. 20
VI. DETAILED EXPLANATION OF THE PERTINENCE AND MANNER OF
APPLYING THE PRIOR ART REFERENCES TO EVERY CLAIM FOR
WHICH REEXAMINATION IS REQUESTED.............................................................. 23
A. Ground 1: Fung in View of Katz Renders Obvious Claims 8 and 13 of the
’114 Patent Under (pre-AIA) 35 U.S.C. § 103 ..................................................... 23
B. Ground 2: Fung in View of Katz and Further in View of Brown Renders
Obvious Claims 8, 13, and 14 of the ’114 Patent Under (pre-AIA) 35
U.S.C. § 103 .......................................................................................................... 61
C. Ground 3: Fung in View of Katz and Further in View of Yukie Renders
Obvious Claims 8 and 13 of the ’114 Patent Under (pre-AIA) 35 U.S.C. §
103......................................................................................................................... 87
VII. CONCLUSION ............................................................................................................... 101

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I. INTRODUCTION

The ’114 patent, which is entitled “digital content services over the internet that

transmit or stream projected digital content to mobile devices, display devices, audio output

devices, printing devices, televisions, or television controllers,” generally relates to systems for

providing and transferring digital content services over the Internet. The ’114 patent discloses

providing digital content to an output device, regardless of, e.g., processing power, display

screen size, or memory space of an input device (i.e., information apparatus).

Considering the original provisional application (U.S. Application No. 60/252,682) and

prosecution history of the ’114 patent, it is apparent the invention was purported to lie in

technologies disclosed in the specification related to outputting content from an output device as

directed by a separate input information apparatus. The allegedly novel concept disclosed by

independent claim 8 of the ’114 patent is the ability to access digital content from a server using

an information apparatus, and conveying such digital content to any output device, where the

digital content is device-dependent and accessed following authentication of user and

subscription information. ’114 patent, 1:56-67, 37:27-38:25 (claim 8). The specification alleged

this was an improvement over prior art systems that required installation of output device drivers

on the information apparatus. Id., 2:30-51. However, this concept was disclosed by the prior art

well before the priority date of the ’114 patent. As described in detail herein, the prior art

references disclosed all features of independent claim 8; for example, Fung and Katz each

disclose accessing digital content from a server using an information apparatus and conveying

device-dependent digital content to an output device following information authentication.

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Reexamination of U.S. Patent No. 10,346,114

This Request for reexamination provides not only a Substantial New Question of

Patentability, but presents evidence that claims 8, 13, and 14 were obvious in view of available

prior art because it was known in the field that one could access digital content from a server

using an information apparatus and convey device-dependent digital content to an output device

following information authentication. Independent claim 8, and dependent claims 13 and 14, fail

to recite anything new or nonobvious. As set out in this Request, the prior art taught each and

every limitation recited by claims 8, 13, and 14 prior to the earliest claimed priority date.

II. CITATION OF PRIOR ART PATENTS AND PRINTED PUBLICATIONS

RELIED UPON IN REQUEST FOR REEXAMINATION

The earliest claimed priority of the ’114 patent is November 20, 2000, which is the filing

date of U.S. Provisional Application No. 60/252,682. Reexamination of claims 8, 13, and 14 of

the ’114 patent is requested in view of the following prior art patent documents.

A. International Patent Publication No. WO 00/44119 (“Fung”)

International Patent Publication No. WO 00/44119 to Fung et al. (“Fung”) is attached

hereto as Exhibit B. Fung published on July 27, 2000. Fung is available as prior art under at least

35 U.S.C. § 102(a).

B. United States Patent No. 5,926,624 (“Katz”)

U.S. Patent No. 5,926,624 to Katz et al. (“Katz”) is attached hereto as Exhibit C. Katz

was filed on September 12, 1996, and issued July 20, 1999. Katz is available as prior art under at

least 35 U.S.C. § 102(a) and/or (b).

C. United States Patent No. 6,732,179 (“Brown”)

U.S. Patent No. 6,732,179 to Brown et al. (“Brown”) is attached hereto as Exhibit D.

Brown was filed October 26, 1999, claims priority to U.S. Application No. 08/811,586, filed

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Reexamination of U.S. Patent No. 10,346,114

March 5, 1997, and issued May 4, 2004. Brown is available as prior art under at least 35 U.S.C.

§ 102(e).

D. United States Patent No. 7,644,018 (“Yukie”)

U.S. Patent No. 7,644,018 to Yukie et al. (“Yukie”) is attached hereto as Exhibit E.

Yukie issued January 5, 2010, was filed April 4, 2000, and claims priority to U.S. Provisional

Application Nos. 60/181,129, 60/180,990, 60/180,987, 60/180,985, 60/181,148, 60/181,144,

60/181,145, 60/180,992, 60/180,991, 60/181,105, 60/181,128, 60/180,988, 60/181,147,

60/181,127, 60/180,984, and 60/180,993, each of which were filed February 8, 2000. Yukie is

available as prior art under at least 35 U.S.C. § 102(e).

None of the references listed above were cited during prosecution of the ’114 patent. A

Form SB-08 and copies of the cited references are submitted herewith. This request is also

supported by the declaration of Ralph Brown, attached hereto as Exhibit I. To the extent that

additional references are discussed in the declaration, copies of these additional references are

also being submitted, and are included on the Form SB-08.

III. OVERVIEW OF THE ’114 PATENT

A. Background of the ’114 Patent & Level of Skill in the Art

The ’114 patent, which is entitled generally relates to systems for providing and

transferring digital content services over the Internet. It discloses providing digital content to an

output device, regardless of, e.g., processing power, display screen size, or memory space of an

input device (i.e., information apparatus).

The use of an information apparatus to access digital content provided in a content

database and transmit said content to an output device was known to those in the field. A person

of ordinary skill in the art (“POSA”) would be a person having, as of November 20, 2000: at

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Reexamination of U.S. Patent No. 10,346,114

least a graduate degree in electrical engineering, software engineering, or a related discipline,

and would have had at least 1 year of practical experience with digital content services and

content transmission, such as work with set-top boxes, with more experience substituting for less

education and vice versa. Specifically, a POSA would be familiar with accessing digital content

from servers, authentication of user and subscription information, encryption of output data, and

transmittal of digital content to output devices. Such a person would have been capable of

understanding the ’114 patent and the prior art references discussed herein.

B. Summary of the ’114 Patent

The ’114 patent (Exhibit A), is entitled “digital content services over the internet that

transmit or stream projected digital content to mobile devices, display devices, audio output

devices, printing devices, televisions, or television controllers.” As set in the ’114 patent at 1:21-

27, it is generally related to:

(…) providing digital content to an output device and, in particular,

to providing pervasive output in which an information apparatus can
pervasively output digital content to an output device regardless of
the processing power, display screen size and memory space of the
information apparatus.

The ’114 patent therefore relates generally relates to systems for providing and

transferring digital content services where the output digital content does not require certain

parameter inputs concerning the information apparatus (i.e., input device).

Figure 1 represents a block diagram of an output system that may be used for the

purported invention:

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Reexamination of U.S. Patent No. 10,346,114

The system includes an information apparatus 100 (i.e., input device) that is in

communication with at least one server (110, 114) over a network (108), where the information

apparatus 100 accesses digital content from the at least one server. Exhibit A, 4:52-54, 8:20-56,

FIG. 1 (reproduced above). The digital content is formatted such that it is capable of being

rendered by the output device 106. Id., 11:23-48. The information apparatus 100 accesses said

content over the network 108 and then transfers the content to the output device 106 for

rendering. Id.; see also id., 37:27-38:25, FIG. 1.

Independent claim 8, recites:

An information apparatus for obtaining digital content from a digital

content service provided by one or more servers over a network, the digital

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Reexamination of U.S. Patent No. 10,346,114

content accessible, at least partly, by the information apparatus, the information

apparatus including:
at least one processor;
an operating system;
an interface for interacting with a user;
memory or storage;
software or firmware stored, at least partly, in the memory or storage, at
least part of the software or firmware is executable, by the at least one processor
at the information apparatus, for accessing the digital content service provided by
the one or more servers over the network; and
wherein the information apparatus is configurable for:
sending, from the information apparatus to the one or more servers over
the network, authentication information associated with the user of the
information apparatus for authentication of the user or the information apparatus,
the one or more servers being distinct and separate from the information
apparatus;
sending, from the information apparatus to the one or more servers,
subscription information for accessing the digital content service provided by the
one or more servers;
delivering, from the information apparatus, one or more device objects to
the one or more servers over the network, the one or more device objects are
related to one or more devices, the one or more devices are for outputting or
playing the digital content, and the one or more devices being distinct and
separate devices from the one or more servers, and the one or more device objects
including information, related to at least one of device identification information,
device address information, device capability information, model information,
brand information, registration information, or IP address information,
individually or in any combination, related to the one or more devices;
accessing, by the information apparatus, one or more digital content that
are available at the digital content service, the access of the one or more digital
content, provided by the one or more servers, is based, at least in part, on having
successfully sent the authentication information and the subscription information;
receiving, via the interface of the information apparatus, an indication
from the user of selected digital content from among the one or more digital
content that are available from the digital content service;
delivering, from the information apparatus to the one or more servers, at
least a pointer or reference to the selected digital content; and
receiving, at the information apparatus and from the one or more servers,
output data corresponding to at least part of the selected digital content, the output
data is related, at least in part, to the information included in the one or more
device objects, delivered from the information apparatus to the one or more
servers, and the output data, corresponding to at least part of the selected digital
content, is at least in part device dependent with respect to the one or more
devices for outputting or playing at least part of the selected digital content at the
one or more devices; and wherein at least part of the device dependent output data

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Reexamination of U.S. Patent No. 10,346,114

includes an encryption scheme for ensuring security of the selected digital

content.

Claim 13 depends from claim 8 and recites “the information apparatus further includes

one or more wireless communication circuitry units, and communication between the

information apparatus and the one or more servers over the network includes wireless

transmission of data via the one or more wireless communication circuitry units included

in the information apparatus.” Claim 14 depends from claim 8 and recites “the

information apparatus further transmits at least part of the output data, related to at least

part of the selected digital content, to a television for rendering at least part of the

selected digital content, the television is either: (1) wire connected to the information

apparatus, or (2) wirelessly connected to the information apparatus; and wherein the

selected digital content includes, at least in part, video digital content or audio digital

content, individually or in any combination.”

C. Prosecution History of the ’114 Patent

The application of the ’114 patent was originally filed on May 7, 2018, and was assigned

U.S. Application No. 15/973,317 (“the ’317 application”). The ’317 application is a continuation

application of U.S. Application No. 09/992,413, which was filed November 18, 2001 and later

issued as U.S. Patent No. 9,965,233. The ’317 application also claims priority to U.S. Provisional

Application No. 60/252,682 (“the ’682 application”), filed November 20, 2000. The ’317

application and the ’682 application differ from one another. For example, the ’682 application

places additional emphasis on the output device being a printer (e.g., the ’682 application

referring to “printer object” almost exclusively in comparison to the “output device object” of the

’317 application).

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Reexamination of U.S. Patent No. 10,346,114

(i) Notice of Allowance – September 28, 2018

No rejections were issued during the prosecution of the ’317 application. On September

28, 2018, the Examiner issued a Notice of Allowance, stating the Examiner had not found prior

art that taught the features then claimed by independent claim 1—the only claim in the

application. The Examiner did not provide any additional reasons for allowance.

(ii) Information Disclosure Statement – November 6, 2018

On November 6, 2018, the applicant submitted an information disclosure statement citing

17 U.S. Patents, 15 U.S. Patent Application Publications, and 2 non-patent literature documents.

The IDS included a certification statement that no item of information was known to any

individual designated in 37 CFR 1.56(c) more than 3 months prior to filing of the IDS, as well as

payment of a fee as set forth in 37 CFR 1.17(p).

(iii) Notice of Allowance – November 29, 2018

On November 29, 2018, in response to the IDS filed November 6, 2018, the Examiner

issued a Notice of Allowance providing that claim 1—the only claim in the application—was

allowed for issuance. No reason for the allowance was provided.

(iv) Request for Continued Examination – December 27, 2018

On December 27, 2018, the applicant submitted a Request for Continued Examination,

arguing a desire to correct “minor grammatical errors and antecedence errors,” to amend the

abstract, and to submit an information disclosure statement. However, the applicant added 19

new claims (claims 2-20). Further, applicant amended claim 1 to add substantively new

material, such as a limitation allowing access to content only subsequent to receipt of

authentication information and subscription information, and broadening the devices which

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Reexamination of U.S. Patent No. 10,346,114

could render the device dependent information such that it no longer recited “output devices” for

this function, but rather, more generally, “devices.”

(v) Notice of Allowance – February 13, 2019

On February 13, 2019, in response to the RCE filed December 27, 2018, the Examiner

issued a Notice of Allowance providing that claims 1-20 were allowed for issuance. The

Examiner provided an Examiner’s amendment to dependent claims 7, 14, 16, and 19. No reason

for the allowance was provided.

(vi) Amendment After Allowance and IDS – May 13, 2019

On May 13, 2019, the applicant submitted a Rule 312 Amendment after Notice of

Allowance, arguing a desire to correct “some minor grammatical errors and antecedence errors”

and to submit an additional two references in an information disclosure statement considered by

the Examiner in co-pending applications. The applicant, however, again added substantive

features to the claims. For example, claim 1 was amended to recite the device object information

related to devices that were distinct and separate from the servers.

On the same date, the applicant also submitted an information disclosure statement citing

7 U.S. Patents, 4 U.S. Patent Application Publications, and 2 non-patent literature documents.

The IDS included a certification statement that no item of information was known to any

individual designated in 37 CFR 1.56(c) more than 3 months prior to filing of the IDS, as well as

payment of a fee as set forth in 37 CFR 1.17(p).

(vii) Notice of Allowance – June 7, 2019

On June 7, 2019, in response to the Amendment After Allowance and IDS submitted by

the applicant on May 13, 2019, the Examiner issued a Notice of Allowance providing that claims

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Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

1-20 were allowed for issuance. On the same day, the Examiner also provided a Response to

Rule 312 Communication and entered the amendments filed on May 13, 2019. No reason for the

allowance was provided.

IV. CLAIM CONSTRUCTION

In an ex parte reexamination, a claim in an unexpired patent is “given the broadest

reasonable interpretation consistent with the specification.” In re Yamamoto, 740 F.2d 1569,

1571 (Fed. Cir. 1984); MPEP § 2258(1)(G)). This Request presents its claim analysis in a

manner that is consistent with the broadest reasonable interpretation consistent with the

specification. Requester otherwise does not believe any specific terms of the ’114 patent require

construction beyond their plain and ordinary meaning. Requester reserves the right to advocate

different claim interpretations in any other forum or proceeding if necessary.

In the co-pending litigation, with regard to the term “one or more devices…for outputting

or playing the digital content” of claim 8, the Patent Owner asserted that “[n]o additional

construction [is] required” because it “is readily understandable [and] unambiguous.” Plaintiff’s

Opening Claim Construction Brief at 6-7, Flexiworld Technologies, Inc. v. Roku Inc, No. 6:20-

CV-00819-ADA (W. D. Texas Mar. 8, 2021) (Exhibit J).

In the co-pending litigation, with regard to the terms “one or more servers” and “the one

or more servers” of claim 8, the Patent Owner asserted that “‘the one or more servers’ in the

body of the claim refers to the same ‘one or more servers’ recited in the preamble of the claim.

No additional construction required.” Id. at 7-8.

For purposes of the present analysis, the terms in claims 8, 13, and 14 may be given their

plain and ordinary meaning as would be known to or understood by a person of ordinary skill in

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Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

the art. See Brown Decl., ¶¶10-13. The arguments provided herein are also consistent with the

claim construction positions of the Patent Owner in the co-pending litigation.

V. STATEMENT POINTING OUT EACH SUBSTANTIAL NEW QUESTION OF

PATENTABILITY FOR THE CHALLENGED CLAIMS

As shown below, Requester submits that the prior art references cited herein raise a new

“substantial question of patentability” because “the teaching of the (prior art) patents and printed

publications is such that a reasonable examiner would consider the teaching to be important in

deciding whether or not the claim is patentable.” See MPEP § 2242. Each reference or

combination of references presents new and non-cumulative information that supports the

substantial new question of patentability. These prior art references, in various combinations,

teach all of the limitations of claims 8, 13, and 14. None of the prior art references have

previously been applied by an Examiner in prosecution of the ’114 patent. The prior art

presented here is not cumulative of the art relied upon by the Examiner.

The prior art references herein teach or suggest each and every feature recited in claims 8,

13, and 14 of the ’114 patent and render the claim unpatentable under 35 U.S.C. § 103.

A. Subject Matter Which Raises a Significant New Question of Patentability for

the Challenged Claims

As discussed above, during prosecution, the Examiner issued no rejections, nor did the

Examiner provide any reasons for allowance. Accordingly, no specific reasons for allowance

were provided as to claims 8, 13, and 14.

As explained below, Fung, Katz, Brown, and Yukie, in various combinations, teach every

element of claims 8, 13, and 14, and none of the references were considered by the Examiner.

Therefore Fung, Katz, Brown, and Yukie raise a substantial new question of patentability for

claims 8, 13, and 14.

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Reexamination of U.S. Patent No. 10,346,114

B. Fung in View of Katz Raises a Substantial New Question of Patentability for

Claims 8 and 13

(i) Overview of Fung

Fung published on July 27, 2000 and therefore qualifies as prior art against the ’114

patent under at least 35 U.S.C. § 102(a). Fung was not submitted to the Examiner during

prosecution of the ’114 patent, is non-cumulative over the prior art considered by the Examiner,

and was never considered by the Examiner, either with or without the context of the evidence

provided in the Brown Declaration submitted herewith.

The Abstract of Fung discloses a “system and method that allow client devices (102) with

different characteristics and users (116) with different preferences to receive customized content

from servers in an open networked environment (130), regardless of the server’s prior knowledge

of the client’s configurations or users’ preferences” and provides “the implementation of a

secure, for-pay content delivery system wherein content providers can deliver paid content (234)

in an appropriate format over an open, networked environment, such as the Internet, to their

subscribers without the fear of copyright violation.” Exhibit B (Fung), Abstract; see also Exhibit

I (Brown Decl.), ¶¶14-15.

Fung describes a system including an information apparatus (i.e., Client 102) which is

operable to access digital content (i.e., Content 234) from digital content providers provided by

one or more servers over a network (i.e., Network 130, Server 120). Exhibit B (Fung), 7:3-17,

FIG. 1. Fung further discloses the digital content is accessible, at least partly, by the information

apparatus. See, e.g., Fung, Abstract, 7:3-17, FIG. 1 (reproduced below, annotated by expert

witness Ralph Brown1); see also Brown Decl., ¶16.

1
All figure annotations in red have been added by Requester’s expert, Ralph Brown, unless otherwise noted.

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Reexamination of U.S. Patent No. 10,346,114

Fung is analogous art to the ’114 patent. “Two separate tests define the scope of

analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the

problem addressed and, (2) if the reference is not within the field of the inventor's endeavor,

whether the reference still is reasonably pertinent to the particular problem with which the

inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Fung is both within the

field of endeavor and reasonably pertinent to one or more problems concerning the inventors of

the ’114 patent. It is within the field of endeavor of the ’114 patent because, as described in

detail above, Fung is directed to a system including an information apparatus which is operable

to access digital content from digital content providers provided by one or more servers over a

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Reexamination of U.S. Patent No. 10,346,114

network. Exhibit B (Fung), 7:3-17, FIG. 1. Further, Fung is reasonably pertinent to at least one

problem concerning the inventors of the ’114 patent. For example, a primary purpose of Fung is

to ensure content providers can limit access to their material “by customers with the appropriate

rights (i.e., paying customers),” and ensuring “content [is] usable on the different types of

platforms (e.g., personal computers, handheld devices, cellular phones) employed by users,” thus

solving problems associated with access and output of digital content. Id., 1:8-13. Additionally,

Fung provides that digital content is accessible in a device dependent manner, increasing security

of the content and ease of use of the user. Id., 5:12-21, 13:15-31; see also Brown Decl., ¶30.

(ii) Overview of Katz

Katz issued on July 20, 1999 and therefore qualifies as prior art against the ’114 patent

under at least 35 U.S.C. § 102(b) and/or 102(a). Katz was not submitted to the Examiner during

prosecution of the ’114 patent, is non-cumulative over the prior art considered by the Examiner,

and was never considered by the Examiner, either with or without the context of the evidence

provided in the Brown Declaration submitted herewith.

The Abstract of Katz discloses a “computer network based digital information library

system employing authentication and encryption protocols for the secure transfer of digital

information library programs to a client computer system and a mobile digital information

playback device removably connectable to the client computer system” and “a computer network

based library and information delivery system for accessing and obtaining selected digital

information files” where the system comprises “1) a library server having a plurality of digital

information files; 2) a client computer system coupled to the library server over a network; and

3) a mobile device removably connectable to the client computer system.” Exhibit C (Katz),

Abstract; see also Brown Decl., ¶¶17-18.

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Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

As provided by the specification and figures, Katz describes an information apparatus

(i.e., client computer system 214) for obtaining digital content (e.g., digital information files)

from a digital content service provided over a network (i.e., library server). See, e.g., Exhibit C

(Katz), 4:41-67, 8:5-61, 9:14-62, 16:42-45, FIG. 2 (reproduced below); see also Brown Decl.,

¶19.

Katz is analogous art to the ’114 patent because it is both within the field of endeavor and

reasonably pertinent to one or more problems concerning the inventors of the ’114 patent. It is

within the field of endeavor of the ’114 patent because, as described in detail above, Katz is

directed to an information apparatus for obtaining digital content from a digital content service

provided over a network. Exhibit C (Katz), 4:41-67, 8:5-61, 9:14-62, 16:42-45, FIG. 2. Further,

Katz is reasonably pertinent to at least one problem concerning the inventors of the ’114 patent.

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Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

For example, a primary purpose of Katz is to ensure digital content is protected from

unauthorized download while nonetheless being in a format that can be rendered by an output

device. Id., 1:46-2:29. Additionally, Katz provides that digital content is accessible in a device

dependent manner, increasing security of the content. Id., 11:32-53. Brown Decl., ¶¶29-30

(iii) Fung in view of Katz

As provided above, both Fung and Katz are analogous prior art to the ’114 patent. Like

the ’114 patent, each of Fung and Katz describe an information apparatus that can access device-

dependent digital content from a server, and conveying such digital content to an output device

where the digital content is accessed following authentication of information.

Furthermore, with regard to ’114 claim element 8.c, Fung discloses sending, from the

information apparatus to the server, information relating to subscriptions for accessing digital

content. Exhibit B (Fung), 10:10-15, 13:15-20, 8:21-27, FIG. 3. Fung also describes, with regard

to claim element 8.i, delivering, from the information apparatus, a pointer or reference to

selected digital content. Id., 13:15-31, FIG. 3. To the extent Fung does not explicitly disclose a

distinct output device, Katz further teaches an output device distinct and separable from the

information apparatus. Exhibit C (Katz), 11:32-53, 14:20-27, 5:21-37, FIG. 2. Additionally, to

the extent Fung does not explicitly disclose receiving, via an interface of the information

apparatus, an indication from the user of selected digital content, Katz discloses the use of such

user interface. Id., 8:63-9:6, 17:20-23, FIG. 1. Brown Decl. ¶35.

As set out in further detail below, claims 8 and 13 of the ’114 patent are rendered obvious

by Fung in view of Katz. Accordingly, not only would a reasonable Examiner consider Fung and

Katz to be important in deciding whether claims 8 and 13 were patentable, but would have

rejected claims 8 and 13 of the ’114 patent in view of these references. See MPEP § 2242.

16
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

Therefore, the combination of Fung and Katz raise a substantial new question of patentability for

claims 8 and 13 of the ’114 patent. Brown Decl., ¶¶27-35.

C. Fung in View of Katz and Further in View of Brown Raises a Substantial

New Question of Patentability for Claims 8, 13, and 14

As discussed above, Fung and Katz qualify as prior art against the ’114 patent, were not

submitted to the Examiner during prosecution of the ’114 patent, are non-cumulative over the

prior art considered by the Examiner, and were never considered by the Examiner, either with or

without the context of the evidence provided in the Brown Declaration submitted herewith.

Brown issued on May 4, 2004, was filed on October 26, 1999, and claims priority to U.S.

Application No. 08/811,586, filed March 5, 1997, and therefore qualifies as prior art against the

’114 patent under at least 35 U.S.C. § 102(e). Brown was not submitted to the Examiner during

prosecution of the ’114 patent, is non-cumulative over the prior art considered by the Examiner,

and was never considered by the Examiner, either with or without the context of the evidence

provided in the Brown Declaration submitted herewith. Ralph Brown, Requester’s expert

witness, is the first named inventor on the Brown reference. Brown Decl., ¶20.

The Abstract of Brown discloses a “user’s set top box (STB), or other client [which]

executes a shell and has an application programming interface (API) by which certain features of

the client can be controlled. The client is in communication with a walled garden proxy server

(WGPS), which controls access to the walled garden. The walled garden contains links to one or

more servers providing network-based services.” Exhibit D (Brown), Abstract. Brown Decl.,

¶21.

As provided by the specification and figures, Brown describes an information apparatus

(i.e., client 112) for accessing digital content from a digital content service (i.e., Walled Garden

Application Server 422B or Remote Walled Garden Application Server 436) over a network

17
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

(e.g., network 128). See, e.g., Brown, 3:55-67, 7:3-12, 8:63-9:14, FIGS. 1, 4 (reproduced below).

Brown Decl., ¶22.

Output
device

Information
apparatus
Network

One or more
servers over
a network

Network

Information
apparatus
Brown is analogous art to the ’114 patent because it is both within the field of endeavor

and reasonably pertinent to one or more problems concerning the inventors of the ’114 patent. It

is within the field of endeavor of the ’114 patent because, as described above, Brown is directed

an information apparatus for accessing digital content from a digital content service over a

network. Exhibit D (Brown), 3:55-67, 7:3-12, 8:63-9:14, FIGS. 1, 4. Further, Brown is

reasonably pertinent to at least one problem concerning the inventors of the ’114 patent. For

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Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

example, a primary purpose of Brown is to ensure digital content is protected from unauthorized

access while nonetheless being in a format that can be rendered by an output device (e.g., a

television). Id., 1:20-2:15. Additionally, Brown provides that digital content is accessible upon

authentication of information to increase security, and further describes the digital content can be

rendered on a television. Id., 3:55-67, 4:64-5:4, 7:3-12, 8:63-9:14. Brown Decl., ¶42.

With regard to ’114 claim 8, Brown describes an information apparatus for accessing

digital content from a digital content service over a network. Exhibit D (Brown), 2:19-2:22,

Abstract, FIGS. 1, 4. With regard to claim element 8.c, Brown describes the apparatus sends

subscription information for accessing digital content provided by the server. Id., 7:48-8:14,

9:45-65, 11:53-12:12, 14:19-26, FIG. 6. Brown also describes, with regard to claim element 8.h,

the server receives, from the client interface, an indication of user-selected digital content from

the content available through the digital content service. Id., 11:22-38, 2:52-67, 3:12-22.

Furthermore, Brown provides that the apparatus delivers a pointer or reference (e.g., URL) to

selected digital content. Id., 11:22-38. Brown Decl., ¶¶41-44.

With regard to ’114 claim 14, to the extent Fung and Katz do not explicitly disclose that

the information apparatus transmits at least part of the output data to a television, Brown

describes the information apparatus transmits at least part of the output data, related to the

selected digital content, to a television for rendering at least part of the selected digital content.

Exhibit D (Brown), 5:28-37, 6:50-65, FIG. 1. Brown also discloses embodiments wherein the

television is either wire connected to the information apparatus, or the television is wirelessly

connected to the information apparatus. Id., 3:55-67, FIG. 1. Brown further describes the

selected digital content can include, at least in part, video digital content or audio digital content,

individually or in any combination. Id., 5:7-10, 7:48-56, 5:28-37. Brown Decl., ¶¶48-53.

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Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

As set out in further detail below, claims 8, 13, and 14 of the ’114 patent are rendered

obvious by Fung in view of Katz and further in view of Brown. Accordingly, not only would a

reasonable Examiner consider Fung, Katz, and Brown to be important in deciding whether

claims 8, 13, and 14 were patentable, but would have rejected claims 8, 13, and 14 of the ’114

patent in view of these references. See MPEP § 2242. Therefore, the combination of Fung, Katz,

and Brown raise a substantial new question of patentability for claims 8, 13, and 14 of the ’114

patent. Brown Decl., ¶¶41-54.

D. Fung in View of Katz and Further in View of Yukie Raises a Substantial New
Question of Patentability for Claims 8 and 13

As discussed above, Fung and Katz qualify as prior art against the ’114 patent, were not

submitted to the Examiner during prosecution of the ’114 patent, are non-cumulative over the

prior art considered by the Examiner, and were never considered by the Examiner, either with or

without the context of the evidence provided in the Brown Declaration submitted herewith.

Yukie issued on January 5, 2010, was filed on April 4, 2000, and claims priority to

provisional applications filed February 8, 2000, and therefore qualifies as prior art against the

’114 patent at least under 35 U.S.C. § 102(e). Yukie was not submitted to the Examiner during

prosecution of the ’114 patent and is not cumulative over the prior art considered by the

Examiner during prosecution. Brown Decl., ¶¶23-24.

During prosecution of the ’317 application, U.S. Publication No. 2005/0210120 (“Yukie

2”, Exhibit G) was submitted in an information disclosure statement. Yukie 2 was not cited in an

Office Action by the Examiner. Although Yukie 2 and the instant reference (“Yukie”) have

shared inventorship and claim priority to shared provisional applications, Yukie provides a

plethora of information not discussed in Yukie 2, and the two references contain substantially

differing figures. In particular Yukie relates to a client device that requests content from a server

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Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

under a form of subscription or purchase while Yukie 2 relates to a client device for storing

content on a server and then subsequently retrieving it based on a user profile parameter. See

Brown Decl., ¶¶24-26. Accordingly, Yukie is non-cumulative over Yukie 2.

The Abstract of Yukie discloses a “system and method for vending digitized content over

an Internet network path, at least a portion of which is wireless, such as an SDMA high data rate

directional wireless path. Content in the form of IP packets is provided to a user terminal via a

connect server in response to user requests, which can be real-time requests or which can be

requests embodied in a user-defined or system-defined user profile.” Yukie also describes the

“user is billed using one or more of several billing paradigms, including by…subscription.”

Exhibit E (Yukie), Abstract. Brown Decl., ¶25.

As provided by the specification and figures, Yukie describes information apparatus (i.e.,

user terminal 32) for obtaining digital content from a digital content service provided by one or

more servers over a network, the digital content accessible by the user terminal. See, e.g., Exhibit

E (Yukie), 6:19-7:5, 7:52-59, FIGS. 1, 3 (reproduced below). Brown Decl., ¶26.

Network

One or more
servers over
a network
Information
apparatus

21
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

Yukie is analogous art to the ’114 patent because it is both within the field of endeavor

and reasonably pertinent to one or more problems concerning the inventors of the ’114 patent. It

is within the field of endeavor of the ’114 patent because, as described above, Yukie is directed

to an information apparatus for obtaining digital content from a digital content service provided

by one or more servers over a network, the digital content accessible by the information

apparatus. Exhibit E (Yukie), 6:19-7:5, 7:52-59, FIGS. 1, 3. Further, Yukie is reasonably

pertinent to at least one problem concerning the inventors of the ’114 patent. For example, a

primary purpose of Yukie is to ensure digital content is accurately vended to consumers with a

data rate sufficient for their use. Id., 1:20-2:3. Brown Decl., ¶56.

With regard to ’114 claim 8, Yukie describes an information apparatus for obtaining

digital content from a digital content service provided by one or more servers over a network, the

digital content accessible by information apparatus. Exhibit E (Yukie), 6:19-7:5, FIG. 1. Yukie

also suggests the information apparatus is configured to send authentication information

associated with the user to a server distinct and separate from the terminal. Id., 6:4-18, 6:19-28.

Yukie suggests sending from the information apparatus a request including information relating

to accessing subscribed-to digital content. Id., 6:29-50, Abstract, FIGS. 2-4. 2:19-2:22. Yukie

also discloses access to subscribed-to digital content based on user profile and subscription

information. Id., 6:51-64, 7:52-59, FIGS. 1, 3, and 4. Brown Decl., ¶26, 58.

As set out in further detail below, claims 8 and 13 of the ’114 patent are rendered obvious

by Fung in view of Katz and further in view of Yukie. Accordingly, not only would a reasonable

Examiner consider Fung, Katz, and Yukie to be important in deciding whether claims 8 and 13

were patentable, but would have rejected claims 8 and 13 of the ’114 patent in view of these

references. See MPEP § 2242. Therefore, the combination of Fung, Katz, and Yukie raise a

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Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

substantial new question of patentability for claims 8 and 13 of the ’114 patent. See also Brown

Decl., 55-63.

VI. DETAILED EXPLANATION OF THE PERTINENCE AND MANNER OF

APPLYING THE PRIOR ART REFERENCES TO EVERY CLAIM FOR WHICH
REEXAMINATION IS REQUESTED

In accordance with 37 C.F.R. § 1.510(b)(2), Requester provides the following detailed

explanation of the pertinency and manner of applying the prior art to claims 8, 13, and 14 of the

’114 patent, for which reexamination is requested.

A. Ground 1: Fung in View of Katz Renders Obvious Claims 8 and 13 of the

’114 Patent Under (pre-AIA) 35 U.S.C. § 103

Fung and Katz were not cited during original prosecution of the ’114 patent, present new

and noncumulative information, and are sufficient to raise a substantial new question that Fung

in view of Katz renders obvious independent claim 8 and dependent claim 13.

Fung discloses a system including an information apparatus (i.e., Client 102) for

obtaining digital content (i.e., Content 234) from digital content providers provided by one or

more servers over a network (i.e., Network 130, Server 120). Exhibit B (Fung), 7:3-17, FIG. 1.

Fung provides that the digital content is accessible, at least partly, by the information apparatus.

Id., 7:19-27, 2:1-3, Abstract. Fung describes many of the claimed elements from claim 8, as

provided in further detail below. In particular, Fung describes sending information relating to

subscriptions for accessing the digital content service provided by one or more servers from the

information apparatus (client 102) to the server (120). Id., 8:21-27, 10:10-15, 13:15-20, Abstract,

FIG. 3. Fung also describes the information apparatus (client 102) sending access rights (122) to

the one or more servers (120), which limits access to certain consumers. Id., 1:8-13, 3:18-29,

9:18 (Table 1), Abstract. Brown Decl., ¶28.

23
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

Katz similarly discloses an information apparatus (i.e., client computer system 214) for

obtaining digital content (e.g., digital information files) from a digital content service provided

over a network (i.e., library server). See Exhibit C (Katz), 4:41-67, 8:5-61, 9:14-62, 16:42-45,

Abstract, FIG. 2. To the extent Fung does not explicitly disclose an output device distinct from

the information apparatus, Katz describes the information apparatus (client computer system

214) is separable from a device for outputting or playing the digital content (mobile playback

device 212). See, e.g., id., 11:32-53, 14:20-27, 5:21-37, FIG. 2. Katz also teaches device objects

(i.e., player identifiers such as player ID 223) that are sent to the servers relating to the output

device (i.e., mobile playback device 212). Id., 11:32-53, 14:20-27, 5:21-37. To the extent Fung

does not explicitly disclose receiving, via an interface of the information apparatus, an indication

from the user of selected digital content, Katz discloses this feature. Id., 8:63-9:6, 17:20-23,

FIGS. 1, 8. Katz describes the library server (260) receiving, via the interface of the information

apparatus (e.g., client browser 219), an indication from the user of selected digital content from

among the one or more digital content that are available from the digital content service. Id.,

8:63-9:6, 17:20-23, FIG. 1. Brown Decl., ¶29.

As provided by the detailed overview of Fung and Katz above, each of these references

were analogous prior art to the ’114 patent because each were within the field of endeavor and

reasonably pertinent to one or more problems concerning the inventors of the ’114 patent. Brown

Decl., ¶30.

A person of ordinary skill in the art (POSA) would have been motivated to combine Fung

and Katz. As evidenced by the claim charts below, Fung and Katz share numerous similarities

and are in the same field of disclosures. For example, each of Fung and Katz disclose an

information apparatus for obtaining digital content from digital content providers provided by

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Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

one or more servers over a network. Exhibit B (Fung), Abstract, FIG. 1, 7:3-17; Exhibit C

(Katz), Abstract, FIG. 2, 4:42-67, 8:5-62. Each of Fung and Katz also disclose the information

apparatus sends, from the information apparatus to the server, authentication information

associated with the user of the information apparatus. Exhibit B (Fung), FIG. 3, 4:8-16, 5:4-21;

Exhibit C (Katz), 8:5-32, 11:32-53. Both Fung and Katz describe accessing, by the information

apparatus one or more digital content available from a digital content service. Exhibit B (Fung),

7:19-27, 2:1-3, Abstract; Exhibit C (Katz), Abstract, 8:5-62. Each of Fung and Katz provide that

access to the content is based, at least in part, on having successfully sent the authentication

information. Exhibit B (Fung), 13:15-14:11, FIG. 3; Exhibit C (Katz), 8:5-40, 11:32-53.

Additionally, both Fung and Katz describe the server receives from the information apparatus an

indication from the user of selected digital content. Exhibit B (Fung), 13:15-31, FIG. 3; Exhibit

C (Katz), 8:63-9:6, 17:20-23, FIG. 1. Fung and Katz both disclose receiving, at the information

apparatus, from the server, output data corresponding to selected digital content. Exhibit B

(Fung), 13:15-14:11, FIG. 3; Exhibit C (Katz), 8:5-62. Furthermore, both Fung and Katz

describe that at least part of device-dependent output data includes an encryption scheme for

ensuring security of the digital content. Exhibit B (Fung), 14:1-11, FIG. 3, 5:12-21, 13:15-31;

Exhibit C (Katz), 8:5-62, 9:7-12, 9:14-62, 18:28-41. Brown Decl., ¶¶30-34.

Fung’s system provides a manner in which providers can transfer content to subscribers

“without the fear of copyright violation” and ensures users are authorized to access content prior

to providing it to them. Exhibit B (Fung), Abstract. Thus Fung provides a system that sends

subscription information for accessing digital content from a service provided by one or more

servers from the information apparatus to the one or more servers. Id., Abstract, FIG. 3, 10:10-

15, 13:15-20, 8:21-27, 1:8-13, 3:18-29, 4:8-16, 9:18 (Table 1), 12:25-28, 18:14-17, 20:7-8,

25
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

22:10-17. Fung also teaches that applying subscription and payment parameters provided therein

allows content providers to deliver digital content over a network “to their subscribers without

the fear of copyright violation.” Id., 3:18-29, 8:21-27, Abstract. A POSA would have been

motivated to incorporate the beneficial aspects of Fung into a system for outputting the protected

and subscribed-to information onto a mobile output device, such as provided by Katz. Brown

Decl., ¶30.

Katz discloses an advantageous means for outputting digital content through a mobile

playback device (212) that is removably connectable to the information apparatus (i.e., client

computer system 214). Exhibit C (Katz), Abstract, 2:11-29. Katz describes the output data can be

formatted such that it can be rendered by specific devices, limiting access and thus increasing the

security of the digital content. Id., 11:32-53 (using “authentication processes to protect the

transfer of information” to the output device). A POSA would have been motivated to

incorporate such a mobile playback device into the disclosure of Fung, as the mobile playback

device would be “low-cost [and] standalone” for receiving digital content, while also being

portable. A POSA would have been motivated to utilize the “light-weight, low cost, and readily

mobile” playback device for ease of client-side access, use, and portability. Id., 10:3-10. A

POSA further would have been motivated to increase security of digital content by limiting

output devices that could play the content. Id., 11:32-53. Implementing the teachings of both

Katz and Fung further a shared goal of protecting the transfer of such digital content. Id.; see

also: Exhibit B (Fung), 3:18-29 (the embodiments enabling secure content delivery without fear

of copyright violations), Brown Decl., ¶31.

Accordingly, a POSA would have been motivated to combine the system of Fung (e.g.,

an information apparatus providing subscribed-to digital content in a manner that can protect

26
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

copyrighted material) with the system of Katz (e.g., a similar system, but favorably comprising a

light-weight, low cost, mobile output device allowing for portability, and limiting the playback to

certain output devices). Combined with Katz, Fung’s system would provide an information

apparatus that could access digital content from a server, and convey the digital content to a

portable output device, where the digital content was device-dependent and accessed following

authentication of security information (e.g., authentication of user and subscription information).

Accordingly, the combination of Fung and Katz teach the alleged points of novelty from claim 8

of the ’114 patent, namely the ability to access digital content from a server using an information

apparatus, and conveying such digital content to an output device, where the digital content is

device-dependent and accessed following authentication of user and subscription information.

’114 patent, 1:56-67, 37:27-38:25 (claim 8). Brown Decl., ¶¶32-33.

A POSA would have had a reasonable expectation of success in combining the references

of Fung and Katz. Fung and Katz are from the same field and share a substantial number of

similarities, as the claim chart below further evidences. Persons of skill in the art prior to

November 20, 2000, could have readily combined the teachings of each of Fung and Katz

without large burden or undue experimentation because the system and methods of Fung could

be adapted using the hardware already disclosed by Katz with, at most, minor modifications.

Brown Decl., ¶34.

The following claim chart provides exemplary disclosure showing how the combination

of Fung and Katz taught or suggested all elements of claim 8 of the ’114 patent:

27
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

[8.Preamble] An Fung discloses a system comprising an information apparatus
information apparatus for (i.e., Client 102) for obtaining digital content (i.e., Content 234)
obtaining digital content from digital content providers provided by one or more servers
from a digital content over a network (i.e., Network 130, Server 120), the digital content
service provided by one accessible, at least partly, by the information apparatus. See, e.g.,
or more servers over a Abstract, 7:3-17, FIG. 1 (reproduced below).
network, the digital
content accessible, at
least partly, by the
information apparatus,

Similarly, Katz discloses an information apparatus (i.e., client

computer system 214) for obtaining digital content (e.g., digital
information files) from a digital content service provided over a
network (i.e., library server). See Abstract, 4:42-67, 8:5-63, 9:14-
62, FIG. 2 (reproduced below).

28
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

[8.a] the information Fung discloses the information apparatus (i.e., client 102)
apparatus including: at includes a processor (i.e., processor 308), an operating system
least one processor; an (i.e., operating system 320), an interface for interacting with a user
operating system; an (e.g., user input devices 310, display 306), memory or storage
interface for interacting (i.e., non-volatile memory 152 and volatile memory 154), with
with a user; memory or programs for accessing digital content (324, 326) stored on in the
storage; software or memory or storage.
firmware stored, at least
partly, in the memory or “FIG. 4A is a block diagram of a client computing device 102
storage, at least part of embodiment that includes a client system memory 154, NV
the software or firmware memory 152, display 306, processor 308 and input device(s) 310.
is executable, by the at The input device is configured to receive user inputs, including
least one processor at the biometric inputs 313 needed to generate and verify PINs 213. The
information apparatus, client system memory 154, which could be any combination of a
for accessing the digital fast, semiconductor memory, such as a RAM, or a slower,
content service provided magnetic memory, includes an operating system 320,
by the one or more communication routines 322 for interacting with the network 130
servers over the network; and the servers 120, programs 324 and data 340.” Fung, 15:12-19.
and

29
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

“In the conventional manner, the client 102 is presumed to have a
memory 150, including non-volatile memory 152 and volatile
memory 154. The server 120 is presumed to have access to a
database 230.” Id., 8:33-9:3.

See also id., FIG. 4A (reproduced below), and 6:20-21 (“FIG. 4A

is a block diagram of a client computer configured in accordance
with the present invention”).

“In the conventional manner, the communication routines 322 and

the programs 324 execute in the processor 308 under control of
the operating system. Among other things, the operating system
320 provides program access to peripherals, such as the display
306, which are employed by users to interact with (e.g., view,
listen to, play, record onto, etc.) the downloaded content 360. In
one embodiment, the programs 324 include a client program 326
and security routines 330, which further include an optional PIN
generator 332, encryptor 334, decryptor 336 and PIN verifier
338.” Id., 15:24-29.

“The client program 326 performs, with possible support from the
security routines 330, the client operations described with
reference to FIGS. 2 and 3.” Id., 15:31-32; see also FIG. 3, 6:17-
18 (“FIG. 3 is a flow diagram of a content request procedure
cooperatively executed by a server and a client”), 12:16-23

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Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

(detailing FIG. 3), 13:15-17 (“A user 116 accesses server content
by issuing a content request 103 to the server 120…”).

Similarly, Katz discloses the information apparatus includes at

least one processor; an interface for interacting with a user (e.g.,
display, keyboard, mouse, browser); memory or storage; and
software or firmware stored, at least partly, in the memory or
storage. To the extent Fung’s disclosure does not expressly
disclose “at least part of the software or firmware is executable, by
the at least one processor at the information apparatus, for
accessing the digital content service provided by the one or more
servers over the network” such is obvious over Katz. Katz
discloses at least part of the software or firmware is executable, by
the at least one processor at the information apparatus, for
accessing the digital content service provided by the one or more
servers over the network.
“FIG. 1 illustrates a typical data processing system upon which
one embodiment of the present invention is implemented…. The
data processing system illustrated in FIG. 1 includes a bus or other
internal communication means 101 for communicating
information, and a processor 102 coupled to the bus 101 for
processing information. The system further comprises a random
access memory (RAM) or other volatile storage device 104
(referred to as main memory), coupled to bus 101 for storing
information and instructions to be executed by processor 102.”
Katz, 3:13-35.

“The software implementing the present invention can be

stored in main memory 104, mass storage device 107, or other
storage medium accessible to processor 102. It will be apparent to
those of ordinary skill in the art that the methods and processes
described herein can be implemented as software stored in main
memory 104 or read only memory 106 and executed by
processor 102.” Id., 4:28-40.

“The client browser 219 is used to make requests of library

server 260 for various types of service including, but not limited
to, searching the digital information files 262 for a desired
program, previewing a selected preview clip associated with a
digital information file 262, purchasing a selected program,
requesting operating code segments or player configuration data,
and downloading the purchased program or other material to the
requesting client computer system 214.” Id., 8:65-9:6.

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Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

See also id., FIG. 1 (reproduced below):

[8.b] wherein the Fung discloses the information apparatus (client 102) sends, from
information apparatus is the information apparatus to the one or more servers (server 120)
configurable for: over the network (network 130), authentication information
sending, from the associated with the user of the information apparatus (e.g., secret
information apparatus to PIN, UMID 200, updated UMID 200’) for authentication of the
the one or more servers user or the information apparatus, the one or more servers being
over the network, distinct and separate from the information apparatus. See, e.g.,
authentication Fung, FIG. 3 (reproduced below).
information associated
with the user of the
information apparatus for
authentication of the user
or the information
apparatus, the one or
more servers being
distinct and separate from

32
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

the information
apparatus;

“A user of a client who wishes to receive server content in

accordance with the present invention first registers with the
server…. In one embodiment the user registers by sending the
server a secret PIN that is, presumably, uniquely associated with
the client from used to access the content. The secret PIN can
either be stored in the client’s non-volatile memory at the time
of manufacture or can be generated by a client program from
presumably unique client and/or user attributes and then stored on
the client.” Id., 4:8-16.

“After receiving the secret PIN the server determines the client
characteristics and the user preferences in cooperation with the
client. This can be done using an automated, machine-to-machine
protocol in which the client responds to server queries or by the
user responding to questions or forms sent by the user. Form this
information, the server assembles the UMID, which it returns

33
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

to the client. In one embodiment, the UMID includes a public
PIN assigned by the server that uniquely identifies the user.
Following registration, a user accesses server content by first
issuing a request to the server along with his UMID. The server
looks up the user’s secret key using the public PIN and determines
the client characteristics and user preferences based on the UID
and DID contained in the UMID.” Id., 5:4-21.

“Accordingly, the present invention can be the basis for a

secure, for-pay content delivery system wherein content
providers can deliver paid content in an appropriate format over
an open, networked environment, such as the Internet, to their
subscribers without the fear of copyright violation. A particular
feature of all embodiments is that an authorized user is unable
to transfer access rights to non-authorized users. Registration
and content access methods are now described with reference to
FIGS. 2 and 3.” Id., 8:21-27.

Similarly, Katz discloses the information apparatus (i.e., client

system 214) sends, from the information apparatus (client system
214) to the server (i.e., library server 260) authentication
information associated with the user of the information apparatus.

“Upon receiving such a client request, library server 260 uses

authorization server 270 to authenticate the request with client
information 272 generated and maintained by library server 260
or authorization server 270 to authenticate the request with
client information 272 generated and maintained by library
server 260 or authorization server 270. The client information
272 includes client identifiers which are used to target
content…may also contain client personal information, user
content preferences, client billing history, player usage history,
and player group lists…. Using the authorization protocol
described in more detail below, the library server 260 determines
if the client request can be serviced.” Katz, 8:5-32.

“The preferred embodiment utilizes three authentication processes

to protect the transfer of information from server 260 to client
system 214 and playback device 212. First, a point-to-point
authentication protocol is performed whereby the library
server 260 must verify that the requesting client computer
system 214 is an authorized client…” Id., 11:32-53; see also id.,
11:54-12:22.

34
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

[8.c] sending, from the Fung discloses sending, from the information apparatus (client
information apparatus to 102) to the server (120), information relating to subscriptions for
the one or more servers, accessing the digital content service provided by the one or more
subscription information servers.
for accessing the digital
content service provided See, e.g., Fung, FIG. 3 (reproduced below), illustrating sending,
by the one or more from the client 102 to the one or more servers (120) UMID (200),
servers; which as noted below, in embodiments contains information
relating to subscriptions for accessing the digital content service
provided by the server.

“Generally, the UMID 200 can include any user or device

information that could be of use to the server. For example, the
user information 210 could include credit or debit information to
support on-line commerce and could designate particular
publications to which the user wishes to subscribe. The device

35
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

information 220 could include any hardware or software
information associated with the client that could influence the
type/size of content that can be downloaded to and/or used by the
client 102.” Id., 10:10-15.

The universal mobile ID (UMID) comprises the User ID (UID

210) and Device ID (DID 220). Id., 9:5-10. The UMID is stored
locally on client memory and is intended to be publicly exchanged
with any server to initiate transmission of content. Id., 12:10-14.
“A user 116 accesses server content by issuing a content request
103 to the server 120 along with the updated UMID 200’” id.,
13:15-20.

“Accordingly, the present invention can be the basis for a secure,

for-pay content delivery system wherein content providers can
deliver paid content in an appropriate format over an open,
networked environment, such as the Internet, to their subscribers
without the fear of copyright violation. A particular feature of
all embodiments is that an authorized user is unable to transfer
access rights to non-authorized users. Registration and content
access methods are now described with reference to FIGS. 2 and
3.” Id., 8:21-27.

“The embodiments allow the implementation of a secure, for-pay

content delivery system wherein content providers can deliver
paid content (234) in an appropriate format over an open,
networked environment, such as the Internet, to their subscribers
without the fear of copyright violation. In particular, these
embodiments prevent an authorized user from transferring to non-
authorized users a key or other embodiment of a right that would
allow the non-authorized users to access the for-pay content.” Id.,
Abstract.

Fung also discloses sending, from the information apparatus

(client 102) to the one or more servers (120), access rights (122),
which limits access to certain consumers. Although specific
examples of access rights (122) describes it may be used to
prevent child access to certain content, the context of the
specification as a whole suggests it is not so limiting, and is used
within the overall system of providing for-pay content delivery to
subscribers. See Brown Decl., ¶35 (claim element 8.c).

36
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

“As for-pay content, such as books, magazines, movies, computer
programs, video games and sports, become available over the
Internet, it is increasingly important for content providers to
ensure that their material can only be accessed by customers
with the appropriate rights (i.e., paying customers).” Fung,
1:8-13.

“The embodiments allow the implementation of a secure, for-

pay content delivery system wherein content providers can
deliver paid content (234) in an appropriate format over an open,
networked environment, such as the Internet, to their subscribers
without the fear of copyright violation.” Id., Abstract.

“The embodiments also include systems and methods that allow

the implementation of a secure, for-pay content delivery system
wherein content providers can deliver paid content in an
appropriate format over an open, networked environment, such as
the Internet, to their subscribers without the fear of copyright
violation. In particular, these embodiments prevent an
authorized user from transferring to non-authorized users a
key or other embodiment of a right that would allow the non-
authorized users to access the for-pay content.” Id., 3:18-29.

“Access Rights 122” defined as “contain[ing] information about

the access right, such as child access to some pre-defined web
sites (could be similar to the V-chip used by the TV industry).”
Id., 9:18 (Table 1).

“a user can enable a blocking parameter 122a in the access rights

field 122 to allow his child to use the client device 102.” Id.,
12:25-28 (access rights may include blocking parameter; suggests
access rights in general are broader).

“The user-specific information includes at least one of: user

preferences 188 that can be used by the server to filter the content
and access rights 122 that can be used by the server to limit
access of the user to the content.” Id., 18:14-17.

“access rights 122 that can be used by the server to limit access of
the user to the content…” Id., 20:7-8.

Fung also discloses subscribed-to data can be provided to the

client via push-mode, following user registration. This suggests

37
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

the client initially sends, from the information apparatus (client
102) to the server, subscription information (e.g., registration) for
accessing the digital content.

“A user of a client who wishes to receive server content in

accordance with the present invention first registers with the
server…. In one embodiment the user registers by sending the
server a secret PIN that is, presumably, uniquely associated with
the client from used to access the content. The secret PIN can
either be stored in the client’s non-volatile memory…” Id., 4:8-
16.

“In an alternate embodiment, a user 116 can receive content 360

from the server 120 without issuing a request 103. Instead, in what
is referred to as push-mode operation, the user 116 can subscribe
to particular types of content specified in their UMID 200,
which the server 120 downloads as appropriate (e.g., whenever
the next edition of an online newspaper to which the user
subscribes is published). The server 120 can charge the client for
any for-pay information using credit or debit information that
could be contained in the UMID 200 or sent to the server 120
during the registration phase.” Id., 22:10-17.

“The dynamic, universal mobile ID of claim 32, wherein the

content is subscription content, further comprising: subscription
information indicating particular types of subscription content; the
server downloading the subscription content as appropriate in a
push mode operation.” Id., Claim 35; see also id., 22:10-17
(disclosing a push-mode method for client to receive subscribed-to
content).

[8.d] delivering, from the The ’114 patent describes that an “object” “is not limited to
information apparatus, software or data as its media. Any entity containing information,
one or more device descriptions, attributes, data, instructions etc. in any computer-
objects to the one or more readable form or medium … are all valid forms of object
servers over the network, definition.” Exhibit A, 5:33-39. Example “device objects” from
the one or more device the ’114 patent comprise, as an exemplary non-exhaustive list,
objects are related to one “Identification of an output device (e.g., brand, model,
or more devices, the one registration, IP address, etc.) Services and feature sets provided by
or more devices are for an output device (e.g., color or grayscale output…quality of
outputting or playing the service, etc.)…Device specific or dependent profiles (e.g., output
digital content, and the device profiles…)… [and] payment information on a plurality of
one or more devices services provided by an output device.” Id., 6:10-7:5.
being distinct and

38
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

separate devices from the Katz discloses an information apparatus (client computer system
one or more servers, 214) separable from a device for outputting or playing the digital
content (mobile playback device 212). See, e.g., FIG. 2
(reproduced below). Katz further discloses device objects (i.e.,
player identifiers such as player ID 223), sent to the servers
relating to the output device (i.e., mobile playback device 212).

“Secondly, a targeting protocol is performed whereby the library

server 260 utilizes a set of identifiers (i.e., player IDs) for mobile
playback devices 212 authorized to receive the selected download
data from library server 260. The mobile playback device
identifiers are provided by client computer system 214 or are
referenced from user profiles stored on library server 260. In the
targeting process, library server 260 formats and downloads
data that can only be read by mobile devices 212 with these
identifiers.” Katz, 11:32-53.

“In another alternative embodiment, the player IDs for the

targeted mobile playback devices 212 are sent to the library
server 260 by the client computer system 214 when the user

39
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

registers with the library server 260 to obtain the user’s client ID.”
Id., 14:20-27.

“The mobile playback device 212 is a minimally configured, low-

cost, standalone mobile unit for receiving and storing digital
information files or programs as downloaded by library server 260
and client computer system 214 and for playing back the digital
information files or programs for a user of the mobile playback
device. The mobile playback device 212 is temporarily
removably coupled to the client computer system 214 while the
download takes place. Once downloaded, the mobile playback
device 212 may be detached from the client computer system
214 and used as a standalone digital information playback
device.” Id., 5:21-37

Fung similarly discloses delivering, from the information

apparatus (client 102), one or more device objects (e.g., Device ID
220, Device Attributes 222) related to the output device. To the
extent Fung does not explicitly describe the output apparatus as
being distinct from the information apparatus, this would have
been obvious to a POSA in view of the teachings of Katz. See
Brown Decl., ¶¶29, 35 (claim element 8.d).

“Among other things, the client memory 150 stores a universal

mobile ID (UMID) 200 that has two components: a user ID (UID)
210 that summarizes user-specific data and a device ID (DID) 220
that summarizes device-specific data. The UMID can be stored
in non-volatile memory 152…or the system memory 152, 154….
The DID 220 includes device attributes/characteristics 222.”
Fung, 9:5-12; see also id., Table 1 (“Device Attributes 222”
“contains characteristics about the device, such as CPU type,
display size, color depth, available memory size, etc.”), 4:3-6.

“The device information 220 could include any hardware or

software information associated with the client that could
influence the type/size of content that can be downloaded to
and/or used by the client 102.” Id., 10:1-15.

“In one embodiment, depending on the value in a communication

speed parameter 222b, the server 120 can decide what type of
content 360 should be downloaded to the client 102…. Other
device features 222 that might be dynamically modified include
any device parameters that impact at least one of: (1) size of the

40
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

content that can be stored in client memory; (2) bandwidth of the
content that can be transmitted between the client computer and
the server computer; (3) complexity of the content that can be
accessed by the client computer; and (4) geographic relevance of
the content. In addition to those described above, these parameters
could include, but are not limited to, available network capacity,
processor capability, available processor capacity, client
geographic position, and client time zone.” Id., 12:31-13:13.

[8.e] and the one or more Katz discloses the one or more device objects include information
device objects including related to device identification information (e.g., player ID 223).
information, related to at
least one of device “The mobile playback device identifiers are provided by client
identification computer system 214…” Katz, 11:32-53.
information, device
address information, “The targeting protocol of the present invention is a means and
device capability method for limiting the playback of digital information content,
information, model the adjustment of player configuration data, and the download of
information, brand payer operating code to a specified player 212/226 or a specified
information, registration set of mobile playback devices 212. Each player 212/226
information, or IP contains a unique player ID 223…. The public player ID is a
address information, unique identifier and serves as a serial number for player
individually or in any identification.” Id., 12:24-38.
combination, related to
the one or more devices; “Secondly, a targeting protocol is performed whereby the library
server 260 utilizes a set of identifiers (i.e. player IDs) for mobile
playback devices 212 authorized to receive the selected download
data from library server 260.” Id., 11:39-43.

With regard to other device objects, Fung discloses the one or

more device objects include information related to device
capability information or registration information.

“The device information 220 could include any hardware or

software information associated with the client that could
influence the type/size of content that can be downloaded to
and/or used by the client 102.” Fung, 10:1-15; see also id., 9:5-12
(“The DID 220 includes device attributes/characteristics 222…”).

“Another embodiment is a method for enabling a client computer

102 to download and use encrypted content 205 from a server
computer 120. This method includes a registration phase and a
downloading phase. The registration phase includes: the client

41
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

102 transmitting to the server 120 a secret pin 213 associated
with the client computer 102…” id., 21:29-22:8.

[8.f] accessing, by the Fung discloses accessing, by the information apparatus (i.e.,
information apparatus, client 102) one or more digital content (i.e., content 234) available
one or more digital from a digital content service.
content that are available
at the digital content “Each client 102 can host one or more users 116, each of whom
service, can access, via the client 102, content 234 stored on the servers
120.” Fung, 7:19-27.

“The present invention relates generally to networked computer

systems and, particularly, to systems and methods for securely
identifying a user and/or client computer accessing goods,
services or support over a computer network.” Id., 2:1-3.

“The embodiments allow the implementation of a secure, for-pay

content delivery system wherein content providers can deliver
paid content (234) in an appropriate format over an open,
networked environment, such as the Internet, to their subscribers
without the fear of copyright violation.” Id., Abstract.

Similarly, Katz discloses accessing, by the information apparatus

(i.e., client system 214), one or more digital content that are
available at the digital content service.

“The present invention is a computer network based library and

information delivery system for accessing and obtaining selected
digital information files.” Katz, Abstract.

“In addition, the library server 260 receives requests for access
to the digital information program files 262 from client

42
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

computer systems 214 over network 240…. Upon receiving
such a client request, library server 260 uses authorization
server 270 to authenticate the request with client information
272…. If approved, the library server 260 accesses the digital
information program file(s) or preview clip(s) requested by the
client computer system 214, delivers the selected preview clip(s)
or builds encrypted, targeted, and digitally signed digital
information files using the authentication protocol described in
more detail below, and transfers the encrypted and compressed
digital information file(s) to the requesting client computer
system 214 via network 240…. The client computer system 214
may then independently download the selected digital information
files (or a subset thereof) into the mobile playback device 212 for
subsequent playback.” Id., 8:5-62.

[8.g] the access of the With regard to access based on having successfully sent
one or more digital authentication information:
content, provided by the
one or more servers, is Fung discloses limiting access to digital content to authorized
based, at least in part, on users, and further discloses access to the content is based, at least
having successfully sent in part, on having successfully sent the authentication information
the authentication (e.g., UMID 200 or updated UMID 200’ (see claim element 8.b)).
information and the
subscription information; “A user 116 accesses server content by issuing a content request
103 to the server 120 along with the updated UMID 200’
(3.3)…. Upon receiving the request 103 and the UMID 200’
(3.4), the server 120 retrieves the user’s secret PIN 213 from the
PIN database 232 using the public PIN 212 (3.5) and identifies
the requested content item(s) 360 in the content repository 234
(3.6)…. [T]he server 120 either returns just the encrypted
content 205…or the encrypted content 205 and a decryption
factor (DF) 207 that must be used by the client 102 in conjunction
with the secret PIN 213 to decrypt the content 205 (3.9).” Id.,
13:15-14:11.

See also id., FIG. 3 (reproduced below) illustrating successful

sending of authentication information (e.g., transfer of UMID,
steps 3.3-3.4) with content request to the server, triggering return
of the requested content (steps 3.6-3.9).

43
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

Similarly, Katz discloses the access of the content is based, at

least in part, on having successfully sent the authentication
information.

“Upon receiving such a client request, library server 260 uses

authorization server 270 to authenticate the request with client
information 272 generated and maintained by library server 260
or authorization server 270 to authenticate the request with
client information 272 generated and maintained by library
server 260 or authorization server 270…. If approved, the library
server 260 accesses the digital information program file(s) or

44
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

preview clip(s) requested by the client computer system 214,
delivers the selected preview clip(s) or builds encrypted,
targeted, and digitally signed digital information files using the
authentication protocol described in more detail below, and
transfers the encrypted and compressed digital information
file(s) to the requesting client computer system 214 via
network 240.” Katz, 8:5-40.

“The preferred embodiment utilizes three authentication processes

to protect the transfer of information from server 260 to client
system 214 and playback device 212. First, a point-to-point
authentication protocol is performed whereby the library
server 260 must verify that the requesting client computer
system 214 is an authorized client…” Id., 11:32-53; see also id.,
11:54-12:22.

With regard to access based on having successfully sent

subscription information:

As discussed above, Fung suggests the UMID (200) and/or access

rights (122) contain information relating to subscriptions (see
element 8.c). Fung further discloses accessing the digital content
based on the successful transfer of the UMID (200) and/or access
rights (122).

“Prior to requesting content 234 on behalf of a user 116, a

client communicates one or more of the characteristics 101,
preferences 118 and access rights 122 to the server 120 hosting
that content 234. In light of this information the server
customizes the download content 234 for the client 102 and
user 116…. Each client 102 (or user) also has a unique, secret and
difficult (if not impossible) to transfer identification (ID) that is
securely transmitted to a server 120 whenever the client’s user 116
wishes to register with the server 120 to receive content 234.
Based on this secret ID, the server 120 determines a secure
transfer mode that will allow only the requesting user to
access content downloaded to them.” Id., 8:7-19.

“A user 116 accesses server content by issuing a content

request 103 to the server 120 along with the updated UMID
200’ (3.3) (hereinafter, references to the ‘UMID 200’’ should be
understood also to refer to the UMID 200). Upon receiving the
request 103 and the UMID 200’ (3.4), the server 120 retrieves the

45
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

user’s secret PIN 213 from the PIN database 232 using the public
PIN 212 (3.5) and identifies the requested content item(s) 360 in
the content repository 234 (3.6).” Id., 13:15-20; see also id., FIG.
3 (reproduced above).
[8.h] receiving, via the Fung discloses the server (120) receiving from the information
interface of the apparatus (client computer 102) an indication from the user of
information apparatus, an selected digital content (content request 103).
indication from the user
of selected digital content “A user 116 accesses server content by issuing a content request
from among the one or 103 to the server 120 along with the updated UMID 200’ (3.3)
more digital content that (hereinafter, references to the ‘UMID 200’’ should be understood
are available from the also to refer to the UMID 200). Upon receiving the request 103
digital content service; and the UMID 200’ (3.4), the server 120 retrieves the user’s secret
PIN 213 from the PIN database 232 using public PIN 212 (3.5)
and identifies the requested content item(s) 360 in the content
repository 234 (3.6).” Fung, 13:15-31.

See also id., FIG. 3 (reproduced below, illustrating the server

(120) receiving, via the information apparatus (client 102), and
indication from the user of selected digital content (content
request 103) available from the server).

46
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

To the extent Fung does not explicitly disclose the indication

from the user is relayed via the interface of the information
apparatus, Katz discloses this feature. Katz discloses the library
server (260) receiving, via the interface of the information
apparatus (e.g., client browser 219), an indication from the user of
selected digital content from among the one or more digital
content that are available from the digital content service.

“The client browser 219 is used to make requests of library

server 260 for various types of services including, but not
limited to, searching the digital information files 262 for a
desired program, previewing a selected preview clip associated

47
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

with a digital information file 262, purchasing a selected
program, requesting operating code segments or player
configuration data, and downloading the purchased program or
other material to the requesting client computer system 214.”
Katz, 8:63-9:6.

“Because the client system browser 219 would not be available in

the alternative embodiment shown in FIG. 8, a simplified user
interface may be provided…” id., 17:20-23 (suggests the client
browser 219 is itself a user interface, contrasted against the
“simplified” one).

See also id., FIG. 1, which “illustrates a typical computer platform

on which the present invention may be implemented.” (Id., 2:38-
39). It includes a keyboard (122), cursor control device (e.g., a
mouse) (123), and display (121), which a POSA would have
understood to be a user interface used in the context of the
disclosure for sending an indication of selected digital content.

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Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

[8.i] delivering, from the Insofar as the ’114 patent discloses “an indication from the user”
information apparatus to from step 8.h, it is related to the pointer or reference. See, e.g.,
the one or more servers, ’114 patent, 26:1-13 (“a user may still be able to output the
at least a pointer or original digital document by indicating to the client application
reference to the selected 102 the pointer or reference of the output content”); Brown Decl.,
digital content; and ¶35 (claim element 8.i).

Fung discloses delivering, from the information apparatus (i.e.,

client 102) to the server (120) at least a pointer or reference to the
selected digital content (i.e., content request 103).

“A user 116 accesses server content by issuing a content request

103 to the server 120 along with the updated UMID 200’ (3.3).”
Fung, 13: 15-31; see also id., FIG. 3 (reproduced below)
illustrating the content request 103 is delivered from the client 102
to the server 120.

49
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

Similarly, Katz suggests delivering, from the information
apparatus (i.e., client computer system 214) to the one or more
servers (i.e., library server 260), a reference to the selected digital
content (e.g., a client request).

“the library server 260 receives requests for access to the digital
information program files 262 from client computer systems
214 over network 240 and manages purchase and delivery of the
selected digital information files and/or delivery of selected
preview clips 324…. Upon receiving such a client request,
library server 260 uses authorization server 270 to authenticate
the request with client information 272 generated and maintained
by library server 260 or authorization sever 270…. If approved,
the library server 260 accesses the digital information program
file(s) or preview clip(s) requested by the client computer
system 214, delivers the selected preview clip(s)…and transfers
the encrypted and compressed digital information file(s) to the
requesting client computer system 214 via network 240.” Katz,
8:5-62.

“…the client computer system including logic for requesting a

download of a selected one or more of the digital information
files from the library server, the client computer system further
including logic for downloading the selected one or more of the
digital information files to the mobile device.” Id., Abstract.

“The client browser 219 is used to make requests of library

server 260 for various types of services including, but not
limited to, searching the digital information files 262 for a desired
program, previewing a selected preview clip associated with a
digital information file 262, purchasing a selected program,
requesting operating code segments or player configuration data,
and downloading the purchased program or other material to the
requesting client computer system 214.” Katz, 8:63-9:6.

[8.j] receiving, at the Fung discloses receiving, at the information apparatus (i.e., client
information apparatus 102), and from the server (i.e., server 120) output data (e.g.,
and from the one or more encrypted content 205) corresponding to the selected digital
servers, output data content.
corresponding to at least
part of the selected digital As explained by Ralph Brown, receiving output data
content, corresponding to “at least part” of the selected digital content also
includes receiving the entirety. See, e.g., ’114 patent, 16:19-21
(the output device receives, from the information apparatus, “the

50
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

digital document intended for output,” suggesting it is whole); see
also id., 22:28-36 (“In step 410, information apparatus 100
transmits output data, with or without further processing, to the
selected output device 106…. When receiving output data from
information apparatus 100, an output device 106 may simply
buffer the output data before sending it to output engine (or printer
engine) 1008 for final output.”); Brown Decl., ¶35 (claim element
8.j).

“A user 166 accesses server content by issuing a content request

103 to the server 120 along with an updated UMID 200’ (3.3)
(hereinafter, references to the ‘UMID 200’’ should be understood
also to refer to the UMID 200). Upon receiving the request 103
and the UMID 200’ (3.4), the server 120 retrieves the user’s
secret PIN 213 from the PIN database 232 using the public PIN
212 (3.5) and identifies the requested content item(s) 360 in the
content repository 234 (3.6). The server 120 filters the content 360
based on the client device attributes 222 and user preferences 118
(3.7), and then, if encryption is required, encrypts the filtered
content 360 using an encryption key 236 that is a function of the
secret PIN 213 and, optionally, any key(s) 362 associated with the
content 360 (3.8)…. Depending on the encryption scheme, the
server 120 either returns just the encrypted content 205
(assuming the client 102 is able to decrypt the content using only
internal information, such as the secret PIN 113), or the
encrypted content 205 and a decryption factor (DF) 207 that
must be used by the client 102 in conjunction with the secret PIN
213 to decrypt the content 205 (3.9).” Fung, 13:15-14:11.

See also id. at FIG. 3 (reproduced below), illustrating receiving, at

the information apparatus (client 102) and from the server (server
120), output data (e.g., encrypted content 205) corresponding to at
least part of the selected digital content (i.e., corresponding with
request 103):

51
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

Similarly, Katz discloses receiving, at the information apparatus

(i.e., computer system 214), from the library server, output data
corresponding to the selected digital content.

“If approved, the library server 260 accesses the digital

information program file(s) or preview clip(s) requested by the
client computer system 214, delivers the selected preview clip(s)
or builds encrypted, targeted, and digitally signed digital
information files using the authentication protocol described in
more detail below…and transfers the encrypted and
decompressed digital information file(s) to the requesting

52
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

client computer system 214 via network 240…. The client
computer system 214 may then independently download the
selected digital information files (or a subset thereof) into the
mobile playback device 212 for subsequent playback.” Katz, 8:5-
62.

[8.k] the output data is Katz discloses the output data is related to the information
related, at least in part, to included in the device object (e.g., player IDs), delivered from the
the information included information apparatus (i.e., from computer system 214) to the
in the one or more device server, the output data being device-dependent with regard to the
objects, delivered from device for outputting (i.e., mobile device 212) and related to the
the information apparatus selected digital content.
to the one or more
servers, and the output With regard to the output data corresponding to the selected
data, corresponding to at digital content:
least part of the selected “If approved, the library server 260 accesses the digital
digital content, is at least information program file(s) or preview clip(s) requested by the
in part device dependent client computer system 214, delivers the selected preview clip(s)
with respect to the one or or builds encrypted, targeted, and digitally signed digital
more devices for information files using the authentication protocol described in
outputting or playing at more detail below…and transfers the encrypted and
least part of the selected decompressed digital information file(s) to the requesting
digital content at the one client computer system 214 via network 240…. The client
or more devices; computer system 214 may then independently download the
selected digital information files (or a subset thereof) into the
mobile playback device 212 for subsequent playback.” Katz, 8:5-
62.

“Upon receiving such a client request, library server 260 uses

authorization server 270 to authenticate the request with client
information 272 generated and maintained by library server 260 or
authorizing server 270. The client information 272 includes client
identifiers which are used to target content for playback on
individual mobile playback devices…” Id.

“In the manner described above, the user of a client computer

system 214 identifies the titles or items of digital information
in library server 260 that the user wishes to access. In the
preferred embodiment, these content selections are transferred to a
client storage area 220 (as shown in FIG. 2) for subsequent
downloading to mobile playback device 212.” Id., 16:34-62.

53
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

With regard to the output data relating to the device object(s),
and being device dependent with regard to device for
outputting:
“the library server 260 utilizes a set of identifiers (i.e. player
IDs) for mobile playback devices 212 authorized to receive the
selected download data from library server 260. The mobile
playback device identifiers are provided by client computer
system 214…. In the targeting process, library server 260
formats and downloads data that can only be read by mobile
devices 212 with these identifiers.” Id., 11:32-53.

Similarly, Fung discloses the output data (e.g., encrypted content

205) is related, at least in part, to the information included in the
one or more device objects (e.g., Device ID 220, Device
Attributes 222), delivered from the information apparatus (i.e.,
client 102) to the one or more servers (server 120), the output data
(e.g., encrypted content 205) corresponding to at least part of the
selected digital content (e.g., content request 103), is at least in
part device dependent with respect to the one or more devices for
outputting or playing the selected digital content.

“In one embodiment, the server filters the content based on the
UID and DID information, encrypts the content, and returns the
encrypted content to the server along with a content-specific
key…. Because the content-specific key only works with the
secret PIN, which is not easily copied, the content-specific key
only works on the intended client.” Id., 5:12-21.

“The device information 220 could include any hardware or

software information associated with the client that could
influence the type/size of content that can be downloaded to
and/or used by the client 102.” Fung, 10:1-15.

“The server 120 filters the content 360 based on the client
device attributes 222 and user preferences 118 (3.7), and then, if
encryption is required, encrypts the filtered content 360 using an
encryption key 236 that is a function of the secret PIN 213…” Id.,
13:15-31.

See also id., FIG. 3 (reproduced below), illustrating the output

data (e.g., encrypted content 205) that is returned to the client
(step 3.9) is related, at least in part, to the information included in
the one or more device objects (UMID 200, comprising DID 220),

54
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

delivered from the information apparatus (i.e., client 102) to the
one or more servers (server 120) (steps 3.3-3.4). The output data
(e.g., encrypted content 205) corresponds to at least part of the
selected digital content (e.g., content request 103), is at least in
part device dependent with respect to the one or more devices for
outputting or playing the selected digital content, as discussed
supra.

[8.l] and wherein at least Katz discloses at least part of the device-dependent output data
part of the device includes an encryption scheme for ensuring security of the digital
dependent output data content.
includes an encryption
scheme for ensuring

55
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

security of the selected “If approved, the library server 260 accesses the digital
digital content. information program file(s) or preview clip(s) requested by the
client computer system 214, delivers the selected preview clip(s)
or builds encrypted, targeted, and digitally signed digital
information files using the authentication protocol described in
more detail below, and transfers the encrypted and compressed
digital information file(s) to the requesting client computer
system 214 via network 240.” Katz, 8:5-62.

“The library server 260 interface with the authorization server 270
and client computer system 214 uses the unique authentication
protocol and encryption protocol of the preferred embodiment of
the present invention.” Id., 9:7-12.

“Client computer system 214 comprises client browser software

219, a mobile device interface 221, storage for encrypted and
compressed digital information files 220 downloaded from the
network 240…. Encrypted and compressed digital files 220 are
received by client computer system 214 from library server 260
over network 240.” Id., 9:14-62.

“Thus, a method and apparatus for implementing a computer

network based digital information library system employing
authentication and encryption protocols for the secure transfer
of digital information library programs, software, and
configuration data to a client computer system and a mobile
digital information playback device removably connectable to the
client computer system is disclosed.” Id., 18:28-41.

Katz also discloses the encrypted output data is unscrambled by

the output device for playback.

“Because the data block can only be unscrambled using the

corresponding descrambling block 322 in its header and because
the descrambling block 322 was combined (i.e. encrypted) with a
private ID known only by the targeted mobile playback device(s)
212, only the targeted mobile playback device(s) 212 will be able
to unscramble and read the data block.” Id., 13:46-58; see also id.,
15:24-29.

Similarly, Fung discloses at least part of the device-dependent

output data (e.g., encrypted content 205) includes an encryption
scheme for ensuring security of the selected digital content.

56
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

“Depending on the encryption scheme, the server 120 either

returns just the encrypted content 205 (assuming the client 102
is able to decrypt the content using only internal information, such
as the secret PIN 113), or the encrypted content 205 and a
decryption factor (DF) 207 that must be used by the client 102 in
conjunction with the secret PIN 213 to decrypt the content 205
(3.9). In the latter embodiments, because the content-specific
decryption factor 207 only works with the secret PIN 213, which
is not easily copied, the content 360 can only be read by the
intended client.” Fung, 14:1-11; see also id., FIG. 3.

“Following registration, a user accesses server content by first

issuing a request to the server along with his UMID. The server
looks up the user’s secret key using the public PIN and determines
the client characteristics and user preferences based on the UID
and DID contained in the UMID. In one embodiment, the server
filters the content based on the UID and DID information,
encrypts the content, and returns the encrypted content to the
user along with a content-specific key. The user then decrypts
the encrypted content using both his secret PIN and the content-
specific key. Because the content-specific key only works with
the secret PIN, which is not easily copied, the content-specific
key only works on the intended client.” Id., 5:12-21.

“The server 120 filters the content 360 based on the client
device attributes 222 and user preferences 118 (3.7), and then, if
encryption is required, encrypts the filtered content 360 using an
encryption key 236 that is a function of the secret PIN 213 and,
optionally, any key(s) 362 associated with the content 360 (3.8).
This encryption can be accomplished by using well-known
encryption techniques…” Id., 13:15-31.

“The present invention relates generally to networked computer

systems and, particularly, to systems and methods for securely
identifying a user and/or client computer accessing goods,
services or support over a computer network.” Id., 1:1-3.

“The embodiments allow the implementation of a secure, for-pay

content delivery system wherein content providers can deliver
paid content (234) in an appropriate format over an open,
networked environment, such as the Internet, to their subscribers
without the fear of copyright violation. In particular, these
embodiments prevent an authorized user from transferring to non-

57
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung (WO 00/44119) in view of Katz (US 5,926,624)

authorized users a key or other embodiment of a right that would
allow the non-authorized users to access the for-pay content.” Id.,
Abstract.

Fung also discloses the encrypted output data is decrypted by the

client for rendering.

“Depending on the encryption scheme, the server 120 either

returns just the encrypted content 205 (assuming the client 102 is
able to decrypt the content using only internal information, such
as the secret PIN 113), or the encrypted content 205 and
decryption factor (DF) 207 that must be used by the client 102 in
conjunction with the secret PIN 213 to decrypt the content 205
(3.9). In the latter embodiments, because the content-specific
decryption factor 207 only works with the secret PIN 213, which
is not easily copied, the content 360 can only be read by the
intended client.” Id., 14:1-11; see also id., 14:13-17, 5:12-21.

Brown Decl., ¶35.

Claim 13 depends from claim 8 and recites “the information apparatus further includes

one or more wireless communication circuitry units, and communication between the

information apparatus and the one or more servers over the network includes wireless

transmission of data via the one or more wireless communication circuitry units included in the

information apparatus.”

The combined references of Fung and Katz describe the information apparatus includes a

wireless communication circuitry unit, and that communication between the information

apparatus and the servers can include wireless transmission of data. Katz discloses it would “be

apparent to those of ordinary skill in the art that other forms of networking may equivalently be

supported by the present invention. For example, a wireless transmission means such as infrared

or radio links may also provide the distribution network 240 described in the present

application.” Exhibit C (Katz), 5:1-8. A POSA would have understood that for a wireless

58
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

transmission means to provide Katz’ distribution network to the information apparatus, a

wireless communication circuitry unit would be used on both the transmitting and receiving units

(i.e., including at the information apparatus). Brown Decl., ¶36.

Katz describes the information apparatus can communicate with the mobile playback

device via a communication device, and the “[c]ommunications device 125 may use a wireless

means of data transfer devices.” Exhibit C (Katz), 3:66-4:14. A POSA would have known the

information apparatus and output device could communicate with one another via wireless

means—thus the information apparatus comprised wireless communication circuitry. A POSA

also would have understood such circuitry could be used to access servers over the network via

wireless transmission of data, as discussed in the previous paragraph. Brown Decl., ¶37.

The POSA would have been motivated to incorporate wireless transmission of data, as

described by Katz, because it was known such wireless means could be equivalent while

allowing for convenient use of data transfer without requiring wired inputs. Brown Decl., ¶38.

Furthermore, a POSA would have had a reasonable expectation of success for incorporating such

wireless circuitry and implementing it to access a network, as Katz describes such application

was readily “apparent to those of ordinary skill in the art” and it was common practice to

incorporate such circuitry. Exhibit C (Katz), 5:1-18, Brown Decl., ¶38.

The following claim chart provides exemplary disclosure showing how the combination

of Fung and Katz taught or suggested all elements of claim 13 of the ’114 patent:

US 10,346,114 Claim 13 Fung (WO 00/44119) in view of Katz (US 5,926,624)

[13.a] The apparatus of Katz discloses in some embodiments the information apparatus (i.e.,
claim 8, in which the client computer system 214) includes a wireless communication
information apparatus circuitry unit.
further includes one or
more wireless “In addition, it will be apparent to those of ordinary skill in the art that
other forms of networking may equivalently be supported by the

59
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 13 Fung (WO 00/44119) in view of Katz (US 5,926,624)

communication circuitry present invention. For example, a wireless transmission means such
units, as infrared or radio links may also provide the distribution network
240 described in the present application.” Katz, 5:1-8.

A person of ordinary skill would have understood that for the wireless
transmission means to provide distribution network 240 to the
information apparatus (214), it follows that Katz describes the
information apparatus (214) includes a wireless communication
circuitry unit or wireless network interface, as such unit is required to
receive the wireless transmission from the network. See also id., FIG.
1 (reproduced and annotated below)

Wireless Network
Interface

“Communication device 125 may use a wireless means of data

transfer devices such as the infrared IRDA protocol, spread-
spectrum, or wireless LAN. In addition, communication device 125 is
used in the preferred embodiment to couple the mobile playback
device 212 to the client computer system 214 as described in more
detail below.” Id., 3:66-4:5.

60
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 13 Fung (WO 00/44119) in view of Katz (US 5,926,624)

A person of ordinary skill would have understood the information
apparatus (214) thus included at least one wireless communication
circuitry unit in order to couple with communication device 125
wirelessly.
[13.b] and Katz discloses communication between the information apparatus
communication between (214) and the server over the network (240) includes wireless
the information apparatus transmission of data via the wireless communication circuitry unit
and the one or more included in the information apparatus (214).
servers over the network
includes wireless “In addition, it will be apparent to those of ordinary skill in the art that
transmission of data via other forms of networking may equivalently be supported by the
the one or more wireless present invention. For example, a wireless transmission means such
communication circuitry as infrared or radio links may also provide the distribution network
units included in the 240 described in the present application.” Katz, 5:1-8.
information apparatus.

Brown Decl., ¶39.

Accordingly, the combination of Fung and Katz render claims 8 and 13 of the ’114 patent

obvious. See Brown Decl., ¶¶27-40.

B. Ground 2: Fung in View of Katz and Further in View of Brown Renders

Obvious Claims 8, 13, and 14 of the ’114 Patent Under (pre-AIA) 35 U.S.C. §
103

None of Fung, Katz, or Brown were cited during original prosecution of the ’114 patent,

thus they present new and noncumulative information and are sufficient to raise a substantial

new question that Fung in view of Katz and further in view of Brown renders claims 8, 13, and

14 obvious. Expert witness Ralph Brown is the first named inventor of the Brown reference. See

Brown Decl., ¶41.

As provided by the detailed overview of Fung, Katz, and Brown above, each of these

references were analogous prior art to the ’114 patent because each were within the field of

endeavor and reasonably pertinent to one or more problems concerning the inventors of the ’114

patent. Brown Decl., ¶42.

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Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

A POSA would have been motivated to combine Brown into the combination of Fung

and Katz. As evidenced by the claim charts below, Brown shares numerous similarities with

previously-discussed Fung and Katz, and is in the same field of disclosures. For example, Brown

discloses an information apparatus for obtaining digital content from digital content providers

provided by one or more servers over a network. Exhibit D (Brown), Abstract, 2:19-2:22, FIGS.

1, 4. Brown also discloses the information apparatus sends authentication information associated

with the user of the information apparatus. Exhibit D (Brown), 7:22-40, FIG. 1, 12:39-55. Brown

also describes accessing, by the information apparatus one or more digital content available from

a digital content service. Exhibit D (Brown), 7:48-8:14, 9:45-65, 11:53-12:12, FIG. 4. Brown

also suggests that access to the content is based, at least in part, on having successfully sent the

authentication information. Exhibit D (Brown), 9:45-65, 11:53-12:12, 14:19-26, FIG. 6.

Additionally, Brown describes the server receives from the information apparatus an indication

from the user of selected digital content. Exhibit D (Brown), 11:22-38, 2:52-67, 3:12-22, 13:3-

16, FIG. 6. Brown discloses receiving, at the information apparatus, output data corresponding to

selected digital content. Exhibit D (Brown), 13:3-16. Brown Decl., ¶42.

The motivation to combine Fung and Katz and reasonable expectation of success in

combining them was provided above. See Brown Decl., ¶¶30-34. A POSA would have

additionally been motivated to add Brown to the combination of Fung and Katz. Fung recognizes

a need for “implementation of a secure, for-pay content delivery system wherein content

providers can deliver paid content…over an open, networked environment.” Exhibit B (Fung),

Abstract. Similarly, Katz is directed in part toward enabling “the secure transfer of digital

information…to a client computer system and a mobile digital information playback device.”

Exhibit C (Katz), 2:11-29. Accordingly, a POSA would have sought to use a robust network

62
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

security system, such as the strong variant of open-network security provided by Brown. Brown

enhances the security of digital content through an encryption scheme that includes secure

passage of keys to servers, and using keys to encrypt/decrypt tickets, with keys having an

expiration. Exhibit D (Brown), 10:11-25. This would have enhanced the overall security of, e.g.,

a digital library containing digital content (such as that described by Katz), protecting the

interests of, e.g., service providers (such as those described by Fung). Implementing the

teachings of Katz, Fung, and Brown further a shared goal of protecting the transfer of such

digital content with enhanced security. Brown Decl., ¶42.

Accordingly, a POSA would have been motivated to incorporate the security platform of

Brown into the combination the previously-described system of Fung and Katz. The combination

of Fung, Katz, and Brown teach the alleged points of novelty from claim 8 of the ’114 patent,

namely the ability to access digital content from a server using an information apparatus, and

conveying such digital content to an output device, where the digital content is device-dependent

and accessed following authentication of user and subscription information, and the addition of

Brown further enhances the security of the system. ’114 patent, 1:56-67, 37:27-38:25 (claim 8).

Brown Decl., ¶42.

Additionally, a POSA would have had a reasonable expectation of success in combining

the references of Fung, Katz, and Brown. Fung and Katz are from the same field and share a

substantial number of similarities. Brown is also from the same field and also shares a substantial

number of similarities, as the claim chart below evidences. A POSA prior to November 20, 2000,

could have readily combined the teachings of each of Fung, Katz, and Brown without large

burden or undue experimentation because the system and methods of Brown could be adapted

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Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

using the hardware already disclosed by the combination of Fung and Katz with, at most, minor

modifications. Brown Decl., ¶43.

The following claim chart provides exemplary disclosure showing how the combination

of Fung, Katz, and Brown taught or suggested all elements of claim 8 of the ’114 patent:

US 10,346,114 Claim 8 Fung and Katz in further view of Brown (US 6,732,179)
[8.Preamble] An Fung and Katz disclose this claim element. See, e.g.,
information apparatus [8.Preamble], Ground 1, above.
for obtaining digital
content from a digital Brown similarly discloses an information apparatus (i.e., client
content service provided 112) for accessing digital content from a digital content service
by one or more servers over a network. See generally Brown, 2:19-2:22, Abstract, FIGS.
over a network, the 1, 4 (reproduced below).
digital content Output
accessible, at least device
partly, by the
information apparatus,

Information
apparatus
Network

One or more
servers over
a network

Network

Information
apparatus

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Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung and Katz in further view of Brown (US 6,732,179)
[8.a] the information Fung and Katz disclose this claim element. See, e.g., [8.a], above.
apparatus including: at
least one processor; an Brown similarly discloses the apparatus (i.e., client 112)
operating system; an comprises a processor (Brown, 5:5-27, FIG. 2), an operating
interface for interacting system (id., 2:29-43, 5:63-6:14), an interface for interacting with a
with a user; memory or user (id., 2:29-43), memory or storage (id., 2:19-28, 5:5-27), and
storage; software or software for accessing digital content over the network (id., 2:29-
firmware stored, at least 43, FIG. 3).
partly, in the memory or
storage, at least part of “FIG. 2 is a high-level block diagram of a client 112….
the software or Preferably, the client 112 is an STB and supports both broadcast
firmware is executable, services including video, audio, and data, and IP-based services
by the at least one including e-mail, web browsing, IP multicast, and streaming video
processor at the and audio. In a preferred embodiment of the present invention….
information apparatus, The client 112 preferably includes components typically found in
for accessing the digital a computer system including a central processing unit (CPU) 210.
content service provided The CPU 210 can be any type of general or specific purpose
by the one or more processor and processes instructions and data for providing the
servers over the functionality described herein. The CPU 210 is coupled via a bus
network; and 212 to a random access memory (RAM) 214, a read only memory
(ROM) 216, and non-volatile memory 218, such as flash memory.
The RAM 214 is preferably synchronous dynamic RAM
(SDRAM) and stores programs and data used by the CPU 210 as
is well known in the art. Similarly, the ROM 216 and flash
memory 218 store instructions and data used to maintain the
system operation and configuration.” Id., 5:5-27; see also id., FIG.
2 (reproduced below).

“The subscriber can purchase additional tiers of cable channels for

additional fees. In most cable systems, the subscriber uses a ‘set-

65
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung and Katz in further view of Brown (US 6,732,179)
top box’ (STB) to access the cable channels. The STB contains a
microprocessor and other hardware for tuning and descrambling
channels in the tiers to which the subscriber has access. The STB
may also enable other services, such as pay-per-view or digital
music reception in return for additional fees. In recent years, the
STB has incorporated a cable modem that enables access to
Internet- and World Wide Web- (‘the web’) based resources via
the cable infrastructure. A cable modem typically has at least one
assigned Internet Protocol (IP) address and is managed by an
Internet Service Provider (ISP). The ISP inserts and extracts
Internet traffic to and from the cable infrastructure and distributes
it to the cable modem having the given IP address or the Internet,
as appropriate.” Id., 2:29-47.

“FIG. 3 is a block diagram illustrating the various levels of client

software program modules and hardware executing on the client
112 illustrated in FIG. 2. At the lowest level is the hardware 310
for executing the software and performing the basic functions
supported by the client 112. Device drivers 312 for the various
hardware elements sit between the operating system (OS) 314 and
the hardware 310. In one embodiment, the OS 314 is a version of
the WINDOWS CE operating system from MICROSOFT
CORPORATION of Redmond, Wash. However, other OS's may
also be used. The OS 314 controls the operation of the client 112
and makes the features of the client available to other programs
executing on the client 112. The OS 314 uses the device drivers
312 to communicate with the hardware 310. In addition, a TV
application programming interface (API) 316 also sits between the
OS 314 and the hardware 310. The OS 313 uses the TV API 316
to access dedicated TV functionality within the hardware 310.”
Id., 5:63-6:14; see also FIG. 3 (reproduced below).

66
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung and Katz in further view of Brown (US 6,732,179)

“The above needs are met by a method and system that passes an
access control list (ACL) to the set top box (STB), or other form
of client, indicating which functions in the client can be called by
a walled garden site. A client is coupled to a television set,
computer system, or other device having a display. The client
preferably contains a central processing unit, a memory, a
television tuner, and a cable modem. The client also preferably
contains a video subsystem, for generating images on the display
and an input for accepting commands from the user.” Id., 2:19-28.

[8.b] wherein the Fung and Katz disclose this claim element. See, e.g., [8.b] of
information apparatus is Ground 1, above.
configurable for:
sending, from the Brown similarly discloses the apparatus (i.e., client 112) is
information apparatus to configured for sending authentication information associated with
the one or more servers a user over the network to a separate server.
over the network,
authentication “Each user of the client 112 preferably has a unique identification.
information associated A user can log into the client 112 by inputting the user's identity
with the user of the and a personal identification number (PIN) or other form of
information apparatus password. This user information is preferably stored in a local
for authentication of the database held in, for example, the non-volatile memory 218 or a
user or the information storage device. The database has a record for each user of the
apparatus, the one or client 112 and associates the record with the user's login
more servers being information. The client 112 can provide the user's login
distinct and separate information to other servers in the network 128 when necessary to
from the information authenticate the user. For security, the user records stored in the
apparatus; client 112 are opaque and cannot be viewed without the login
information of the particular user. When a user logs into the client
112, the login preferably remains valid until the user explicitly

67
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung and Katz in further view of Brown (US 6,732,179)
logs out or the client 112 is turned off. If no user has logged into
the client 112, one embodiment of the present invention uses a
default user profile. The rights and privileges of the default user
profile can be set by the ISP.” Brown, 7:22-40; see also id., FIG. 1
(reproduced below).

“Returning to FIG. 6, the client 112 again sends a HTTP request

to the WGPS 414 requesting access to a service in the walled
garden 420. This time, however, the client 112 includes the
encrypted ticket with the HTTP request in an “Authorization”
header. The WGPS 414 receives the ticket with the request and
determines 628 whether the ticket grants the user access to the
walled garden 420 and walled garden service. To make this
determination, the WGPS 414 uses the timestamp to determine the
secret key used to encrypt the ticket. Then, the WGPS 414 uses
the secret key to decrypt the ticket. Next, the WGPS 414 compares
the Box ID in the ticket with the Box ID of the requesting client to
ensure that the ticket was received from the correct client 112. The
WGPS 414 also checks the expiration date in the ticket to ensure
that the ticket is still valid and compares the ticket with the
information in its database 415 to ensure that the ticket has not
been poisoned.” Id., 12:39-55; see also id., FIG. 6 (reproduced
below).

68
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung and Katz in further view of Brown (US 6,732,179)

[8.c] sending, from the Fung and Katz disclose this claim element. See, e.g., [8.c] of
information apparatus to Ground 1, above.
the one or more servers,
subscription information Brown similarly discloses the apparatus sends subscription
for accessing the digital information (e.g., “ticket” for accessing a walled garden) for
content service provided accessing digital content provided by the server.
by the one or more
servers; “The illustrated walled garden 420 includes one or more servers
which, in turn, hold one or more sites for providing network-
based services to the users. The services may include, for
example, access to electronic content such as channel guides,
magazines, newspapers, stock prices, music, or video, access to
electronic commerce services such as stock trading and buying
and selling goods, access to a time-based or metered service, and
any other functionality that can be provided electronically via a
network. Preferably, the services are implemented using a
combination of JAVA, XML, HTML, and/or JAVASCRIPT. The
servers may be maintained by the MSO, ISP, or by other

69
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung and Katz in further view of Brown (US 6,732,179)
organizations who have formed business relationships with the
party managing the walled garden 420. In one embodiment, the
services in the walled garden 420 are arranged into sets of tiers.
Preferably, the user can subscribe to one or more of the
services in the walled garden 420 either individually or as part
of a tier. The WGPS 414 has an associated database 415 for
holding permissions available to the user and the walled garden
sites. To access the walled garden 420, the client must present
a ‘ticket’ to the WGPS 414 specifying the walled garden 420
and services to which the user has access. Alternatively, the
ticket may specify only those services which the user does not
have access. The database 415 identifies ‘poisoned’ tickets, i.e.,
those tickets that are no longer accepted and holds keys for
decrypting encrypted tickets. The database also holds information
identifying the MSO or MSOs whose customers have access to the
walled garden 420 in order to ensure that the ticket is affiliated
with the particular walled garden. The WGPS 414 uses the ticket
and the information in the database 415 to authenticate the user
and authorize the user to access the services in the walled garden
420.” Brown, 7:48-8:14.

“The database contains a list of users, walled gardens, and

services in particular walled gardens 420 available to the
users. The database 440 does not need to be centralized and, in
one embodiment, is distributed on a regional basis. The GS 416
communicates with the PS 438 to authenticate a user's identity
and issue the client a ticket specifying the walled gardens and
services that the user can access. The GS 416 preferably
encrypts the ticket using a secret key shared with the WGPS 424
in order to limit potential attacks on the ticket by the user. The
user's client 112 stores the ticket and presents it to the WGPS
414 when seeking to access a walled garden 420.” Id., 9:45-65;
see also id., 11:53-12:12, 14:19-26, FIG. 6.

[8.d] delivering, from Fung and Katz disclose this claim element. See, e.g., [8.d] of
the information Ground 1, above.
apparatus, one or more
device objects to the Brown similarly discloses delivering information concerning the
one or more servers output device to the server over the network.
over the network, the
one or more device “The User Agent field preferably holds a string identifying the
objects are related to type of browser used by the user. For example, the User Agent
one or more devices, the field may indicate that the user is using a DCT-5000 STB.
one or more devices are Alternatively, the field may indicate that the user is using

70
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung and Katz in further view of Brown (US 6,732,179)
for outputting or playing NETSCAPE NAVIGATOR, MICROSOFT INTERNET
the digital content, and EXPLORER, or any other type of browser. Since different user
the one or more devices agents may have different API sets and capabilities, sites in the
being distinct and walled garden may have separate permissions table entries for
separate devices from each type of user agent. The client 112 identifies the user agent
the one or more servers, when it sends a HTTP request to the WGPS 414.” Brown, 8:41-
51.

“If the validation 618 is successful, the GS 416 preferably

constructs 620 the ticket. As shown in FIG. 8, the ticket 800
preferably includes the Box ID 810 of the client 112 requesting
the ticket, a version number 812, an expiration date 814 (or
duration when the ticket is valid), an affiliation 815, and a set of
bits representing the access rights of the user 816. The version
number 812 is preferably a control number used by the GS 416 to
ensure that the WGPS 414 properly interprets the ticket 800. The
expiration date 814 can be any time in the future or a time span
when the ticket 800 is valid and may range, for example, from a
few minutes to a few hours. The affiliation indicates the particular
walled garden 420 or MSO to which the ticket 800 pertains. The
set of bits representing the access rights of the user 816 are
preferably organized such that certain bits correspond to certain
servers, sites, or services within the walled garden 420. In one
embodiment of the present invention, the bits representing the
access rights 816 are run length encoded (RLE) to reduce the
storage size of the field. Other information, such as the IP
address of the client 112 and a timestamp may also be stored
in the ticket 800.” Id., 11:59-12:12; see also id., FIG. 8.

[8.e] and the one or Fung and Katz disclose this claim element. See, e.g., [8.e] of
more device objects Ground 1, above.
including information,
related to at least one of Brown discloses the device object may comprise the IP address of
device identification the client.
information, device
address information, “If the validation 618 is successful, the GS 416 preferably
device capability constructs 620 the ticket. As shown in FIG. 8, the ticket 800
information, model preferably includes the Box ID 810 of the client 112 requesting
information, brand the ticket, a version number 812, an expiration date 814 (or
information, registration duration when the ticket is valid), an affiliation 815, and a set of
information, or IP bits representing the access rights of the user 816. The version
address information, number 812 is preferably a control number used by the GS 416 to
individually or in any ensure that the WGPS 414 properly interprets the ticket 800. The
expiration date 814 can be any time in the future or a time span

71
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung and Katz in further view of Brown (US 6,732,179)
combination, related to when the ticket 800 is valid and may range, for example, from a
the one or more devices; few minutes to a few hours. The affiliation indicates the particular
walled garden 420 or MSO to which the ticket 800 pertains. The
set of bits representing the access rights of the user 816 are
preferably organized such that certain bits correspond to certain
servers, sites, or services within the walled garden 420. In one
embodiment of the present invention, the bits representing the
access rights 816 are run length encoded (RLE) to reduce the
storage size of the field. Other information, such as the IP
address of the client 112 and a timestamp may also be stored
in the ticket 800.” Id., 11:59-12:12; see also id., FIG. 8.

Brown also discloses the device object may comprise device

capability information.

“The User Agent field preferably holds a string identifying the

type of browser used by the user…. Since different user agents
may have different API sets and capabilities, sites in the walled
garden may have separate permissions table entries for each type
of user agent. The client 112 identifies the user agent when it
sends a HTTP request to the WGPS 414.” Id., 8:41-51.

[8.f] accessing, by the Fung and Katz disclose this claim element. See, e.g., [8.f] of
information apparatus, Ground 1, above.
one or more digital
content that are Brown discloses accessing digital content following successful
available at the digital transmission of authentication and subscription information from
content service, the set top box.

“The illustrated walled garden 420 includes one or more servers

which, in turn, hold one or more sites for providing network-based
services to the users. The services may include, for example,
access to electronic content such as channel guides, magazines,
newspapers, stock prices, music, or video, access to electronic
commerce services such as stock trading and buying and selling
goods, access to a time-based or metered service, and any other
functionality that can be provided electronically via a network….
Preferably, the user can subscribe to one or more of the services in
the walled garden 420 either individually or as part of a tier. The
WGPS 414 has an associated database 415 for holding
permissions available to the user and the walled garden sites. To
access the walled garden 420, the client must present a ‘ticket’
to the WGPS 414 specifying the walled garden 420 and
services to which the user has access. Alternatively, the ticket

72
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung and Katz in further view of Brown (US 6,732,179)
may specify only those services which the user does not have
access. The database 415 identifies “poisoned” tickets, i.e., those
tickets that are no longer accepted and holds keys for decrypting
encrypted tickets. The database also holds information identifying
the MSO or MSOs who's customers have access to the walled
garden 420 in order to ensure that the ticket is affiliated with the
particular walled garden. The WGPS 414 uses the ticket and the
information in the database 415 to authenticate the user and
authorize the user to access the services in the walled garden 420.”
Brown, 7:48-8:14; see also id., FIG. 4 (reproduced below).

One or more
servers over
a network

Network

Information
apparatus

“The GS 416 controls access to a policy server (PS) 438. The GS

416 preferably receives communications from the client 112 in
the form of XML and/or forms via HTTP over SSL and translates
the communications into database transactions using protocols
such as lightweight directory access protocol (LDAP), SQL, and
open database connectivity (ODBC). The GS 416 passes the
transactions to the PS 438 and the PS 438 accesses a database
440 of user authorization and authentication information in
response. The database contains a list of users, walled gardens,
and services in particular walled gardens 420 available to the
users. The database 440 does not need to be centralized and, in
one embodiment, is distributed on a regional basis. The GS 416
communicates with the PS 438 to authenticate a user's identity
and issue the client a ticket specifying the walled gardens and
services that the user can access. The GS 416 preferably
encrypts the ticket using a secret key shared with the WGPS 424
in order to limit potential attacks on the ticket by the user. The

73
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung and Katz in further view of Brown (US 6,732,179)
user's client 112 stores the ticket and presents it to the WGPS 414
when seeking to access a walled garden 420.” Id., 9:45-65.

“If the validation 618 is successful, the GS 416 preferably

constructs 620 the ticket. As shown in FIG. 8, the ticket 800
preferably includes the Box ID 810 of the client 112 requesting
the ticket, a version number 812, an expiration date 814 (or
duration when the ticket is valid), an affiliation 815, and a set of
bits representing the access rights of the user 816. The version
number 812 is preferably a control number used by the GS 416 to
ensure that the WGPS 414 properly interprets the ticket 800. The
expiration date 814 can be any time in the future or a time span
when the ticket 800 is valid and may range, for example, from a
few minutes to a few hours. The affiliation indicates the particular
walled garden 420 or MSO to which the ticket 800 pertains. The
set of bits representing the access rights of the user 816 are
preferably organized such that certain bits correspond to certain
servers, sites, or services within the walled garden 420. In one
embodiment of the present invention, the bits representing the
access rights 816 are run length encoded (RLE) to reduce the
storage size of the field. Other information, such as the IP address
of the client 112 and a timestamp may also be stored in the ticket
800.” Id., 11:53-12:12; see also id., FIG. 6 (reproduced below).

74
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung and Katz in further view of Brown (US 6,732,179)

“By using the method and system described herein, a service

provider or other entity can sell subscriptions or other forms of
access rights to one or more services within the walled garden
420. For example, an ISP can sell subscriptions to tiers of
services, much like subscriptions to tiers of television channels are
sold. In addition, the ISP can sell the right to access the client 112
APIs to the operators of the WGS’.” Id., 14:19-26.

[8.g] the access of the Fung and Katz disclose this claim element. See, e.g., [8.g] of
one or more digital Ground 1, above.
content, provided by the
one or more servers, is Brown suggests access to the digital content (i.e., within the
based, at least in part, walled garden) is based on successful authentication information
on having successfully as well as a valid “ticket” which may contain subscription
sent the authentication information (e.g., “access rights”).
information and the
subscription “The GS 416 controls access to a policy server (PS) 438. The GS
information; 416 preferably receives communications from the client 112 in

75
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung and Katz in further view of Brown (US 6,732,179)
the form of XML and/or forms via HTTP over SSL and translates
the communications into database transactions using protocols
such as lightweight directory access protocol (LDAP), SQL, and
open database connectivity (ODBC). The GS 416 passes the
transactions to the PS 438 and the PS 438 accesses a database
440 of user authorization and authentication information in
response. The database contains a list of users, walled gardens,
and services in particular walled gardens 420 available to the
users. The database 440 does not need to be centralized and, in
one embodiment, is distributed on a regional basis. The GS 416
communicates with the PS 438 to authenticate a user's identity
and issue the client a ticket specifying the walled gardens and
services that the user can access. The GS 416 preferably
encrypts the ticket using a secret key shared with the WGPS 424
in order to limit potential attacks on the ticket by the user. The
user's client 112 stores the ticket and presents it to the WGPS 414
when seeking to access a walled garden 420.” Id., 9:45-65.

“If the validation 618 is successful, the GS 416 preferably

constructs 620 the ticket. As shown in FIG. 8, the ticket 800
preferably includes the Box ID 810 of the client 112 requesting
the ticket, a version number 812, an expiration date 814 (or
duration when the ticket is valid), an affiliation 815, and a set of
bits representing the access rights of the user 816. The version
number 812 is preferably a control number used by the GS 416 to
ensure that the WGPS 414 properly interprets the ticket 800. The
expiration date 814 can be any time in the future or a time span
when the ticket 800 is valid and may range, for example, from a
few minutes to a few hours. The affiliation indicates the particular
walled garden 420 or MSO to which the ticket 800 pertains. The
set of bits representing the access rights of the user 816 are
preferably organized such that certain bits correspond to certain
servers, sites, or services within the walled garden 420. In one
embodiment of the present invention, the bits representing the
access rights 816 are run length encoded (RLE) to reduce the
storage size of the field. Other information, such as the IP address
of the client 112 and a timestamp may also be stored in the ticket
800.” Id., 11:53-12:12; see also id., FIG. 6 (reproduced below).

76
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung and Katz in further view of Brown (US 6,732,179)

“By using the method and system described herein, a service

provider or other entity can sell subscriptions or other forms of
access rights to one or more services within the walled garden
420. For example, an ISP can sell subscriptions to tiers of
services, much like subscriptions to tiers of television channels
are sold. In addition, the ISP can sell the right to access the client
112 APIs to the operators of the WGS’.” Id., 14:19-26.

[8.h] receiving, via the Fung and Katz disclose this claim element. See, e.g., [8.h] of
interface of the Ground 1, above.
information apparatus,
an indication from the Brown similarly discloses the server receives, from the client
user of selected digital interface, an indication of user-selected digital content from the
content from among the content available through the digital content service.
one or more digital
content that are “Initially, the user uses the UI on the client 112 to request 610
available from the access to a service in the walled garden 420. For example, the
digital content service; client 112 may generate a UI on the TV 110. The user, using the
UI and an input device such as an IR keyboard, requests

77
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung and Katz in further view of Brown (US 6,732,179)
access to the service through the web browsing software 324
executing on the client 112. Alternatively, the client 112 may be
coupled to or integrated into a computer system and the user may
use web browsing software to request access to a web site in the
walled garden 420. As mentioned above, the request 610 from
the client 112 to the WGPS 414 preferably takes the form of a
URL such as ‘http://wg/<plot number>/ . . . .’ In one embodiment,
the user visits a web page or portal that references, either directly
or indirectly, all of the available walled garden services. When the
user selects a link to a particular service, the web page directs the
client 112 to the proper URL.” Brown, 11:22-38; see also id.,
2:52-67, 3:12-22.

“The WGPS 414 then either grants or denies 630 access to the
user. If the WGPS 414 grants access, then it allows the user
request 626 to reach the walled garden 420 service having the
specified plot number. Accordingly, the specified URL from
the walled garden server will be served to the client 112. In this
case, the client 112 downloads and executes the JAVA, HTML,
XML, and/or JAVASCRIPT code providing the service as
described below. Preferably, the downloaded code is not
persistently stored in the client 112.” Id., 13:3-16; see also id.,
FIG. 6.

[8.i] delivering, from Fung and Katz disclose this claim element. See, e.g., [8.i] of
the information Ground 1, above.
apparatus to the one or
more servers, at least a Brown discloses the apparatus delivers a pointer or reference
pointer or reference to (e.g., URL) to selected digital content.
the selected digital
content; and “Alternatively, the client 112 may be coupled to or integrated into
a computer system and the user may use web browsing software to
request access to a web site in the walled garden 420. As
mentioned above, the request 610 from the client 112 to the
WGPS 414 preferably takes the form of a URL such as
‘http://wg/<plot number>/ . . . .’ In one embodiment, the user
visits a web page or portal that references, either directly or
indirectly, all of the available walled garden services. When the
user selects a link to a particular service, the web page directs
the client 112 to the proper URL.” Brown, 11:22-38.

[8.j] receiving, at the Fung and Katz disclose this claim element. See, e.g., [8.j] of
information apparatus Ground 1, above.
and from the one or

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Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 8 Fung and Katz in further view of Brown (US 6,732,179)
more servers, output Brown discloses receiving data corresponding with selected
data corresponding to at digital content following determination of type of output device.
least part of the selected
digital content, “The WGPS 414 then either grants or denies 630 access to the
user. If the WGPS 414 grants access, then it allows the user
request 626 to reach the walled garden 420 service having the
specified plot number. Accordingly, the specified URL from the
walled garden server will be served to the client 112.” Brown,
13:3-16.

[8.k] the output data is Fung and Katz disclose this claim element. See, e.g., [8.k] of
related, at least in part, Ground 1, above.
to the information
included in the one or
more device objects,
delivered from the
information apparatus to
the one or more servers,
and the output data,
corresponding to at least
part of the selected
digital content, is at
least in part device
dependent with respect
to the one or more
devices for outputting or
playing at least part of
the selected digital
content at the one or
more devices;

[8.l] and wherein at Fung and Katz disclose this claim element. See, e.g., [8.l] of
least part of the device Ground 1, above.
dependent output data
includes an encryption
scheme for ensuring
security of the selected
digital content.

Brown Decl., ¶44.

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Reexamination of U.S. Patent No. 10,346,114

Claim 13 depends from claim 8 and recites “the information apparatus further includes

one or more wireless communication circuitry units, and communication between the

information apparatus and the one or more servers over the network includes wireless

transmission of data via the one or more wireless communication circuitry units included in the

information apparatus.”

Like Fung and Katz, Brown describes the information apparatus includes a wireless

communication circuitry unit, and that communication between the information apparatus and

the servers can include wireless transmission of data. Brown recognizes that numerous types of

data communication can be substituted for one another as alternative embodiments, including the

use of wireless technologies. Exhibit D (Brown), 4:21-25. Brown Decl., ¶45.

A POSA would have been motivated to incorporate wireless transmission of data, as

described by Brown, because it was known such wireless means could be equivalent while

allowing for convenient use of data transfer without requiring wired inputs. Brown Decl., ¶46.

Furthermore, the POSA would have had a reasonable expectation of success for incorporating

such wireless circuitry and implementing it to access a network, as Katz describes such

application was readily “apparent to those of ordinary skill in the art.” Exhibit C (Katz), 5:1-18.

Brown Decl., ¶46.

The following claim chart provides exemplary disclosure showing how the combination

of Fung, Katz, and Brown taught or suggested all elements of claim 13 of the ’114 patent:

US 10,346,114 Claim 13 Fung and Katz in further view of Brown (US 6,732,179)
[13.a] The apparatus of Brown discloses in some embodiments the information apparatus
claim 8, in which the (i.e., client 112) includes a wireless communication circuitry unit
information apparatus (e.g., infrared transceiver 226).
further includes one or
more wireless “An infrared (IR) transceiver 226 is also preferably coupled to
the bus 212. The transceiver 226 can communicate with the

80
Request for Ex Parte Reexamination
Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 13 Fung and Katz in further view of Brown (US 6,732,179)
communication circuitry wireless remote control or keyboard, thereby allowing a user to
units, access the features of the client 112 either directly or via on-screen
menus.” Brown, 5:47-51; see also id., FIG. 2 (reproduced and
annotated below, illustrating client 112 comprising wireless
transceiver 226).

Wireless
Transceiver

[13.b] and Brown discloses communication between the information

communication between apparatus (i.e., client 112) and the server over the network (128)
the information apparatus includes wireless transmission of data via the wireless
and the one or more communication circuitry unit included in the information
servers over the network apparatus.
includes wireless
transmission of data via “In alternative embodiments, data communication between the
the one or more wireless client 112 and the rest of the network may be provided by
communication circuitry other forms of communication technologies, including analog
units included in the modem, digital subscriber line (DLS), and wireless
information apparatus. technologies.” Brown, 4:21-25.

A person of ordinary skill would have understood the information

apparatus (112) thus included at least one wireless communication
circuitry unit in wireless communication with the servers over the
network (128), including wireless transmission of data between
the information apparatus and the network.

Brown Decl., ¶47.

Claim 14 depends from claim 8 and recites “the information apparatus further transmits

at least part of the output data, related to at least part of the selected digital content, to a

television for rendering at least part of the selected digital content, the television is either: (1)

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wire connected to the information apparatus, or (2) wirelessly connected to the information

apparatus; and wherein the selected digital content includes, at least in part, video digital content

or audio digital content, individually or in any combination.”

Brown describes embodiments wherein the information apparatus is connected to a

television. For example, Brown discloses a “television (TV) 110 is coupled via a data link 111 to

a client 112, which is preferably a settop box (STB). The TV 110 can be any form of television,

including a conventional analog TV or a high-definition (HD) digital TV.” Exhibit D (Brown),

3:57-61; see also id., FIG. 1 (reproduced below, illustrating the output device as a television 110

connected to the information apparatus (client 112) through the data link 111). Brown Decl., ¶48.

Brown also describes the information apparatus transmits at least part of output data,

relating to selected digital content, to the television for rendering the selected digital content.

Exhibit D (Brown), 5:28-37, 6:50-65, 6:28-36, 11:22-38, 4:15-27. Additionally, Brown provides

that a user of the information apparatus can gain access to digital content, and that content is sent

to the information apparatus (client 112). Id., 13:3-8 (“If the WGPS 414 grants access…the

specified URL from the walled garden server will be served to the client 112.”); see also claim

element [8.j] above. A POSA would have understood the television would display (i.e., render)

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the selected digital content. See, e.g., Brown, 6:51-61 (“APIs allow a program to change the

television channel to which the client 112 is tuned…. Additional APIs may allow controlling

scaling of the broadcast video picture on the television 110”). Accordingly, Brown provides the

information apparatus transmits at least part of the output data (relating to selected digital

content) to the television for rendering the selected content. Brown Decl. ¶48.

Furthermore, Brown describes the television (110) is wire connected to the information

apparatus (client 112), or is wirelessly connected. The data link (111) “may be, for example, a

serial link, a radio frequency link, a broadband link, a standard monitor cable, or an S-video

link.” Exhibit D (Brown), 3:55-67; see also id., FIG. 1. A POSA would have understood the

“standard monitor cable” and “S-video link” were each examples of a wired connection between

the client and the television, while the “radio frequency link” was an example of a wireless

connection between the client and the television. Accordingly, Brown provides that the television

can be connected via wire connection, or via wireless connection, to the information apparatus.

Brown Decl. ¶49.

Brown also discloses the selected digital content includes, at least in part, video digital

content or audio digital content. Brown provides the information apparatus “supports both

broadcast services including video, audio…and streaming video and audio.” Brown, 5:7-10.

Additionally, Brown teaches the “network-based services” being accessed for display on the

television “may include, for example, access to electronic content such as…video.” Exhibit D

(Brown), 7:48-56. Accordingly, a POSA would have understood Brown to describe selected

digital content included video digital content, audio digital content, or any combination of the

two. Brown Decl. ¶50.

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A POSA would have been motivated to use a television as a display device for the output

of selected digital content. Televisions were known and used in the field as common means of

displaying digital content. Indeed, Brown recognized numerous types of televisions could act as

such display, “including a conventional analog TV or a high-definition (HD) digital TV.” Exhibit

D (Brown), 3:59-61. Furthermore, a person of skill in the field would have had a reasonable

expectation of success in using a television to output the selected digital content. As suggested

by Brown, it was common for numerous types of TVs to be connected with a large array of input

apparatuses (see, e.g., Brown, 3:65-66, discussing the numerous types of connection available to

link an information apparatus to a television. Accordingly, those skilled in the art would have

had good reason to use a television as an output device and would have had a reasonable

expectation of success in doing so. Brown Decl. ¶51-52.

A POSA would have been motivated to incorporate a television as a display apparatus, as

described by Brown, because it was known such means of display were commonplace items that

could be equivalent with other displays, while being compatible with numerous forms of

information apparatuses. Brown Decl., ¶51. Furthermore, the POSA would have had a

reasonable expectation of success for incorporating a television as an output display because, as

suggested by Fung, a large number of different displays having different characteristics were

compatible with the information apparatus. Exhibit B (Fung), 3:18-20; 7:10-14. It would have

been routine for a POSA to use a television as a display in Fung or Katz. Brown Decl., ¶52.

The following claim chart provides exemplary disclosure showing how the combination

of Fung, Katz, and Brown taught or suggested all elements of claim 14 of the ’114 patent:

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US 10,346,114 Claim 14 Fung and Katz in further view of Brown (US 6,732,179)
[14.a] The apparatus of Brown discloses in the information apparatus further transmits
claim 8, in which the at least part of the output data, related to the selected digital
information apparatus content, to a television for rendering at least part of the selected
further transmits at least digital content.
part of the output data,
related to at least part of “The bus 212 also couples the CPU 210 with a graphics and
the selected digital video subsystem 220 which generates text and video images on
content, to a television the TV 110. In addition to providing conventional TV images,
for rendering at least part the graphics and video subsystem 220 preferably generate a user
of the selected digital interface (UI) by which the user can access the features and
content, services provided by the client 112.” Brown, 5:28-37; see also
id., FIG. 1 (reproduced and annotated below).

“[T]he APIs allow a program to change the television channel

to which the client 112 is tuned, inquire about details of a
channel line-up, access an electronic program guide (EPG)
stored by the client, initiate UI elements on the television
110…set reminders for display on the television 110….
Additional APIs may allow controlling scaling of the
broadcast video picture on the television 110 and accessing
settings stored by the client 112, including user preferences,
bookmarks, parental controls, and diagnostics.” Id., 6:50-65.

“The shell program 326 is the controlling application and

provides the user interface (UI) on the TV 110 and
application support for channel navigation, an electronic
program guide, storing user preferences, email, and walled
garden 420 access.” Id., 6:28-36.

“Initially, the user uses the UI on the client 112 to request 610
access to a service in the walled garden 420. For example, the

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US 10,346,114 Claim 14 Fung and Katz in further view of Brown (US 6,732,179)
client 112 may generate a UI on the TV 110. The user, using
the UI…requests access to the service through the web
browsing software 324 executing on the client 112.” Id., 11:22-
38.

“The client 112 preferably includes at least one tuner for tuning a
TV signal and a cable modem for receiving and transmitting
data. In addition, the client 112 is preferably coupled to a coaxial
cable 114 carrying analog and/or digital TV signals and
providing two-way data communication between the client
112 and the rest of the network using the Internet protocol
(IP).” Brown, 4:15-27.

[14.b] the television is Brown discloses embodiments wherein the television is either
either: (1) wire connected wire connected to the information apparatus, or the television is
to the information wirelessly connected to the information apparatus.
apparatus, or (2)
wirelessly connected to “A television (TV) 110 is coupled via a data link 111 to a
the information client 112, which is preferably a set top box (STB)…. The data
apparatus; and link 111 may be, for example, a serial link, a radio frequency
link, a broadband link, a standard monitor cable, or an S-
video link.” Brown, 3:55-67; see also id., FIG. 1 (reproduced
and annotated below).

[14.c] wherein the Brown describes the selected digital content can include, at least
selected digital content in part, video digital content or audio digital content,
includes, at least in part, individually or in any combination.
video digital content or
audio digital content, “Preferably, the client 112 is an STB and supports both
individually or in any broadcast services including video, audio…and streaming
combination. video and audio.” Brown, 5:7-10.

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US 10,346,114 Claim 14 Fung and Katz in further view of Brown (US 6,732,179)

“The illustrated walled garden 420 includes one or more servers

which, in turn, hold one or more sites for providing network-
based services to the users. The services may include, for
example, access to electronic content such as…video.” Id.,
7:48-56.

Brown describes its information apparatus (client 112) can

include “video subsystem 220 which generates text and video
images on the TV 110. In addition to providing conventional
TV images, the graphics and video subsystem 220 preferably
generates a user interface (UI) by which the user can access the
features and services provided by the client 112. The graphics
and video subsystem 220 may also support advanced features
such as 3-D graphics, video decoding, and video digitizing.” Id.,
5:28-37.

“Additional APIs may allow controlling scaling of the

broadcast video picture on the television 110…” Id., 6:60-64.

Brown Decl., ¶53.

Accordingly, the combination of Fung, Katz, and Brown render claims 8, 13, and 14 of

the ’114 patent obvious. See Brown Decl., ¶¶41-54.

C. Ground 3: Fung in View of Katz and Further in View of Yukie Renders

Obvious Claims 8 and 13 of the ’114 Patent Under (pre-AIA) 35 U.S.C. § 103

None of Fung, Katz, or Yukie were cited during original prosecution of the ’114 patent,

thus they present new and noncumulative information and are sufficient to raise a substantial

new question that Fung in view of Katz and further in view of Yukie renders claims 8 and 13

obvious.

As provided by the detailed overview of Fung, Katz, and Yukie above, each of these

references were analogous prior art to the ’114 patent because each were within the field of

endeavor and reasonably pertinent to one or more problems concerning the inventors of the ’114

patent. Brown Decl., ¶56.

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A POSA would have been motivated to combine Yukie into the combination of Fung and

Katz. As evidenced by the claim charts below, Yukie shares numerous similarities with

previously-discussed Fung and Katz, and is in the same field of disclosures. For example, Yukie

discloses an information apparatus for obtaining digital content from digital content providers

provided by one or more servers over a network. Exhibit E (Yukie), 6:19-7:5, FIG. 1. Yukie also

discloses the information apparatus sends authentication information associated with the user of

the information apparatus. Id., 6:4-18, 6:19-28, FIGS. 1 and 3. Yukie also describes accessing,

by the information apparatus one or more digital content available from a digital content service.

Id., 7:52-59, FIGS. 1 and 3. Additionally, Yukie describes the server receives from the

information apparatus an indication from the user of selected digital content. Id., 5:42-62, 6:29-

38, FIGS. 1-2. Yukie discloses receiving, at the information apparatus, output data corresponding

to selected digital content. Id., 6:29-38. Brown Decl., ¶58.

The motivation to combine Fung and Katz and reasonable expectation of success in

combining them was provided above. See Brown Decl., ¶¶30-34. A POSA would have been

motivated to add Yukie to the combination of Fung and Katz because Yukie provides alternate

means for selling digital content to consumers, which the POSA would desire to incorporate into

their platform to best realize customer preferences, such as desired billing paradigms for

accessing digital content, as described by Yukie. For example, Katz describes alternate manners

of downloading content following purchase (Exhibit C, 11:8-12) and Fung describes the use of

for-pay content generally (Exhibit B, 1:8-13). Complementarily, Yukie discloses “several billing

paradigms” for allowing clients to purchase digital content. Exhibit E (Yukie), Abstract.

Incorporating Yukie would have provided purchasers of the digital content with means to access

content at a level they desired and also would have enabled the content providers to meet client

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demand with regard to providing subscriptions to services or establishing a pay-per-download

system as further described by Yukie. Implementing the teachings of Katz, Fung, and Yukie

further a shared goal of facilitating means for a user to purchase digital content from a content

service. Brown Decl., ¶56.

Accordingly, a POSA would have been motivated to incorporate the billing

methodologies of Yukie into the combination the previously-described system of Fung and Katz.

The combination of Fung, Katz, and Yukie teach the alleged points of novelty from claim 8 of

the ’114 patent, namely the ability to access digital content from a server using an information

apparatus, and conveying such digital content to an output device, where the digital content is

device-dependent and accessed following authentication of user and subscription information,

and the addition of Yukie further enhances the manner in which users could purchase digital

content. ’114 patent, 1:56-67, 37:27-38:25 (claim 8). Brown Decl., ¶56.

Additionally, a POSA would have had a reasonable expectation of success in

incorporating Yukie into the combination of Fung and Katz. As detailed by Ralph Brown and

discussed above, Fung and Katz are in the same field and share a substantial number of

similarities. Yukie is also from the same field and also shares a substantial number of

similarities, as evidenced further by the claim chart below. A POSA prior to November 20, 2000,

could have readily combined the teachings of Fung, Katz, and Yukie without a large burden or

undue experimentation because the methods of Yukie could be adapted using the hardware

already disclosed by the combination of Fung and Katz with, at most, minor modifications.

Brown Decl., ¶57.

The following claim chart provides exemplary disclosure showing how the combination

of Fung, Katz, and Yukie taught or suggested all elements of claim 8 of the ’114 patent:

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US 10,346,114 Claim 8 Fung and Katz in further view of Yukie (US 7,644,018)
[8.Preamble] An Fung and Katz disclose this claim element. See, e.g.,
information apparatus for [8.Preamble] of Ground 1, above.
obtaining digital content
from a digital content Yukie also discloses an information apparatus (i.e., user terminal
service provided by one 32) for obtaining digital content from a digital content service
or more servers over a provided by one or more servers over a network, the digital
network, the digital content accessible by the user terminal. See, e.g., Yukie, 6:19-
content accessible, at 7:5, FIG. 1 (reproduced below).
least partly, by the
information apparatus, Network

One or more
servers over
a network
Information
apparatus

[8.a] the information Fung and Katz disclose this claim element. See, e.g., [8.a] of
apparatus including: at Ground 1, above.
least one processor; an
operating system; an Yukie also discloses the information apparatus (i.e., user
interface for interacting terminal 32) comprises components for accessing the digital
with a user; memory or content service provided by the one or more servers over the
storage; software or network.
firmware stored, at least
partly, in the memory or “The flow charts herein illustrate the structure of the modules of
storage, at least part of the present invention as embodied in computer program software
the software or firmware or in hardware. Those skilled in the art will appreciate that the
is executable, by the at flow charts illustrate the structures of logic elements, such as
least one processor at the computer program code elements or electronic logic circuits, that
information apparatus, function according to this invention. Manifestly, the invention is
for accessing the digital practiced in its essential embodiment by a machine component
content service provided that renders the logic elements in a form that instructs a digital
by the one or more processing apparatus (that is, a computer) to perform a
servers over the network; sequence of function steps corresponding to those shown. In
and other words, the present logic may be established by a
computer program that is executed by a processor within,
e.g., the user terminal 32…these instructions may reside, for

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US 10,346,114 Claim 8 Fung and Katz in further view of Yukie (US 7,644,018)
example, in RAM of the appropriate computer…or other
appropriate data storage device.” Yukie, 5:20-41.

“As also shown in FIG. 1, a selector element 42 is provided. In

the preferred embodiment the selector element 42 is a toolbar,
although other graphical user interface (GUI) elements can be
used, such as, for example, drop-down menus or text.
Alternatively, an audio interface can be provided (e.g., selectable
audio channels with audible indications for channel content and
alerts). Id., 5:42-48.

“Moving to block 60, the connect server 26 determines the type

of device the user is using as the terminal 32. On request
including an explicit real-time request for content and/or
according to a subscription established by a user-defined or
platform-defined profile, at block 62 the connect server 26
accesses the requested content and sends the content to the
terminal 32 at a rate compatible with the type of device being
used as the terminal 32. Thus, a single user can access content
using more than one type of device…billing for the above-
described service can be accomplished by gathering accounting
data either during the entire time a user is logged on, or on a
monthly subscription basis…” Id., 6:29-50; see also id., FIGS. 3-
4.

[8.b] wherein the Fung and Katz disclose this claim element. See, e.g., [8.b] of
information apparatus is Ground 1, above.
configurable for:
sending, from the Yukie also suggests the information apparatus (i.e., user terminal
information apparatus to 32) is configured to send authentication information associated
the one or more servers with the user to a server distinct and separate from the terminal.
over the network,
authentication “FIG. 3 shows further details of the platform logic, i.e., the logic
information associated undertaken by the connect server 26/user terminal 32.
with the user of the Commencing at block 56, the user logs on to the system 10….
information apparatus for Logon can be accomplished using a handshaking protocol or a
authentication of the user registration protocol, with a user ID being input by the user by
or the information means of the input device 36…” Yukie, 6:4-18.
apparatus, the one or
more servers being “At block 58, the connect server 26 receives the logon and
distinct and separate verifies the user’s identification and password if provided. When
from the information the user logs on, the server 26 correlates the user ID to the
apparatus; toolbar 42 and sends the toolbar 42 to the user terminal 32. Thus,
the toolbar 42 is associated with a user, not necessarily with a

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US 10,346,114 Claim 8 Fung and Katz in further view of Yukie (US 7,644,018)
particular network device, such that whenever the user logs on
his or her own personalized toolbar is presented…” Yukie, 6:19-
28; see also id., FIGS. 1 (reproduced below) and 3 (reproduced
below).
Network

One or more
servers over
a network
Information
apparatus

[8.c] sending, from the Fung and Katz disclose this claim element. See, e.g., [8.c] of
information apparatus to Ground 1, above.
the one or more servers,
subscription information Yukie suggests sending from the information apparatus (i.e., user
for accessing the digital terminal 32) a request including information (e.g., IP packets)
content service provided relating to accessing subscribed-to digital content.

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US 10,346,114 Claim 8 Fung and Katz in further view of Yukie (US 7,644,018)
by the one or more “Content in the form of IP packets is provided to a user terminal
servers; via a connect server in response to user requests, which can be
real-time requests or which can be requests embodied in a user-
defined or system-defined user profile. The user is billed
using…the subscription.” Yukie, Abstract; see also id., FIGS. 2-
3.

“Moving to block 60, the connect server 26 determines the type

of device the user is using as the terminal 32. On request
including an explicit real-time request for content and/or
according to a subscription established by a user-defined or
platform-defined profile, at block 62 the connect server 26
accesses the requested content and sends the content to the
terminal 32 at a rate compatible with the type of device being
used as the terminal 32. Thus, a single user can access content
using more than one type of device…billing for the above-
described service can be accomplished by gathering accounting
data either during the entire time a user is logged on, or on a
monthly subscription basis…” Id., 6:29-50; see also id., FIG. 4.

[8.d] delivering, from the Fung and Katz disclose this claim element. See, e.g., [8.d] of
information apparatus, Ground 1, above.
one or more device
objects to the one or
more servers over the
network, the one or more
device objects are related
to one or more devices,
the one or more devices
are for outputting or
playing the digital
content, and the one or
more devices being
distinct and separate
devices from the one or
more servers,

[8.e] and the one or more Fung and Katz disclose this claim element. See, e.g., [8.e] of
device objects including Ground 1, above.
information, related to at
least one of device
identification
information, device
address information,

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US 10,346,114 Claim 8 Fung and Katz in further view of Yukie (US 7,644,018)
device capability
information, model
information, brand
information, registration
information, or IP
address information,
individually or in any
combination, related to
the one or more devices;

[8.f] accessing, by the Fung and Katz disclose this claim element. See, e.g., [8.f] of
information apparatus, Ground 1, above.
one or more digital
content that are available Yukie discloses accessing digital content available at the digital
at the digital content content service.
service,
“In any case, the user can select one or more of the channels
defined above for immediate display or for display at the time
scheduled. It is to be appreciated that the user can thus be billed
not only based on a song-by-song or program-by-program basis,
but on the basis of the subscription services that are essentially
defined by the user profile. The subscription service based on the
profile is established at block 70, and accounting data therefor is
generated at block 72.” Id., 7:52-59; see also id., FIGS. 1 and 3.

[8.g] the access of the Fung and Katz disclose this claim element. See, e.g., [8.g] of
one or more digital Ground 1, above.
content, provided by the
one or more servers, is Yukie discloses access to subscribed-to digital content based on
based, at least in part, on user profile and subscription information.
having successfully sent
the authentication “FIG. 4 shows details of the subscription/profile logic.
information and the Commencing at block 66, the user defines a profile, or the system
subscription information; defines a profile, with the profile being stored in the platform
database 40 and accessed by the connect server 26. To store the
profile in the database 40, at block 68 two-way communication
can be established between the server 26 and terminal 32 and the
profile transmitted to the server 26, or if one-way
communication from the server to the terminal is available, then
the profile is sent to a service provider and input into the
database 40. If two-way communication is established, the user
terminal 32 can send requests and commands to the server
26, such as a purchase request, a pause command, an answer

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US 10,346,114 Claim 8 Fung and Katz in further view of Yukie (US 7,644,018)
phone command, a move-camera command, etc.” Yukie, 6:51-
64; see also id., FIG. 4.

“In any case, the user can select one or more of the channels
defined above for immediate display or for display at the time
scheduled. It is to be appreciated that the user can thus be billed
not only based on a song-by-song or program-by-program basis,
but on the basis of the subscription services that are essentially
defined by the user profile. The subscription service based on
the profile is established at block 70, and accounting data
therefor is generated at block 72.” Id., 7:52-59; see also id.,
FIGS. 1 and 3.

[8.h] receiving, via the Fung and Katz disclose this claim element. See, e.g., [8.h] of
interface of the Ground 1, above.
information apparatus, an
indication from the user Yukie discloses transmitting an indication from the user of
of selected digital selected digital content from the digital content service.
content from among the
one or more digital “As also shown in FIG. 1, a selector element 42 I provided. In
content that are available the preferred embodiment the selector element 42 is a toolbar,
from the digital content although other graphical user interface (GUI) elements can be
service; used, such as, for example, drop-down menus or text.
Alternatively, an audio interface can be provided (e.g., selectable
audio channels with audible indications for channel content and
alerts). As shown, the selector element 42 includes at least one
and preferably plural source icons 44, with each icon 44 being
associated with a respective data channel. Each channel can be
defined by the user to receive a particular type of public content,
such as video, audio, live broadcasts, games, and the above-
mentioned customized data. In any case, the selector element 42
is presented on the monitor 38 so that a user can view the feeds
as presented in the icons 44 and/or click on one or more of the
icons 44 to enlarge or otherwise enhance the feed from the
associated channel. An icon 44 can be established by a real-time
feed of data from its associated source, or it can be static, or it
can be established by a text display or audio display of data.
Referring now to FIG. 2, the logic of the connect server 26 can
be seen.” Yukie, 5:42-62; see also id., FIGS. 1-2.

“On request including an explicit real-time request for

content and/or according to a subscription established by a user-
defined or platform-defined profile, at block 62 the connect
server 26 accesses the requested content and sends the

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US 10,346,114 Claim 8 Fung and Katz in further view of Yukie (US 7,644,018)
content to the terminal 32 at a rate compatible with the type of
device being used as the terminal 32.” Id., 6:29-38.

[8.i] delivering, from the Fung and Katz disclose this claim element. See, e.g., [8.i] of
information apparatus to Ground 1, above.
the one or more servers,
at least a pointer or Yukie discloses delivering a reference to selected digital content.
reference to the selected
digital content; and “In any case, the user can select one or more of the channels
defined above for immediate display or for display at the time
scheduled. It is to be appreciated that the user can thus be billed
not only based on a song-by-song or program-by-program basis,
but on the basis of the subscription services that are essentially
defined by the user profile. The subscription service based on the
profile is established at block 70, and accounting data therefor is
generated at block 72.” Id., 7:32-51.

“Commencing at block 46, the server 26 receives public content

from the content providers 12. Moving to block 48, a network
communication path is established between the server 26 and
user terminal 32. Then, at block 50 a user request for content is
received as set forth in greater detail below.” 5:63-6:3.

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US 10,346,114 Claim 8 Fung and Katz in further view of Yukie (US 7,644,018)
[8.j] receiving, at the Fung and Katz disclose this claim element. See, e.g., [8.j] of
information apparatus Ground 1, above.
and from the one or more
servers, output data Yukie discloses receiving data corresponding with selected
corresponding to at least digital content following determination of type of device.
part of the selected
digital content, “On request including an explicit real-time request for content
and/or according to a subscription established by a user-defined
or platform-defined profile, at block 62 the connect server 26
accesses the requested content and sends the content to the
terminal 32 at a rate compatible with the type of device being
used as the terminal 32.” Yukie, 6:29-38.

[8.k] the output data is Fung and Katz disclose this claim element. See, e.g., [8.k] of
related, at least in part, to Ground 1, above.
the information included
in the one or more device
objects, delivered from
the information apparatus
to the one or more
servers, and the output
data, corresponding to at
least part of the selected
digital content, is at least
in part device dependent
with respect to the one or
more devices for
outputting or playing at
least part of the selected
digital content at the one
or more devices;
[8.l] and wherein at least Fung and Katz disclose this claim element. See, e.g., [8.l] of
part of the device Ground 1, above.
dependent output data
includes an encryption
scheme for ensuring
security of the selected
digital content.

Brown Decl., ¶58.

Claim 13 depends from claim 8 and recites “the information apparatus further includes

one or more wireless communication circuitry units, and communication between the

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information apparatus and the one or more servers over the network includes wireless

transmission of data via the one or more wireless communication circuitry units included in the

information apparatus.”

Like Fung and Katz, Yukie describes the information apparatus includes a wireless

communication circuitry unit, and that communication between the information apparatus and

the servers includes wireless transmission of data. Yukie “relates generally to vending digitized

content via wireless networks.” Exhibit E (Yukie), 1:17-18. For example, Yukie describes that

“the preferred path between the user terminal 32 and the connect server 26 can be wireless.” Id.,

4:43-44. Yukie also discloses that the information apparatus (i.e., user terminal 32) comprises a

communication component 34 that can communicate via a wireless network path. Id., 4:19-22,

FIG. 1., Brown Decl. ¶¶59-60.

A POSA would have been motivated to incorporate wireless transmission of data, as

described by Yukie, because it was known such wireless means could be equivalent while

allowing for convenient use of data transfer without requiring wired inputs. Brown Decl., ¶61.

Furthermore, the POSA would have had a reasonable expectation of success for incorporating

such wireless circuitry and implementing it to access a network, as Katz describes such

application was readily “apparent to those of ordinary skill in the art.” Exhibit C (Katz), 5:1-18,

Brown Decl., ¶61.

The following claim chart provides exemplary disclosure showing how the combination

of Fung, Katz, and Yukie taught or suggested all elements of claim 13 of the ’114 patent:

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US 10,346,114 Claim 13 Fung and Katz in further view of Yukie (US 7,644,018)
[13.a] The apparatus of Yukie discloses the information apparatus (i.e., user terminal 32)
claim 8, in which the includes a wireless communication circuitry unit (e.g.,
information apparatus communication component 34).
further includes one or
more wireless “The user terminal 32 also has an associated communication
communication circuitry component 34 that can communicate with the base stations 22
units, via a wireless network path and, hence, with the connect server
26…. [T]he preferred path between the user terminal 32 and
the connect server 26 can be wireless.” Yukie, 4:19-44; see also
id., FIG. 1 (reproduced and annotated below, illustrating
information apparatus (user terminal 32) comprising wireless
communication circuitry unit or wireless network interface
(communication component 34) for wireless communication to
connect server 26).
Wireless Network
Interface

One or more
servers over
a network
Information
apparatus

[13.b] and Yukie discloses communication between the information

communication between apparatus (i.e., user terminal 32) and the server over the network
the information apparatus (26) includes wireless transmission of data via the wireless
and the one or more communication circuitry unit (e.g., communication component
servers over the network 34) included in the information apparatus.
includes wireless
transmission of data via “The user terminal 32 also has an associated communication
the one or more wireless component 34 that can communicate with the base stations 22
communication circuitry via a wireless network path and, hence, with the connect server
units included in the 26…. [T]he preferred path between the user terminal 32 and
information apparatus. the connect server 26 can be wireless.” Yukie, 4:19-44; see
also id., FIG. 1 (illustrating the user terminal 32 communicates
with connect server 26 via wireless transmission).

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Reexamination of U.S. Patent No. 10,346,114

US 10,346,114 Claim 13 Fung and Katz in further view of Yukie (US 7,644,018)
“The present invention relates generally to vending digitized
content via wireless networks.” Id., 1:17-18.

“The invention can be implemented by a computer system

including a computer network path, at least a portion of
which is wireless.” Id., 2:16-18.

Brown Decl., ¶62.

Accordingly, the combination of Fung, Katz, and Yukie render claims 8 and 13 of the

’114 patent obvious. See Brown Decl., ¶¶55-63.

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VII. CONCLUSION

Based on the above, and in view of the Brown Declaration at paragraphs 10-63, the

accompanying references show that there exists at least one substantial new question of

patentability as to claims 8, 13, and 14 of the ’114 patent. For the reasons set forth in this

Request, it is respectfully requested that the ex parte reexamination of the ’114 patent be

ordered.

Respectfully Submitted,

Date: April 8, 2021 By: / Matthew A. Argenti /

Matthew A. Argenti
Registration No. 61,836

WILSON SONSINI GOODRICH & ROSATI

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Palo Alto, CA 94304-1050
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