UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. APPLE INC., Petitioner. OPENTV, Inc. Patent Owner. Case No.

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1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD APPLE INC., Petitioner v. OPENTV, Inc. Patent Owner. Case No. PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,900,229 CHALLENGING CLAIMS 14-16, 19, 21, 24, 26, 28, 30 and 31 UNDER 35 U.S.C. 321, 37 C.F.R

2 TABLE OF CONTENTS Page I. INTRODUCTION... 1 II. GROUNDS FOR STANDING AND FEE AUTHORIZATION... 1 III. MANDATORY NOTICES (37 C.F.R. 42.8)... 1 IV. SUMMARY OF CHALLENGES... 2 V. THE CHALLENGED PATENT... 3 A. Overview of the 229 Patent... 3 B. Summary of the 229 Patent Prosecution History... 5 C. Level of Ordinary Skill in the Art... 7 VI. CLAIM CONSTRUCTION... 8 VII. A. activity related to television viewing and activity unrelated to television viewing (Claims 14 and 26)... 8 B. remote unit (Claims 14, 16, 21, and 28) C. set-top box and broadcast station (Claims 14, 16, and 21) CLAIMS 14-16, 19, 21, 24, 26, 28, 30 AND 31 ARE UNPATENTABLE A. Ground 1: Claims 14-16, 19, 21, 24, 26, 28, 30 and 31 of the 229 Patent Are Anticipated by Tomioka (Apple 1003) Tomioka Anticipates Independent Claim 14 and Dependent Claims 15-16, 19, 21, and Tomioka Anticipates Independent Claim 24 and Dependent Claims 26, 28, and B. Ground 2: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Obvious Under 35 U.S.C. 103(a) in View of Tomioka (Apple 1003) C. Ground 3: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Obvious Under 35 U.S.C. 103(a) over Tomioka (Apple 1003) in View of Schiller (Apple 1004) i

3 TABLE OF CONTENTS (continued) U.S. Patent No. 7,900,229 Page D. Ground 4: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Obvious Under 35 U.S.C. 103(a) over Tomioka (Apple 1003) in View of Kotani (Apple 1005) E. Ground 5: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Anticipated Under 35 U.S.C. 102 by Cristofalo (Apple 1006) Cristofalo Anticipates Independent Claim 14 and Dependent Claims 15-16, 19, 21, and Cristofalo Anticipates Independent Claim 26 and Dependent Claims 28, 30, and F. Ground 6: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Obvious Under 35 U.S.C. 103(a) in View of Cristofalo (Apple 1006) G. Ground 7: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Obvious Under 35 U.S.C. 103(a) over Cristofalo (Apple 1006) in View of Eldering (Apple 1007) VIII. CONCLUSION ii

4 TABLE OF AUTHORITIES CASES Page In re ICON Health & Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007) In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct (2014) STATUTES 35 U.S.C U.S.C. 102(a)... 12, U.S.C. 102(b)... 12, 40, U.S.C. 102(e)... 44, U.S.C. 103(a)... passim OTHER AUTHORITIES 77 Fed. Reg (Aug. 14, 2012) REGULATIONS 37 C.F.R (b) iii

5 LIST OF EXHIBITS U.S. Patent No. 7,900,229 Apple U.S. Patent No. 7,900,229 ( the 229 Patent ) Apple Excerpts from File History for U.S. Patent Application No. 10/271,801, which ultimately issued as U.S. Patent No. 7,900,229 Apple European Patent Application No , Publication No. EP A2 to Tomioka ( Tomioka ) Apple Excerpts from Jochen Schiller, Mobile Communications (2000) ( Schiller ) Apple Certified English Translation of Japanese Unexamined Patent Application Publication H to Kotani, and Japanese language reference ( Kotani ) Apple U.S. Patent No. 7,305,691 ( Cristofalo ) Apple U.S. Patent Application Publication No. 2002/ ( Eldering ) Apple U.S. Patent Application Publication No. 2002/ ( DeWolf ) Apple U.S. Patent No. 5,861,881 ( Freeman ) Apple Excerpts from Gerard O Driscoll, The Essential Guide to Set-Top Boxes and Interactive TV (2000) ( O Driscoll ) Apple Andrew Tokmakoff and Harry van Vliet, Home Media Server Content Management, Internet Multimedia Management Systems II, Proceedings of SPIE Vol (July 2001) ( Tokmakoff ) iv

6 Apple Matt Carmichael, This Ad s for You, Advertising Age (April 17, 2000) ( Carmichael ) Apple Introduction to MPEG-7 (v3.0) (Neil Day and José Martinez eds.), ISO/IEC JTC1/SC29/ WG11, Singapore (March 2001) Apple Introduction to MPEG-7 Multimedia Content Description Interface (B.S. Manjunath, Philippe Salembier and Thomas Sikora eds.) (2002, reprinted 2003) Apple Excerpts from Tomasz Imielinski and Julio C. Navas, GPS-Based Geographic Addressing, Routing, and Resource Discovery, Communications of the ACM (April 1999) Apple Declaration of Charles A. Knutson in Support of Apple Inc. s Petition for Inter Partes Review of U.S. Patent No. 7,900,229 Apple Curriculum vitae of Charles D. Knutson, Ph.D. Apple Joint Claim Construction and Prehearing Statement filed in OpenTV Inc. v. Apple Inc., Case No. 3:14-cv JST, ECF Nos. 95 and 95-1 (N.D. Cal. Dec. 19, 2014) v

7 I. INTRODUCTION U.S. Patent No. 7,900,229 Apple Inc. petitions the United States Patent and Trademark Office to institute an inter partes review of U.S. Patent No. 7,900,229 ( the 229 Patent ) Claims 14-16, 19, 21, 24, 26, 28, 30, and 31, pursuant to 37 C.F.R , et seq. The 229 Patent is assigned to OpenTV, Inc. ( Patent Owner ) and claims a system and method for utilizing user profiles in an interactive television system. Apple 1001 cover, Abstract. The 229 Patent claims are anticipated or rendered obvious based on references that were not considered by the Patent Office during prosecution. Each invalidity ground is non-cumulative and reasonably likely to prevail, and the petition should be granted. II. GROUNDS FOR STANDING AND FEE AUTHORIZATION Under 37 C.F.R (a), Petitioner certifies that the 229 Patent is available for inter partes review, and Petitioner is not barred or estopped from requesting review on the grounds presented. This Petition is timely filed under 37 C.F.R (a)(2). Pursuant to 37 C.F.R (a), the Office is authorized to charge $23,400 to Deposit Account No for fees under 37 C.F.R (a) and any other fees. III. MANDATORY NOTICES (37 C.F.R. 42.8) Real Party-In-Interest: The real party-in-interest is Apple Inc. Notice of Related Matters: OpenTV, Inc. asserts the 229 Patent against Apple in Northern District of California Case No. 3:14-cv HSG, filed on April 9, 2014 and Apple was served on April 10, Petitioner s Lead and Back-up Counsel: 1

8 Lead Counsel: Mark E. Miller (Reg. No. 31,401), O Melveny & Myers LLP, Two Embarcadero Center, 28th Floor, San Francisco, CA (Telephone: ; Fax: ; markmiller@omm.com.) Backup Counsel: Anne E. Huffsmith (Reg. No. 57,041),O Melveny & Myers, San Francisco (address, telephone, and fax above; ahuffsmith@omm.com) and J. Kevin Murray (Reg. No. 69,529) and Xin-Yi Zhou (Reg. No. 63,366), O Melveny & Myers LLP, 400 S. Hope Street, Los Angeles, CA (Telephone: ; Fax: ; s: kmurray2@omm.com and vzhou@omm.com). Service Information: Counsel may be served at O Melveny & Myers LLP, Two Embarcadero Center 28th Floor, San Francisco, CA , copies to markmiller@omm.com, ahuffsmith@omm.com, kmurray2@omm.com, and vzhou@omm.com. Counsel may be called at or faxed at IV. SUMMARY OF CHALLENGES Apple challenges the patentability of 229 Patent Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 on the following grounds, described in detail in Section VII, below: Ground 1: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Anticipated Under 35 U.S.C. 102(a) and (b) by Tomioka (Apple 1003) Ground 2: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Obvious Under 35 U.S.C. 103(a) in View of Tomioka (Apple 1003) Ground 3: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Obvious Under 35 U.S.C. 103(a) over Tomioka (Apple 1003) in View of Schiller (Apple 1004) 2

9 Ground 4: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Obvious Under 35 U.S.C. 103(a) over Tomioka (Apple 1003) in View of Kotani (Apple 1005) Ground 5: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Anticipated Under 35 U.S.C. 102(e) by Cristofalo (Apple 1006) Ground 6: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Obvious Under 35 U.S.C. 103(a) in View of Cristofalo (Apple1006) Ground 7: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Obvious Under 35 U.S.C. 103(a) over Cristofalo (Apple 1006) in View of Eldering (Apple 1007) V. THE CHALLENGED PATENT A. Overview of the 229 Patent The 229 Patent was filed October 15, 2002, and claims a system and method for utilizing user profiles in an interactive television system. Apple 1001 cover. The system may create or update a user profile based on user s activity on a first device and select data to transmit to a user on a second device based at least in part on the profile. Id. Abstract. Interactive television systems were known for providing content besides television and for allowing user input and personalization. Id. 1:15-18, It was known that systems frequently include a set-top box connected to a television set and a recording device, but may consist of any number of suitable devices. Id. The 229 Patent claims a system and method in which a user may access the system through various means and the system creat[es] and maintain[s] a user profile which reflects activity of the user within the system. Id. 1:63-2:1. A user s 3

10 activity such as television viewing may create or update a user profile which reflects the user s viewing activities and includes other activities such as cell phone or other mobile unit activities and communications. Id. 2:1-6; 2:59-66, 7:18-42; see id. 13:1-3 ( Web surfing ). Information is conveyed to a user based at least in part on the user profile across devices; for example, a user s cell phone activity may affect the information the user receives at home on their television, and vice versa. Id. 2:6-10. The user profile includes basic personal information, usage history and viewer preference filters. Id. 10: The information may be combined with location information and other information to select data which may be presented. Id. 10: The user profile may be created automatically based on a user s viewing habits and usage history or based on other user input. Id. 10:61-67, 11: Independent Claim 14 recites known elements of interactive television systems including a remote unit, set-top box, and broadcast station. See id. Claim 14. The claim also requires the system to be configured to update a user profile responsive to a first user activity on first device, detect a second user activity on a second device, access the user profile, and transmit data to the user based at least in part on the user profile, where the first user activity affects a content of the transmitted data. Id. The claim includes an activity related to television viewing and an activity unrelated to television viewing, performed on separate devices. Id. The specification states, Ultimately, all user interaction with the system may affect the user profile which may in turn affect the information the user receives from any accessing device. Id. 13:3-6. 4

11 When a user accesses the system, the system accesses the user profile and based on the user profile, specific information may be selected for presentation to the user. Id. 11: For example, the system may present options for sports programming, and the user may choose football. Id. 11: Usage history incorporated into the user profile may then cause a preference filters to be updated such that other (non-football) sports-related programs are not presented to the user. Id. 11: The system may also then present football scores by default. Id. As other examples, news or scores concerning the team may be sent along with requested data. Id. 12: The user profile also may be used to send targeted advertising. Id. The user profile may be created and/or updated based on accesses from any device within the system and the user profile may be used to select information to presentation to any device within the system. Id. 12:1-4. Independent Claim 26 recites the same steps as Claim 14, but recites a computer readable storage medium with program instructions, and claims a first and second device that are not limited to a remote unit or set-top box. Id. Claims 14 and 26. The challenged dependent claims recite additional aspects such as transmitting non-requested data to a user (Claims 19 and 30) and updating a user profile and transmitting data based on the location of a user s device (Claims 24 and 31). Every element is disclosed by the prior art, as discussed in Section V, below. B. Summary of the 229 Patent Prosecution History Application No. 10/271,801 was filed on October 15, 2002 with 32 claims, 5

12 including independent Claims 14 and 26. See Apple 1002 at Original Claims 14 and 26 of the 801 Application correspond to the issued claims. Id. at In a September 9, 2004 Office Action, the examiner rejected the pending claims on several grounds. Claims 1-10, 12-22, and were rejected as anticipated by U.S. Patent No. 6,177,931 ( Alexander ), and Claims 11, 23, and were rejected as obvious in view of Alexander. Apple 1002 at The Applicant admitted that Alexander discloses an electronic programming guide ( EPG ) that records the viewer s actions and the circumstances surrounding the interactions. Id. at The Applicant argued that Alexander does not disclose multiple activities performed on multiple devices; instead, viewer activity is associated with the television EPG and is directed to a viewer sitting in front of their television set. Id. The Applicant also argued that the 801 Application disclosed a user profile that is common to both of the differing accesses by different devices. Id. at 193. On June 15, 2005, the examiner rejected Claims 1-4, 6-9, 12-17, 19-21, 24-27, 29, 31 and 32 as anticipated by U.S. Patent Application Publication No. 2005/ ( Ellis ), and Claims 5, 18, and 28 as obvious based on Ellis and U.S. Patent No. 6,571,279 ( Hertz ). Id. at The examiner found that Ellis disclosed a remote unit, set-top box, and broadcast station and performed Claim 14 s then-recited functions. Id. at In response, the Applicant amended the claims to add limitations activity related to television viewing and activity unrelated to television viewing. Id. at The Applicant then admitted that Ellis discloses activities 6

13 related to television viewing, such as accessing program listings, scheduling program reminders, adjusting parental control settings, accessing an interactive television program guide and scheduling recordings, and Ellis discloses other activities such as web browsing, a stock ticker application, and . Id. at The Applicant argued that Ellis does not disclose that activities may share a common user profile, exchange data, or affect each other s operation in any way. Id. The examiner maintained the rejections, finding that Ellis disclosed activities related to television viewing and unrelated to television viewing. Id. at (The examiner rejected the claims based on Ellis on June 15, 2005, November 16, 2005, May 9, 2006, December 22, 2006, and May 24, Id. at 7.) In response, the Applicant argued that in the claims, a user profile is recited which is common to disparate activities, and [w]hile Ellis discloses non-television viewing related activity such as shopping or , Ellis does not disclose or suggest that this activity updates a user profile which is later used for transmitting data responsive to television viewing related activity. Id. at After a final rejection, the Applicant appealed, arguing that Ellis only discloses that a user may adjust settings for a given application and never discloses a common user profile. Id. at The rejection was reversed and the claims ultimately allowed. Id. at In allowing the claims, the Patent Office did not consider the references cited in this Petition. Apple 1001 cover, 2. C. Level of Ordinary Skill in the Art One of ordinary skill in the art related to the 229 Patent at the time of the 7

14 application had a bachelor s degree or higher in computer science, computer engineering, or the equivalent, plus two or more years of experience in the field of networking and data communications, or a similar field. See Apple VI. CLAIM CONSTRUCTION In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction. 37 C.F.R (b); see also In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Absent special definitions, terms are given their ordinary meaning to one of ordinary skill in the art based on the disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes the following constructions for this Petition, reserving the right to pursue other constructions in district court where different standards apply. Any other terms should be given their broadest reasonable construction. To the extent Patent Owner contends that a claim term has a different meaning, the Patent Owner should seek to amend the claims. See 77 Fed. Reg (Aug. 14, 2012). A. activity related to television viewing and activity unrelated to television viewing (Claims 14 and 26) The 229 Patent never defines an activity related to television viewing or an activity unrelated to television viewing, and provides no guidance regarding the boundary between the terms. During prosecution, the Applicant admitted that prior art disclosed certain activities related to television viewing, such as watching television, setting a user s favorite channels, scheduling program reminders, accessing 8

15 program listings, adjusting parental control settings, accessing an interactive television program guide, scheduling recordings. See, e.g., Apple 1002 at , The Applicant also admitted that the prior art disclosed certain activities unrelated to television viewing, such as web browsing, shopping, using a stock ticker application, gaming, , chat application, and banking. Id. at , These arbitrary examples do not define the boundary between an activity related to television viewing and an activity unrelated to television viewing. The claims and specification fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2123 (2014). Instead, the terms boundaries are unclear. See Apple The indefiniteness of the terms impedes Apple s ability to propose precise definitions. Apple recognizes, however, that indefiniteness is not a proper ground for rejection in this Petition. For purposes of this Petition, Apple proposes that the terms should at least include activities that the Applicant admitted during prosecution would disclose claim elements: activity related to television viewing should include at least watching television, setting a user s favorite channels, setting and scheduling program reminders, accessing program listings, adjusting parental control settings, accessing an interactive television program guide, and scheduling recordings, and activity unrelated to television viewing should include at least web browsing, shopping, using a stock ticker, gaming activity, , chat, and banking. Of course, prior art also may disclose other activities related or unrelated to television viewing. 9

16 B. remote unit (Claims 14, 16, 21, and 28) U.S. Patent No. 7,900,229 Apple proposes based on the 229 Patent specification that a remote unit should include at least a mobile unit (such as a cellular phone, personal digital assistant, portable computer, or device configured for wireless communications ) and a fixed unit (such as a personal computer or device at a person s office). See, e.g., Apple 1001 Abstract, 2:11-15, 28-30, 5:45-6:4, Fig. 3, 12:66-13:1 ( mobile or other remote unit ); see also Apple The scope also should include [o]ther embodiments of mobile unit 305 not specifically disclosed. Apple :1-3. C. set-top box and broadcast station (Claims 14, 16, and 21) In co-pending litigation, Patent Owner proposes that a set-top box is a device that receives a programming signal and outputs audio and video signals for presentation on a display. See Apple 1018 at 16. Apple proposes that a set-top box also decodes and tunes programming signals, as was well-known in the art. Id.; see also, e.g., Apple 1010 at 2, 30-32, Apple Set-top boxes were known under any definition, but if there is a dispute of the broadest reasonable construction, Apple proposes that Patent Owner s broader definition be used. The parties dispute whether a broadcast station transmits to all destinations simultaneously. See Apple 1018 at 17. The dispute is immaterial, because cited references disclose broadcast. See, e.g., Section VII, infra; see also Apple VII. CLAIMS 14-16, 19, 21, 24, 26, 28, 30 AND 31 ARE UNPATENTABLE 10

17 A. Ground 1: Claims 14-16, 19, 21, 24, 26, 28, 30 and 31 of the 229 Patent Are Anticipated by Tomioka (Apple 1003) European Published Patent Application EP A2 ( Tomioka ), filed on August 11, 2000 and published on May 16, 2001, is prior art under at least 35 U.S.C. 102(a) and (b). Tomioka was not considered during prosecution of the 229 Patent. See, e.g., Apple 1001 cover and page Tomioka Anticipates Independent Claim 14 and Dependent Claims 15-16, 19, 21, and 24 Tomioka discloses a system and method for utilizing a user profile in an interactive media system to transmit data to users based on user preferences derived from user input and usage history. For example, Tomioka proposes improvements to known interactive television and computer systems such as TiVo, ReplayTV, and ACTV, described in U.S. Patent No. 5,861,881 ( Freeman ). See Apple ; see also Apple :2-14 and 2:47-3:14. Tomioka notes that users have an ever increasing number of multimedia devices, such as a home audio system, a car stereo, several home television sets, web browsers, and discloses making user preferences portable across devices and activities, using a user description scheme. Apple , 0058, The scheme enables modeling of the user by providing a central storage for the user s listening, viewing, browsing preferences, and user s behavior, and may be shared through a wired or wireless network connection or using a portable storage card. Id Tomioka also discloses combining schemes to provide an interactivity not previously achievable. Id

18 Tomioka discloses a remote unit, a set-top box and a broadcast station coupled to convey a programming signal to the set-top box as recited by Claim 14. A program may originate at any suitable source, such as for example broadcast television, cable television, satellite television, digital television, Internet broadcasts, world wide web, digital video discs, still images, video cameras, laser discs, magnetic media, computer hard drive, video tape, audio tape, data services, radio broadcasts, and microwave communications. Apple The system may include any device(s) suitable to receive any one or more of such programs. Id. Tomioka also discloses using products similar to those from TiVo and Replay TV in order to extend their entertainment informational value while also handling programs coming from sources other than television broadcasts for which TiVo and Replay TV are not designed to handle. Id TiVo and ReplayTV were well-known products that could act as advanced set-top boxes or at a minimum worked with settop boxes. Apple , Apple 1010 at 282; Apple 1011 at Indeed, the 229 Patent refers to programming a set-top box to record programming. Apple : Tomioka also refers to an audio and/or video program receiver with persistent storage, Apple , which one of ordinary skill would understand includes a set-top box, because a set-top box was known to be an audio/video receiver that could include storage. Apple ; Apple 1010 at 32, 39. Tomioka disclosed achieving portability of a user profile among devices, including remote units. Tomioka states, for example, the user information should be 12

19 portable between and usable by different devices so that other devices may likewise be configured automatically to the user s preferences. Apple As a few examples, Tomioka mentions a mobile terminal, cellular telephones, devices for receiving internet and web browsing, remote controls, portable radio devices, handheld electronic devices, networked devices, car stereos, and other appliances. Id , 0046, 0052, 0058, , 0091, 0097, The user profile may be updated based on activities on multiple devices including a mobile terminal and devices encountered while traveling. Id. 0038, 0091, The user s preferences are readily movable to different devices and are updated. Id The Tomioka system is configured to update a user profile in response to a first user activity, the first user activity being initiated via a first device corresponding to one of the remote unit and the set-top box, as Claim 14 recites. See, e.g., id. 0046, 0055, 0058, , , 0094, , 0122, Claim 12, Figs. 2, 25, 27, 28. The user description scheme is generated by direct user input, and by using a software that watches the user to determine his/her usage pattern and usage history. Id The scheme can be updated in a dynamic fashion by the user or automatically, depending on user preferences , , 0095, The Tomioka system also is configured to detect a second user activity, the second user activity being initiated via a second device corresponding to one of the remote unit and the set-top box, the second device being different from the first device and to access the user profile in response to the second user activity, as 13

20 Claim 14 recites. Video, image, or audio information may be presented to the user using a device such as a television or radio. Apple , Figs. 1, 2. The user interacts with the system and has preferences to define which audio, image, and/or video information is obtained in accordance with the user information. Id. Tomioka discloses accessing the user profile to deliver content to the user on multiple devices. For example, the user information should be portable between and usable by different devices so that other devices may likewise be configured automatically to the particular user s preferences upon receiving the viewing information. See, e.g., id. 0040, 0046, 0062, The user descriptor scheme enables modeling of the user by providing a central storage for the user s listening, viewing, browsing preferences, and user s behavior and this enables devices to be quickly personalized, and enables other components, such as intelligent agents, to communicate on the basis of a standardized description format, and to make smart inferences regarding the user s preferences. Id The system records the user s usage history across activities, and the history is used by another application, e.g., a smart agent, to automatically (608) map usage history 609 to user preferences. Id The Tomioka system also is configured to transmit data responsive to the second user activity, wherein the transmitted data is based at least in part on the user profile, and wherein the first user activity affects a content of said data transmitted to the user responsive to the second activity as Claim 14 recites. For example, the system records and presents to the user audio and video information based upon the 14

21 user s prior viewing and listening habits, preferences, and personal characteristics, generally referred to as user information. Id Tomioka discloses an intelligent agent that can consult with the user description scheme and obtain information that it needs for acting on behalf of the user and the system can discover programs that fit the taste of the user, alert the user about such programs, and/or record them autonomously. Id The system gathers and provides user specific information used in authoring and updating the user description scheme, and [i]n this manner, desirable content may be provided to the user. Id Tomioka s user profile is based on a user s various activities whether related to television viewing or unrelated to television viewing as recited by Claim 14. Tomioka discloses programming from numerous sources including television, Internet broadcasts, world wide web, tape, data services, and radio broadcasts. Apple ; see also Fig. 2 (referring to AV programs and data and services). A user may watch basketball games, review web-based textual information regarding particular basketball games, and read the news. E.g., id The user description scheme provides central storage for the user s listening, viewing, browsing preferences, and user s behavior to enable diverse devices to be personalized and share information. Id Such devices access content form different sources including the web, terrestrial or cable broadcast, and access multiple or different types of media. Id Tomioka discloses description schemes that may be used across such services. Id As one example, 15

22 Tomioka discloses incorporating description schemes into products similar to those from TiVo and Replay TV in order to extend their entertainment and information value and also to handle programs coming from sources other than television broadcasts for which TiVo and Replay TV are not designed to handle. Id Standardization allows other products to be interconnected to such devices to extend their capabilities, such as devices supporting an MPEG 7 description. Id. As Tomioka discloses, MPEG-7 is the Moving Pictures Experts Group - 7, acting to standardize descriptions and description schemes for audiovisual information. Id. MPEG-7 is intended to provide complementary functionality to other MPEG standards, and represents information about the content ( the bits about the bits ) and need not present the content itself. MPEG-7 was known to allow the standardization of multimedia content descriptions across applications including broadcast television, web browsing, advertising, shopping, and web browsing. Apple MPEG-7 s standardization was known to be useful to the convergence of such technologies, searching a broad range of media, and targeting content based on user preferences. Id. Tomioka discloses a description scheme consistent with MPEG-7 that allows intelligent software agents can communicate among themselves to make intelligent inferences regarding the user s preferences and upgrading the agents for browsing and filtering applications can be simplified based on the standardized user description scheme. Id Tomioka s use of examples using XML, a language known to be usable across applications. E.g., id. 0077, 0119; 16

23 Apple , Apple 1013 at 2, 8. Tomioka discloses and one of ordinary skill would understand that Tomioka s system employs a user profile that combines activities across applications including television and web browsing and provides for searching and filtering of content across those activities. Apple Tomioka also discloses the other limitations recited in the 229 Patent claims. The Tomioka system is configured to update the user profile in response to the second user activity, as recited by Claim 15. For example, a mobile terminal may store the history information, then transmit the history information to another machine more capable of preparing preference information so as to update the preference information. Id A user s taste may be derived from a plurality of history informations [sic] of the same user. Id. Tomioka discloses that a user generally has an option to update or not to update user preferences. Id. 0095, Tomioka also discloses that a first device may be the remote unit, said first user activity is via the remote unit and does not utilize the set-top box, and a second activity may be performed on a set-top box, as Claim 16 requires. Tomioka discloses many activities on remote devices that would not require using a set-top box. See, e.g., id. 0052, 0058, 0097, 0106, Tomioka discloses other activities may be performed using a set-top box. Id. 0058, 0070, 0097, User preferences may be updated based on any activity across all devices. See, e.g., id. 0040, The system may supply the user with non-requested data based on a user profile, as Claim 19 recites. Tomioka discloses that the user is not likely even aware 17

24 of the potential content of information that he may be interested in, and the system presents multimedia content based on the user s activities and personal characteristics. Id Tomioka also discloses that usage history may be made available to other sources and may be used for any purpose, such as for example, providing targeted advertising or programming on the device based on such data. Id Tomioka also discloses that a set-top box and remote unit are configured to communicate with one another as recited in Claim 21. Tomioka discloses devices known to communicate with a set-top box, such as a remote control. Id Tomokia also discloses that a mobile terminal may transmit a user s history to another device in the network, and generally discloses sharing the user description scheme over a network connecting multiple devices. Id , 0046, Tomioka also discloses updating the user profile in response to detecting a physical location of a user s location trackable mobile unit, as recited in Claim 24. See, e.g., Id , 0049, 0109, , 133. As two examples, Tomioka discloses mobile terminals and cellular telephones which were well-known to have location tracking capabilities. Apple The chart below shows how Tomioka discloses every element of the claims: 14. An interactive television system comprising: Independent Claim 14 Apple : The program 38 may originate at any suitable source, such as for example broadcast television, cable television, satellite television, digital television, Internet broadcasts, world wide web Apple : [V]ideo, image, and/or audio information is presented to the user from the system 12 (device), such as a 18

25 a remote unit; television set or a radio. the user interacts both with the system (device) 12 to view the information 10 in a desirable manner and has preferences to define which audio, image, and/or video information is 15 obtained in accordance with the user information 14. Apple : the three portions (program, user, and system) may be combined together to provide an interactivity not previously achievable. Apple : The user starts interacting with the system with a pointer or voice commands to indicate a desire to view recorded sporting programs. On the display, the user is presented with a list of recorded sporting events including Basketball and Soccer. The user is interested in basketball games and indicates a desire to view games. The system may have also recorded web-based textual information regarding the particular Chicago-Bulls game which may be selected by the user for viewing.... After viewing the sporting events the user may decide to read the news about the Microsoft trial See also Apple , 0062, 0064, 0070, 0090, 0104, Figs. 2 and 3; Apple 1009 (U.S. Patent No. 5,861,881 ( Freeman )) 2:2-14 and 2:47-3:14 (describing interactive television and interactive television using computers). Apple : The program 38 may originate at any suitable source, such as for example broadcast television, cable television, satellite television, digital television, Internet broadcasts, world wide web, digital video discs, still images, video cameras, laser discs, magnetic media, computer hard drive, video tape, audio tape, data services, radio broadcasts, and microwave communications. The system 16 may include any device(s) suitable to receive any one or more of such programs 38. Apple : [S]ystem may present such information based on the capabilities of the system devices. the user information should be portable between and usable by different devices Apple : [U]ser description scheme is modular and portable so that users can carry or port it from one device to another, such as with a handheld electronic device or smart card or transported over a network connecting multiple devices Apple : The average consumer has an ever increasing number of multimedia devices, such as a home audio system, a car stereo, several home television sets, web browsers, 19

26 20 U.S. Patent No. 7,900,229 etc. the descriptors are automatically uploaded into devices The user description scheme may also be loaded into other devices using a wired or wireless network connection, e.g. that of a home network. Apple : Appliances that can be personalized may access content from different sources. They may be connected to the web, terrestrial or cable broadcast, etc., and they may also access multiple or different types of single media such as video, music, etc. [O]ne can personalize the car stereo... one can also personalize television viewing, for example, by plugging the smart card into a remote control that in turn will autonomously command the television receiving system. the user description scheme may be transported over the network. Apple : e.g., a mobile terminal--- may only store the history information, then transmit the history information to another machine more capable of preparing preference information so as to update the preference information. Apple : During such traveling the user will likely be browsing, filtering, searching, and setting device preferences of audio and/or video content on devices into which he provided his usage preference description 500. Apple : [T]he user s preferences are readily movable to different devices, such as a personal video recorder, a TiVo player, a RePlay Networks player, a car audio player, or other audio and/or video appliance. Apple : [T]he user preference descriptions may include differentiation for different terminals with different primary functionalities (e.g., a personal video recorder versus a cell phone). The user in different usage conditions may use the user identification description scheme as a basis to distinguish between different devices and/or services. An example of different conditions may include a television broadcast receiver and a cellular telephone. See also Apple , 0041, 0094, 0112, 0125; Apple 1009 (U.S. Patent No. 5,861, 881 ( Freeman ))(cited Apple ) 2:2-14, 2:47-3:14 ( variety of input devices for interactive television.) a set-top box; and Apple : The program 38 may originate at any suitable source, such as for example broadcast television, cable television, satellite television, digital television, Internet broadcasts, world wide web.. The program description stream

27 a broadcast station coupled to convey a programming signal to the settop box; may originate from any suitable source, such as for example PSIP/DVB-SI information in digital television broadcasts, specialized digital television data services, specialized Internet services The system 16 may include any device(s) suitable to receive any one or more of such programs 38. Apple : the program description scheme may be readily available from many services such as: (i) from broadcast (carried by EPG defined as a part of ATSC-PSIP (ATSC- Program Service Integration Protocol) in USA or DVB-SI (Digital Video Broadcast-Service Information) in Europe) Apple : The proposed description schemes can be incorporated into current products similar to those from TiVo and Replay TV in order to extend their entertainment informational value. In addition, the description scheme will handle programs coming from sources other than television broadcasts for which TiVo and Replay TV are not designed to handle. Apple : [T]he user s preferences are readily movable to different devices, such as a personal video recorder, a TiVo player, a RePlay Networks player, a car audio player, or other audio and/or video appliance. Apple : Referring to FIG. 28, an exemplary example of an audio and/or video program receiver with persistent storage 601 is illustrated. As shown, audio/video program descriptions 600 are available from the broadcast or other source the user preferences 606 are stored at the user s terminal with provision for transporting it to other systems, for example via a smart card 607. Alternatively, the user preferences 606 may be stored in a server Apple : a television broadcast receiver Apple : Appliances that can be personalized may be connected to the web, terrestrial or cable broadcast, etc [O]ne can also personalize television viewing, See also Apple , 0037, 0041, 0046, 0061, 0064, Figs. 2, 28. Apple : The program 38 may originate at any suitable source, such as for example broadcast television, cable television, satellite television, digital television, Internet broadcasts, world wide web.. The program description stream may originate from for example PSIP/DVB-SI information in digital television broadcasts, specialized digital television data 21

28 wherein the system is configured to: update a user profile responsive to a first user activity, the first user activity being initiated via a first device corresponding to one of the remote services, specialized Internet services The program related information may be extracted from the data stream including the program 38. The analysis module 42 performs an analysis of the programs 38 using information obtained from (iii) data that is available (or extractable) from data sources or electronic program guides (EPGs, DVBSI, and PSIP) Apple : Appliances that can be personalized may be connected to the web, terrestrial or cable broadcast, etc. Apple : the program description scheme and system description scheme in an advanced VCR or other system. the program description scheme may be readily available from many services such as: (i) from broadcast Apple : The proposed description schemes can be incorporated into current products similar to those from TiVo and Replay TV in order to extend their entertainment informational value In addition, the description scheme will handle programs coming from sources other than television broadcasts Apple : [P]rogram description scheme can be readily harmonized with existing EPG, PSIP, and DVB-SI information facilitating search and filtering of broadcast programs. Apple : [A]udio/video program descriptions 600 are available from the broadcast or other source... Apple : [T]he source of content may be from terrestrial sources, digital video disc, cable television, analog broadcast television, digital broadcast television, analog radio broadcasts, and digital radio broadcasts See also Apple , 0064, 0132, Figs. 2 and 28 Apple : The user description scheme is generated by direct user input, and by using a software that watches the user to determine his/her usage pattern and usage history. User description scheme can be updated in a dynamic fashion by the user or automatically. A well defined and structured description scheme design allows different devices to interoperate with each other. Apple : [S]toring the user s usage history including facts that the user viewed and selected programs and browsing procedures thereof viewed, and utilizing a variety of algorithms, a machine may automatically prepare the user s preferences. [Utilizing] the user s history description scheme may update the 22

29 unit and the settop box; user s preference description. [T]aking statistics of such history information, user s preference information may be derived. Apple : Since history information and preference information are independently managed, the preference information may be updated as desired. Apple : [U]ser s usage preference description 500 is updated to reflect data stored in the usage history description Apple : allowautomaticupdate attribute (set by the user) should be included in a description scheme specifying whether or not the preferences can be automatically modified (e.g., by an agent utilizing the usage history description) Apple : [T]he user s preferences are readily movable to different devices, such as a personal video recorder, a TiVo player, a RePlay Networks player, a car audio player, or other audio and/or video appliance. Yet, the user preference description 500 may be updated in accordance with the user s browsing, filtering, searching, and device preferences. Apple : The user description scheme 20 preferably includes the user s personal preferences, and information regarding the user s viewing history such as for example browsing history, filtering history, searching history, and device setting history. The user s personal preferences includes information regarding particular programs and categorizations of programs that the user prefers to view. The user description scheme may also include personal information about the particular user, such as demographic and geographic information, e.g. zip code and age. User description scheme information is persistent but can be updated by the user or by an intelligent software agent on behalf of the user at any arbitrary time. Apple : An intelligent software agent is preferably included within the SFB module 52 that gathers and provides user specific information to the generation module 44 to be used in authoring and updating the user description scheme Apple : [S]ystem can store the user history and create entries in the user description scheme based on the user s audio and video viewing habits. the user would never need to program the viewing information to obtain desired information. the user descriptor scheme enables modeling of the user by providing a central storage for the user s listening, viewing, browsing preferences, and user s behavior. See also Apple , 0063, 0095, 0098, , 23

30 detect a second user activity, the second user activity being initiated via a second device corresponding to one of the remote unit and the settop box, the second device being different from the first device, wherein either (i) Figs. 2, 25, 27, 28, Claim 12 Apple : The user starts interacting with the system with a pointer or voice commands to indicate a desire to view recorded sporting programs. On the display, the user is presented with a list of recorded sporting events including Basketball and Soccer. The system may have also recorded web-based textual information regarding the particular Chicago-Bulls game which may be selected by the user for viewing. After viewing the sporting events the user may decide to read the news about the Microsoft trial. Fortunately, the system, based on the three description schemes, has already been recording 20/20 since 10 PM. Now the user can start watching the recorded portion of 20/20 as the recording of 20/20 proceeds. Apple : [T]he user (user) can carry (or otherwise transfer) the information contained within his user description scheme from one appliance to another Appliances that can be personalized may access content from different sources. They may be connected to the web, terrestrial or cable broadcast, etc., and they may also access multiple or different types of single media such as video, music, etc. Apple : [T]he user may be traveling away from home with his smart card containing his usage preference description 500. During such traveling the user will likely be browsing, filtering, searching, and setting device preferences of audio and/or video content on devices into which he provided his usage preference description 500. Apple : [W]ith a relatively compact user preference description 500 the user s preferences are readily movable to different devices, such as a personal video recorder, a TiVo player, a RePlay Networks player, a car audio player, or other audio and/or video appliance. Yet, the user preference description 500 may be updated in accordance with the user s browsing, filtering, searching, and device preferences. Apple : When traveling, users desire to easily configure unfamiliar devices, such as audiovisual devices in a hotel room, with their viewing and listening preferences Apple : [U]ser can port his user description scheme from one device to another in order to personalize the device. See also Apple , 0042, 0046, 0058, 0062, 0091, Figs. 1, 2, and 28 Apple : The program 38 may originate at any 24

31 the first user activity comprises an activity related to television viewing and the second user activity comprises an activity unrelated to television viewing, or (ii) the first user activity comprises an activity unrelated to television viewing and the second user activity comprises an activity related to television viewing; suitable source, such as for example broadcast television, cable television, satellite television, digital television, Internet broadcasts, world wide web, digital video discs, still images, video cameras, laser discs, magnetic media, computer hard drive, video tape, audio tape, data services, radio broadcasts, and microwave communications.. Apple : [T]he user descriptor scheme enables modeling of the user by providing a central storage for the user s listening, viewing, browsing preferences, and user s behavior. This enables devices to be quickly personalized, and enables other components, such as intelligent agents, to communicate on the basis of a standardized description format, and to make smart inferences regarding the user s preferences. Apple : Appliances that can be personalized may access content from different sources. They may be connected to the web, terrestrial or cable broadcast, etc., and they may also access multiple or different types of single media such as video, music, etc. Apple : [T]he proposed description schemes can be incorporated into current products similar to those from TiVo and Replay TV in order to extend their entertainment informational value [T]he description scheme will enable audiovisual browsing and searching of programs.in addition, the description scheme will handle programs coming from sources other than television broadcasts for which TiVo and Replay TV are not designed to handle. [B]y standardization of TiVo and Replay TV type of devices, other products may be interconnected to such devices to extend their capabilities, such as devices supporting an MPEG 7 description. MPEG-7 is the Moving Pictures Experts Group - 7, acting to standardize descriptions and description schemes for audiovisual information. Apple : Because the description scheme is defined, the intelligent software agents can communicate among themselves to make intelligent inferences regarding the user s preferences. [T]he development and upgrade of intelligent software agents for browsing and filtering applications can be simplified based on the standardized user description scheme. Apple : Referring to FIG. 26, the usage preferences description may be used in cooperation with an M PEG-7 compliant data stream and/or device. It is preferable 25