Unified Patents Inc. v. Blackbird Tech LLC D/b/a Blackbird Technologies, IPR2017-01525 (PTAB June 5, 2017)

DOCKET NO.
: 2211726-00143
Filed on behalf of Unified Patents Inc.
By: David L. Cavanaugh, Reg. No. 36,476
Daniel V. Williams, Reg. No. 45,221
Vera A. Shmidt, Reg. No. 74,944
Wilmer Cutler Pickering Hale and Dorr LLP
1875 Pennsylvania Ave., NW
Washington, DC 20006
Tel: (202) 663-6000
Email: David.Cavanaugh@wilmerhale.com
Ashraf Fawzy, Reg. No. 67,914

Jonathan Stroud, Reg. No. 72,518
Unified Patents Inc.
1875 Connecticut Ave. NW, Floor 10
Washington, DC, 20009
Tel: (202) 805-8931
Email: afawzy@unifiedpatents.com
Email: jonathan@unifiedpatents.com
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________________________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________________________________
UNIFIED PATENTS INC.

Petitioner
v.
BLACKBIRD TECH LLC d/b/a BLACKBIRD TECHNOLOGIES

Patent Owner
IPR2017-01525
Patent 7,174,362
PETITION FOR INTER PARTES REVIEW OF

US PATENT NO. 7,174,362
CHALLENGING CLAIMS 2, 7, 10-11, 13, 16, and 19
UNDER 35 U.S.C. 312 AND 37 C.F.R. 42.104
TABLE OF CONTENTS
Page
I. MANDATORY NOTICES ............................................................................. 1
A. Real Party-in-Interest ............................................................................ 1

B. Related Matters...................................................................................... 1
C. Counsel .................................................................................................. 2
D. Service Information, Email, Hand Delivery and Postal ........................ 2
II. CERTIFICATION OF GROUNDS FOR STANDING .................................. 3
III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 3
A. Prior Art Patents and Printed Publications ............................................ 3
1. US 6,853,985 (filed February 16, 2000, published

February 8, 2005) (Yamashita (EX1002)), which is
prior art under 35 U.S.C. 102(e) ............................................... 3
2. US 6,011,758 (filed July 1, 1998, published January
4, 2000) (Dockes (EX1003)), which is prior art
under 35 U.S.C. 102(a) ............................................................. 3
3. US 5,860,068 (filed December 4, 1997, published
January 12, 1999) (Cook (EX1004)), which is prior
art under 35 U.S.C. 102(b) ........................................................ 4
B. Grounds for Challenge .......................................................................... 4
IV. TECHNOLOGY BACKGROUND................................................................. 4
V. OVERVIEW OF THE 362 PATENT ............................................................ 4
A. Summary of the Alleged Invention ....................................................... 4

B. Level of Ordinary Skill in the Art ......................................................... 8
C. Prosecution History ............................................................................... 9
1. Original Prosecution History of 362 Patent............................... 9

2. First Ex Parte Reexamination of the 362 Patent........................ 9
3. Second Ex Parte Reexamination of the 362 patent ................. 11
4. Ex Parte Reexamination of the continuation 283
patent ......................................................................................... 11
VI. CLAIM CONSTRUCTION .......................................................................... 16
ii
A. resource file...................................................................................... 16
B. connection through which said second module
communicates with said first module and said third module ............ 17
VII. SPECIFIC GROUNDS FOR PETITION ...................................................... 18
A. Ground I: Claim 2 is rendered obvious by Yamashita in

view of Dockes. ................................................................................... 18
1. Overview of Yamashita ............................................................ 18

2. Overview of Dockes.................................................................. 22
3. Claim 2 is obvious based on Yamashita in view of
Dockes. ...................................................................................... 24
B. Ground II: Claim 19 is rendered obvious by Yamashita in

view of Dockes and Cook ................................................................... 55
1. Overview of Cook ..................................................................... 55

Dockes and Cook ...................................................................... 57
C. Ground III: Claims 7, 10-11, 13, and 16 are rendered

obvious by Yamashita in view of Cook .............................................. 68

Cook .......................................................................................... 68
Cook .......................................................................................... 70
Cook .......................................................................................... 71
Cook .......................................................................................... 72
Cook .......................................................................................... 74
VIII. CONCLUSION.............................................................................................. 75
iii
I. MANDATORY NOTICES
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. In this regard, Unified has submitted voluntary discovery. See
EX1011 (Petitioners Voluntary Interrogatory Responses).
B. Related Matters
US Pat. 7,174,362 (362 patent (EX1001)) is owned by Blackbird Tech
LLC d/b/a Blackbird Technologies (Blackbird Technologies).
The 362 patent is the subject of the following pending district court
proceedings:
Blackbird Tech LLC d/b/a Blackbird Technologies v. Studio 3 Partners LLC
d/b/a EPIX, 1-17-cv-00098 (D. Del.); Blackbird Tech LLC d/b/a Blackbird
Technologies v. Mubi, Inc., 1-17-cv-00099 (D. Del.); Blackbird Tech LLC d/b/a
Blackbird Technologies v. Netflix, Inc., 1-17-cv-00100 (D. Del.); Blackbird Tech
LLC d/b/a Blackbird Technologies v. SoundCloud, Inc., 1-17-cv-00101 (D. Del.);
Blackbird Tech LLC d/b/a Blackbird Technologies v. Starz Entertainment LLC, 1-
1
17-cv-00102 (D. Del.); Blackbird Tech LLC d/b/a Blackbird Technologies v.
Vimeo, Inc., 1-17-cv-00103 (D. Del.).1
C. Counsel
David L. Cavanaugh (Reg. No. 36,476) will act as lead counsel; Ashraf
Fawzy (Reg. No. 67,914), Jonathan Stroud (Reg. No. 72,518), Daniel V. Williams
(Reg. No. 45,221), and Vera A. Shmidt (Reg. No. 74,944) will act as back-up
counsel.
D. Service Information, Email, Hand Delivery and Postal

Unified consents to electronic service at david.cavanaugh@wilmerhale.com,
afawzy@unifiedpatents.com, and jonathan@unifiedpatents.com. Petitioner can be
reached at Wilmer Cutler Pickering Hale and Dorr, LLP, 1875 Pennsylvania Ave.,
NW, Washington, DC 20006, Tel: (202) 663-6000, Fax: (202) 663-6363, and
Unified Patents Inc., 1875 Connecticut Ave. NW, Floor 10, Washington, DC
20009, (650) 999-0899.
1
The 362 patent was asserted in 45 additional district court litigations that have
since been dismissed. A listing of the 45 litigations is provided in EX1010.
2
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
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 2, 7, 10-11, 13, 16, and 19 of the 362 patent (the Challenged Claims).
A. Prior Art Patents and Printed Publications
The following references are pertinent to the grounds of unpatentability
explained below:2
1. US 6,853,985 (filed February 16, 2000, published February

8, 2005) (Yamashita (EX1002)), which is prior art under
35 U.S.C. 102(e)
2. US 6,011,758 (filed July 1, 1998, published January 4, 2000)

(Dockes (EX1003)), which is prior art under 35 U.S.C.
102(a)
2
Pre-AIA statutory framework applies as the 362 patent issued from a patent
application filed prior to enactment of the America Invents Act (AIA).
3
3. US 5,860,068 (filed December 4, 1997, published January
12, 1999) (Cook (EX1004)), which is prior art under 35
U.S.C. 102(b)
B. Grounds for Challenge
This Petition, supported by the declaration of Mr. David McGoveran
(EX1005) (hereafter, McGoveran (EX1005)), requests cancellation of the
Challenged Claims 2, 7, 10-11, 13, 16, and 19 as unpatentable under 35 U.S.C.
103. See 35 U.S.C. 314(a).
IV. TECHNOLOGY BACKGROUND
A description of the technology background is provided in Mr. McGoverans
Declaration. (McGoveran 25-27).
V. OVERVIEW OF THE 362 PATENT
A. Summary of the Alleged Invention
The 362 patent is directed to taking customer requests and writing data onto
recording media, such as CD-ROMs, CDs, mini-CDs, or DVDs. (362 patent,
1:56-59). The 362 patent asserts that the alleged invention removes the
inefficiency associated with human supervision. (Id., 2:15-17). Figure 1 of the
362 patent is reproduced below to show a CD Writer Server that processes
customer requests and includes the following three modules: a log manager 200, a
resource manager 300, and a CD Writer Control 400. (Id., 2:21-22, 2:41-44).
4
(Id., FIG. 1).
Figure 2 of the 362 patent is reproduced below to depict the process flow
from order receipt to production and shows the log manager 200, resource
manager 300, CD Writer Control 400, and a plurality of CD Writers 500. (Id.,
2:23-24, 2:41-44, 3:31-33, FIG. 2).
5
A POSA would appreciate that while boxes in a flow chart are shown
above in Figure 2, the 362 patent specification does not define these boxes or
modules as differing structurally. (McGoveran 28-30). The 362 patent
explicitly describes the modules as functional. (362 patent, 2:44-45) ([a]
module, as used herein, refers to the functionality and not the configuration of
components.)). None of the log manager 200, resource manager 300, or CD
writer 400 are anywhere described as being limited to a physical unit that is
distinct from any other. The 362 patent does not limit the alleged invention to a
type of computer, electrical component, or software. In fact, the detailed
description uses the term computer once and does not use the terms CPU or
6
processor. (Id., 2:39-41)3 (The invention is implemented through a computer
system herein referred to as CD Writer Server.). Further, the 362 patent does not
limit how the alleged modules connect. (McGoveran 30). Thus, the 362
specification does not limit the implementation of the claimed modules, such that a
POSA would understand that any computer system that at least teaches the
claimed functionality would therefore at least teach (1) the claimed modules, and
(2) that the modules are connected to each other, for example, by using a common
processor, memory, network, bus, or the like. (McGoveran 30) (362 patent, FIG.
2).
The 362 patent describes that an order fulfillment process is triggered when
a customer enters a request through a customer interface 10. (362 patent, 2:48-
50). The customer interface includes but is not limited to a website, a web server,
an electronic commerce transaction system, a customized start page, or an e-mail
subsystem. (Id., 2:50-53). Log Manager 200 receives the order from the
customer interface 10 and updates a log. (Id., 3:8-11). The log may include time-
stamps of incoming requests to represent the order in which requests are received.
(Id.) (McGoveran 31).
3
All emphasis herein added unless otherwise indicated.
7
Resource Manager 300 is associated with files including a set of resource
files 310 and an archive 320 of all the sounds, images, and characters used to
execute the duplication requests. (Id., 3:26-30, 3:50-52). Resource files 310
include information about CD Writers 500, such as the number of blank CD-Rs
remaining in each machine, among other information. (Id., 3:37-39). CD Writer
Control 400 retrieves information from Log Manager 200 and Resource Manager
300 to schedule production for CD Writers 500. (Id., 3:63-65) (McGoveran 32).
As described below, duplication of data based on a customers selection, as
recited in the Challenged Claims, was both well-known and obvious prior to filing.
(McGoveran 33).
B. Level of Ordinary Skill in the Art
A person of ordinary skill in the art (POSA) for the 362 patent would
have had, as of November 2000, at least a bachelors degree in computer science,
electrical engineering, physics, or an equivalent science/engineering degree and at
least two years of experience in data distribution techniques. (McGoveran 34).
8
C. Prosecution History
1. Original Prosecution History of 362 Patent
The 362 patent issued from US Application 09/718,286 (the 286
application), filed on November 21, 2000. A Notice of Allowability issued on
November 7, 2006 without reasons for allowance. (File History (EX1013)).
Applicant filed a continuation that issued as US 7,392,283 (the 283
patent). (283 patent (EX1014)). The 283 patent was subject to Ex Parte
Reexamination (EPX) where all claims were found unpatentable by the
Examiner and PTAB, which is relevant here due to the similarities between the
unpatentable 283 patent claims and the Challenged Claims, as discussed below.
The 362 patent was subject to two EPXs.
2. First Ex Parte Reexamination of the 362 Patent
A Request for EPX of original claims 1-8 of the 362 patent was filed on
February 6, 2012. (EPX, Request (02/06/2012) (EX1015)). The Request was
granted, and a Non-Final Office Action issued on May 17, 2012, rejecting original
claims 1-2, 4, and 7-8. (EPX, Office Action (05/17/2012) (EX1016)).
Original claim 2 recited two limitations: (a) an expandable indexed archive
of digital data, said data representing contents available for request by customers;
and (b) at least one resource file for each of said output devices in communication
with said computer. (362 patent, 5:31-37). The Examiner asserted that three
9
different references anticipated claim 2, including US 5,959,944 (Dockes 944)4,
Dockes (EX1003), and Cook (EX1004). (EPX, Office Action, 8-14 (05/17/2012)
(EX1016)).
In response, Applicant amended claim 2 to include all limitations of claim 1,
and argued that Dockes 944 and Dockes did not disclose at least one resource file
for each of said output devices in communication with said computer. (EPX,
Amendment, 2-3, 15 (07/16/2012) (EX1017)). Applicant added new claims 10,
17-26, 33, and 45 to include a feature directed to tracking the hard drive
capacity. (Id., 7, 9-13). The Examiner issued a Notice of Intent to Issue a
Reexam Certificate on January 17, 2013. (EPX, NIRC (01/17/2013) (EX1018)).
There was no opportunity for the Third Party Requestor to Appeal to the PTAB.
Yet, as discussed in more detail below, a subsequent decision by another
Examiner and a PTAB decision on appeal clarified (1) the teachings of Dockes
regarding the resource file limitation and (2) the teachings of Cook regarding the
hard drive capacity tracking limitation.
4
Dockes 944 is part of the same patent family as the currently applied Dockes
reference (EX1003).
10
3. Second Ex Parte Reexamination of the 362 patent
Less relevantly, a second Request for EPX of original claims 1 and 5-6 of
the 362 patent was filed on September 15, 2012. (EPX, Request (09/15/2012)
(EX1019)). The Examiner issued a Non-Final Office Action rejecting dependent
claims 5-6, which did not recite the resource file or hard-drive-capacity-related
features and are not being challenged herein. (EPX, Office Action (03/25/2013)
(EX1020)). A Notice of Intent to Issue a Reexam Certificate was mailed on
September 30, 2013. (EPX, NIRC (09/30/2013) (EX1021)).
4. Ex Parte Reexamination of the continuation 283 patent

A Request for EPX of claims 1-14 of the continuation 283 patent was filed
on February 6, 2012. (EPX, Request (02/06/2012) (EX1022)). The Request was
granted, and a Non-Final Office Action, by a different Examiner than the 362
reexaminations, issued on February 20, 2013 rejecting all claims 1-14. (EPX,
Office Action (02/20/2013) (EX1023)). Claim 4 of the 283 included the resource
file limitation, i.e., at least one resource file for each of said output devices.
(283 patent, 5:61-6:5 (EX1014)). Claim 4 was rejected under 35 U.S.C. 103(a)
as being unpatentable over Cook in view of Dockes. (EX1023, 13-14).
Patent Owner amended claim 4 to be independent and added claims 15-25,
including claims 22-23, which included the hard drive capacity tracking limitation,
i.e., tracking the hard drive capacity remaining in said output device. (EPX,
11
Amendment, 3-4, 7, 9 (05/20/2013) (EX1024)). Challenged claim 10 recites this
hard drive capacity tracking limitation.
All claims were finally rejected, and, importantly, the Examiner maintained
the rejection of claim 4 based on Cook in view of Dockes and of claims 22-23
(including the hard drive capacity tracking) based on Cook in view of Dockes.
(EPX, Office Action, 21, 26-31, 42-43 (08/29/2013) (EX1025)).
After another attempt to traverse the rejections and further limit the claims
was unsuccessful and resulted in another rejection ((EPX, Amendment, 18-19
(10/29/2013) (EX1026)); (EPX, Advisory Action (11/14/2013) (EX1027))), Patent
Owner appealed, arguing that claim 4s resource file limitation and claim 22-23s
hard drive capacity tracking limitations were not obvious. (EPX, Appeal Brief, 21-
24, 34-35 (02/28/2014) (EX1028)). Examiners Answer maintained the rejections
of claim 4 (resource file) and 22-23 (capacity tracking). (EPX, Examiners
Answer, 19-24, 35-36 (04/15/2014) (EX1029)).
PTABs Decision on Appeal affirmed the Examiners rejection, providing
detailed reasoning why the resource file limitation of claim 4 and the capacity
tracking limitations of claims 22-23 were not patentable. (EPX, Decision on
Appeal, 13-14, 16 (06/30/2015) (EX1030)).
PTABs June 2015 Decision is highly relevant to the Challenged Claims.
The PTAB found that Dockes taught the resource file limitation and Cook taught
12
the hard-drive-capacity tracking limitation. While the Examiner in the earlier 362
patent reexamination had found differently, the 283 patent, for these claim
limitations, was subjected to more stringent review because of the appeal briefing
and PTAB decision, which came after the 362 reexaminations concluded.
The resource file and hard-drive-capacity tracking limitations in the
unpatentable claims of the 283 patent mirror those in the Challenged Claims.
Challenged Claim 2 is reproduced below to show its significant overlap with
unpatentable claim 45 of the 283 patent. (McGoveran 49-50). The resource file
limitations are identical. Minor wording variations are shown with markings.
Underlined portions show additional unpatentable features added during 283
reexamination in an unsuccessful attempt to establish patentability.
Challenged 362 Claim 2 Compared to Unpatentable 283 Claim 4

A computer-implemented method of digital data duplication comprising:
taking requests at one or more user interfaces;
transmitting said requests through a network to a computer;
assigning each of said requests to one of a plurality of output devices; and
executing the duplication process,
wherein said computer comprises:
5
This version of claim 4 was on appeal and found to be unpatentable. (EPX,
Appeal Brief, Claim Appendix (v) (EX1028)).
13
at least one first module configured to create a task log based on
incoming
requests;
at least one second module configured to store allprovide data
necessary for executingto be duplicated in said
duplication process, wherein said data stored inretrieved by said
second module
comprises:
an expandable indexed archive of digital data, said data
representing contents available for request by customers; and
at least one resource file for each of said output devices in
communication with said computer;
at least one third module configured to create a subset ofretrieve data
for duplication from said data stored in said second module, further
configured to and download said subsetdata for duplication to one of said
output devices, and further configured to command said output device to
transfer said subsetdata for duplication onto blank media; and
a connection through which said second module communicates with
said first module and module and a connection through which said second
module communicates with said third module.
The unpatentable 283 claims 22-23, directed to tracking hard drive
capacity, also significantly overlap with Challenged Claim 10:
22. The method of claim 2, further comprising tracking

the hard drive capacity remaining in said output device.
23. The method of claim 3, further comprising tracking
the hard drive capacity remaining in said output device.
14
(EPX, Appeal Brief, Claim Appendix (viii) (EX1028)) (McGoveran 51).
The same or substantially the same prior art or arguments in the current
petition were not previously presented to the Office. The grounds and arguments
presented herein are based primarily on Yamashita (EX1002), which was never
considered by the Office. (McGoveran 52). The arguments as to Dockes
(EX1003) and Cook (EX1004) are different than those presented in the 362 patent
EPXs. In the current grounds, the primary reference to Yamashita provides new
explicit teachings of using resource files and tracking memory capacity. To the
extent there is overlap between prior art presented in the current petition and prior
reexaminations, such overlap is to specific limitations that the PTAB found were
met by the prior art.
Additionally, Yamashita is not cumulative of Dockes or Cook. Yamashita
provides teachings that naturally combine with features of Dockes and Cook, in a
manner not presented previously. As discussed below, Yamashita teaches or
suggests (1) resource files and (2) tracking hard drive capacity remaining in a
device. Dockes and Cook supplement Yamashita by providing additional details
about implementing the resource file and memory capacity tracking aspects
already taught or suggested by Yamashita. Thus, any concerns regarding 325(d)
are overridden by (1) new art and arguments raised herein and (2) clarification
provided by the PTAB in the 283 reexam. (McGoveran 53).
15
VI. CLAIM CONSTRUCTION
In accordance with 37 C.F.R. 42.100(b), challenged claims must be given
their broadest reasonable construction in light of the specification of the 362
patent. (37 C.F.R. 42.100(b); Cuozzo Speed Techs., LLC v. Lee, Slip Op. No. 15-
446, at 20 (U.S. June 20, 2016)). Under this standard, claim terms are given their
ordinary and customary meaning as they would be understood by one of ordinary
skill in the art in the context of the disclosure. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007). Any claim terms not included below should be
given their broadest reasonable interpretation in light of the specification, as
commonly understood by those of ordinary skill in the art.
A. resource file
Claims 2 and 11 recite this term, which should be construed as a file
containing information related to an output device. (McGoveran 61-62). The
362 patent does not define the term resource file. The 362 patent does not limit
what can be in the resource file and provides multiple examples, such as the name
and the IP address of each CD writer 500, the number of drives and printers in each
of those machines, and the number of blank CD-Rs remaining in each machine.
(362 patent, 3:31-38). Additionally, the 362 patent indicates that the resource file
can keep track of how much cache space remains in each machine. (Id., 3:39-
42).
16
Accordingly, the 362 patent discusses various exemplary data that can be
included in its resource file. Thus, the resource file should be construed to mean a
file containing information related to an output device. Further, this construction is
consistent with a construction previously proposed by Patent Owner during
litigation, a file containing data about a resource. (Joint Claim Construction
Chart, 8 (EX1012)). The Petitioners proposed construction is consistent with the
362 specification and the plain and ordinary meaning of the term resource file.
(McGoveran 63).
B. connection through which said second module communicates

with said first module and said third module
Claims 2 and 10 recite this term, which should be construed as a
relationship through which said second module works together with said first
module and said third module. The 362 patent does not define the term
connection, which appears only in the claims. To wit, the claims appear to
associate the disclosed Log Manager 200 with the claimed first module, the
Resource Manager 300 with the claimed second module, and the CD Writer
Control 400 with the claimed third module. (McGoveran 64-65). Claims 2
and 10 suggest that the second module (300) communicates with both the first
module (200) and the third module (400), but the specification, including Figure 2,
17
does not disclose that the Resource Manager (300) must communicate directly with
the Log Manager (200).
Based on the specification, a POSA would have understood that a physical
connection between the claimed modules is not required. (McGoveran 66).
Instead, the limitation would be interpreted by a POSA as meaning that the three
modules are used together to duplicate data. (Id.). Further, the 362 patent
discloses, CD Writer Server 100 processes customer requests by using three
modules that work together: Log Manager 200, Resource Manager 300, and CD
Writer Control 400. (362 patent, 2:42-43). Thus, Petitioners proposed
construction is consistent with the 362 specification and the plain and ordinary
meaning of the term connection. (McGoveran 66).
VII. SPECIFIC GROUNDS FOR PETITION

Pursuant to Rule 42.104(b)(4)(5), the following sections (as confirmed in
the McGoveran Declaration 25-194 (EX1005)) detail the grounds of
unpatentability, the limitations of the Challenged Claims of the 362 patent, and
how these claims were obvious in view of the prior art.
A. Ground I: Claim 2 is rendered obvious by Yamashita in view of

Dockes.
1. Overview of Yamashita
Yamashita discloses a media recording and distribution system for making
customized compact discs (CDs) based on a customers selection. (Yamashita,
18
1:14-23 (EX1002)). Yamashita discloses a central apparatus 2 that communicates
with a plurality of terminal apparatuses 3 through a network 1. (Id., 24:57-25:5).
The central apparatus 2 supplies media information such as musical
compositions to the terminal apparatuses, as needed. The terminal apparatuses 3
then record the media to CDs based the customers selection. (Id.). The customer
makes selections through interfaces associated with the terminal apparatuses 3, as
discussed below. (McGoveran 67).
Annotated Figure 3 of Yamashita is reproduced below. Apparatus 3
includes multiple recording operation instruction units 21 that act as interfaces by
receiving customer input and then issuing instructions to a system control section
22 for making the CDs. (Id., 26:46-27:5) (McGoveran 68).
19
The system control section 22 performs administration operations and
includes a CPU, read-only memory (ROM), and random access memory (RAM).
(Id., 25:39-41, 26:6-7). The system control section 22 downloads categorized
media information lists which are registered in the central apparatus 2 through the
communications control section 23 and stores the categorized media information
lists so that menus are displayed to the customer. (Id., 27:6-11). The storage
unit 24 comprises a large capacity hard disk unit, or a partially rewritable optical
disk unit. (Id., 26:9-10) (McGoveran 69).
20
Each recording apparatus 3 stores a selection of media information but can
also request that additional media information be downloaded. For example, if
customer-requested media information is not saved in the storage unit 24, the
system control section 22 downloads it from the central apparatus 2. (Id., 28:64-
29:15, 34:42-45). The system control section 22 also monitors the amount of space
left in the storage unit 24 and manages it, as necessary, to make room for new
media. (Id., 28:34-38, 28:50-57). For example, if a particular song has not been
requested for a predetermined amount of time, that song may be deleted to make
room. (Id., 28:38-57) (McGoveran 70).
Each recording apparatus 3 has multiple recording units 26, as shown below
in annotated Figure 14. (Id., 29:28-29). Recording units 26 are fed blank CDs that
are stored in cartridges A-D. A transport arm 57 moves the CDs from their
cartridges to the designated recording units 26. (Id., 29:30-38) (McGoveran 71).
21
As discussed below, Yamashita discloses, teaches, or at least suggests all the
elements as recited in the Challenged Claims. (McGoveran 72).
2. Overview of Dockes
Dockes discloses a system for producing customized CDs for customers,
similar to Yamashita. (Dockes, 1:10-13 (EX1003)). Dockes system has a
customer interface for submitting customer orders over a network and a database
for storing digital data available for customer selection. (Id., 3:19-20, 6:11-14,
6:28-30, 6:46-51). In use, the system receives customer orders and coordinates
recording the digital data, e.g., songs, onto CDs using output devices coupled to
the server. (Id., 4:30-36). The output devices in Dockes are CD recorders 120.
(Id., 5:19-27). Annotated Figure 2 of Dockes is reproduced below to show a CD
recorder 120, data server 124, and database management system 128. Multiple CD
recorders 120 are used to increase output. (Id., 5:19-27) (McGoveran 73).
22
A primary function of the data server 124 is to store all the audio data and
related descriptive information. (Id., 6:46-47). A writing client 122 is associated
with CD readers 120 for receiving data from the server 124 which is then passed to
CD recorder 120. (Id., 5:39-44). Each writing client 122 may be connected to a
respective CD recorder 120. (Id.). A POSA would have understood that each CD
recorder 120 is a machine. (McGoveran 74). Dockes provides an example of a
commercially available CD recorder machinea KODAK PCD Writer 600.
(Dockes, 7:7-11).
The relational database management system 128 includes configuration
files 170. (Id., 10:6-8, FIG. 2). Configuration files 170 are files that hold
miscellaneous parameters in a convenient format and define or point to other
23
things. (Id.). Dockes discloses, [t]here is usually one configuration file 170 for
every machine. The configuration files 170 are mostly used to define system
parameters, but the same format is also used for the job files that describe various
tasks to be performed by the system, and for other purposes. (Id., 10:14-25).
Thus, a POSA would have understood that a configuration file is provided for each
CD recorder 120. (McGoveran 75).
3. Claim 2 is obvious based on Yamashita in view of Dockes.
A computer-implemented method of digital data

duplication comprising:
Yamashita discloses a computer-implemented method of digital data
duplication. Yamashita relates to
a media information distribution and recording system for distributing

media information to be recorded from a central apparatus which
stores an information source for the media information to be recorded
by a media information recording apparatus which serves as terminal
apparatus through a network [and] also relates to a media
information recording apparatus for recording media information
such as musical compositions on detachable recording media.
(Yamashita, 1:10-20) (McGoveran 76-77). Yamashita discloses a system
control section 22 for administering and controlling the terminal apparatus 3 in its
entirety [and] a storage unit 24 for storing the media information downloaded
from the central apparatus 2. (Yamashita, 25:39-47). Yamashitas system control
24
section 22 comprises a CPU, a program built-in ROM, a RAM, and a clock
circuit. (Id., 26:6-7).
taking requests at one or more user interfaces;
Yamashita discloses taking requests at one or more user interfaces, e.g.,
recording operation instruction units 21. Yamashitas Figure 7 is an example
of a menu displayed on a screen of the recording operation instruction unit:
(Yamashita, 23:10-12, FIG. 7) (McGoveran 78).
Yamashita discloses, [w]hen a customer depresses a recording button 53 in
accordance with the message, a transparent touch panel overlaid on the screen
52 [of the recording operation instruction unit 21] detects the depressed position,
25
and positional information concerning the detected depressed position is
transmitted to the system control section 22. (Id., 26:49-54). Accordingly, the
recording operation instruction unit 21 can be used for taking duplication requests.
(McGoveran 79)
Yamashitas terminal apparatus 3 can include a plurality of operation
instruction units 21. (Id., 25:34-35, FIG. 3). Further, Yamashita discloses
providing remote recording instructions by using information equipment such
as a PC (personal computer) and a PDA (personal digital assistant) connected to
the network 1. (Id., 33:47-50). Remote recording operation instructions can also
be provided using a recording operation instruction unit. (Id., 33:39-46). Thus,
Yamashita discloses taking requests at one or more user interfaces (e.g., one or
more recording operation instruction units, a PC, or a PDA) as recited in claim 2.
(McGoveran 80).
transmitting said requests through a network to a

computer;
Yamashita discloses this element, for example, by disclosing that requests
for duplication can be transmitted wirelessly from the recording operation
instruction unit to a computer. (McGoveran 81). Yamashitas Figure 3 shows
the terminal apparatus 3 comprises a main body 3a, [and] a plurality of recording
operation instruction units 21:
26
(Id., 25:33-35, FIG. 3) (annotated). As discussed for element 2(b), Yamashitas
recording operation instruction unit 21 accepts duplication requests, which are
transmitted to the system control section 22. (Id., 26:49-55) (When a customer
depresses a recording button 53 positional information concerning the detected
depressed position is transmitted to the system control section 22 through the
cable C or the antenna 33 as shown in FIG. 4.). As depicted in Figure 3, this
transmission may be wireless. (Id., 25:55-60) (the above-mentioned recording
operation instruction units 21 is connected to a bus B by wireless or through
27
a cable C.). Accordingly, Yamashita teaches transmitting requests for duplication
through a network (e.g., wireless network between unit 21 and the bus B) to a
computer (e.g., system control section 22 and storage unit 24 of Figure 3), as
recited in claim 2. (McGoveran 82).
Additionally, Yamashita discloses taking requests at one recording operation
instruction unit and picking up completed orders at a different, remote, location. A
POSA would have understood such a request to have been transmitted via a
network. (Yamashita, 33:39-46) (a customer can order the recording of certain
musical information on a CD using the recording operation instruction unit in a
first shop near his or her office, and a fully recorded CD can be received from
another recording operation instruction unit in a second shop near his or her home
on the way home) (McGoveran 83).
Further, Yamashita discloses providing remote recording instructions by
using information equipment such as a PC (personal computer) and a PDA
(personal digital assistant) connected to the network 1. (Yamashita, 33:47-50).
Accordingly, Yamashita discloses transmitting requests through a network to
a computer, as recited in claim 2. (McGoveran 81-85).
assigning each of said requests to one of a plurality of

output devices; and
Yamashitas computer performs assigning each of said requests to one of a
plurality of output devices, and, thus, Yamashita discloses this element.
28
Yamashitas computing capabilities are provided in part by the combination of the
system control section 22 and its associated storage unit 24, as shown in annotated
Figure 3:
As discussed above, Yamashitas system control section 22 administer[s]
and control[s] the terminal apparatus 3. (Yamashita, 25:39-40). Yamashitas
Figure 14 is a view of the autochanger 25 in which two recording units 26 are
incorporated. A blank recording medium 4 with an address of a nth cartridge
and an mth shelf is placed onto a vertically movable transport art 57, and the
29
transport arm 57 transports the recording medium 4 to the recording unit 26 and
loads it into the recording unit 26:
(Yamashita, 29:28-38, FIG. 14) (annotated).
Yamashitas recording units 26 (e.g., as shown in Figure 14) correspond to
the claimed output devices. Indeed, the 362 patent refers to its CD writers (500)
as output devices. (362 Patent, 3:32-33) (output devices (hereafter CD Writers)
500.). The 362 patent discloses that its CD Writers transfer a specific subset of
data from their cache to the blank CD-Rs. (Id., 4:64-65). Accordingly,
Yamashitas recording units 26 correspond to the claimed output devices, since
they transfer data onto media such as blank CDs. (McGoveran 88).
Additionally, Yamashitas Figure 15 illustrates duplication requests being
assigned to different recording units. Yamashitas Figure 15 is a schematic partial
30
illustration of an example of a recording unit administration table (i.e., a table
identifying where each duplication request is assigned):
(Id., 23:32-34, FIG. 15). Yamashita further discloses, [i]n the address
administration table as shown in FIG. 16 the term Recording Unit D1
indicates that the CD is now being set in Recording Unit D1. (Id., 29:45-52). As
a POSA would have understood, since some CDs are sent to recording unit D1,
and some to recording unit D2, Yamashitas system control section 22 assigns
the received requests to one of a plurality of output devices by determining
where (e.g., to which recording unit) to direct them. Assigning output to a
particular output device was a well-known and understood concept prior to the
362 filing date. (McGoveran 90). Accordingly, Yamashita discloses, for
example, assigning some duplication requests to the Recording Unit D1 and some
to the Recording Unit D2. (McGoveran 90).
Further, as discussed for claim 2-c), Yamashita discloses taking requests at
one device (e.g., unit 21, PC, or PDA) and collecting the recorded CD at a remote
31
device, which necessarily involves assigning requests to remote output devices.
(Yamashita, 33:49-50) (McGoveran 91).
Accordingly, Yamashita discloses assigning each of the requests to one of a
plurality of output devices, as recited in claim 2. (McGoveran 86-92).
executing the duplication process,
Yamashita discloses this element. Yamashitas computer includes units 22
and 24, which execute the duplication process by transferring the designated media
information from the storage unit 24 to the recording medium 4 set in the recording
unit 26. (Yamashita, 29:62-67) (The system control section 22 reads the
designated media information from the storage unit 24, and transfers the read
designated media information to the above-mentioned recording unit 26, so that
the media information is recorded on the recording medium 4 set in the
recording unit 26 (Step S9 in the flow chart shown in FIG. 6).) (McGoveran 93).
Thus, Yamashita discloses executing the duplication process, as recited in claim 2.
wherein said computer comprises: at least one first

module configured to create a task log based on incoming
requests;
Yamashita discloses this element. First, as noted above, the recited modules
refer[] to the functionality and not the configuration of components. (362
patent, 2:44-45). Thus, this limitation requires the computer to be configured to
32
perform the recited functionality but does not limit the computer to a particular
hardware configuration. (McGoveran 94).
Per the 362 patent, a task log refers to a list of scheduled duplication jobs,
generated by Log Manager 200 based on incoming requests. (Id., 3:5-11)
(McGoveran 95). Similarly, Yamashita discloses at least one first module
configured to create a task log (e.g., as shown in Figure 10s receipt table) based
on upcoming requests. The system control section 22 assigns a serial number to
the first media information item in the order of acceptance and determines an
expected recording completion time for each recording designated with a receipt
code to create the receipt table as shown in Figure 10. (Yamashita, 27:21-28:12)
(McGoveran 95):
(Yamashita, FIG. 10).
33
The receipt table of Figure 10 includes the receipt code(s) associated with
the incoming request(s), the identification of media information requested to be
recorded, and the expected recording completion time(s). (Id.) (McGoveran 96).
Figure 10s receipt table corresponds to the task log because it is a log of
duplication requests organized using receipt codes and having expected recording
completion times. (See Yamashita, FIG. 10) (McGoveran 96).
Accordingly, Yamashitas computer generates the task log (e.g., receipt table
in Figure 10) based on incoming duplication requests, and therefore Yamashita
discloses at least one first module configured to create a task log based on
incoming requests. (See Yamashita, 27:21-67) (McGoveran 94-97).
[wherein said computer comprises] at least one second

module configured to store all data necessary for executing
said duplication process,
Yamashita discloses this element. As discussed for element 2-d),
Yamashitas computer includes units 22 and 24. Yamashitas computer includes
the functionality (e.g., second module) configured to store all data necessary for
executing the duplication process. (Yamashita, 25:39-47) (The main body 3a
comprises a system control section 22 for administering and controlling the
terminal apparatus 3 in its entirety, [and] a storage unit 24 for storing the
media information downloaded from the central apparatus 2 through the
communications control system 23.). Accordingly, Yamashita discloses at least
34
one second module configured to store all data necessary for executing said
duplication process, as recited in claim 2. (McGoveran 98).
wherein said data stored in said second module

comprises: an expandable indexed archive of digital data, said
data representing contents available for request by customers;
and
Yamashita discloses this element.6 The 362 patent discloses, [r]esource
Manager 300 stores an archive 320 of all the sounds, images, and characters
used to produce the requested CDs. The archive can be internally indexed by
part numbers, each part number being associated with a path name. to change
or update the contents of the archive, an operator would have to delete some of the
existing data and download new data from a network or a digital storage medium.
(362 Patent, 3:50-62) (McGoveran 99).
Yamashitas computer includes the functionality (e.g., second module) to
store an expandable indexed archive of digital data, said data representing
contents available for request by customers. (Yamashita, 27:6-10) (The system
control section 22 downloads categorized media information lists which are
registered in the central apparatus 2 through the communications control section 23
and stores the categorized media information lists in the [storage] unit 24, so
6
The 362 patent does not define the term expandable indexed archive of digital
data.
35
that the above-mentioned menus are displayed in accordance with the lists.).
Further, Yamashita discloses, when a button 1 in the menu shown in Figure 8 is
depressed to designate a certain musical composition, the system control section 22
detects the designation, and detects, for instance, the title of the musical
composition, the name of a singer who sings the musical composition and other
information. (Id., 26:66-27:4). Thus, the menus presented by the user
interfaces of Yamashita include categorized media information lists including
information such as the title and singer of a particular composition. Accordingly,
Yamashita teaches the claimed second module by disclosing the functionality
associated with the storage unit 24 (e.g., that stores the categorized media
information lists and media information available for duplication) and the system
control section 22 that works with the storage unit 24 to store the indexed archive
of digital data. (McGoveran 100).
The categorized media information lists and media information available
for duplication stored in Yamashitas second module (e.g., system control section
22 and its corresponding storage unit 24) correspond to the claimed expandable
indexed archive of digital data because they represent an indexed archive of the
data available for duplication, and additional data may be added to these lists (e.g.,
when new content, e.g., new songs, becomes available for duplication).
(McGoveran 101). Yamashitas method of using expandable indexed lists for
36
presenting items (e.g., songs) for selection (e.g., by customers) was widely
practiced and would have been understood by a POSA as a standard approach to
indexing to facilitate customer selection. (McGoveran 101). Accordingly,
Yamashita discloses an expandable indexed archive of digital data (e.g.,
Yamashitas categorized media information lists and media information available
for duplication), said data representing contents available for request by customers,
as recited in claim 2. (McGoveran 99-101).
[wherein said data stored in said second module

comprises] at least one resource file for each of said output
devices in communication with said computer;
Yamashita in view of Dockes teaches this element. Yamashita discloses the
second module as recited in 2-g). (McGoveran 102).
Each of the recited modules refers to the functionality and not the
configuration of components (362 patent, 2:44-45), except for the 362 indicating
generally that the hard drive of Resource Manager 300 was designed to hold at
least 1,000 CD contents along with corresponding graphics, which are to be
physically printed on the CDs . (Id., 3:54-59). The 362 patent indicates that
the Resource Manager 300 maintains the resource files but does not indicate
whether they are also saved in the hard drive or some other memory. Thus, the
362 patent does not limit where the resource files are stored. (McGoveran 103).
37
As discussed below, Yamashita teaches or suggests the resource file as recited in
claim 2.
Yamashitas Figure 15 discloses a resource file:
As discussed above, the term resource file should be interpreted as
information related to an output device. (McGoveran 105). Yamashita meets this
limitation by disclosing files containing data about a resource, for example, a
recording unit administration table in Figure 15 and an address administration
table in Figure 16. Figure 15 is an example of a recording unit administration
table for use in the present invention:
(Yamashita, 23:32-34, FIG. 15). The table in Figure 15 includes information about
the address of the recording medium set in each recording unit (e.g., the address of
the medium in recording unit D1 is cartridge A, shelf 10). Yamashitas computer
uses the information in Figure 15s table to return the recorded recording media to
its address (e.g., for later retrieval). (Yamashita, 30:1-8). Therefore, Figure 15s
table contains data about a resource (e.g., about recording units D1 and D2).
(McGoveran 104-106).
38
Yamashitas Figure 16 discloses a resource file:
Yamashitas Figure 16 is an example of an address administration table for
use in the present invention:
Figure 16s address administration table is another file stored on Yamashitas
computer containing data about the resources (e.g., about recording mediums set in
recording units D1 and D2). Yamashitas computer uses the information in Figure
39
16s table to obtain the address of the recorded recording medium to eject and
remove recording media 4. (Yamashita, 30:20-33). Thus, the address
administration table in Yamashitas Figure 16 is another disclosure of the resource
file. (McGoveran 107-109).
Accordingly, Yamashita discloses at least two output devices, e.g., recording
units D1 and D2, and at least two resource files, e.g., the two tables in Figures 15-
16. (McGoveran 104-110).
In addition to the resource files in Figures 15-16, Yamashita teaches
monitoring the status of its recording units and it would have been
obvious to store information regarding the status of the recording
units in resource files:
Yamashita discloses monitoring the idle time and status of the recording
units to schedule jobs and provide completion time estimates. (McGoveran 111-
112). For example, Yamashita discloses:
When the system control section 22 is in an idling state with respect to

the recording, one blank recording medium 4 is set for the next
recording, and a receipt code is assigned to the blank recording
medium when the next recording instructions are accepted.
(Yamashita, 30:33-37). Yamashita also discloses the ability to schedule new
duplication requests at any time, before the preceding recording of media
information is completed, recording instructions for the succeeding recording of
40
media information can be accepted. (Id., 31:14-18). Further, Yamashita discloses
booking means [that] can be configured to make judgment on the feasibility of
recording the specified media information by the recording completion time, when
the booking of the recording completion time is requested and is also
configured to indicate whether or not the booking can be accepted, based on the
judgment. (Id., 6:14-21). A POSA would have appreciated that monitoring the
terminal apparatus 3 idling time, scheduling jobs, and providing job completion
estimates requires Yamashitas computer to store data regarding operation and
availability of its recording units 26. (McGoveran 113).
Indeed, a POSA would have understood that estimates regarding completion
times cannot be made without knowledge of the recording units status.
(McGoveran 114). Namely, a POSA would have appreciated that, for example, to
determine whether a recording can be completed by a particular time requires
knowing the recording units capabilities and availability (e.g., monitoring whether
a preceding recording has been completed as shown in step S7 of Figure 6).
(McGoveran 114). Thus, a POSA would have appreciated that the system must
monitor the status of each recording unit (e.g., available or busy), its writing speed,
elapsed time if busy, amount of data remaining to be written, and other
information. (McGoveran 114).
41
Furthermore, Yamashita discloses, for example, that its recording operation
units are independently configured to designate specified media information to
be recorded and issuing instructions for the recording of the designated specified
media information on a different recording medium. (Yamashita, 4:18-24). Thus,
Yamashita teaches storing separate configuration information (each of which could
be stored in a separate file) for its recording instruction units (e.g., units 21 that are
part of the terminal apparatus 3). (McGoveran 115).
A POSA would have found it obvious to store information regarding the
status of Yamashitas recording units in resource files to have this information
easily accessible and to improve the overall performance/scheduling of the
duplication requests. (McGoveran 111-116).
Moreover, in addition to the resource file disclosure discussed above,
Yamashita teaches executing remote duplication requests, which
requires the computer of Yamashita to store at least the network
address of the remote output device:
As discussed above, Yamashita discloses placing orders at a user interface
and picking up orders at a remote location (e.g., as discussed for claim 2-b)-c)
above). (Yamashita, 33:39-50). A POSA would have understood that to execute
duplication requests at a remote output device, Yamashitas computer would need
to store a resource file, e.g., like the ones shown in Figures 15/16 of Yamashita, for
42
such a remote output device. (McGoveran 117-118). For example, a POSA
would have understood that the computer would store information about the
name/type of the output device to ensure that the output device is capable of
executing a particular duplication request. (McGoveran 118). Further, a POSA
would have understood that the computer would store information regarding the
network address of the remote output device to be able to execute the duplication
requests at that device. (Id.). Thus, a POSA would have understood that
Yamashita necessarily teaches storing at least one resource file for its remote
output device(s). (Id.).
To the extent the resource file limitation is interpreted to require a
separate resource file for each output device, Yamashita renders the
limitation obvious:
Petitioner submits that under the broadest reasonable interpretation (BRI)
standard, claim 2 does not require that a separate resource file be provided for
each output device. (McGoveran 119-120). If Patent Owner intended the
limitation to require a separate resource file for each output device, the claim
could have been drafted to make this explicit. Notwithstanding, to the extent the
resource file limitation is interpreted narrowly and the Patent Owner argues that
Yamashita does not explicitly disclose it, it would have been obvious to a POSA
that Yamashitas computer (e.g., system control section 22 and storage unit 24)
43
could store resource files regarding each of its output devices to be able to control
the terminal apparatus 3. (McGoveran 120). For example, a POSA would have
recognized that storing at least one resource file for each of the output device
allows for a greater level of control over these devices and allows the computer to
provide more precise completion time estimates. (Id.). Also, a POSA would have
known that storing information for all devices in a single file could result in
performance bottlenecks, while separating the information into separate files
would yield higher performance scalability. (Id.).
In sum, Yamashita discloses at least two resource files for its output devices
in Figures 15-16. (McGoveran 121). Further, Yamashita discloses monitoring
the idle time and status of the recording units to schedule jobs and provide
completion time estimates, and a POSA would have found it obvious to store such
information in resource files. (Id.). Further, a POSA would have recognized that
storing information such as network address would be necessary to execute remote
duplication requests, and that such information would be stored in resource files.
(Id.). If Patent Owner argues that at least one resource file is required for each
output device, a POSA would have recognized that storing at least one resource
file for each output device would have been beneficial to provide a greater level of
control and improve overall system performance. (Id.). Based on at least these
disclosures in Yamashita and a POSAs knowledge, a POSA would have found
44
that Yamashita teaches, or at least suggests including resource files for its output
devices. (Id.).
A POSA would have understood that Yamashitas resource files could be
stored in either the memory 24 or the other memory associated with the system
control section 22, e.g., its RAM. (Yamashita, 26:6-7) (McGoveran 122). For
example, the CPU in Yamashitas system control section 22 functionally
coordinates memory read/write operations for the RAM, noted above, and the hard
disk of storage unit 24. (McGoveran 122). Thus, whether the claimed second
module is interpreted as providing the functionality to store the claimed data or a
place to store the data, Yamashita discloses this limitation. (Id.).
Yamashita in view of Dockes also teaches the limitation of claim 2-i):
To the extent the Board adopts a narrower construction of this limitation and
Patent Owner argues that Yamashita does not disclose or render obvious storing at
least one resource file for each of said output devices in communication with said
computer, Dockes teaches this limitation. (McGoveran 123-124). Dockes
relates to systems and methods for producing compact discs on demand. (Dockes,
1:10-13). Dockes discloses, in relevant part, that there is at least one configuration
45
file for every CD recorder.7 (Id., 10:13-25) (There is usually one configuration
file 170 for every machine. The configuration files 170 are mostly used to
define system parameters, but the same format is also used for the job files that
describe various tasks to be performed by the system, and for other purposes.).
Dockes configuration files are files that hold miscellaneous parameters in a
convenient format and define or point to other things. (Id., 10:6-8).
A POSA would have understood that Dockes configuration files can include
data pointing to other machines on the network with which these files are
associated, including, for example, data pointing to Dockes CD writers.
(McGoveran 125). Thus, Dockes configuration files include data about other
devices, including Dockes CD writers. (Id.). As such, a POSA would have
appreciated that Dockes configuration files correspond to the claimed resource
files, as both the configuration files and the resource files contain information
related to an output device (e.g., Dockes CD writer). (Id.).
Further, as discussed above, [t]he configuration files 170 are mostly used to
define system parameters, but the same format is also used for the job files that
7
Dockes discloses its CD writers as machines, [t[he writing client 122 may, for
example, be an INTEL PC machine running a UNIX operating system. It may be
connected to a CD recorder. (Id., 6:61-63).
46
describe various tasks to be performed by the system, and for other purposes.
(Dockes, 10:20-22). Dockes discloses a recording system 100 that includes
various clients, including the writing client 122 and its CD recorder 120. (See id.,
FIGs. 1-2). A POSA would have understood that Dockes configuration files 170
can be used to store information about the CD writers. (McGoveran 126).
Accordingly, Dockes configuration files correspond to the resource files as recited
in claim 2. (Id.).
Moreover, the PTAB has previously held that Dockes discloses this
limitation. As discussed above, US 7,392,283 (with the same claimed limitation
and the same disclosure) was reexamined. All claims were cancelled after issuance
of the June 30, 2015 PTAB decision. (EPX, Decision on Appeal (06/30/2015)
(EX1030)). There, the PTAB found that Dockes disclosed a configuration file for
every machine, including its CD writers, and held that Dockes taught at least one
resource file for each output device. (Id., 13-14).
A POSA would have been motivated to modify Yamashita to include and
store a configuration file, as disclosed in Dockes, for each of the output devices
(e.g., recording units 26) to monitor and control the recording operations of the
output devices. (McGoveran 128). For example, Yamashita and Dockes both
relate to custom CD production based on customer requests. (Yamashita, Abstract;
Dockes, Abstract) (McGoveran 128). Yamashita discloses several files that
47
include information about its output devices, as discussed above. (Yamashita,
FIGs. 15-16) (McGoveran 128). Dockes discloses providing a configuration file
for each of its devices. (Dockes,10:14-17). Further, a POSA would have been
motivated to include the configuration files within the computer storage (for
example, the storage unit 24 and/or the control section 22 memory) and therefore
use of such files in their storage area would provide the functionality of the
claimed second module and any structure that Patent Owner tries to impart to the
second module. (McGoveran 128). A POSA would have included Dockes
configuration files within the storage of Yamashita to obtain additional flexibility
with operation of the individual output devices and to be able to, for example, take
individual output devices 26 off-line without requiring reconfiguration. (Dockes,
6:5-9) (McGoveran 128). All the claimed elements were known in the prior art
and a POSA could have combined the elements as claimed by known methods with
no change in their respective functions, with a reasonable expectation of success.
The combination would have yielded predictable results, including, for example,
increased controllability, robustness, and flexibility, to a POSA at the time of the
invention. (McGoveran 128). The Supreme Court stated in KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007), [u]nder the correct analysis, any need or
problem known in the field of endeavor at the time of the invention and addressed
by the patent [or application at issue] can provide a reason for combining the
48
elements in the manner claimed. Accordingly, Yamashita in view of Dockes
teaches at least one resource file for each of said output devices in communication
with said computer, as recited in claim 2. (McGoveran 102-128).
[wherein said computer comprises] at least one third

module configured to create a subset of said data stored in
said second module, further configured to download said
subset to one of said output devices, and further configured to
command said output device to transfer said subset onto blank
media; and
Yamashita discloses this element.8 As discussed above, Yamashitas main
body 3a comprises a system control section 22 for administering and controlling
the terminal apparatus 3 in its entirety [and] a storage unit 24 for storing the
media information downloaded from the central apparatus 2. (Yamashita, 25:39-
46). Further, as noted above, each of the recited modules refers to the
functionality and not the configuration of components. (362 patent, 2:44-45).
Because the 362 patent does not limit its modules to any particular structure,
disclosure of the claimed functionality in Yamashita is sufficient to meet the
claimed limitations. (McGoveran 129).
8
As noted above, the 362 specification does not limit the claimed third module
to a structure or particular components.
49
Yamashita discloses a computer comprising at least one third
module configured to create a subset of said data stored in said
second module:
Yamashitas computer includes units 22 and 24, comprising at least one third
module (e.g., comprising functionality) to create a subset of said data stored in said
second module (e.g., storage functionality provided by the system control section
22 and the storage unit 24). Yamashita creates the subset of data stored in the
second module by downloading designated media information and storing it in the
storage unit 24. (Yamashita, 28:64-29:12) (When the designated media
information is not found to be stored in the storage unit 24 system control
section 22 transmits a media information transfer request to the central
apparatus 2 through the communications control section 23, whereby the media
information searching station 13 searches the media information and transmits
the media information to the terminal apparatus 3 . The media information is
downloaded by the system control section 22 of the terminal apparatus 3 and
stored in the storage unit 24.). (McGoveran 130-131). For example, a POSA
would have understood that if a user requests a song that is not stored in the
storage unit 24, that song can be downloaded from the central apparatus 2 using the
system control section 22. (Yamashita, FIG. 29, steps S5-S6) (McGoveran 131).
50
module further configured to download said subset to one of said
output devices:
Further, units 22 and 24 of Yamashita are configured to download the media
information to one of said output devices (e.g., recording units 26) and to
command the output device (e.g., one of recording units 26) to transfer said subset
onto blank media (e.g., recording medium 4). (Yamashita, 29:62-67) (The system
control section 22 reads the designated media information from the storage
unit 24, and transfers the read designated media information to the above-
mentioned recording unit 26, so that the media information is recorded on the
recording medium 4 set in the recording unit 26 (Step S9 in the flow chart shown
in FIG. 6).). For example, a POSA would have understood that the system
control section 22 could download the media information (e.g., the song requested
by a customer) to the output device (e.g., recording unit 26). (McGoveran 132-
133).
module configured to command said output device to transfer said
subset onto blank media:
Units 22 and 24 of Yamashita comprise the functionality to command said
output device (e.g., recording unit 26) to transfer the designated media information
51
onto blank media (e.g., recording medium 4). As discussed above, the system
control section 22 administer[s] and control[s] the terminal apparatus 3 in its
entirety. Moreover, the act of transferring the designated media information by
the system control section 22 to the recording unit 26 serves as a command to the
recording unit 26 to transfer the designated media information onto the recording
medium 4. (Yamashita, 29:62-67) (The system control section 22 transfers
the read designated media information to the above-mentioned recording unit
26, so that the media information is recorded on the recording medium 4 set
in the recording unit 26 (Step S9 in the flow chart shown in FIG. 6).)
(McGoveran 134-135). Further, Yamashita also discloses, the system control
section 22 transmits the record request message to the receiving terminal
apparatus. (Yamashita, 32:12-15).
Therefore, Yamashitas computer comprises a third module (e.g., the
functionality) to create a subset of said data stored in said second module (e.g. a
particular song, or group of songs, not present in the memory of the storage unit
24), further configured to download said subset (e.g., said requested songs) to one
of said output devices, and further configured to command said output device to
transfer said subset onto blank media. (Yamashita, 29:62-67, 32:12-15)
52
[wherein said computer comprises] a connection
through which said second module communicates with said
first module and said third module.
Yamashita discloses this element. As discussed above, according to the 362
specification, the term module, refers to the functionality and not the
configuration of components. (362 patent, 2:44-45). Further, as discussed above,
the term connection through which said second module communicates with said
first module and said third module should be construed as a relationship through
which said second module works together with said first module and said third
module. (McGoveran 137).
Yamashita teaches a connection (e.g., a relationship) through which its
second module (e.g., storage functionality) communicates with its first module
(e.g., task log module). (McGoveran 138). As discussed for claim 2-f),
Yamashita discloses creating a task log, e.g., as shown in Yamashitas Figure 10.
The system control section 22 of Yamashita creates the receipt codes and provides
the expected recording completion time for Figure 10s receipt table. (Yamashita,
27:21-28:12). The expected completion times in the task log (e.g., receipt table) in
Yamashitas Figure 10 are estimated based on several factors, including a
determination whether the storage unit 24 has in its storage the data requested for
duplication: when necessary, the expected recording completion time is
determined by adding to the recording time a downloading time required for
53
downloading the media from the central apparatus 2 (id., 28:5-8) and [w]hen the
system control section 22 reaches an idling state, the system control section 22
judges whether or not the media information designated to be recorded is stored in
the storage unit 24 (id., 28:31-34). Accordingly, Yamashita teaches an
arrangement through which its second module (e.g., storage functionality)
communicates with its first module (e.g., the module creating Figure 10s receipt
table). (McGoveran 138).
Yamashita also teaches a connection (e.g., an arrangement) through which
its second module (e.g., storage functionality) communicates with its third
module (e.g., system control section 22 functionality and its associated storage
unit 24 functionality). Indeed, when Yamashitas computer determines that
requested data is not stored in the storage unit 24, Yamashita downloads the
designated media information and commands the output device to transfer the
designated media onto a blank medium. (Yamashita, 28:64-29:12, 29:62-67)
(McGoveran 139).
A POSA would have understood that all three modules of Yamashita are
interconnected by working together to execute the duplication process.
(McGoveran 140). Thus, Yamashita discloses a connection through which said
second module communicates with said first module and said third module, as
recited in claim 2. (McGoveran 137-140).
54
B. Ground II: Claim 19 is rendered obvious by Yamashita in view of
Dockes and Cook
1. Overview of Cook
Cook discloses a system for producing customized CDs for customers, like
Yamashita. (Cook, 1:7-14 (EX1004)). Customers select music from a library, and
a burner produces the CDs. Cook discloses that [u]sing a convenient user
interface the customer selects a given artist and/or given sound recordings.
(Id., 7:20-21, 7:28-31) (McGoveran 141).
Cooks Figure 1 is reproduced below to show parts of the system, including
a storage system or disk farm 12 and a burner farm 18. (Id., 4:33-40). The disk
farm 12 includes devices for storing an archive of available sound recordings, e.g.,
songs. (Id., 4:41-45). The burner farm 18 includes a plurality of burner machines,
each being operable to record songs onto a CD. (Id., 4:45-48) (McGoveran 142).
55
A portion of Figure 2 is reproduced below to show burner machines
specific features. (Id., FIG. 2). Each burner machine is a computer-controlled
burner device comprising a processor (CPU) 38, disk storage 40, RAM 42, control
software 44, and a CD burner 46. (Id., 8:10-14). The CD burner 46 transfers
digital data to a CD. (Id., 8:14-16) (McGoveran 143).
Cook discloses that upon initialization, each individual burner machine or
server is self-directed or autonomous and thus takes on as much work (e.g., new
requests to burn CD products) as it is capable of handling given the network and
subgroup load, and other operating conditions. (Id., 3:18-23). Cook describes
this configuration as highly scaleable [sic] and efficient, by facilitating a large
number of concurrent orders. (Id., 3:25-29). A POSA would have understood that
operating conditions and aspects affecting how much work a burner machine
can handle would have required ensuring that sufficient space remains in the
burner machines memory for accepting new digital data from storage devices in
the disk farm 12. (McGoveran 144). For example, Cook discloses that the data to
56
be recorded is first saved to a buffer/cache storage of the burner machine. (Id.,
9:18-21). Based on Cooks disclosure, the self-monitoring or autonomous burner
machine ensures that its memory has sufficient space for downloading new data for
recording. (McGoveran 144). A POSA would have understood that if sufficient
space does not exist, the burner machine is not ready to accept more work.
(McGoveran 144).
2. Claim 19 is obvious based on Yamashita in view of Dockes

and Cook
The method of claim 2, further comprising tracking the

hard drive capacity remaining in said output device.
As discussed above, Yamashita in view of Dockes renders claim 2
obvious. Further, Yamashita in view of Dockes and Cook teaches the limitations of
claim 19. (McGoveran 145).
As an initial matter, the 362 patent does not describe the output devices or
CD Writers 500 as including a hard drive. The 362 patent uses the term hard
drive only once and does so with respect to the Resource Manager. (362 patent,
3:54-59). Instead, CD Writers 500 are described as having a cache and not a
hard drive. (362 patent, 4:57-67). In the context of the 362 patent, a POSA
would have interpreted the cache of the CD Writers 500 as being some form of
temporary storage, e.g., random access memory (RAM), and possibly associated
with a hard drive. (McGoveran 146). Both hard drive and RAM are forms of
57
writable storage. Thus, a POSA, after reading the 362 patent, would have
understood that the detailed description is analogizing the hard drive of claim 10
with, e.g., a cache in the form of RAM or other type of writable memory. In other
words, to the extent that mere disclosure of cache in 362 patents CD writers
discloses the hard drive of claim 10, the disclosure of a cache or RAM in the
prior art would also meet claim 10s memory type. (McGoveran 146).
Yamashita discloses many instances of tracking memory capacity. For
example, Yamashita discloses tracking the capacity of its recording medium 4, the
system control section 22, on receiving recording instructions, determines the total
data size for the recording instructions so that whether or not the data size of the
media information to be recorded is within an effective recording capacity of one
recording medium is checked. (Yamashita, 35:20:26). Accordingly, Yamashita
teaches checking whether or not the medium onto which Yamashita is recording
has enough space to be able to record the requested media. (McGoveran 147).
Additionally, Yamashitas storage unit 24 comprises a large capacity hard
disk unit, or a partially rewritable optical disk unit (id., 26:9-10), and Yamashita
discloses tracking the capacity of storage unit 24s hard disk. (Id., 28:36-41) (the
terminal apparatus 3 stores the media information in the storage unit 24 as long as
the storage unit 24 has a blank area for recording. For this purpose, the system
control section 22 is provided with an inner holding media information
58
list.). Yamashita discloses determining whether there is any blank space left in
the storage unit 24 for recording, and deleting particular data from storage if there
is no blank area remaining. (Yamashita, 28:31-57). Thus, Yamashita teaches
monitoring the capacity of the storage unit 24 to ensure there is sufficient storage
left for recording. (McGoveran 148).
Further, Yamashita discloses:
booking means [that] can be configured to make judgment on the

feasibility of recording the specified media information by the
recording completion time, when the booking of the recording
completion time is requested through the booking means, and is also
configured to indicate whether or not the booking can be accepted,
based on the judgment made.
(Yamashita, 6:14-20). Accordingly, Yamashita discloses tracking the capacity of
the recording medium 4 and storage unit 24, as well as checking whether
Yamashitas computer can execute duplication requests in a particular timeframe.
Thus, Yamashita in view of Dockes renders claim 19 obvious. (McGoveran 145-
150).
To the extent Patent Owner argues that Yamashita and Dockes do not
explicitly disclose tracking the capacity of memory remaining in the output device
(e.g., recording unit 26), such tracking would have been obvious and implied to a
59
POSA due to other types of memory capacity tracking disclosed by Yamashita, as
discussed above. (McGoveran 151).
To the extent not disclosed in Yamashita or found obvious, this limitation is
disclosed in Cook. Cook relates to systems and methods of computer-aided
distribution of data products, including CD products incorporating customer-
selected musical sound recordings. (Cook, 1:7-14). Cook discloses a burner farm
that includes a plurality of CD writers or burner machines. (Id., 4:45-48). Cook
describes its burner machines 36 as being self-contained computer-controlled
devices each of which includes a processor (CPU) 38, disk storage 40, RAM 42,
control software 44, and a CD burner 46. (McGoveran 152); (Cook, 8:10-14).
While Yamashita does not explicitly disclose the inner components of its
individual burners or recording units 26, Cook does, and a POSA would have been
motivated to use the recording units or burner machines 36 of Cook for
Yamashitas recording units 26. (McGoveran 153). A POSA would have found
Cooks burner machines attractive for many reasons. First, each individual burner
machine in Cook is autonomous and thus takes on as much work (e.g., new
requests to burn CD products) as it is capable of handling. (Cook, 3:18-
23). This feature has the benefit of advancing the systems
efficiency. (McGoveran 153). The burner machines 36 can control their own
operation by, for example, perform[ing] self-diagnostic routines. (Cook, 8:42-
60
49). A POSA would have appreciated that such self-diagnostics are important to
help ensure that the burner machine is operating properly and has sufficient
resources, such as memory space, to accept new work. (McGoveran
153). Further, while Cook discloses that jobs are assigned to the burner
machines, if a burner machine 36 becomes idle, it may request new work, which
also improves efficiency. (McGoveran 153); (Cook, 8:59-65). The burner
machines are also designed to help avoid bottlenecks and contribute to a highly
scalable and efficient system. (Cook, 3:25-29, 9:52-59).
Thus, for the many reasons discussed herein, a POSA would have been
motivated to use Cooks burner machines 36 for Yamashitas recording units
26. (McGoveran 154). For example, regarding Yamashitas Figure 14, a POSA
would have been motivated to implement Cooks first burner machine for
Yamashitas first recording unit 26 and Cooks second burner machine for
Yamashitas second recording unit 26. (McGoveran 154); (Yamashita, FIG.
14). A POSA would have known how to make this implementation using routine
skill and tools known in the art. (McGoveran 154). For example, a POSA would
have known how to make the appropriate electrical connections and software
implementations to accommodate the combination. (McGoveran 154).
Moreover, Cooks burner machines each have a buffer/cache
storage. (Cook, 8:10-14, 9:18-21, 9:36-34, FIG. 2). A POSA would have
61
understood that hard drives may utilize buffer/cache as, e.g., embedded memory in
a hard drive to act as a buffer between a physical hard disk platter used for storage
and other components of the burner machine. (McGoveran 155). Thus, Cooks
burner machines 36 are disclosed as having memory in the form of disk storage 40,
RAM, buffer/cache. (Cook, 8:10-14). A POSA would have understood that CD
burners utilize, e.g., buffer/cache, RAM, etc., for buffering or caching data that
will be written to a CD. (McGoveran 155). Such a storage feature is important
because the writer often receives data faster than it can write it. (McGoveran 155);
(Cook, 9:18-21, 9:36-39). It has long been standard practice, even before362
patents priority date, to provide an onboard cache or buffer in output devices (e.g.,
CD writers and hard drives) and to buffer output to such devices. (McGoveran
155).
As noted above, Cook discloses that each individual burner machine or
server is self-directed or autonomous and thus takes on as much work (e.g.,
new requests to burn CD products) as it is capable of handling given the
network and subgroup load, and other operating conditions. (Cook, 3:18-23). A
POSA would have appreciated that determining whether or not a CD writer is
capable of taking on a job involves evaluating the work load of the CD writer and
making a determination whether the CD writer has enough memory to take on
other jobs. (McGoveran 156). A POSA would have also understood that the
62
burner machines self-diagnostics, as discussed in Cook, would involve
monitoring the buffer/cache storage of the burner machines and/or monitoring the
disk storage of the burner machines. (McGoveran 156); (Cook, 8:42-49).
Further, to compute an estimated recording completion time, which
Yamashita explicitly does, several factors must be considered. (McGoveran 157);
(see, e.g., Yamashita, 28:1-16, FIG. 6). For example, the data transfer rate of the
output device, the capacity of the medium, the current capacity of the cache and
hard disk (especially, e.g., if they are used for multiple, different jobs with varying
amounts of data used for creating different CDs), the availability or expected
availability of the output device (implying some means of monitoring availability),
expected download time of the data from the archive, and so on. Many of these
issues are detailed in Yamashita. (McGoveran 157). If output device cache
capacity is small relative to the size of the image to be written, monitoring its
available capacity is necessary for the computer to know when the output device is
ready to consume more data pertaining to a specific job. (McGoveran 157). On
another hand, if the capacity of the cache is large relative to the size of the image,
monitoring its available capacity becomes relevant and necessary for job
scheduling. (McGoveran 157). Further, as confirmed by the PTAB on appeal, a
POSA would have likewise recognized that tracking the capacity of Cooks disk
drive is also important because disk storage could limit the amount of work a
63
burner machine can handle. (EPX, Decision on Appeal, 16 (06/30/2015)
(EX1030)) (McGoveran 157).
Tracking the cache/buffer, RAM and/or disk storage (hereinafter burner
memory) capacity of the burner machines, as taught or at least suggested by Cook,
would help ensure that the burner memory has sufficient capacity to carry out the
requested duplication processes and help determine whether the recording unit 26
of Yamashita can take on more work. (McGoveran 158). For example, if the
recording units cache is full and/or its disk storage is full, it will not be able to
start loading data for a subsequent job. (Id.). Further, a POSA would have
appreciated that tracking the burner memorys capacity would have been a
desirable functionality as it could help prevent write failures, crashes, and other
system failures. (Id.). Additionally, a POSA would have appreciated that tracking
the burner memory capacity would have allowed for prevention of lost orders and
other issues with performance due to memory limitations of the recording units.
(Id.). A POSA would have understood that Cook teaches or at least suggests
tracking the burner memory capacity of its individual burner machines, and
therefore teaches or at least suggests the features of claim 10. (Id.). Tracking any
of the cache/buffer, RAM, and/or disk storage in Cook would have taught the
claimed hard drive capacity tracking, since the 362 patent broadly, implicitly
discloses that tracking a cache supports the claimed tracking limitation. (Id.)
64
(362 patent, 4:57-61, FIG. 2). Thus, as noted above, a POSA would have been
motivated to use Cooks burner machines 36 as Yamashitas recording units 26,
and would have also been motivated to monitor any of the burner memory
components of the modified recording units 26 to track the remaining capacity.
(McGoveran 158).
All the claimed elements were known in the prior art and a POSA could
have combined the elements as claimed by known methods with no change in their
respective functions, with a reasonable expectation of success. The combination
would have yielded predictable results of ensuring independent and reliable
performance of the recording units 26, when modified to be implemented as the
burner machines 36 of Cook. (McGoveran 159).
Further, as discussed above, the PTAB has held this limitation unpatentable
in view of Cook during the 283 patent reexamination. The PTAB decision
included finding that the limitations in claims 22-23, which were added during
reexamination, were unpatentable over Cook. (EPX, Decision on Appeal, 16
(06/30/2015) (EX1030)). Unpatentable claims 22-23 recited, further comprising
tracking the hard drive capacity remaining in said output device, similar to
Challenged Claim 10. (EPX, Appeal Brief, Claim Appendix (viii) (EX1028)). The
PTAB found that the teachings of Cook would at least suggest to a skilled artisan
65
tracking the hardware capacity, i.e., disk storage, remaining in an output device.
(Id., 16).
Furthermore, to the extent Patent Owner argues that using Cooks burner
machines 36 for Yamashitas recording units 26 would not have been obvious, it
would have been obvious to a POSA to modify the combination of Yamashita and
Dockes in view of Cook to provide Yamashitas recording unit 26 with memory
(e.g., cache and/or hard disk) and to ensure that the memory has sufficient capacity
to carry out the requested duplication processes and to determine whether the
recording unit 26 can take on more work. (McGoveran 161). For example, a
POSA would have recognized that if the recording units memory is full, it will not
be able to start loading data for a subsequent job. (McGoveran 161). Further, a
POSA would have appreciated that tracking the memory capacity of the recording
units 26, after recording units 26 of Yamashita are modified to include memory,
would have been a desirable functionality as it could help prevent write failures,
crashes and other system failures. (Id.). Additionally, a POSA would have
appreciated that tracking the memory capacity of the recording units 26 would
have allowed for prevention of lost orders and other performance issues due to
memory limitations. (McGoveran 161).
Moreover, as discussed above, Yamashita teaches monitoring storage unit
24s capacity to ensure there is sufficient storage (e.g., blank area) left for
66
recording. (McGoveran 162). A POSA would have recognized that each of the
recording units 26 would need to have a cache, as disclosed in Cook, to execute
duplication requests, and that it would have been obvious to modify Yamashitas
recording units 26 to incorporate such a cache, or to incorporate a hard disk, as
disclosed in Cook. (Id.). Based on Yamashitas disclosure of tracking storage unit
24s capacity, a POSA would have found it obvious to incorporate the same
tracking feature for the cache/disk drive of its recording units 26 to ensure that
there is sufficient capacity to execute the scheduled duplication requests. (Id.).
The Supreme Court stated in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007), [u]nder the correct analysis, any need or problem known in the field of
endeavor at the time of the invention and addressed by the patent [or application at
issue] can provide a reason for combining the elements in the manner claimed.
All the claimed elements were known in the prior art and a POSA could have
combined the elements as claimed by known methods with no change in their
would have yielded predictable results of ensuring independent and reliable
performance of the CD writer to a POSA at the time of the invention. (McGoveran
162).
Accordingly, Yamashita in view of Dockes and Cook teaches tracking the
hard drive capacity as recited in claim 19. (McGoveran 145-163).
67
C. Ground III: Claims 7, 10-11, 13, and 16 are rendered obvious by
Yamashita in view of Cook
1. Claim 7 is obvious based on Yamashita in view of Cook

duplication comprising: taking requests at one or more user
interfaces; transmitting said requests through a network to a
computer; assigning each of said requests to one of a plurality
of output devices; and executing the duplication process,
wherein said computer comprises: at least one first module
configured to create a task log based on incoming requests; at
least one second module configured to store all data necessary
for executing said duplication process; at least one third
module configured to create a subset of said data stored in
said second module, further configured to download said
subset to one of said output devices, and further configured to
command said output device to transfer said subset onto blank
media; and a connection through which said second module
communicates with said first module and said third module;
Yamashita discloses these elements for at least the same reasons as discussed
above for claim elements 2-a)-2g) and 2-j)-2k). (McGoveran 164-172, 76-98,
129-140).
wherein each module that comprises said computer is

responsive to electronic mail commands.
Yamashita in view of Cook discloses this element. Yamashita discloses
taking requests at one recording operation instruction unit and picking up the
completed order at a remote recording operation instruction unit. (Yamashita,
33:39-46). Further, Yamashita discloses providing remote recording
instructions by using information equipment such as a PC (personal computer)
and a PDA (personal digital assistant) connected to the network 1. (Yamashita,
68
33:47-50) (McGoveran 173). Yamashita does not explicitly disclose that each
module that comprises the computer is responsive to electronic mail commands.
However, Cook discloses, [i]t is a more general object of the invention to
implement a large-scale custom music CD service where custom CD-ROMs (or
other such digital products) are ordered at retail establishments, over the
Internet, by electronic communication (e.g., fax, e-mail, or the like). (Cook,
1:60-65) (McGoveran 174).
It would have been obvious to a POSA to combine Yamashita with Cook to
allow for custom CDs to be ordered using electronic mail commands, thereby
achieving greater flexibility and making the process more convenient for
customers. (McGoveran 175). Yamashita and Cook both relate to distribution of
digital content to customers by writing digital content on CDs. (Yamashita,
Abstract; Cook, Abstract). Moreover, Yamashita discloses ordering CDs using a
computer or a PDA, as well as ordering CDs at one location and picking up
completed CDs at a remote location. (Yamashita, 33:39-49). Cook discloses using
electronic mail commands to order CDs, as discussed above. (Cook, 1:60-65);
(McGoveran 175). A POSA would have appreciated that using electronic
commands was a known method of placing orders, and that it would have been
desirable to incorporate such functionality in Yamashitas system. (McGoveran
175). All the claimed elements were known in the prior art and a POSA could
69
have combined the elements as claimed by known methods with no change in their
would have yielded predictable results to a POSA at the time of the invention.
(Id.). Therefore, Yamashita in view of Cook discloses wherein each module that
comprises said computer is responsive to electronic mail commands.

duplication comprising: taking requests at one or more user
interfaces; transmitting said requests through a network to a
computer; assigning each of said requests to one of a plurality
of output devices;
above for claim elements 2-a)-2d). (McGoveran 176-179, 76-92).
tracking the hard drive capacity remaining in said

output device; and
This element is addressed in the discussion of claim 19 above. It would
have been obvious to modify Yamashita in view of Cook to provide this element
for at least the same reasons discussed above for claim 19. (McGoveran 180,
145-163).
70
executing the duplication process, wherein said
computer comprises: at least one first module configured to
create a task log based on incoming requests; at least one
second module configured to store all data necessary for
executing said duplication process; at least one third module
configured to create a subset of said data stored in said second
module, further configured to download said subset to one of
said output devices, and further configured to command said
output device to transfer said subset onto blank media; and a
connection through which said second module communicates
with said first module and said third module.
above for claim elements 2-e)-2g) and 2-j)-2-k). (McGoveran 181-185, 93-98,
129-140).
The method of claim 10, wherein said data stored in

said second module comprises: an expandable indexed
archive of digital data, said data representing contents
available for request by customers; and
As discussed above, Yamashita and Cook render claim 10 obvious. Further,
Yamashita teaches this element for at least the same reasons as discussed above for
claim 2-h). (McGoveran 186, 99-101).
at least one resource file for each of said output

devices in communication with said computer.
Yamashita in view of Cook and Dockes teaches this element for at least the
same reasons as discussed above for claim 2-i). As discussed for claim 2-i), it
would have been obvious to modify Yamashita in view of Dockes, and as
71
discussed for claim 19, it also would have been obvious to modify Yamashita in
view of Cook. (McGoveran 187, 102-128).
The method of claim 10, wherein said first module is

configured to send at least one signal to at least one printing
device to create mailing address labels for each of said
requests.
Yamashita in view of Cook teaches this element. (McGoveran 188). Yamashita
discloses a printer 28 that is part of the terminal apparatus 3 and connected to units
22 and 24, as shown, e.g., in Figure 3:
72
(Yamashita, FIG. 3) (annotated).
Yamashita discloses that the terminal apparatus may further comprise label
printing means for printing label information on the surface of the recording
medium on a label sheet [or] on the recording medium. (Yamashita, 12:47-
61). Yamashita does not explicitly disclose creating mailing labels using the
printer 28. However, it would have been obvious to a POSA to use Yamashitas
printer 28 to create mailing labels, for example, as disclosed in Cook. Cook
discloses placing a bar code or other identifier on its packaging, [t]he bar code or
other identifier is preferably printed at the burner machine and placed on the
73
packaging (either manually or automatically). The bar code or other identifier
is then read and the information provided to the shipping management subsystem
19, which is also preferably a computer . (Cook, 10:35-42). Further, Cook
discloses, [u]pon assembly and manufacture, the product is packaged and shipped.
(Id., Abstract). It is common knowledge that a mailing label is required to ship a
product. Automated mailing systems that print and attach mailing labels, such as
the shipping management system of Cook, were well-known in the prior art.
(McGoveran 189). Thus, a POSA would have appreciated that Cook teaches or
suggests sending at least one signal to at least one printing device to create mailing
labels for each of said requests. (McGoveran 188-189).
The method of claim 10, wherein each module that

comprises said computer is responsive to electronic mail
commands.
as discussed for claim 7-b) above, Yamashita in view of Cook teaches this element.
(McGoveran 190, 173-175).
74
VIII. CONCLUSION
Based on the foregoing, the Challenged Claims of the 362 patent recite
subject matter that is unpatentable. The Petitioner requests institution of an inter
partes review to cancel these claims.
Respectfully Submitted,
/David L. Cavanaugh/
David L. Cavanaugh
Registration No. 36,476
Ashraf Fawzy
Jonathan Stroud
Daniel V. Williams
Vera A. Shmidt
75
Table of Exhibits for U.S. Patent 7,174,362 Petition for Inter Partes Review &
McGoveran Declaration
Exhibit Description
1001 US Pat. No. 7,174,362 (362 patent)
1002 US Pat. No. 6,853,985 (Yamashita)
1003 US Pat. No. 6,011,758 (Dockes)
1004 US Pat. No. 5,860,068 (Cook)
1005 Declaration of Mr. David McGoveran
1006 US Pat. No. 6,091,686
1007 US Pat. No. 5,418,713
1008 US Pat. No. 5,930,768
1009 US Pat. No. 5,592,511
1010 Previous District Court Litigations
1011 Petitioners Voluntary Interrogatory Responses
1012 Joint Claim Construction Chart (01/29/2016)
1013 File History of 362 patent
1014 US Pat. No. 7,392,283
1015 Ex Parte Reexamination, Request (02/06/2012)
1016 Ex Parte Reexamination, Office Action (05/17/2012)
1017 Ex Parte Reexamination, Amendment (07/16/2012)
1018 Ex Parte Reexamination, NIRC (01/17/2013)
1021 Ex Parte Reexamination, NIRC (09/30/2013)
1027 Ex Parte Reexamination, Advisory Action (11/14/2013)
1028 Ex Parte Reexamination, Appeal Brief (02/28/2014)
1029 Ex Parte Reexamination, Examiners Answer (04/15/2014)
1030 Ex Parte Reexamination, Decision on Appeal (06/30/2015)
i
CERTIFICATE UNDER 37 CFR 42.24(d)
Under the provisions of 37 CFR 42.24(d), the undersigned hereby certifies
that the word count for the foregoing Petition for Inter Partes Review totals
13,793, which is less than the 14,000 words allowed under 37 CFR 42.24(a)(i).
Respectfully submitted,
Dated: June 5, 2017 /Daniel V. Williams/

Daniel V. Williams
Reg. No. 45,221
Wilmer Cutler Pickering Hale and Dorr LLP
1875 Pennsylvania Ave., NW
Washington, DC 20006
Tel: (202) 663-6000
i
CERTIFICATE OF SERVICE
I hereby certify that on June 5, 2017, I caused a true and correct copy of the
foregoing materials:
Petition for Inter Partes Review of U.S. Patent No. 7,174,362 Under 35
U.S.C. 312 and 37 C.F.R. 42.104
Exhibit List
Exhibits for Petition for Inter Partes Review of U.S. Patent No.
7,174,362 (EX1001-1030)
Power of Attorney
Fee Authorization
Word Count Certification Under 37 CFR 42.24(d)
to be served via Federal Express Mail on the following correspondent of record as
listed on PAIR and to Blackbird Technologies:
Gutride Safier LLP

100 Pine Street, Suite 1250
San Francisco CA 94111
Blackbird Technologies
One Boston Place
Suite 2600
Boston, MA 02108
/Daniel V. Williams/
Daniel V. Williams
ii

Unified Patents Inc. v. Blackbird Tech LLC D/b/a Blackbird Technologies, IPR2017-01525 (PTAB June 5, 2017)

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Unified Patents Inc. v. Blackbird Tech LLC D/b/a Blackbird Technologies, IPR2017-01525 (PTAB June 5, 2017)

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DOCKET NO.

Ashraf Fawzy, Reg. No. 67,914

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS INC.

BLACKBIRD TECH LLC d/b/a BLACKBIRD TECHNOLOGIES

PETITION FOR INTER PARTES REVIEW OF

A. Real Party-in-Interest ............................................................................ 1

II. CERTIFICATION OF GROUNDS FOR STANDING .................................. 3

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

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

1. US 6,853,985 (filed February 16, 2000, published

B. Grounds for Challenge .......................................................................... 4

IV. TECHNOLOGY BACKGROUND................................................................. 4

V. OVERVIEW OF THE 362 PATENT ............................................................ 4

A. Summary of the Alleged Invention ....................................................... 4

1. Original Prosecution History of 362 Patent............................... 9

VI. CLAIM CONSTRUCTION .......................................................................... 16

VII. SPECIFIC GROUNDS FOR PETITION ...................................................... 18

A. Ground I: Claim 2 is rendered obvious by Yamashita in

1. Overview of Yamashita ............................................................ 18

B. Ground II: Claim 19 is rendered obvious by Yamashita in

1. Overview of Cook ..................................................................... 55

C. Ground III: Claims 7, 10-11, 13, and 16 are rendered

1. Claim 7 is obvious based on Yamashita in view of

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

EX1011 (Petitioners Voluntary Interrogatory Responses).

US Pat. 7,174,362 (362 patent (EX1001)) is owned by Blackbird Tech

LLC d/b/a Blackbird Technologies (Blackbird Technologies).

Blackbird Tech LLC d/b/a Blackbird Technologies v. Studio 3 Partners LLC

Blackbird Technologies v. Netflix, Inc., 1-17-cv-00100 (D. Del.); Blackbird Tech

LLC d/b/a Blackbird Technologies v. SoundCloud, Inc., 1-17-cv-00101 (D. Del.);

Blackbird Tech LLC d/b/a Blackbird Technologies v. Starz Entertainment LLC, 1-

Vimeo, Inc., 1-17-cv-00103 (D. Del.).1

D. Service Information, Email, Hand Delivery and Postal

afawzy@unifiedpatents.com, and jonathan@unifiedpatents.com. Petitioner can be

20009, (650) 999-0899.

since been dismissed. A listing of the 45 litigations is provided in EX1010.

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

A. Prior Art Patents and Printed Publications

The following references are pertinent to the grounds of unpatentability

1. US 6,853,985 (filed February 16, 2000, published February

2. US 6,011,758 (filed July 1, 1998, published January 4, 2000)

application filed prior to enactment of the America Invents Act (AIA).

B. Grounds for Challenge

This Petition, supported by the declaration of Mr. David McGoveran

(EX1005) (hereafter, McGoveran (EX1005)), requests cancellation of the

Challenged Claims 2, 7, 10-11, 13, 16, and 19 as unpatentable under 35 U.S.C.

103. See 35 U.S.C. 314(a).

IV. TECHNOLOGY BACKGROUND

A description of the technology background is provided in Mr. McGoverans

Declaration. (McGoveran 25-27).

V. OVERVIEW OF THE 362 PATENT

A. Summary of the Alleged Invention

recording media, such as CD-ROMs, CDs, mini-CDs, or DVDs. (362 patent,

inefficiency associated with human supervision. (Id., 2:15-17). Figure 1 of the

362 patent is reproduced below to show a CD Writer Server that processes

2:23-24, 2:41-44, 3:31-33, FIG. 2).

modules as differing structurally. (McGoveran 28-30). The 362 patent

explicitly describes the modules as functional. (362 patent, 2:44-45) ([a]

components.)). None of the log manager 200, resource manager 300, or CD