Unified Patents Inc. v. Quantum Stream Inc., IPR2017-01672, (PTAB June 23, 2017) .

IPR2017-01672
U.S. Patent 9,047,626
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
UNIFIED PATENTS INC.
Petitioner
- vs. -
QUANTUM STREAM INC.
Patent Owner
IPR2017-01672
U.S. Patent 9,047,626
PETITION FOR INTER PARTES REVIEW OF

U.S. PATENT 9,047,626 CHALLENGING CLAIMS 1-17
UNDER 35 U.S.C. 312 AND 37 C.F.R. 42.104
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TABLE OF CONTENTS
I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8 .....................................1
A. Real Party-in-Interest.................................................................................1
B. Related Matters ..........................................................................................1
C. Lead and Back-up Counsel and Service Information ...............................2
II. CERTIFICATION OF GROUNDS FOR STANDING ....................................2
III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ......................3
A. Prior Art Patents and Printed Publications ................................................3
B. Statutory Grounds for Challenges .............................................................4
IV. U.S. Patent 9,047,626 ........................................................................................5
A. Summary....................................................................................................5
B. Level of Ordinary Skill in the Art .............................................................6
C. Prosecution History ...................................................................................6
D. Priority Date ..............................................................................................8
V. CLAIM CONSTRUCTION...............................................................................9
A. vacancy...................................................................................................9
B. attribute ................................................................................................10
C. dynamic attribute .................................................................................10
VI. CLAIMS 1-17 ARE UNPATENTABLE ........................................................11
A. Challenge 1: Claims 1-6, 8-12, and 14-17 are obvious under 35

U.S.C. 103 in view of Arazi and Rosser...............................................11
1. Overview of Arazi ...........................................................................11
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2. Overview of Rosser .........................................................................11
3. Reasons to Combine Arazi and Rosser ...........................................13
4. Analysis ...........................................................................................15
B. Challenge 2: Claim 7 is obvious under 35 U.S.C. 103 over Arazi,

Rosser, and Zigmond ...............................................................................42
1. Overview of Zigmond .....................................................................42
2. Reasons to Combine Arazi, Rosser, and Zigmond ..........................43
3. Analysis ...........................................................................................44
C. Challenge 3: Claim 13 is obvious under 35 U.S.C. 103 over Arazi,

Rosser, and Brown ...................................................................................45
1. Overview of Brown .........................................................................45
2. Reasons to Combine Arazi, Rosser, and Brown .............................45
3. Analysis ...........................................................................................46
D. Challenge 4: Claims 1, 7, and 10 are obvious under 35 U.S.C. 103

over Eldering 039 and Eldering 277 ....................................................49
1. Overview of Eldering 039 .............................................................49
3. Reasons to Combine Eldering 039 and Eldering 277 ..................50
4. Prior Art Status of Eldering 039 ....................................................51
5. Prior Art Status of Eldering 277 ....................................................52
6. Challenge 1 and Challenge 4 are not Substantially the Same.........55
7. Analysis ...........................................................................................56
E. Challenge 5: Claim 13 is obvious under 35 U.S.C. 103 over
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Eldering 039, Eldering 277, and Gupta ...............................................65
1. Overview of Gupta ..........................................................................65
2. Reasons to Combine Eldering 039, Eldering 277, and Gupta .....65
F. Challenge 6: Claims 15-17 are obvious under 35 U.S.C. 103 over

Eldering 039, Eldering 277, and Eldering 519 ...................................68
2. Reasons to Combine Eldering 039, Eldering 277, and

Eldering 519...................................................................................69
VII. CONCLUSION................................................................................................73
VIII.CERTIFICATE OF WORD COUNT..............................................................74
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PETITIONERS EXHIBIT LIST
June 23, 2017
EX1001 U.S. Patent 9,047,626 to Akadiri
EX1002 Prosecution File History of U.S. Patent 9,047,626 (626 PH)
EX1003 Excerpts from Prosecution File History of U.S. Patent 8,315,949

(949 PH)
EX1004 Prosecution File History of U.S. Provisional Appl. 60/155,015
EX1005 Declaration of Dr. Kevin C. Almeroth Under 37 C.F.R. 1.68
EX1006 WO 97/19560 to Arazi et al.
EX1007 WO 98/28906 to Rosser
EX1008 US Patent 6,698,020 to Zigmond et al.
EX1009 US Patent 5,887,133 to Brown et al.
EX1010 US Patent 6,615,039 to Eldering
EX1012 US Patent 6,820,277 to Eldering et al.
EX1015 US Patent 6,487,538 to Gupta et al.
EX1016 US Patent 6,324,519 to Eldering 519
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I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8
A. Real Party-in-Interest
Pursuant to 37 C.F.R. 42.8(b)(1), Unified Patents Inc. (Unified or
Petitioner) certifies that Unified is the real party-in-interest, and further certifies
that no other party exercised control or could exercise control over Unifieds
participation in this proceeding, the filing of this petition, or the conduct of any
ensuing trial.
B. Related Matters
According to assignment records, US Patent 9,047,626 (the 626 Patent
(EX1001)) is owned by Quantum Stream Inc. of New York, NY (Quantum or
Patent Owner).
As of the filing date of this Petition, and to the best knowledge of Petitioner,
the 626 Patent is or has been involved in these matters: Quantum Stream Inc. v.
Charter Communications, Inc., Case No. 1:17-cv-01696 (United States District
Court for the Southern District of New York) (pending); Quantum Stream Inc. v.
Neptune Holding US Corp., Case No. 1:16-cv-08604 (United States District Court
for the Southern District of New York) (terminated); and Quantum Stream Inc. v.
DIRECTV, LLC, Case No. 1:15-cv-08240 (United States District Court for the
Southern District of New York) (terminated).
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C. Lead and Back-up Counsel and Service Information
Lead Counsel
David L. McCombs Phone: 214-651-5533
HAYNES AND BOONE, LLP Fax: 214-200-0853
2323 Victory Ave. Suite 700 david.mccombs.ipr@haynesboone.com
Dallas, TX 75219 USPTO Reg. No. 32,271
Back-up Counsel
Roshan Mansinghani Phone: 214-945-0200
Unified Patents Inc.
1875 Connecticut Ave NW, Floor 10 roshan@unifiedpatents.com
Washington, DC 20009 USPTO Reg. No. 62,429
David M. ODell Phone: 972-739-8635

HAYNES AND BOONE, LLP
2323 Victory Ave. Suite 700 david.odell.ipr@haynesboone.com
Raghav Bajaj Phone: 512-867-8520

HAYNES AND BOONE, LLP
2323 Victory Ave. Suite 700 raghav.bajaj.ipr@haynesboone.com
Jonathan Stroud Phone: 650-999-0455

Unified Patents Inc.
1875 Connecticut Ave NW, Floor 10 jonathan@unifiedpatents.com
Washington, DC 20009 USPTO Reg. No. 72,518
Please address all correspondence to lead and back-up counsel. Petitioner
consents to electronic service.
II. CERTIFICATION OF GROUNDS FOR STANDING
Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
review is sought is available for inter partes review and that Petitioner is not
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barred or estopped from requesting an inter partes review challenging the patent
claims on the grounds identified in this Petition.
III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner challenges
claims 1-17 (all claims) of the 626 Patent.
A. Prior Art Patents and Printed Publications
The following references are pertinent to the grounds of unpatentability
explained below:
1. WO 97/19560 (published on May 29, 1997) (Arazi (EX1006)),
which is prior art under at least 35 U.S.C. 102(b)1.
2. WO 98/28906 (published on July 2, 1998) (Rosser (EX1007)),
which is prior art under at least 35 U.S.C. 102(b).
3. US Patent 6,698,020 (filed June 15, 1998; issued February 24, 2004)
(Zigmond (EX1008)), which is prior art under at least 35 U.S.C.
102(e).
4. US Patent 5,887,133 (issued March 23, 1999) (Brown (EX1009)),
which is prior art under at least 35 U.S.C. 102(a) and 102(e).
5. US Patent 6,615,039 (claiming priority to May 10, 1999; filed on
1
The 626 Patent issued from an application filed prior to the enactment of the
America Invents Act (AIA). Thus, the pre-AIA statutory framework applies.
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May 10, 2000; issued September 2, 2003) (Eldering 039
(EX1010), which is prior art under at least 35 U.S.C. 102(e).
6. US Patent 6,820,277 (claiming priority to April 20, 1999 and
February 18, 2000; filed on April 20, 2000; issued November 16,
2004) (Eldering 277 (EX1012)), which is prior art under at least
35 U.S.C. 102(e).
7. US Patent 6,487,538 (filed November 16, 1998; issued November 26,
2002) (Gupta (EX1015)), which is prior art under at least 35
U.S.C. 102(e).
8. US Patent 6,324,519 (filed March 12, 1999; issued November 27,
2001) (Eldering 519 (EX1016)), which is prior art under at least
35 U.S.C. 102(e).
Citations to EX1006-EX1013 and EX1015-EX1016 are to original
page/column and line numbering. Citations to EX1014 are to page numbers added
in compliance with 37 C.F.R. 42.24(d).
B. Statutory Grounds for Challenges
This Petition, supported by the declaration of Dr. Kevin C. Almeroth
(Almeroth Declaration or Almeroth (EX1005)), requests cancellation of claims
1-17 under the Challenges listed below:
Challenge #1: Claims 1-6, 8-12, and 14-17 of the 626 Patent are obvious
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under 35 U.S.C. 103(a) over Arazi in view of Rosser.
Challenge #2: Claim 7 of the 626 Patent is obvious under 35 U.S.C.
103(a) over Arazi in view of Rosser and Zigmond.
103(a) over Arazi in view of Rosser and Brown.
Challenge #4: Claims 1, 7, and 10 of the 626 Patent are obvious under 35
U.S.C. 103(a) over Eldering 039 in view of Eldering 277.
103(a) over Eldering 039 in view of Eldering 277 and Gupta.
Challenge #6: Claims 15-17 of the 626 Patent are obvious under 35 U.S.C.
103(a) over Eldering 039 in view of Eldering 277 and Eldering 519.
Challenges #4-6 are not cumulative of Challenges #1-3. Infra VI.D.6.
IV. U.S. PATENT 9,047,626
A. Summary
The 626 Patent is directed to systems for delivering content, such as a
digital video program, to a user device, such as a television or computer. The
patent acknowledges that primary content providers, such as television stations and
publishers on the Internet, often enter into agreements with advertisers long before
those providers transmit content along with advertising. (EX1001, 1:43-53). The
626 Patent alleges that existing systems were inflexible, and that there was a need
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to permit content providers to explicitly target consumers. (Id., 2:50-57). The
626 Patent purports to solve these issues with a real-time content trading,
placement, and distribution system in which attributes associated with []
vacancies and with units of secondary content are used to trade and match suitable
vacancies with suitable content. (Id., Abstract). For example, a vacancy may
be included in a digital video program stream (like television programming), into
which a digital video advertisement (generally referred to as a snap-in) may be
inserted. This can be based on a matching of attributes of the vacancy (such as a
duration of the vacancy) with attributes of the advertisement. (Id., 8:27-57, claim
9, 6:34-7:31). As demonstrated below, however, advertising placement systems
with these features were well-known prior to the 626 Patents filing.
B. Level of Ordinary Skill in the Art
A person of ordinary skill in the art at and before the priority date for the
626 Patent (POSITA) would have a Bachelors Degree in computer science,
computer engineering, electrical engineering, or a related subject, and at least two
years of experience working with content distribution systems, or the equivalent.
(Almeroth 57 (EX1005)).
C. Prosecution History
The 626 Patent issued from U.S. Patent Appl. No. 13/653,894 (894
Application), which was filed October 17, 2012. There are multiple continuations
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and continuations-in-part in the family of the 626 Patent, ultimately stretching to
U.S. Provisional Application No. 60/155,015 (015 Provisional). The family tree
of the 626 Patent is depicted below.
The prosecution history of the 626 Patent includes multiple Office Actions,
but the independent claim which ultimately issued as claim 1 of the 626 Patent
was not added by the applicant until January 10, 2015 as new claim 41. (EX1002,
1180). The examiner did not reject that newly-added claim 41, instead remarking
that the claim was in condition for allowance. (Id., 1201). In turn, the applicant
added dependent claims 43-57, allegedly to further recite the claimed invention.
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(Id., 1224).
The examiner then issued a Notice of Allowance for claims 41-57 (claims 1-
40 were cancelled). In the Reasons for Allowance, the examiner noted that the
prior art of record did not disclose a consumer device with a processor for
inserting the secondary content as claimed. (Id., 1234-1235).
However, each of Arazi, Rosser, Eldering 039, and Eldering 277, teach a
consumer device with a processor for inserting the secondary content. As
demonstrated below, this prior art renders obvious the other limitations of claims
1-17 as well.
D. Priority Date
For this proceeding, the priority date of the 626 Patent can be assumed as
March 21, 2000 and not September 21, 1999 (the earliest date in the priority
chain). The 626 Patent is not entitled to the September 21, 1999 priority date of
the 015 Provisional because the 015 Provisional does not provide written
description support for the claims of the 626 Patent.
The sole independent claim of the 626 Patent requires video content sent to
a consumer device, and for the consumer device to fill a vacancy with secondary
content. As discussed above, these limitations were relied upon by the examiner to
allow the claims. But the 015 Provisional does not provide written description
support for these limitations.
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First, the 015 Provisional does not disclose video content. (Almeroth 49
(EX1005)). Second, in the 015 Provisional, snap-in insertion is only disclosed
as being performed by a server devicethe consumer device is only disclosed as
receiving content with the snap-ins already included. (EX1004, 15; Almeroth
50-52 (EX1005)).
As such, the sole independent claim of the 626 Patent is not entitled to the
filing date of the 015 Provisional for two, independent reasons. The next date in
the priority chainMarch 21, 2000is later than all the prior art identified in this
Petition. Thus, for these proceedings only, Petitioner assumes that the claims of
the 626 Patent have a priority date of March 21, 2000.
V. CLAIM CONSTRUCTION
Here, the claim language is given its broadest reasonable construction in
light of the specification of the patent in which it appears. 37 C.F.R. 42.100(b);
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016). Terms not
specifically construed below have their plain and ordinary meaning under the
broadest reasonable interpretation. See id.
A. vacancy
The 626 Patent provides an explicit definition for the term vacancy: a
designated region within digital content which is reserved to be filled by other
(secondary) digital content. (EX1001, 3:28-30). This is what a POSITA would
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have understood to be the broadest reasonable interpretation. (Almeroth 62
(EX1005)).
B. attribute
The 626 Patent does not provide an explicit definition for this term.
However, the 626 Patent describes that an attribute may be used to determine
how and when a vacancy will be filled by a unit of content, or how and when a unit
of content can be used. (EX1001, 3:6-8). An example of an attribute is duration
(i.e., the length of time of the vacancy). (Id., 8:27-57, claim 9, 6:34-7:31).
Accordingly, a POSITA would have understood the broadest reasonable
interpretation of the term attribute to be data which may be used to determine
how and when a vacancy will be filled by a unit of content, or how and when a unit
of content can be used. (Almeroth 64-65 (EX1005)).
C. dynamic attribute
The 626 Patent defines dynamic attributes as attributes that can change
or be derived at any time, or attributes that are evaluated just-in-time as the
vacancy is offered. (EX1001, 6:45-48). Accordingly, a POSITA would have
understood the broadest reasonable interpretation of the term dynamic attribute
to be an attribute that can change or be derived at any time, or that is evaluated
just-in-time as the vacancy is offered. (Almeroth 67 (EX1005)).
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VI. CLAIMS 1-17 ARE UNPATENTABLE2
A. Challenge 1: Claims 1-6, 8-12, and 14-17 are obvious under 35

U.S.C. 103 in view of Arazi and Rosser
1. Overview of Arazi
Arazi describes a system in which a customized augmented video program
is created by inserting selected portions of [] Auxiliary Data into a selected
encoded video program. (EX1006, Abstract). In particular, Arazis system
describes combining a primary video data stream with an auxiliary data stream,
which may be used for inserting narrowcast (targeted) advertising into a primary
video program. (EX1006, 19:27-29). At a receiver, Arazi describes a video
augmentation unit [that] inserts the selected auxiliary data into the primary
program stream to create an augmented primary program which is supplied for
decoding and viewing. (EX1006, 10:23-26). Both the primary program stream
and auxiliary data may be video stream components. (EX1006, 8:10-13, 10:26-
28). Arazi is not of record in the 626 Patent.
2. Overview of Rosser
Rosser is directed to a set-top box that inserts targeted electronic indicia into
2
Unless otherwise specified, all bold italics emphasis below has been added. Text
in italics is used to signify claim language, while reference names are also
italicized.
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broadcast video. (EX1007, Abstract). In particular, Rosser teaches a set-top
device having a processor and storage, which stores an alternate video feed having
advertisements, and which performs insertion of advertisements into a video signal
at an appropriate time, based on data encoded in the video signal. (EX1007, 10:24-
25, 14:27-32, 17:32-18:1).
Although Rosser was cited during the prosecution of a parent case of the
626 Patent, it was never discussed.3 See Limelight Networks, Inc. v. Mass. Inst. Of
Tech., IPR2017-00249, Paper 9, at 7 (PTAB May 18, 2017) (declining to deny
institution based on 325(d) where reference was never substantively discussed by
examiner). Here, Rosser is a secondary reference that is being combined with
Arazi, which was not cited during prosecution. Thus, not only was Rosser never
discussed, but neither was the proposed combination of Arazi and Rosser.
Additionally, Petitioners expert declaration, which provides evidence as to how a
POSITA would have understood the teachings of Rosser, has not been considered
by the Office.
3
949 PH at 7-8 (EX1003). The applicant cited Rosser, along with 22 other
references, in the parent case of the 626 Patent. For all 23 references, the
applicant identically alleged that the prior art did not teach limitations of the then-
pending claims. No other comments were made about Rosser during prosecution.
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3. Reasons to Combine Arazi and Rosser
A POSITA would have been motivated to combine Arazi and Rosser for
several reasons. First, Arazi and Rosser are analogous prior art and in the same
field of endeavor. Both Arazi and Rosser discuss targeted advertising systems and
methods, and in particular, implementations in which advertising is inserted into a
program stream which allows advertisers to target specific receivers or viewers.
(Arazi, 19:27-29 (EX1006); Rosser, Abstract (EX1007); Almeroth, 82 (EX1005)).
Second, Rosser provides an express motivation to use its teachings in the
system of Arazi. Specifically, Rosser teaches that its system can bring[] the
power of direct marketing to videoin a way that avoids the need for centralized
data bases, with their privacy and out-of-date concerns. (EX1007, 4:1-7). Arazi
teaches that targeting certain advertisements at groups of households is desirable,
describing an example in which all car advertisements are sent to appropriately
programmed receivers. (EX1006, 21:13-15). Rossers set-top box helps to
identify these groups of households, because it can monitor the usage and viewing
habits of the television set. (EX1007, Abstract). Thus, a POSITA would have
been motivated to incorporate the teachings of Rossers set top box into the
receiving system of Arazi (e.g., at FIG. 4), as doing so would have achieved a
system with a targeting mechanism that does not require a centralized database
of all potential clients. (Almeroth, 83-84 (EX1005)). Further, a POSITA would
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have been motivated to incorporate the teachings of Rosser as it describes that its
system effectively targets viewers profile factors without making them publicly
available in a way that ensures profile factors are close to 100% current.
(EX1007, 4:4-7, 31-35; Almeroth, 84 (EX1005)).
In addition, while Arazi teaches narrowcasting to a group, a POSITA would
have understood that the system of Rosser explicitly makes it possible to narrow-
cast video insertions to a single household, which would be recognized as an
advantage. This would provide a POSITA with an additional express motivation to
use Rossers set-top box in Arazis system: to narrow-cast advertisements
household-by-household. (Almeroth, 85 (EX1005)).
Finally, combining the teachings of Arazi and Rosser would produce
predictable, operable results. Specifically, combining the functionality of Arazis
receiver and Rossers set-top box would have been no more than the combination
of known elements according to known methods (e.g., incorporation of
hardware/software functionality of two computing devices into one) to achieve the
targeting mechanism benefits described by Rosser. The operation of Arazi would
essentially be unchanged, except for implementing Rossers set-top box.
(Almeroth, 86 (EX1005)). And Rossers set-top box teachings incorporated into
Arazi would operate in a similar manner as described in Rosser. (Almeroth, 86
(EX1005)).
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4. Analysis
Claim 1
[1.0] A system for providing secondary content for inclusion in video content, the
system comprising:
Arazi teaches an apparatus forcombining a selected primary program
with selected auxiliary data to create a customized augmented program for that
particular receiver, which discloses this limitation. (EX1006, 10:6-12, see also
15:1-10; Almeroth, 87-89 (EX1005)).
[1.1.1] a consumer device comprising;

The combination of Arazi and Rosser teaches this claim limitation. Arazis
figure 4 shows a system for receiving a Video Distribution Data Stream and
creat[ing] a customized Augmented Video Program for display. (EX1006,
19:22-27). Reproduced below, figure 4 of Arazi shows a consumer device that
includes a display device 480. (Almeroth, 91 (EX1005)). Arazi does not describe
any further conveyance of the video distribution signal beyond the display 480,
thus making the system depicted in figure 4 a terminal device. (See FIG. 4,
below). A terminal device, especially one that displays advertisements, would
have been considered a consumer device to a POSITA. (Almeroth, 91 (EX1005)).
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consumer device:
Arazi at FIG. 4 (EX1006), annotated

Moreover, Rosser teaches broadcasting video to the end viewer where the
set-top box decodes the broadcast video and performs insertion of the indicia on
the end users television. (EX1007, Abstract; see also 10:24-25, 14:13-14, FIG. 1
(below)).
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consumer devices
Rosser, FIG. 1 (EX1007), annotated

Thus, Rossers set-top box is a consumer device, and, in combination with
Arazi, includes all of the functionality recited in the claims, as discussed below.
(Almeroth, 92 (EX1005)). Reasons to combine Arazi and Rosser in this manner
are provided above in VI.A.3. (Almeroth, 93-94 (EX1005)).
[1.1.2] at least one network connector for receiving secondary content selected
based on targeted criteria and for receiving (a) video content having at least one
vacancy, and
Arazi teaches receiving: (1) secondary content selected based on targeted
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criteria; and (2) video content having at least one vacancy by disclosing receiving
a Video Distribution Data Stream which includes a Primary Encoded Video
Program and an Auxiliary Data Stream. (EX1006, 19:22-27; Almeroth, 96
(EX1005)).
Arazis Auxiliary Data Stream corresponds to secondary content selected
based on targeted criteria because Arazi describes that selected portions of the
Auxiliary Data Stream are inserted, and further states that its system may be
used for inserting narrowcast (targeted) advertising into the Video Program.
(EX1006, 19:22-20:1; Almeroth, 97 (EX1005)). Further, Arazi teaches targeted
criteria, as it discloses, for example, sending advertisements to [a] receiver that
has been programmed to receive all advertisements pertaining to new
automobiles. (EX1006, 11:9-16; Almeroth, 97 (EX1005)).
Arazis Primary Encoded Video Program corresponds to video content
having at least one vacancy, because the Encoded Video Program has, in one
implementation, Presentation Delays of sufficient duration (vacancies) into
which Local Auxiliary Data are automatically inserted. (EX1006, 24:9-14;
Almeroth 98 (EX1005)). Arazi teaches that special signals could be inserted into
the Encoded Video Program prior to distribution in order to mark the appropriate
points for Local Auxiliary Data insertion. (EX1006, 24:29-30:1; Almeroth, 98
(EX1005)). Arazis points for Local Auxiliary Data insertion and Presentation
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Delays correspond to a vacancy (as construed, see supra V.A) because these
points indicate a designated region within digital content (i.e., the Primary
Encoded Video Program) which is reserved to be filled by other (secondary)
digital content (i.e., the Auxiliary Data). (Almeroth, 98 (EX1005)).
Arazi renders obvious a network connector because Arazi discloses
auxiliary data being selectively distributed to receivers connected to the
same distribution network. (EX1006, 2:61-65). A POSITA would have
understood that Arazis disclosure of a receiver connected to a network teaches the
use of a network connector. (Almeroth, 99 (EX1005)). Further, using a network
connector to connect a receiver to a network was a well-understood, common
option known to a POSITA at the time of the 626 Patent, and in particular, using a
network connector for receiving MPEG-encoded data (EX1006, 20:11-12) would
have been obvious to a POSITA. (Almeroth, 99 (EX1005)). KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 127 S.Ct. 1727, 1741, 167 L.Ed.2d 705 (2007).
In addition, Rosser explicitly discloses a network connector. Rosser teaches
an input data stream 70 which can be a number of communication channels
such as a telephone/internet connection 130 received by a modem 138 or a
cable video connection 132 received by a cable modem 140. (EX1007, 14:16-
22; Almeroth 100 (EX1005)). A POSITA would have understood the modem
138 or cable modem 140 to correspond to a network connector. (Almeroth,
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100 (EX1005)). Rossers input data stream 70 may include MPEG2 or other
compressed video having a variety of differentdata streams, much like
Arazis Video Distribution Data Stream. (Rosser, 10:24-29 (EX1007); Almeroth
100 (EX1005)).
In addition to the reasons to combine Rosser and Arazi discussed supra
VI.A.3, a POSITA would have been motivated to combine Rossers modem or
cable modem with Arazis receiver, because Rosser teaches the physical hardware
that a POSITA would have expected to find in Arazi to connect to its distribution
network to receive auxiliary data and receive MPEG data. Accordingly,
incorporating Rossers connectors into Arazis receiving system would have been
no more than the combination of known elements according to known methods.
(Almeroth, 100 (EX1005)).
[1.1.3] (b) information relating to the video content, wherein the information
relating to the video content includes one or more attributes associated with the
at least one vacancy;
Arazi and Rosser both, individually, teach this claim element. Arazi teaches
that the received Encoded Video Program includes special signalsto mark the
appropriate points for Local Auxiliary Data insertion. (EX1006, 24:29-30:1).
The special signals correspond to information relating to the video content and an
attribute[] associated with the at least one vacancy as recited and construed, as
they are data which may be used to determine how and when a vacancy will be
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filled by a unit of content (as construed, see supra V.B) (Almeroth, 103-104
(EX1005)).
Rosser discloses viewer usage profile keys 120 which are inserted into
the vertical blanking interval of [] video. (EX1007, 9:6-14; Almeroth 105
(EX1005)). Those viewer usage profile keys 120 are used by the set-top device:
by comparing the viewer usage profile keys 120 with the local viewer usage
profile 50, different insertions 58 and 60 may be made on different end users video
viewing devices 56. (EX1007, 10:18-20; Almeroth, 105 (EX1005)). Thus, the
viewer usage profile keys 120 correspond to one or more attribute[s] associated
with the at least one vacancy as recited. (Almeroth, 105 (EX1005); see supra
VI.A.3 (motivation to combine)).
Therefore, both Arazi and Rosser teach this limitation. (Almeroth, 103-
106 (EX1005)).
[1.1.4] at least one storage device for storing the secondary content and
information relating to the secondary content,
Arazi describes that receiving system 400 has Local Auxiliary Data Storage,
which corresponds to at least one storage device. (EX1006, 22:24-29). The Local
Auxiliary Data Storage stores Auxiliary Data (which corresponds to secondary
content). (Id.; Almeroth, 108 (EX1005)). Arazi further describes that Auxiliary
Data segments have a duration (Id., 24:21-24), which corresponds to information
relating to the secondary content. The duration is used to determine whether the
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segment can be selected for insertion into a program stream. (EX1006, 24:21-27;
Almeroth, 109 (EX1005)). Hence, it would have been obvious to a POSITA for
the system of Arazi to store the duration of the Auxiliary Data, since it is used each
time the Auxiliary Data is used. (Almeroth, 109 (EX1005)). The alternative
would have been to determine the duration dynamically, and a POSITA would
have understood that such a determination would have a computational cost and
introduce delay. (Almeroth, 109 (EX1005)). In any event, storing the duration
was a common and well-understood option known to a POSITA at the time; as
such, storing the duration would have been obvious. KSR, 127 S.Ct. at 1741.
In addition, Rosser explicitly discloses storing information relating to the
secondary content. In Rosser, contents of an alternative feed may be stored in
video and audio storage unit 152, and the alternate video feed includes different
advertisements with a requested viewer usage profile or range of profiles suitably
associated, attached to or encoded in, each particular advertising sequence.
(EX1007, 17:25-32). Rossers advertisements correspond to secondary content,
and the requested viewer usage profile or range or profiles corresponds to
information relating to the secondary content. (Almeroth, 110 (EX1005)). A
POSITA would have understood that storage of the requested viewer usage
profile in Rosser is a key component of its targeting mechanism which does
not require a centralized database of all potential clients, and a POSITA would
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have understood that incorporating this teaching into Arazi would make it possible
to achieve Rossers narrow-casting abilities described above in VI.A.3.
[1.1.5] wherein the information relating to the secondary content includes one or
more attributes; and
As discussed supra [1.1.4], Arazis disclosure of a duration of Auxiliary
Data corresponds to information relating to the secondary content. This duration
corresponds to one or more attributes because it is used to determine how and
when to use secondary content (i.e., Arazis Auxiliary Data). See supra V.B
(attribute construction). In particular, Arazi teaches that [c]omparator 626
compares the Presentation Delay with the duration of the next Local Auxiliary
Data segment. (EX1006, 24:21-24). In addition, claim 9 enumerates duration as
an attribute. (EX1001, claim 9). Hence, Arazi teaches this limitation. (Almeroth,
113 (EX1005)).
Rosser also discloses this limitation by disclosing using a usage profile to
determine whether a particular advertisement will be shown (e.g., if the usage
profile includes information that matches with the profile of the local viewer).
(EX1007, 18:1-6). Thus, the usage profile corresponds to an attribute because it is
used to determine whether to use the advertisement. (See supra V.B; Almeroth,
114 (EX1005); see also supra [1.1.4] and VI.A.3 (motivations to combine)).
[1.1.6] at least one processor for inserting the secondary content to fill the at
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least one vacancy of the video content,
Arazi teaches this limitation. Arazi describes that Auxiliary Data []
comprised of encoded video and audio data is used for delayed insertion into the
Encoded Video Program. (EX1006, 19:30-20:1). Arazi further describes filling
the vacancy, as it states the receiverbuffer[s] the selected auxiliary datafor
insertion into the selected primary program. (Id., 10:12-15). As shown in figure
6 of Arazi, the Augmentation MUX 630 inserts Auxiliary Data into the Encoded
Video Program to create an Augmented Video Program. (Id., FIG. 6; Almeroth,
117 (EX1005)).
A POSITA would have understood that the recited processor is an obvious
alternative implementation of Arazis Augmentation MUX, as the Augmentation
MUX performs the same functions as the recited processor. Specifically, the
Augmentation MUX takes multiple inputs (here, the Encoded Video Program and
Auxiliary Data) and produces an output, the Augmented Video Program.
(Almeroth, 118 (EX1005)). Using a processor instead of Arazis Augmentation
MUX would have been an obvious design choice to a POSITA at the time of the
626 Patent, as processors were well-known and well-understood to be
programmable to perform functions like that of the Augmentation MUX.
(Almeroth, 118 (EX1005)). Furthermore, processors are very predictable in their
operation, and were a well-known and well-used device for multiplexing. (Id.)
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Thus, Arazis Augmentation MUX teaches a processor for inserting the secondary
content to fill the vacancy. (Id.)
Further, Rosser explicitly teaches a processor which performs the claimed
insertion. Rosser describes a central controller 146 (a microprocessor) that
decide[s] which insertion to use. (EX1007, 14:22-25, 19:23-25). In addition to
the reasons to combine Rosser and Arazi discussed supra VI.A.3, a POSITA
would have found it obvious to combine Rossers teaching of a processor to insert
content, because Rosser teaches an alternative implementation of Arazis
Augmentation MUX 630 that a POSITA would have found obvious to utilize.
Incorporating Rossers processor into Arazis receiving system would have been
no more than the combination of known elements according to known methods.
[1.1.7] wherein the insertion is based on matching the one or more attributes
associated with the at least one vacancy with the one or more attributes of the
information relating to the secondary content; and
Arazi teaches this limitation. In the insertion process, a Comparator 626
compares the Presentation Delay with the duration of the next Local Auxiliary
Data segmentIf the Presentation Delay exceeds the duration of the Local
Auxiliary Data segment, then the Local Auxiliary Data segment is selected by the
Augmentation MUX 630. (EX1006, 24:21-27). As detailed above (supra
[1.1.3]), the special signals in Arazi also mark the appropriate points for Local
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Auxiliary Data insertion. Arazi teaches that the special signals which mark the
appropriate points for Local Auxiliary Data insertion are a way to eliminate the
need for the system to compare Presentation Delays and Auxiliary Data
Durations, which is the process by which Arazi determines where a Presentation
Delay (a vacancy) of sufficient duration is encountered. (Id., 25:2-11; Almeroth,
122 (EX1005)). Thus, as Arazi teaches that the special signals are a replacement
for the calculation of the delay, a POSITA would have understood those special as
including the Presentation Delay value, representative of the length of the vacancy.
(Almeroth, 122 (EX1005)). Accordingly, in Arazi, the insertion is based on
matching the information in the special signals (the Presentation Delay, an
attribute[] associated with the at least one vacancy) with the length of the
Auxiliary Data segment (an attribute[] of the information relating to the secondary
content). (Id.)
[1.2] at least one server interface for transferring the video content and the
secondary content to the consumer device;
Arazi teaches this limitation. In figure 1, Arazi depicts the systemto
produce adata stream for efficient distribution transferring the Distribution
Data Stream. (EX1006, 15:1-4). Thus, Arazi teaches a server4 which transfers
information, as the system which produces the data stream provides data.
4
The 626 Patent (EX1001 at 2:21-24) describes a server as a provider of data.
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(Almeroth, 125 (EX1005)). Additionally, the Distribution Data Stream
includes the primary encoded video program (video content) and the auxiliary data
stream (secondary content). (EX1006, 15:1-10; Almeroth 125 (EX1005)).
Arazi, FIG. 1 (EX1006)

Arazi describes the system of figure 1 as transferring the content to the
receiving system of figure 4. (EX1006, 19:22-27). Thus, a POSITA would have
understood that such transferring would require, or at least render obvious, an
interface for transferring the video and secondary content to the consumer device
taught by figure 4. (Id., FIG. 1, 15:1-4; Almeroth, 125 (EX1005)).
Further, Rosser teaches a server interface in its central studio site, as it
describes that the signal is distributed [from the central studio site] via a suitable
distribution means 40 and 42 which may bea cable network[or] computer
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network, and Rosser describes that the set-top box receives data using an internet
connection. (EX1007, 9:27-31, 14:16-19). A POSITA would have understood
that, in a distribution system where content is transmitted to recipients (clients)
over an internet connection (as in Rosser), the sender of the content is a server as
recited and that such a server has a corresponding connection to the Internet, or a
server interface as recited. (Almeroth, 126 (EX1005)).
A POSITA would have found it obvious to incorporate Rossers central
studio site teachings into the system of Arazi. Arazi teaches a device for
distribution of MPEG content, and a POSITA would have understood that there are
a finite number of predictable options to implement such a device, including
computing devices, and a POSITA would have understood that a server computing
device (as taught by Rosser) would be the most likely implementation of a
computing device to distribute content, and would have found it obvious to
incorporate these teachings of Rosser in the Arazi system. (Almeroth, 127
(EX1005)).
[1.3] wherein the consumer device outputs the secondary content within the at
least one vacancy of the video content.
As discussed above, the combination of Arazi and Rosser teaches a
consumer device. See supra [1.1]. Arazi explicitly discloses that the consumer
device outputs the secondary content within the at least one vacancy of the video
content, as Arazi discloses combining a primary video program (video content)
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with auxiliary data (secondary content) into an insertion interval of the primary
video program (at least one vacancy of the video content), and outputting the
combination to a display. Arazi states that the Primary Encoded Video Program
ispassed to a Video Augmentation Unit 600 for combination with the Auxiliary
Datato produce an Augmented Video Program which is in turn passed to a
Decoder 470 for decoding and then to a Display 480 for viewing. (EX1006,
23:14-24; Almeroth, 130 (EX1005)). As depicted in FIG. 4, the Video
Augmentation Unit 600 and Decoder 470 are part of Arazis system for receiving
a Video Distribution Data Stream and creat[ing] a customized Augmented Video
Program for display which teaches a consumer device. (EX1006, 19:22-27)
Arazi further describes outputting the content within the at least one vacancy, as
it discloses monitoring the encoded video program for [an] insertion interval
(i.e., a vacancy) and insertinglocal auxiliary data into the insertion interval.
(EX1006, 29:11-17).
Accordingly, claim 1 is unpatentable over the combination of Arazi and
Rosser.
Claim 2
[2.1] The system of claim 1, further comprising at least one service provider
server comprising
As discussed above, the 626 Patent defines a server as a provider of data.
(EX1001, 2:21-24). Accordingly, a POSITA would have considered Arazis
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distribution system to correspond to a service provider server, as Arazi describes
the distribution of content from the distribution system over a network. (EX1006,
FIG. 1, 15:1-4; Almeroth, 133 (EX1005)). Further, Rosser explicitly teaches a
service provider server, describing a central studio site 34 which distributes a
signal via suitable distribution meanswhich may bea cable network [or]
computer network. (EX1007, 9:27-31; Almeroth, 134 (EX1005)). A POSITA
would have understood a central studio site to be a service provider. (Almeroth,
134 (EX1005)). The 626 Patent depicts the service provider as transmitting
snap-in content (e.g., advertisements), just as Rossers central studio site
transmits advertising. (626 Patent, 8:52-57 (EX1001); Rosser, 9:22-27
(EX1007); see supra VI.A.B (motivations to combine); Almeroth, 134
(EX1005)).
[2.2] at least one processor for selecting the secondary content to transmit to the
consumer device based on targeted criteria; and
As discussed above, Arazi teaches a distribution system which performs the
same functions as Rossers central studio site 34 that teaches a service provider
server discussed above. (Almeroth, 137 (EX1005)). Arazi teaches the specific
functionality recited in limitation [2.2]. In particular, Arazi teaches selectively
distributing content to a pre-defined subset of receivers based on categories of
advertisements that receivers choose to subscribe to. (EX1006, 5:21-6:11).
Arazi states that auxiliary datamay be selectively directed to certain
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individual receivers, which corresponds to selecting the secondary content to
transmit to the consumer device. (EX1006, 6:1-5; Almeroth, 137 (EX1005)).
Arazi further teaches multiplexing logic for inserting at least one segment of the
auxiliary data into the primary video data stream, which a POSITA would have
understood as teaching a processor as an alternative implementation. (EX1006,
32:1-4; Almeroth, 138 (EX1005)). That multiplexing logic is at Arazis
distribution end, in its system for forming adata stream for distribution. (Id.,
31:7-9).
Arazi further teaches selection based on targeted criteria, as it discloses at
the distribution end, all new car advertisements could be classified togetherA
receiver that has been programmedto receive all advertisements pertaining to
new automobiles would monitor the Distribution Data Stream.appropriate
packetscorresponding to the Auxiliary Data comprising the advertisement would
then becopied to local storage. (EX1006, 21:13-22:2). A POSITA would have
understood that, while Arazi describes the receiver selectively choosing to receive
advertisements, an obvious alternative implementation of Arazis system would be
for the distribution system to selectively transmit advertisements, which
corresponds to the processor of the service provider system performing the
selection of secondary content to transmit to the consumer device based on
targeted criteria as recited. (Almeroth, 139 (EX1005)).
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Moreover, Rosser teaches selection based on targeted criteria, namely, that
the central studio site 34 would also be responsible for supplying conventional
video advertising which may also be targeted and further, that its system and
method allow advertisers to target specific adsto specific viewing profiles.
(EX1007, 9:25-27, Abstract; Almeroth, 140 (EX1005)). A POSITA would have
found it obvious to incorporate these teachings of Rosser to achieve a system in
which advertisements can be targeted to a single household, as summarized above
in VI.A.3.
Thus, Arazis multiplexing logic used to selectively direct auxiliary data to
certain individual receivers, based on targeted criteria, combined with Rossers
targeting ads to specific profiles teaches this limitation. (Almeroth, 141
(EX1005)).
[2.3] the at least one server interface, wherein the at least one server interface is
further used for transmitting to the consumer device (a) the secondary content
based on the targeted criteria, and (b) the video content.
As detailed above with reference to limitation [1.2], Arazi teaches a server
interface, as its distribution system is a provider of data. See supra [1.2]. Arazi
also teaches distributing video content and the secondary content based on the
targeted criteria in its Distribution Data Stream. (EX1006, FIG. 1).
Further, Rosser explicitly teaches its central studio site 34 (having a server
interface, see supra [1.2]) as distributing the signal via a cable network or
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computer network, thus disclosing or at least rendering obvious at least one server
interface is further used for transmitting to the consumer device. (EX1007, 9:27-
31). Rosser further teaches that the central studio site 34 would also be
responsible for supplying conventional video advertising which may also be
targeted (corresponding to the secondary content based on the targeted criteria)
and a live television broadcast (corresponding to the video content). (EX1007,
9:25-27; Almeroth, 144 (EX1005)). Accordingly, Rossers central studio site
coupled to its cable or computer network teaches this limitation. (Id., 145
(EX1005)). A POSITA would have found it obvious to combine these teachings of
Rosser into Arazi to obtain Rossers benefits described above in VI.A.3.
Thus, claim 2 is unpatentable over the combination of Arazi and Rosser.
Claim 3
[3.1] The system of claim 2, wherein the targeted criteria comprises consumer
profile and contextual content.
Rosser teaches that required viewer usage profiles are sent along with the
advertisers insertion such that the device would see which insertion was linked
to the local viewer usage profile, and insert appropriately. (EX1007, 5:26-30;
Almeroth, 147 (EX1005)). The 626 Patent does not define contextual content,
but a POSITA would have understood, based on the claim language and
specification, that contextual content targets at least something other than
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consumer profile content (e.g., something other than demographic information),
and a POSITA would have understood that contextual content would include, for
example, information about, or characterizing, the content being viewed by a
consumer. (See EX1001, 7:67-8:3; Almeroth, 148 (EX1005)). Thus, a POSITA
would have understood Rossers description of targeting viewers with a higher
intensity of particular program categories to correspond to targeted criteria
compris[ing]contextual content as recited. (EX1007, 18:23-26; Almeroth, 148
(EX1005)). Thus, Rossers description of targeting required viewer usage profiles
and types of content teaches this limitation. (Almeroth, 149 (EX1005)). A
POSITA would have found it obvious to combine these teachings of Rosser into
Arazi for at least the reasons set forth in VI.A.3. (Almeroth, 148 (EX1005)).
Claim 4
[4.1] The system of claim 2, wherein the at least one processor of the at least one
service provider server is further used for formatting the digital video stream to
include the at least one vacancy.
Like the analysis above in [2.2], the analysis here applies the structure of
Rossers central studio site with the functionality of Arazis distribution system.
Arazi describes that special signals could be inserted into the Encoded Video
Programto mark the appropriate points for Local Auxiliary Data insertion.
(EX1006, 24:29-30:1). Arazi describes inserting the specials signals prior to
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distribution, that is, a POSITA would have understood that the distribution system
(equivalent to Rossers central studio site) inserts the special signals, and therefore,
in combination with Rosser, Arazi teaches a processor of the service provider
server formatting the digital video stream. (Almeroth, 151 (EX1005)).
Therefore, Arazi and Rosser teach this limitation.
Claim 5
[5.1] The system of claim 1, wherein the consumer device is a computer, set top
box, or a mobile device.
Rosser depicts an end-user set-top 44 in figure 2 and figure 4. (EX1007,
10:24-25). As discussed above in VI.A.3, a POSITA would have found it
obvious to combine the functionality of Arazis receiver and Rossers set-top box,
as doing so would have been no more than the combination of known elements
according to known methods. Thus, Rossers set-top box teaches this limitation.
Claim 6
[6.1] The system of claim 1, wherein the at least one network connector is
configured to receive video content and secondary content from a packet
network.
Arazi teaches that receivers are connected to a distribution network, and
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describes the receivers receiving video programs (video content) and auxiliary data
(secondary content), but may not explicitly disclose a packet network. (EX1006,
5:21-26; Almeroth, 158 (EX1005)). However, Rosser explicitly teaches a packet
network, as it teaches a network connector (see [1.1.2]) and further, that the input
data stream may be one of a number of communication channels, includinga
telephone/internet connection 130 received by a modem 138. (EX1007, 14:16-
18). A POSITA would have understood that an internet connection receives
information from the Internet,5 a packet network. (Almeroth, 159 (EX1005)).
The input data stream includes the video content and secondary content, as
Rosser describes that the set-top has means for receiving a video signal (i.e., the
video content) said video signal encoded with insertable video indicia (i.e.,
secondary content). (EX1007, 10:14-22; Almeroth, 159 (EX1005)). As set forth
in the analysis of [1.1.2], a POSITA would have been motivated to combine
Rossers modem or cable modem with Arazis receiver, because Rosser teaches the
physical hardware that a POSITA would expect to find in Arazi to connect to its
distribution network to receive auxiliary data and receive MPEG data. (Almeroth,
159 (EX1005)). Accordingly, Rosser teaches this limitation.
5
The 626 Patent does not explicitly disclose packets or a packet network, but
figure 3 of the 626 Patent depicts the Internet coupling the Consumer Device 310
to other devices. (EX1001, FIG. 3).
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Claims 8-9
[8.1] The system of claim 1, wherein the one or more attributes associated with
the at least one vacancy are dynamic attributes.
[9.1] The system of claim 8, wherein the dynamic attributes indicate a time
duration of the at least one vacancy or a location of the at least one vacancy
within the video content.
Arazis special signalsinserted into the Encoded Video Program are
monitored by the Insertion Detector 620, and each time a special signal is
detected, the Insertion Detector signal[s] the Augmentation MUX 630.
(EX1006, 25:2-11). That is, a POSITA would have understood that, as the
Encoded Video Program progresses in time, at a certain point in time where a
special signal has been inserted (the location of the at least one vacancy), the
Insertion Detector 620 detects that special signal to recognize the vacancy and
insert Auxiliary Data. (Almeroth, 163-164, 166-167 (EX1005)). Thus, Arazis
special signals are evaluated just-in-time as the vacancy is offered consistent
with the dynamic attribute construction (see supra V.C).
Thus, claims 8 and 9 are unpatentable over the combination of Arazi and
Rosser.
Claim 10
[10.1] The system of claim 1, where in the secondary content is one or more
video advertisements.
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Arazi discloses this limitation by stating auxiliary data may beadditional
encoded video data and describing videostreams comprising the
advertisement. (EX1006, 5:27-28, 11:16-20; Almeroth, 169 (EX1005)). Rosser
also teaches this limitation by disclosing showing livevideo advertisements.
(EX1007, 7:19-22).
Claim 11
[11.1] The system of claim 10, wherein the insertion is further based on targeted
criteria.
Arazi teaches this limitation by describing inserting narrowcast (targeted)
advertising and that advertisements can be selectively directed topre-defined
subsets of the entire receiver population. (EX1006, 19:27-29, 6:2-5). In an
example, Arazi describes targeting new car advertisements to receivers which have
been programmed to receive such advertisements, and further describes inserting
such advertisements as summarized above with respect to claim 1. (EX1006, 11:2-
16). A POSITA would have understood that receivers programmed to receive new
car advertisements corresponds to a targeted criteria as it identifies a subset of
receivers interested in the type of advertisement. (Almeroth, 172 (EX1005)).
Moreover, Rosser explicitly teaches this limitation, as its system provide[s]
a key for advertisers wishing to target families or individuals with particular
profile factors, that is, Rossers profile factors correspond to targeted criteria.
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(EX1007, 17:15-16). Rosser further teaches that insertion is based on the targeted
criteria. (EX1007, 17:32-18:6). A POSITA would have found it obvious to
incorporate these teachings of Rosser to achieve a system in which advertisements
can be targeted to a single household, as summarized above in VI.A.3.
Accordingly, Arazi and Rossers targeted advertising and targeting of profile
factors teach this limitation.
Claim 12
[12.1] The system of claim 11, wherein the targeted criteria comprises consumer
profile and contextual content.
Claim 12 is unpatentable over the combination of Arazi and Rosser. See
supra limitation [3.1].
Claim 14
[14.1] The system of claim 1, wherein the one or more attributes associated with
the at least one vacancy are one or more attributes of the at least one vacancy.
Arazi teaches this limitation by disclosing special signals that mark the
points for insertion, which are attributes of the Encoded Video Programs vacancy
because they mark at least the beginning of the vacancy. (EX1006, 25:2-11;
Almeroth, 177 (EX1005)).
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Claim 15
[15.1] The system of claim 1, wherein the at least one processor of the consumer
device is further used for obtaining demographic information;
Rosser teaches this claim limitation. Rosser obtains demographic
information by inferring it from the usage profile, which is obtained by the
consumer device. Specifically, in Rosser, a viewer usage recorderlocated at the
viewer location (within the set-top 44) stores a continuously updated version of a
usage profile and is used to predict6profile factors such as age and income.
(EX1007, 4:31-36). A POSITA would have understood that these inferences are
accomplished by analyzing the updated usage profile; hence, the processor of the
consumer device is used for obtaining demographic information. (Almeroth, 180
(EX1005)). Thus, Rossers storage of a usage profile used to infer age and income
teaches this limitation. (Almeroth, 181 (EX1005)).
[15.2] using the demographic information for identifying the secondary content
for insertion into the at least one vacancy;
Rossers set-top device includes means for using said locally stored viewer
profile to determine which insertable video indicia or sequence to insert based
upon the required viewer profile encoded in or along with the video sequence
6
A POSITA would have understood Rossers disclosure of predict[ing] profile
factors to mean inferring the profile factors, as the inferred factors are used in
targeting advertisements. (Almeroth, 180 (EX1005)).
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(EX1007, 21:8-10). As summarized in VI.A.3, incorporating these teachings of
Rosser into Arazi would achieve Rossers benefits of narrowcasting to a single
household, and would have been obvious to a POSITA. Thus, Rossers means for
using the locally stored viewer profile teaches this limitation. (Almeroth, 183
(EX1005)).
[15.3] filling the at least one vacancy with the identified secondary content,
wherein the at least one vacancy is filled by inserting the secondary content in
place of the at least one vacancy in real time; and
Arazis insertion of auxiliary data into a video program teaches this
limitation. See supra [1.1.6]. (Almeroth, 186 (EX1005)). Further, Arazi
describes real time insertion: Auxiliary Datacan be storedfor real-time
presentation which might include insertion into the video program. (EX1006,
Abstract). Rosser also teaches this claim limitation by describing inserting said
indicia directly into said video signal for viewing. (EX1007, 21:11-16; see
supra VI.A.3 (motivations to combine Arazi and Rosser)).
[15.4] wherein filling the at least one vacancy forms a merged content stream.
Arazi depicts in figure 4, a merged content stream, as combining the
encoded video program with the auxiliary data results in an Augmented Video
Program. (EX1006, FIG. 4, 23:18-24; Almeroth, 189-190 (EX1005)). Thus,
Arazis Augmented Video Program teaches this limitation. (Almeroth, 191
(EX1005)).
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Claim 16
[16.1] The system of claim 15, wherein the demographic information comprises
information from a profile created for a consumer.
Rosser describes means for creating a viewer profile and that the viewer
profile includes information about the viewer such as age or family size.
(EX1007, 21:5-6, 21:23-25). Thus, Rossers viewer profile teaches this limitation.
See supra VI.A.3 (motivations to combine).
Claim 17
[17.1] The system of claim 15, wherein the demographic information includes at
least one of age and physical location.
Claim 17 is unpatentable over the combination of Arazi and Rosser for the
reasons discussed supra regarding limitation [15.1].
B. Challenge 2: Claim 7 is obvious under 35 U.S.C. 103 over Arazi,

Rosser, and Zigmond
1. Overview of Zigmond
Zigmond, like Arazi and Rosser, teaches selecting and inserting
advertisements into a video programming feed at the household level. (EX1008,
Abstract (EX1008)). In Zigmond, an advertisement insertion devicereceives a
plurality of advertisements and selects one of the advertisements for display to a
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viewer according to advertisement selection criteria. (Id.).
2. Reasons to Combine Arazi, Rosser, and Zigmond
The combination of Arazi, Rosser, and Zigmond would have been obvious
for several reasons. First, Arazi and Rosser teach systems for targeting
advertisements to customers by inserting advertisements into video (see supra
VI.A.1-2), and Zigmond likewise teaches systems for inserting advertisements or
other videointo video programming feeds including allowing advertisers to
target individual viewers. (EX1008, 4:7-15).
Second, Zigmond suggests the combination. Zigmond states that
[c]onventional systems for delivering advertisements to viewers fail to provide
accurate feedback mechanisms, and therefore, Zigmond provides desirable
teachings to monitor[] the response of the viewer to the selected advertisement
such that valuable viewer feedback [can] be compiled. (EX1008, 3:45-47, 4:53-
67). Incorporating Zigmonds teachings would extend the system to include an
automatic feedback loop which allows advertisers to communicate more
effectively to viewers. (Id., 4:61-67; Almeroth, 200-202 (EX1005)).
Finally, Zigmonds ad insertion device, which monitors actions of the
viewer, when combined with the set-top and receiver of the Arazi and Rosser
combination, would produce predictable, operable results. Specifically, a POSITA
would have expected the hardware and software used to implement Zigmonds ad
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insertion device to be compatible and readily combinable with the hardware and
software in Rosser and Arazi. (Almeroth, 203 (EX1005)). Accordingly,
combining the teachings of the references would have been no more than the
combination of known elements according to known methods, and would have
been obvious to a POSITA at the time of the 626 Patent. (Id.).
3. Analysis
Claim 7
[7.1] The system of claim 1, wherein at least one of the one or more attributes
associated with the at least one vacancy is based on information received from
the consumer device.
Zigmond discloses this limitation by describing changing advertisement
selection criteria, which include advertisement selection rules, based on viewer
response information collected from the viewer feedback. (EX1008, 4:60-67).
Zigmonds ad selection rules are attributes because they are used to match the
programming content information of electronic program database 81 with the
advertisement parameters associated with the advertisements. (EX1008, 11:42-
49; Almeroth, 205 (EX1005); see supra V.B). Zigmond further teaches that the
feedback is compiled by ad insertion device 60 which monitors actions of the
viewer before, during or after display of the selected advertisement. (EX1008,
9:21-25). The ad insertion devices are, or are part of, a consumer device. (Id.,
7:37-46; Almeroth, 206 (EX1005)). A POSITA would have found it obvious to
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incorporate the functionality of Zigmonds advertisement insertion device into the
set-top boxes taught by the Arazi/Rosser combination. (See supra VI.B.2)
Thus, claim 7 is unpatentable over the combination of Arazi, Rosser, and
Zigmond.
C. Challenge 3: Claim 13 is obvious under 35 U.S.C. 103 over

Arazi, Rosser, and Brown
1. Overview of Brown
Like Arazi and Rosser, Brown is directed a system in which portions of a
piece of content (in Brown, a document) can be replaced with a substitute portion
of content which is tailored to the users profile information. (EX1009, Abstract,
4:50-57). Brown further teaches displaying such content on a user set, such as a
computer or television set. (Id., 3:63-65).
2. Reasons to Combine Arazi, Rosser, and Brown
The combination of Arazi, Rosser, and Brown would have been obvious for
several reasons. First, all three references are analogous prior art and in the same
field of endeavor, as the references all pertain to insertion of substitute content into
an original content piece. In Arazi and Rosser, original content and substitute
content are video, while in Brown, content and substitute content are web
documents. (Almeroth, 212 (EX1005)). Browns system is analogous to
replacing original advertising or vacancies with targeted advertising, as in Arazi
and Rosser. (Id.).
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Second, Brown suggests the combination by describing advantages of its
invention: the replacement decision is made based on the information content of
the original document portion. (EX1009, 3:26-31). Brown teaches that one usage
of its invention is to swap out undesired advertisements not relevant to the
information which the user desires to view, and a POSITA would have
understood that targeted advertisements according to Arazi and Rosser would
represent information more relevant to the user that would have a higher likelihood
of being viewed. (Almeroth, 213 (EX1005)). Accordingly, a POSITA would
have found it obvious to incorporate the teachings of Brown to achieve at least a
system in which a replacement decision is made based on the information content
of the original content. (Id.).
Finally, combining the teachings of Brown with Arazi and Rosser would
produce predictable, operable results because it would have been no more than the
combination of known elements according to known methods, as Brown recites
familiar components and techniques such as computing devices (EX1009, 4:30-31)
and substitution of content (EX1009, 9:51-54). (Almeroth, 214 (EX1005)).
3. Analysis
Claim 13
server comprising the at least one server interface, wherein the at least one
server interface is further used for:
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As discussed above in limitation [2.1], Arazi and Rosser teach a service
provider server. Further, as discussed above in limitation [1.2], Arazis
distribution system renders obvious a server interface, and Rossers central studio
site explicitly teaches a server interface. Accordingly, Arazi and Rosser teach this
limitation. (Almeroth, 216 (EX1005)).
[13.2] receiving a digital video stream from a packet network;

Rosser describes that the central studio site 34 (having a server interface)
receives a program for viewing via appropriate means 30, which may be a
satellite uplink, or telephone company lines. (EX1007, 8:16-21, 9:19-22). A
POSITA would have understood that telephone company lines, at the time of the
626 Patent, were commonly used to connect a facility (such as Rossers central
studio site) to the Internet. (Almeroth, 219 (EX1005)). Thus, Rosser teaches, to a
POSITA, that content can be received from the Internet, a packet network. Arazi
explicitly teaches using a digital video stream (i.e., an MPEG video stream).
(EX1006, 7:13-26).
Moreover, Brown explicitly discloses that a service provider server may
receive content over a packet network, such as the Internet. (EX1009, 6:25-26,
5:37-52, 6:35-36). Browns service provider receives content and
advertisements from provider 16 and substitute document server 34 via the
Internet. (EX1009, 8:39-42, 9:62-63; Almeroth, 220 (EX1005)).
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Content and Advertisements sent
over packet network Content and Advertisements sent
over packet network
Brown, FIG. 1 (EX1009) compared with 626 Patent, FIG. 1B (EX1001) (both
annotated)
Thus, as Brown and Rosser describes receiving content by the service
provider server over the Internet, and Arazi describes that such content can be a
digital video stream, Brown, Rosser, and Arazi teach this limitation. (Id., 218-
223 (EX1005); see supra VI.C.2 (motivations to combine)).
[13.3] receiving the one or more video advertisements from the packet network;
and
As detailed above in the analysis of limitation [13.2], Rosser teaches the
receipt of video over telephone company lines, which teaches receiving
information from [a] packet network. Rosser describes that signal as also
including a graphic or video for insertion, i.e., one or more video advertisements.
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(EX1007, 9:10-12, see also 7:19-22 (insertions include video advertisements)).
Furthermore, Brown, as shown in figure 1 depicted above, describes that
advertisements and substitute content are received by the service provider over the
Internet. (EX1009, 9:62-63). Accordingly, the combination of Brown, Rosser, and
Arazi teaches this limitation. (Almeroth 224 (EX1005); see supra VI.C.2
(motivations to combine)).
[13.4] obtaining demographic information, wherein the demographic

information is used for identifying the one or more video advertisements for
insertion into the at least one vacancy.
See supra limitations [15.1]-[15.2].
Thus, claim 13 is unpatentable over the combination of Arazi, Rosser, and
Brown.
D. Challenge 4: Claims 1, 7, and 10 are obvious under 35 U.S.C.

103 over Eldering 039 and Eldering 277
1. Overview of Eldering 039
Eldering 039 teaches a targeted advertising system in which targeted
advertisements may be transmitted simultaneously with programming and inserted
locally. (EX1010, Abstract).
Eldering 277 teaches an Ad Management System (AMS) which
provides advertisers an ability to describe their advertisements for insertion of
targeted advertisements into advertising opportunities (avails). (EX1012,
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Abstract). The AMS targets advertisements by correlating subscriber
characteristics to the ad characteristics. (Id.).
3. Reasons to Combine Eldering 039 and Eldering 277
Eldering 039 and Eldering 277 are both are related to systems for targeted
advertising. (EX1010, Abstract; EX1012, Abstract).
Eldering 039 teaches a targeted advertising system, which Eldering 277
supplements by teaching an Ad Management System that manages the sales and
insertion of digital video advertisements, and that provides the ability to allow
ads to be matched to groups of subscribersor to individual subscribers based on
correlation of the advertisement. (EX1012, 1:26-53, 4:3). A POSITA would
have been motivated to combine these teachings to allow ads to be matched based
on correlation of an advertisement with demographic and other characteristics of
subscribers.
Eldering 277 also recites other benefits that would have motivated a
POSITA to combine it with Eldering 039, such as compressed ads and privacy
features. (EX1012, 2:46-48, 58-61). A POSITA would have understood that
incorporating the hardware and software characteristics of Eldering 277 into those
of Eldering 039 would have been no more than the combination of familiar
elements according to known methods, and would have been obvious to a
POSITA. (Almeroth, 236-238 (EX1005)).
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Additionally, the references share the first named inventor, Charles Eldering,
and assignee, Expanse Networks. (Eldering 039, (75), (73) (EX1010); Eldering
277, (75), (73) (EX1012)).
4. Prior Art Status of Eldering 039
Eldering 039 was filed May 10, 2000, claiming priority to a provisional
application filed May 10, 1999 (Eldering 039 Provisional). At least one claim of
Eldering 039 is supported by the Eldering 039 Provisional as indicated in the
claim chart below. (Almeroth, 231 (EX1005)). See 35 U.S.C. 120; Dynamic
Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1382 (Fed. Cir. 2016).
Petitioner also identifies the portions of the Eldering 039 Provisional which were
carried forward into Eldering 039, further supporting that Eldering 039 is prior
art as of the filing of the Eldering 039 Provisional.
Claim 1 of Eldering 039 Provisional

Eldering 039
A method for [A] plurality of ads are available from ad servers and
simultaneously inserted into the programming to form several presentation
transmitting streams, each presentation stream containing a different
different targeted advertisement. Presentation stream 1, PSl, is routed to a
advertisements first receiver, receiver 1. Presentation stream 2, PS2, is sent
within to receiver 2.Other numbers of routers may be used and
programming to different subgroups can be formed. (EX1011, 10:19-31).
different subgroups
in a
telecommunications
system, the method
comprising:
receiving a program Programming or entertainment programming stream
stream that is some includes digital video or audio streams (Id., 12:9-11).
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Claim 1 of Eldering 039 Provisional
Eldering 039
combination of a
video stream and an 23. A method of creating presentation streams: (a)
audio stream; receiving n digital programming streams wherein the
programming streams contain continuous programming
material (Id., p. 26).
receiving a plurality 23.: (b) receiving m digital advertisement streams
of advertisement (Id., p. 26).
streams, each
advertisement
stream being some
combination of a
video stream and an
audio stream;
inserting a first [A]ds are inserted into the programming to form several
advertisement presentation streams, each presentation stream containing a
stream in the different advertisement. (Id., 10:21-25).
program stream to
create a first
presentation stream
and a second
advertisement
stream in the
program stream to
create a second
presentation
stream;
simultaneously Presentation stream 1, PS1, is routed by the sender through
transmitting the one or more routers to a first receiver, receiver 1.
first presentation to Presentation stream 2, PS2, is sent by the sender through a
a first subgroup and router to receiver 2. (Id., 10:25-28).
the second
presentation stream
to a second
subgroup.
5. Prior Art Status of Eldering 277
Eldering 277 was filed April 20, 2000, claiming priority to a provisional
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application filed April 20, 1999 (Eldering 277 1999 Provisional) and a
provisional application filed February 18, 2000 (Eldering 277 2000 Provisional).
At least one claim of Eldering 277 is supported by the Eldering 277 2000
Provisional. (Almeroth, 234 (EX1005)). 35 U.S.C. 120; Dynamic Drinkware,
800 F.3d at 1382. Accordingly, Eldering 277 is prior art at least as of February
18, 2000, which is before the March 21, 2000 priority date of the 626 Patent (see
supra IV.D.1). Petitioner also below identifies the portions of the Eldering 277
priority applications which were carried forward into Eldering 277.
Claim 1 of Eldering 277 2000 Provisional

Eldering 277
A system for The Ad Management System (AMS) manages the sales
inserting and insertion of digital video advertisements . (EX1014,
advertisements into p. 6).
video streams,
wherein the One of the key functions of the AMS is its ability to allow
advertisements are ads to be matched to individual subscribers . (Id.).
selected for
insertion so as to
target a specific
audience, the
system comprising:
a first module for The Avail Characterization module allows the content
determining where provider to describe the available advertising opportunities
avails are within ("avails"). (Id., p. 7).
the video streams,
wherein the first Avail characterizations user interfaceHousehold
module also gathers IncomeHousehold size. (Id., p. 10).
information about
the targeted
audience of the
video stream as
avail
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Eldering 277
characterization
information;
a second module The Ad Characterization module (as shown in FIG. 1)
for gathering data allows the advertiser to enter key characterization data
related to regarding the advertisement . (Id., p. 7).
advertisements
including ad
characterization
information;
a third module for The Subscriber Characterization module allows for the
gathering data collection of subscriber data. (Id., p. 7).
related to
subscribers,
including
subscriber
characterization
information;
a fourth module for Correlation module
correlating the ad
characterization This module will correlate the ad characterization
information and the information with the subscriber/node characterization
subscriber information to produce a demographic correlation, and will
characterization correlate the ad characterization information with the avail
information as a characterization to produce an avail correlation.The
demographic average value (sum of correlations divided by 2) of the
correlation, demographic and avail correlations are calculated to produce
wherein the fourth an average correlation ... (Id., p. 12).
module also
correlates the ad
characterization
information and the
avail
characterization
information as a
avail correlation
and generates an
average correlation
based on the
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Eldering 277
demographic
correlation and the
avail correlation;
and
a fifth module for When multiple ads can be used with an avail, the ad with
inserting one of the the highest correlation will be selected for placement in
advertisements into the avail. (Id., p. 15).
one of the avails
based on the results The Ad Management System (AMS) is a platform which
of the fourth manages the sales and insertion of digital video
module. advertisements . (Id., p. 6).
6. Challenge 1 and Challenge 4 are not Substantially the Same
Challenge 1 and Challenge 4 both challenge the sole independent claim of
the 626 Patent, but are not substantially the same. Arazi and Eldering 039, the
primary references used in each Challenge, teach the limitations of the challenged
claims, but do so in different ways. For example, Challenge 1 relies upon Arazis
special signals to teach the recited attributes associated with the at least one
vacancy, while Challenge 4 relies upon Eldering 039s ad insert time as
teaching of an attribute. Additionally, Challenge 4 relies upon Petitioners
evidence and contention that the 626 Patent is not entitled to the filing date of the
015 Provisional, whereas Arazi and Rosser are 102(b) prior art to even the
earliest possible priority date of the 626 Patent. Thus, institution of this IPR is
warranted under all challenges, as any alleged redundancy or substantial similarity
would not place a significant burden on the Patent Owner and the Board nor
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cause unnecessary delays. See Liberty Mutual Ins. Co. v. Progressive Cas. Ins.
Co., CBM2012-00003, Paper 7 at 2 (PTAB Oct. 25, 2012).
7. Analysis
Claim 1
[1.0] A system for providing secondary content for inclusion in video content, the
system comprising:
Eldering 039 describes receiving targeted advertisements where a first
digital signal containing programming is received along with a second digital
signal containing target advertisements, which teaches the preamble. (EX1010,
2:61-66; EX1011, 3:27-4:7; Almeroth, 242 (EX1005)).
[1.1.1] a consumer device comprising;

Eldering 039 states that ads are inserted into a presentation stream in a set-
top and describes that a set-top may serve one or more television sets.
(EX1010, 12:45-47, 6:6-8; EX1011, 17:26-18:2). Thus, Eldering 039 teaches this
limitation. (Almeroth 246 (EX1005)).
[1.1.2] at least one network connector for receiving secondary content selected
based on targeted criteria and for receiving (a) video content having at least one
vacancy, and
Eldering 039 teaches this limitation by describing receiving advertisements
(secondary content), and in particular, that transmission of advertisements is
accomplished by using a cable television data channel such as a DOCSIS cable
modem channel. (EX1010, 12:40-48; EX1011, 17:26-18:2). A POSITA would
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have understood that receipt of data by a set-top box using a DOCSIS cable
modem channel requires a network connector (e.g., a coaxial connector) to the
cable modem network. (Almeroth, 250 (EX1005)). Eldering 039 further
describes the receipt of secondary content selected based on targeted criteria,
describing that one of the channels within the multiplexed signal may contain one
or more target advertisements. (EX1010, 12:15-25; EX1011, 16:29-17:7).
Moreover, Eldering 277 explicitly teaches that the AMS targets
advertisements by correlating subscriber characteristics to the ad characteristics,
that is, specific subscriber characteristics, or criteria, are targeted. (EX1012,
Abstract; EX1014, p. 4). A POSITA would have been motivated to incorporate
these teachings into Eldering 039 to provide the ability to allow ads to be
matched to groups of subscribers. (EX1012, 2:50-54; EX1014, p. 6; Almeroth,
252 (EX1005)).
Eldering 039 further teaches that the set-top boxes receive video content
having at least one vacancy: program streams may contain default/generic
advertisements that may be substituted with target advertisements. Alternatively,
the program streams may contain empty segments where target advertisements
may be inserted (EX1010, 2:66-3:2; EX1011, FIG. 7B). Eldering 039s
default/generic advertisements and empty segments correspond to a vacancy
(as construed, supra V.A) as they are designated regions within digital content
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which are reserved to be filled by other (secondary) digital content. (Almeroth,
253 (EX1005)).
[1.1.3] (b) information relating to the video content, wherein the information
relating to the video content includes one or more attributes associated with the
at least one vacancy;
Eldering 039 teaches this limitation by describing a table in figure 9 which
includes a program identifier correlated with an advertisement ID and ad
insert times. (EX1010, 9:42-53; EX1011, 11:15-21). The table helps in
determining which advertisementsshould be directed to whichprogram
streams and the times at which the ads should be inserted. (Id.). The ad insert
time and program identifier each correspond to an attribute (as construed, see
supra V.B), as they are each data which may be used to determine how and
when a vacancy will be filled by a unit of content. (Almeroth, 258 (EX1005)).
Eldering 039 further describes placing an audible or inaudible tone within the
digital stream to mark the beginning or end of the advertisement, which also
correspond to attributes associated with the at least one vacancy. (EX1010, 13:19-
28; EX1011, 13:1-10).
Morevoer, Eldering 277 also teaches an avail opportunities module
whereby content providers can indicate various avails that are available in the
programming streams (i.e., vacancies) and their basic characteristics (i.e.,
attributes associated with the at least one vacancy). (EX1012, 4:17-20; EX1014,
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p. 7; see supra VI.D.3 (motivations to combine); Almeroth, 259 (EX1005)).
[1.1.4] at least one storage device for storing the secondary content and
information relating to the secondary content,
Eldering 039 teaches this limitation because its receiver is configured with
sufficient local storage to buffer the selected advertisements until they are
needed. (EX1010, 10:47-56; EX1011, 7). Eldering 039 further teaches the
receipt of information relating to the secondary content, i.e., the advertisement
ID in the table of figure 9. (EX1010, 9:42-53; EX1011, 11:15-21). A POSITA
would have understood that the table of figure 9 is stored, as the table is later used
in the insertion process described in Eldering 039 (see supra analysis of limitation
[1.1.6]). (Almeroth, 262 (EX1005)).
Moreover, Eldering 277 states that ad signals are transported to the
subscriber, where the set-topcontains hardware for the reception of
signalsand associated random access memory and storage of information
required to associate the ad with the programming. (EX1012, 10:21-34; EX1013,
18:10-22; see supra VI.D.3 (motivations to combine); Almeroth, 263
(EX1005)).
[1.1.5] wherein the information relating to the secondary content includes one or
more attributes; and
Eldering 039 teaches this limitation by describing the advertisement ID in
the table of figure 9 that helps in determining which advertisements (ads) should
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be directed to which nodes or program streams. (Eldering 039 at 9:42-53
(EX1010); EX1011, 11:15-21). Thus, the advertisement ID corresponds to data
which may be used to determinehow and when a unit of content can be used or
an attribute (as construed, supra V.B). (Almeroth 266 (EX1005)).
[1.1.6] at least one processor for inserting the secondary content to fill the at
least one vacancy of the video content,
Eldering 039 teaches this limitation, as it describes an advertisement
insertion module for inserting at least one advertisement stream within at least one
programming stream and further describes local insertion where at a client
side.an ad insertion module 806 inserts the advertisement into the program
stream to form a presentation stream that may be presented to the subscriber in
conjunction with an ad timing module 804 [which] determines the point at which
an advertisement should be inserted. (EX1010, 7:59-8:2; EX1011, 13:29-14:5).
Eldering 039 does not explicitly disclose a processor, but it states that the ad
insertion module [] 806 may be realized via software means and also discloses an
alternative embodiment with a hardware realizationforad insertion.
(EX1010, 8:3-7, 22-23; EX1011, 14:6-8, 22-23). A POSITA would have
understood that software must be executed on hardware, and a hardware realization
for ad insertion would have included a processor. (Almeroth, 270 (EX1005)).
Moreover, Eldering 277 describes that the set-topcontains hardware
including one or more microprocessors. (EX1012, 10:24-31; EX1013 at 18:15-
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21). A POSITA would have found it obvious to combine the teachings of Eldering
277 as it explicitly teaches the components of the likely hardware realization
described by Eldering 039 and accordingly, incorporating Eldering 277s
teachings of a microprocessor would have been no more than the combination of
known elements according to known methods. (Almeroth, 271 (EX1005)).
[1.1.7] wherein the insertion is based on matching the one or more attributes
associated with the at least one vacancy with the one or more attributes of the
information relating to the secondary content; and
Eldering 039 teaches this limitation by stating, in the context of the table in
figure 9, [t]he ad insert times indicate the times at which the ads should be
inserted in the corresponding program streams. (EX1010, 9:42-53; EX1011,
11:15-21). That is, the insertion of the advertisement is based on the matching in
the table of figure 9 of an attribute of the vacancy (the Insert Time of the program)
with an attribute of the advertisement (the Ad ID). (Almeroth, 274 (EX1005)).
[1.2] at least one server interface for transferring the video content and the
secondary content to the consumer device;
Eldering 039 teaches this limitation by stating video programming is
frequently transmitted from one central location to multiple television head ends,
and then distributed to the nodes and ultimately to the subscribers. (EX1010,
1:28-31; EX1011, 1:26-29). Eldering 039 further describes that the
transmitter/provider of information (sender 301)may be anetwork-based
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serverconfigured to distribute information to a plurality of receivers
(EX1010, 5:28-33; EX1011, 10:19-31). As shown in figure 6 below, the sender
transmits a program stream and advertisements.
Eldering 039, FIG. 6 (EX1010)

A POSITA would have understood that the sender, as a network-based
server, includes a connection to transmit information, or a server interface as
recited. Thus, Eldering 039s network-based server distributing information to a
plurality of receivers teaches this limitation. (Almeroth, 277 (EX1005)).
[1.3] wherein the consumer device outputs the secondary content within the at
least one vacancy of the video content.
Eldering 039 teaches this limitation by describing that the ad insertion
module 806 inserts the advertisement into the program stream to form a
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presentation stream that may be presented to the subscriber, and depicts in figure
7 the presentation stream containing ads 1 and 2 interspersed between
programming portions:
Eldering 039 at FIG. 7 (annotated)

(EX1010, 7:59-8:2, FIG. 7 (annotated); EX1011, 13:29-14:5, FIG. 6;
Almeroth 281 (EX1005)).
Moreover, regarding within the at least one vacancy, Eldering 277 likewise
describes a dynamic ad linking process in which advertisements from an ad
streamcan be inserted into [a] program stream for viewing by the subscriber
which can occur at the commencement of the advertisement (i.e., at Eldering
039s ad insert time). (EX1012, 10:18-29, 9:43-46; EX1013 at 12:29-13:17).
Figure 10 of Eldering 277 depicts program 1 having AD3 inserted into the
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program. (EX1012, FIG. 10; EX1013, FIG. 5). (See supra VI.D.3 (motivations
to combine); Almeroth 282 (EX1005)).
Thus, claim 1 is unpatentable over the combination of Eldering 039 and
Eldering 277.
Claim 7
[7.1] The system of claim 1, wherein at least one of the one or more attributes
associated with the at least one vacancy is based on information received from
the consumer device.
Eldering 277 states that one characteristic of an available advertising slot
includes an estimated or exact number of viewers which can be obtained by the
use of a return path data modem in the set-top, that is, an attribute of the vacancy
is based on a number of viewers (information received from [a] consumer device).
(EX1012, 8:43-49; EX1014, p. 15; Almeroth, 285 (EX1005)). A POSITA would
have found it obvious to incorporate the teachings of Eldering 277 for the reasons
set forth in Section VI.D.3, e.g., to achieve the benefits of Eldering 277s AMS.
Accordingly, Eldering 277 teaches this limitation. (Almeroth, 285 (EX1005)).
Thus, claim 7 is unpatentable over the combination of Eldering 039 and
Eldering 277.
Claim 10
[10.1] The system of claim 1, where in the secondary content is one or more
video advertisements.
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Eldering 039s auxiliary data comprises short program segments including
both video and audio data. (EX1010, 10:65-67; EX1011, p. 48; Almeroth, 288
(EX1005)). Thus, claim 10 is unpatentable over the combination of Eldering 039
and Eldering 277.
E. Challenge 5: Claim 13 is obvious under 35 U.S.C. 103 over

Eldering 039, Eldering 277, and Gupta
1. Overview of Gupta
Gupta describes a method and apparatus for local advertising in which
demographic information is collected and profile information may be
utilizedto conduct targeted advertising. (EX1015, Abstract; Almeroth, 291
(EX1005)). In Gupta, a client requests content from a server, and the request is
intercepted by an intermediate proxy, which retrieves the requested content and
inserts targeted advertisements into the requested content. (EX1015, 10:28-40).
2. Reasons to Combine Eldering 039, Eldering 277, and Gupta
The combination of Gupta with Eldering 039 and 277 would have been
obvious for several reasons. First, the references are analogous prior art, as all of
the references relate to methods and systems for conducting targeted advertising.
Second, Gupta suggests the combination. A POSITA, having reviewed
Eldering 039 and 277 would have recognized benefits of Guptas proxy-based
arrangement including the ability to utilize user-specific pricing and the ability to
associate a cost with certain demographic information. (EX1015, 15:7-9, 6:35-
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37). Further, Gupta teaches additional features for determining advertisement
pricing such as market history or history of previous price agreements with a
particular party, which a POSITA would have found useful for incorporation into
the Eldering 039 and 277 combination. (Almeroth, 294 (EX1005)).
Finally, combining the teachings of Gupta with Arazi and Rosser would
produce predictable, operable results. In particular, incorporating the arrangement
of a service provider server, like a proxy server, which receives content and
advertisements from a packet network would have been no more than explicitly
describing the source and transmission method of the digital video stream and
advertisements in Eldering 277. Thus, incorporating the teachings of Gupta into
the system taught by Eldering 039 and Eldering 277 would have been no more
than the combination of known elements according to known methods, and would
have been obvious to a POSITA at the time of the 626 Patent. (Almeroth, 295
(EX1005)).
Claim 13
server comprising the at least one server interface, wherein the at least one
server interface is further used for:
Gupta teaches this limitation, as it teaches a proxy owned by an ISP
[Internet Service Provider] which may insert advertisements. (EX1015, 6:10-
13, FIG. 4a). Accordingly, Guptas proxy teaches this limitation. (Almeroth,
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297 (EX1005)).
[13.2] receiving a digital video stream from a packet network;

While Eldering 277 teaches transmission of a digital video stream, it does
not explicitly teach the source of such content, but a POSITA would have
understood that the digital video stream would likely be received from some other
system. (Almeroth, 300 (EX1005)). Gupta teaches that content can be received
from a packet network at a service provider server, describing that [p]roxy 402
requests the URL from web server 404, and that ISP 224provides data
communication services throughthe Internet. (EX1015, 10:28-31, 8:1-8).
Eldering 277 teaches a digital video stream, as it describes an Advertising
Management System for Digital Video Streams in which a present ad in an
actual programming (e.g., a primary program stream) can be replaced by another
ad targeted at the subscriber. (EX1012, Title, 3:6-9; EX1014, p. 6).
Thus, Guptas description of content received from a packet network, and
Eldering 277s description of digital video content, teach this limitation.
(Almeroth, 300-302 (EX1005)).
[13.3] receiving the one or more video advertisements from the packet network;
and
Eldering 039s auxiliary data comprises short program segments including
both video and audio data, and Eldering 277 teaches managing insertion of
digital video advertisements. (EX1010, 10:65-67; EX1011, 3:24-26; EX1012,
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U.S. Patent 9,047,626
2:30-39; EX1014, p. 6). However, Eldering 039 and Eldering 277 do not teach
where the auxiliary data or digital video advertisements originate. Gupta,
however, describes that proxy 402 retrieves the necessary advertisement from the
advertisers web server 406. (EX1015, 10:37-38). Thus, Gupta in combination
with Eldering 039 and Eldering 277 teach this limitation. (Almeroth, 303-305
(EX1005)).
[13.4] obtaining demographic information, wherein the demographic

information is used for identifying the one or more video advertisements for
insertion into the at least one vacancy.
Guptas collection of demographic information used to conduct targeted
advertising teaches this limitation, describing embodiments which provide for an
ISP to collect and store information regarding particular users[which] may
include demographic information. (EX1015, 6:23-27; Almeroth, 307
(EX1005)). Gupta further describes that such profile information may be utilized
by the proxy to conduct targeted advertising. (Id., 6:31-35).
Thus, claim 13 is unpatentable over the combination of Eldering 039,
Eldering 277, and Gupta. (Almeroth, 307-309 (EX1005)).
F. Challenge 6: Claims 15-17 are obvious under 35 U.S.C. 103 over

Eldering 039, Eldering 277, and Eldering 519
Eldering 519 is directed to an advertisement auction system in which an
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advertiser transmits ad characterization information which is correlated with [a]
consume profile. (EX1016, Abstract).
2. Reasons to Combine Eldering 039, Eldering 277, and Eldering

519
Eldering 519, Eldering 039, and Eldering 277 are all related to targeted
advertising. Eldering 519 suggests the combination by teaching benefits of the
consumer device storing demographic information: access to the consumer
demographic and product preference characterization is controlled exclusively by
consumer 100. (EX1016, 4:67-5:5). A POSITA would have found it obvious to
combine these teachings of Eldering 519 to permit the consumer to control access
to his or her profile. (Almeroth, 314, 316 (EX1005)). Further, Eldering 519s
consumer acting as profiler, when combined with Eldering 039 and 277, would
produce predictable, operable results. Incorporation of the profiler functionality
into the set-top box taught by Eldering 039 and 277 would have been no more
than the combination of familiar elements according to known methods, and would
have been obvious to a POSITA. (Almeroth, 315 (EX1005)).
Additionally, Eldering 519 shares the same first named inventor, Charles
Eldering, and the same assignee, Expanse Networks as Eldering 039 and 277.
(Eldering 039, (75), (73) (EX1010); Eldering 277, (75), (73) (EX1011); Eldering
519, (75), (73) (EX1016)).
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Claim 15
[15.1] The system of claim 1, wherein the at least one processor of the consumer
device is further used for obtaining demographic information;
Eldering 519 teaches an embodiment in which consumer 100 is also
profiler 140. (EX1016, 4:67-5:5). In this arrangement, [c]onsumer 100
maintains consumer profile server 130 which is connected to a networkthrough
consumer PC 104 or settop 106. (Id., 4:55-65). The profile server can contain a
consumer profile which is determined from observation of the consumers viewing
habits. (Id., 4:37-40). Eldering 519 further states that heuristic rules are
appliedto determine the demographiccharacteristics of the subscriber. (Id.,
4:42-46). Thus, Eldering 519s determination of a consumer profile and
demographic characteristics by a set top or consumer PC teaches this limitation.
(Almeroth, 318-320 (EX1005)).
[15.2] using the demographic information for identifying the secondary content
for insertion into the at least one vacancy;
Eldering 277 describes correlation module 110 which correlates the ad
characterization vectors with the subscriber/node characterization vectors to
produce a demographic correlation which is used to match advertisements with
avails. (EX1012, 8:40-67; EX1014, p. 9). Eldering 519 likewise teaches that
[a]dvertisers transmit ad characterization information which is correlated against
the consumer by a profiler. The profiler may be the consumer. (EX1016, 12:9-
70
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20). Thus, Eldering 277s correlation module and Eldering 519s consumer
acting as a profiler teach this limitation. (Almeroth, 322-324 (EX1005)).
[15.3] filling the at least one vacancy with the identified secondary content,
wherein the at least one vacancy is filled by inserting the secondary content in
place of the at least one vacancy in real time; and
Eldering 039 states at a local insertion point, these generic/default
advertisements are substituted with one or more targeted
advertisements.Alternatively, the audio or video digital streams may contain one
or more empty segmentsand one or more target advertisements are inserted.
(EX1010, 2:61-3:3; EX1011, 3:27-4:7). Eldering 277 describes that program
stream 1 can have AD3 inserted into the stream in real-time (EX1012, 9:27-29;
EX1013, 12:32-13:4). Thus, Eldering 039s insertion of target advertisements and
Eldering 277s real-time insertion teach filling the at least one vacancy with the
identified secondary content, wherein the at least one vacancy is filled by inserting
the secondary content in place of the at least one vacancy in real time. (Almeroth,
326-328 (EX1005)).
[15.4] wherein filling the at least one vacancy forms a merged content stream.
Eldering 039 teaches this limitation, as its Presentation Stream of figure 7 is
a merged content stream:
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Eldering 039, FIG. 7 (EX1010) (annotated); EX1011, FIG. 6

(Almeroth, 329-330 (EX1005)).
Thus, claim 15 is unpatentable over the combination of Eldering 039,
Eldering 277, and Eldering 519.
Claim 16
[16.1] The system of claim 15, wherein the demographic information comprises
information from a profile created for a consumer.
Eldering 519 teaches this limitation, as it states [c]onsumer profile server
130 can contain a consumer profile which is determined from observation of the
consumers viewing habitsreferred to as a subscriber characterization.
(EX1016, 4:37-42; Almeroth 332-333 (EX1005)). Thus, claim 16 is
unpatentable over the combination of Eldering 039, Eldering 277, and Eldering
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519.
Claim 17
[17.1] The system of claim 15, wherein the demographic information includes at
least one of age and physical location.
Eldering 519 illustrates a probabilistic demographic characterization
vector with factors which include an age group, which teaches this limitation.
(EX1016, 5:6-10; Almeroth, 335-336 (EX1005)). Thus, claim 17 is
unpatentable over the combination of Eldering 039, Eldering 277, and Eldering
519.
VII. CONCLUSION
For the reasons above, Petitioner asks that the Patent Office order an inter
partes review trial for claims 1-17 and then cancel these claims as unpatentable.
Respectfully submitted,
June 23, 2017 /David L. McCombs/

David L. McCombs
Lead Counsel for Petitioner
Registration No. 32,271
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VIII. CERTIFICATE OF WORD COUNT
Pursuant to 37 C.F.R. 42.24, the undersigned attorney for the Petitioner,
Unified Patents Inc., declares that the argument section of this Petition (Sections
II-VII) has 13,994 words, according to the word count tool in Microsoft Word.
/David L. McCombs/
David L. McCombs
74
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Unified Patents Inc. Petition for Inter Partes Review

Petitioner
U.S. Patent No. 9,047,626

CERTIFICATE OF SERVICE
The undersigned certifies, in accordance with 37 C.F.R. 42.105 and 42.6,

that service was made on the Patent Owner as detailed below.
Date of service June 23, 2017
Manner of service FEDERAL EXPRESS
Documents served Petition for Inter Partes Review, including Exhibit List;
Exhibits 1001 through 1016
Persons served Fortkort & Houston P.C.

9442 N. Capital of Texas Highway
Arboretum Plaza One, Suite 500
Austin, Texas 78759
/David L. McCombs/
David L. McCombs
75

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Unified Patents Inc. v. Quantum Stream Inc., IPR2017-01672, (PTAB June 23, 2017) .

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IPR2017-01672

U.S. Patent 9,047,626

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS INC.

QUANTUM STREAM INC.

U.S. Patent 9,047,626

PETITION FOR INTER PARTES REVIEW OF

I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8 .....................................1

B. Related Matters ..........................................................................................1

C. Lead and Back-up Counsel and Service Information ...............................2

II. CERTIFICATION OF GROUNDS FOR STANDING ....................................2

III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ......................3

A. Prior Art Patents and Printed Publications ................................................3

B. Statutory Grounds for Challenges .............................................................4

IV. U.S. Patent 9,047,626 ........................................................................................5

B. Level of Ordinary Skill in the Art .............................................................6

C. Prosecution History ...................................................................................6

D. Priority Date ..............................................................................................8

C. dynamic attribute .................................................................................10

VI. CLAIMS 1-17 ARE UNPATENTABLE ........................................................11

A. Challenge 1: Claims 1-6, 8-12, and 14-17 are obvious under 35

1. Overview of Arazi ...........................................................................11

3. Reasons to Combine Arazi and Rosser ...........................................13

B. Challenge 2: Claim 7 is obvious under 35 U.S.C. 103 over Arazi,

1. Overview of Zigmond .....................................................................42

2. Reasons to Combine Arazi, Rosser, and Zigmond ..........................43

C. Challenge 3: Claim 13 is obvious under 35 U.S.C. 103 over Arazi,

1. Overview of Brown .........................................................................45

2. Reasons to Combine Arazi, Rosser, and Brown .............................45

D. Challenge 4: Claims 1, 7, and 10 are obvious under 35 U.S.C. 103

1. Overview of Eldering 039 .............................................................49

2. Overview of Eldering 277 .............................................................49

3. Reasons to Combine Eldering 039 and Eldering 277 ..................50

4. Prior Art Status of Eldering 039 ....................................................51

5. Prior Art Status of Eldering 277 ....................................................52

6. Challenge 1 and Challenge 4 are not Substantially the Same.........55

E. Challenge 5: Claim 13 is obvious under 35 U.S.C. 103 over

1. Overview of Gupta ..........................................................................65

2. Reasons to Combine Eldering 039, Eldering 277, and Gupta .....65

F. Challenge 6: Claims 15-17 are obvious under 35 U.S.C. 103 over

1. Overview of Eldering 519 .............................................................68

2. Reasons to Combine Eldering 039, Eldering 277, and

VIII.CERTIFICATE OF WORD COUNT..............................................................74

June 23, 2017

EX1001 U.S. Patent 9,047,626 to Akadiri

EX1002 Prosecution File History of U.S. Patent 9,047,626 (626 PH)

EX1003 Excerpts from Prosecution File History of U.S. Patent 8,315,949

EX1005 Declaration of Dr. Kevin C. Almeroth Under 37 C.F.R. 1.68

EX1006 WO 97/19560 to Arazi et al.

EX1007 WO 98/28906 to Rosser

EX1008 US Patent 6,698,020 to Zigmond et al.

EX1009 US Patent 5,887,133 to Brown et al.

EX1010 US Patent 6,615,039 to Eldering

EX1011 Prosecution File History of U.S. Provisional Appl. 60/133,398

EX1012 US Patent 6,820,277 to Eldering et al.

EX1013 Prosecution File History of U.S. Provisional Appl. 60/130,102

EX1014 Prosecution File History of U.S. Provisional Appl. 60/183,411

EX1015 US Patent 6,487,538 to Gupta et al.

EX1016 US Patent 6,324,519 to Eldering 519

Pursuant to 37 C.F.R. 42.8(b)(1), Unified Patents Inc. (Unified or

According to assignment records, US Patent 9,047,626 (the 626 Patent

(EX1001)) is owned by Quantum Stream Inc. of New York, NY (Quantum or