`
`?Xhibit 70’6
`
`
`
`
`inc. v. Personalized Media Communications, LLC
`Zynga,
`
`
`Case "PR70’3—00156 (SCM)
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
`
`ZYNGA, INC.
`Petitioner
`
`V.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC
`Patent Owner
`___________________________
`
`Case No. IPR2013-00156
`U.S. Patent No. 7,860,131
`___________________________
`
`DECLARATION OF SAMUEL H. RUSS, PH.D.
`PURSUANT TO 37 C.F.R. § 1.68
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I, Dr. Samuel H. Russ, do hereby declare:
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`1.
`
`I am making this declaration at the request of Patent Owner
`
`Personalized Media Communications, LLC (“PMC”) in the matter of the Inter
`
`Partes Review, No. IPR2013-00156, of U.S. Patent No. 7,860,131 (“’131 Patent.”)
`
`In particular, this declaration addresses the patentability of substitute claim of the
`
`’131 Patent against the prior art, including the prior art cited by the Petitioner in
`
`their Petition for Inter Partes Review.
`
`I.
`
`QUALIFICATIONS & ENGAGEMENT
`2. My qualifications for forming the opinions set forth in this
`
`Declaration are summarized here and explained in more detail in my curriculum
`
`vitae, which is attached as part of Exhibit 2019. Exhibit 2019 also includes a list
`
`of my publications and the cases in which I have testified at deposition, hearing, or
`
`trial during the past four years.
`
`3.
`
`I received a Bachelor’s degree in Electrical Engineering from the
`
`Georgia Institute of Technology (“Georgia Tech”) in 1986 and a Ph.D. in
`
`Electrical Engineering from Georgia Tech in 1991.
`
`4.
`
`From 2007 to the present, I have been a member of the faculty of the
`
`University of South Alabama as an Assistant and Associate Professor in the
`
`Department of Electrical and Computer Engineering. During that time, I have won
`
`awards for excellent teaching and have been actively publishing research in home
`
`
`
`1
`
`
`
`
`
`
`networking and digital video recording (DVR) technologies. I am active in the
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`Institute of Electrical and Electronic Engineers (IEEE) and am a Distinguished
`
`Lecturer for the IEEE Consumer Electronics Society. As a consultant, I have
`
`conducted briefings for members of the financial community on technology trends
`
`in the cable, satellite, and IPTV sectors. I teach classes in subjects including
`
`encryption, digital system design, signal integrity, systems engineering, software
`
`development, embedded system development, digital logic design, and computer
`
`engineering.
`
`5.
`
`From 2000 to 2007, I worked for Scientific-Atlanta (now Cisco’s
`
`Service Provider Video Tech. Group), where I managed a cable set-top box (STB)
`
`design group that designed four STB models, including the Explorer 4200 (non-
`
`DVR) and 8300 (DVR) models. Set-top boxes contain numerous features relevant
`
`to the Harvey patents, including networking, communications, interactivity, the
`
`ability to download software, video and audio processing, and digital audio and
`
`video. Both models sold several million units. As design-group manager, I was
`
`responsible for managing the design and prototyping activities of the group and for
`
`interfacing with other groups (especially integrated-circuit design, procurement,
`
`software developers, the factory where prototypes were built, and product
`
`managers) and for maintaining the hardware and mechanical development
`
`schedule. Since the products were produced in extremely high volumes, the
`
`
`
`2
`
`
`
`
`
`
`projects had very high visibility in the company, and therefore carried a great deal
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`of responsibility. In order to manage the design of cable set-top boxes, I had to be
`
`an expert in communications, signal processing, networking, distributed systems,
`
`remote downloading of software, encryption/decryption, and software development
`
`including coding and testing.
`
`6.
`
`Also while at Scientific-Atlanta, I became a staff expert in home
`
`networking, conducting demonstrations of breakthrough wireless video-
`
`distribution technology and managing a group that developed a new coaxial home
`
`networking system. The coaxial system won a Technology and Engineering
`
`Emmy® Award in 2013. I became a staff expert in DVR reliability and led a team
`
`that improved the software, hardware, repair, manufacturing processes, and vendor
`
`qualifications of DVR set-tops and hard disk drives. I was a named inventor on
`
`forty-eight (48) patent applications that were filed while I was at Scientific-
`
`Atlanta, twenty five (25) of which have issued as patents as of the writing of this
`
`Declaration.
`
`7.
`
`From 1999 to 2000, I was a Staff Electrical Engineer and then Matrix
`
`Manager at IVI Checkmate (now Ingenico), where I managed the hardware design
`
`team that completed the design of the eN-Touch 1000 payment terminal. This
`
`terminal was in widespread use, for example, at the self-checkout at Home Depot.
`
`
`
`3
`
`
`
`
`
`
`
`8.
`
`I also served on the faculty of Mississippi State University from 1994
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`to 1999 as an Assistant Professor in the Department of Electrical & Computer
`
`Engineering where I taught circuit board design and two-way interactive video
`
`classes, among other things. I managed the development of a distributed run-time
`
`environment that could run complex physical simulations on networked
`
`workstations and could migrate software between workstations while it was
`
`running.
`
`9.
`
`I have also authored 32 journal articles and conference papers. A
`
`recent conference paper on digital video recording won second place in a “best
`
`paper” competition at the 2011 International Conference on Consumer Electronics
`
`in Las Vegas, NV. A complete list of publications is included in my curriculum
`
`vitae, attached as Exhibit 2019.
`
`10.
`
`In my current capacity as an independent consultant I have reviewed
`
`and verified the operation of a wide variety of technical systems, including
`
`processors, personal computers, television devices, smart phones, peripherals and
`
`bus systems.
`
`11.
`
`In forming the opinions expressed in this Declaration I have relied
`
`upon my education and my 22 years of professional and academic experience.
`
`
`
`4
`
`
`
`
`
`
`
`12.
`
`I am being compensated for my work in this matter at my standard
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`hourly rate of $300 for consulting services. My compensation for this matter is not
`
`determined by or contingent on the outcome of this case.
`
`II. MATERIALS REVIEWED AND RELIED UPON
`13.
`In preparing this Declaration I reviewed and considered the following
`
`materials:
`
`a.
`
`b.
`
`The ’131 Patent and its file history;
`
`The claim listing in PMC’s motion to amend containing the
`
`substitute claim 12.
`
`c.
`
`The Petition for Inter Partes Review of the ’131 Patent filed by
`
`the Zynga Inc. (“the Petitioner”) (“The Petition” or “Pet.”) and the exhibits
`
`that are cited by the Petition, including, the Declaration of Charles J.
`
`Neuhauser, Ph.D. (“Neuhauser Declaration”, “Dr. Neuhauser” or
`
`“Neuhauser Decl.”) (Ex. 1010);
`
`d.
`
`The Patent Trial and Appeal Board’s (“the Board”) Decision on
`
`Institution of Inter Partes Review of the ’131 Patent, dated July 25, 2013
`
`(“the Decision” or “Dec.”)
`
`e.
`
`U.S. Patent No. 4,204,206 to Higgins et al. (“Higgins”) (Ex.
`
`1007);
`
`
`
`5
`
`
`
`
`
`
`
`f.
`
`U.S. Patent No. 4,339,798 to Hedges et al. (“Hedges”) (Ex.
`
`1008);
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`g.
`
`Transcripts of the Deposition of Dr. Neuhauser on October 8-9,
`
`2013 (“Neuhauser Dep.”) (Exs. 2013, 2014);
`
`h.
`
`All other documents cited and used in my Declaration.
`
`14.
`
`In addition to the materials above, I have reviewed materials in
`
`connection with related inter partes proceedings Case Nos. IPR2013-00162,
`
`IPR2013-00164, IPR2013-00171. The ’131 Patent and the Patents-at-issue in
`
`these related cases, U.S. Patent Nos. 7,908,638; 7,797,717; and 7,734,251, all share
`
`a common disclosure, as described in the background of the technology section
`
`below.
`
`15. An additional basis for my opinions is my own experience as an
`
`engineer acquired, for example, while I was a manager and a staff expert at
`
`Scientific-Atlanta (“S-A”). As noted above, I have managed the design of four
`
`electronic products that entered mass production (three cable set-top boxes, the
`
`Explorer 1840, 4200, and 8300, and one point-of-sale retail terminal, the eN-Touch
`
`1000). Two of those products (the Explorer 4200 and 8300) were produced in
`
`million-unit quantities. I also became a staff expert in home networking and DVR
`
`reliability and performance, as well as all aspects of cable, satellite, and IPTV
`
`“Pay-TV” networks.
`
`
`
`6
`
`
`
`
`
`
`
`16.
`
`I have also relied on my years of education, teaching, research, and
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`experience concerning software, circuit design, signal integrity, computer
`
`architecture, digital logic design and synthesis, embedded systems, distributed
`
`computing, computer and network security, and networking.
`
`III. SUMMARY OF CONCLUSIONS
`17. As described in detail below, it is my opinion that substitute claim 12,
`
`which replaces original independent claim 1, is novel and non-obvious over the
`
`prior art, including Higgins and Hedges. For at least this reason, original
`
`dependent claims 3, 4, 6, 9, and 11 which depend from original claim 1 (now
`
`substitute claim 12) are also novel and non-obvious over the prior art.
`
`IV. LEGAL STANDARDS
`18.
`I am not an attorney. I have been advised of the following general
`
`principles of patent law to be considered in formulating my opinions as to whether
`
`the claims of the ’131 Patent are anticipated or would have been obvious to a
`
`POSITA at the time of the invention in view the prior art.
`
`19.
`
`It is my understanding that in determining whether a patent claim is
`
`anticipated or obvious in view of the prior art, the Patent Office must construe the
`
`claim by giving the claim its broadest reasonable interpretation consistent with the
`
`specification from the standpoint of a person of ordinary skill in the art. For the
`
`
`
`7
`
`
`
`
`
`
`purposes of this review, unless otherwise stated, I have construed each claim term
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`in accordance with its plain and ordinary meaning under the required broadest
`
`reasonable interpretation.
`
`A. Anticipation
`
`20.
`
`It is my understanding that anticipation under 35 U.S.C. § 102
`
`requires that a single prior art reference or product discloses or contains, expressly
`
`or inherently, every limitation of the claimed invention.
`
`21.
`
`It is my understanding that inherency exists only if it necessarily
`
`follows that the device or system would have the element at issue. If the device or
`
`system could operate without the element at issue, such as by operating in a
`
`different way or using a different element, there is no inherency.
`
`22. The standards for anticipation from 35 U.S.C. §102(a) and (b)
`
`applicable to the ’131 Patent are reproduced below:
`
`a.
`
`The invention was known or used by others in this country, or
`
`patented or described in a printed publication in this or a foreign country,
`
`before the invention thereof by the applicant for patent, or
`
`b.
`
`The invention was patented or described in a printed
`
`publication in this or a foreign country or in public use or on sale in this
`
`country, more than one year prior to the date of the application for patent in
`
`the United States.
`
`
`
`8
`
`
`
`
`
`
`(35 U.S.C. §§102(a)-(b) (2012).)
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`23.
`
`I understand that a claimed invention is anticipated under 35 U.S.C. §
`
`102(e) if that invention is described in another U.S. Patent that was filed earlier,
`
`unless the inventor of the claimed invention conceived of the claimed invention
`
`before the other U.S. Patent was filed.
`
`B. Obviousness
`
`24.
`
`It is my understanding that a claim is invalid for obviousness under 35
`
`U.S.C. § 103 if two or more prior art references in combination disclose, expressly
`
`or inherently, every claim limitation so as to render the claim, as a whole, obvious.
`
`Alternatively, a claim can be invalid under 35 U.S.C. § 103 if a single prior art
`
`reference combined with the knowledge of one of ordinary skill in the art discloses
`
`every claim limitation so as to render the claim, as a whole, obvious. The relevant
`
`standard for obviousness is as follows:
`
`a.
`
`A patent may not be obtained though the invention is not
`
`identically disclosed or described as set forth in section 102 of this title, if
`
`the differences between the subject matter sought to be patented and the
`
`prior art are such that the subject matter as a whole would have been obvious
`
`at the time the invention was made to a person having ordinary skill in the
`
`art to which said subject matter pertains. Patentability shall not be negatived
`
`by the manner in which the invention was made.
`
`
`
`9
`
`
`
`
`
`
`(35 U.S.C. § 103 (2012).)
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`25.
`
`I understand that in determining whether or not a patented invention
`
`would have been obvious, the following factors should be considered: (a) the scope
`
`and content of the prior art; (b) the differences between the prior art and the claims
`
`at issue; (c) the level of ordinary skill in the art; and (d) whatever “secondary
`
`considerations” may be present.
`
`26.
`
`I understand that certain “secondary considerations” may be relevant
`
`in determining whether or not an invention would have been obvious, and that
`
`these secondary considerations may include commercial success of a product using
`
`the invention, if that commercial success is due to the invention; long-felt need for
`
`the invention; evidence of copying of the claimed invention; industry acceptance;
`
`initial skepticism; failure of others; praise of the invention; and the taking of
`
`licenses under the patents by others.
`
`27.
`
`I understand that a patent composed of several elements is not proved
`
`obvious merely by demonstrating that each of its elements was, independently,
`
`known in the prior art. But multiple prior art references or elements may, in some
`
`circumstances, be combined to render a patent claim obvious. I understand that I
`
`should consider whether there is an “apparent reason” to combine the prior art
`
`references or elements in the way the patent claims. To determine whether such an
`
`“apparent reason” to combine the prior art references or elements in the way a
`
`
`
`10
`
`
`
`
`
`
`patent claims, it will often be necessary to look to the interrelated teaching of
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`multiple patents, to the effects of demands known to the design community or
`
`present in the marketplace, and to the background knowledge possessed by a
`
`person having ordinary skill in the art.
`
`28.
`
`I also understand that when the prior art “teaches away” from
`
`combining prior art references or certain known elements, discovery of a
`
`successful means of combining them is more likely to be non-obvious. A prior art
`
`reference may be said to “teach away” from a patent when a person of ordinary
`
`skill, upon reading the reference, would be discouraged from following the path set
`
`out in the patent, or would be led in a direction divergent from the path that was
`
`taken by the patent. Additionally, a prior art reference may “teach away” from a
`
`claimed invention if a person of ordinary skill would be discouraged from
`
`combining the reference with another reference, such as when substituting an
`
`element within that prior art reference for a claim element would render the
`
`claimed invention inoperable or ineffective for its intended purpose.
`
`29.
`
`I also understand that it is not permissible to use hindsight in assessing
`
`whether a claimed invention is obvious. Rather, I understand that, to assess
`
`obviousness, you must place yourself in the shoes of a person having ordinary skill
`
`in the relevant field of technology at the time the inventions were made who is
`
`
`
`11
`
`
`
`
`
`
`trying to address the issues or solve the problems faced by the inventor and ignore
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`the knowledge you currently now have of the inventions.
`
`C.
`
`30.
`
`Persons of Ordinary Skill in the Art
`
`I believe that the ’131 Patent is addressed to a person with at least the
`
`equivalent of a first college degree in digital electronics, electrical engineering,
`
`computer engineering, computer science, or a related technical degree, with several
`
`years (e.g., 2-5 years) of post-degree experience in a similar field. In determining
`
`who would be a person of ordinary skill, I considered at least the following criteria:
`
`(a) the type of problems encountered in the art; (b) prior art solutions to those
`
`problems; (c) the rapidity with which innovations are made; (d) the sophistication
`
`of the technology; and (e) the education level of active workers in the field.
`
`V. LISTING OF THE CLAIMS AT ISSUE IN INTER PARTES REVIEW
`Original Claim 1. (Replaced by proposed substitute claim 12).
`
`Substitute claim 1 (Submitted in PMC’s motion to amend as proposed
`
`substitute claim 12). A method of enabling a station of a particular kind to deliver
`
`complete programming, said station including a storage device, and said method
`
`comprising the steps of:
`
`storing programming at said storage device, said stored programming
`
`comprising a computer program and a portion of programming to be completed
`
`
`
`12
`
`
`
`
`
`
`by accessing prestored data at said station of a particular kind,
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`wherein said computer program is operative to complete said portion when
`
`executed at said station of a particular kind, said execution of said computer
`
`program enabling a processor at said station of a particular kind to select a specific
`
`datum from said prestored data based on subscriber specific data and place
`
`information, which results from a processing of said selected datum, into said
`
`portion of programming to be completed at said storage device, thereby
`
`completing said programming at said storage device, the completed
`
`programming including at least an advertisement for delivery from the station
`
`of a particular kind to a subscriber; and
`
`storing a control signal, which is operative at at least one particular kind of
`
`station, said control signal operative to cause said execution of said computer
`
`program,
`
`whereby said station of a particular kind is enabled to deliver complete
`
`programming.
`
`3. (Original) The method of claim 1, wherein said prestored data designates
`
`subscriber data, said method further comprising the step of storing subscriber data.
`
`4. (Original) The method of claim 1, wherein said control signal comprises
`
`a series or stream of sequentially transmitted control instructions, said method
`
`further comprising the step of storing in said control signal two or more control
`
`
`
`13
`
`
`
`
`
`
`instructions in a specific order with information designating a time period.
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`6. (Original) The method of claim 1, wherein said portion to be completed
`
`comprises generally applicable information.
`
`9. (Original) The method of claim 1, wherein a control signal causes a
`
`controller operatively connected to said storage station to control a peripheral
`
`device, said method further comprising the step of storing said control signal.
`
`11. (Original) The method of claim 1, wherein said storage device is an
`
`ultimate receiver station.
`
`VI. THE CLAIMED INVENTION
`31.
`In numerous embodiments, the ’131 Patent describes a system that
`
`could combine the capacity for conveying general information to large audiences
`
`(such as telling them that stock prices rose today in heavy trading) with
`
`information of specific relevance to each particular user in the audience. (’131
`
`Patent, 1:57-65.) The ’131 Patent describes methods for delivering complete
`
`programming, including truly personalized advertisements and other programming
`
`to subscribers by executing a computer program that causes a processor to select
`
`specific data from prestored data and place information, which results from
`
`processing of selected data, into a portion of programming to be completed,
`
`thereby completing the programming so that it can be delivered.
`
`
`
`14
`
`
`
`
`
`
`
`32. The ’131 Patent, for instance, describes an “Exotic Meals of India”
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`program and advertisements for pork bellies. The cooking show becomes a
`
`personalized experience, and the patent gives multiple examples of that
`
`personalization. (Id. at 244:31-54.) In one example, the price of pork bellies
`
`varies from person to person based on the supermarket that is nearest that
`
`individual, the “spot” price of pork bellies, and the transportation costs to the
`
`customer. During a break, advertisement programming is provided to the viewer.
`
`(Id. at 185:45-187:16; 252:11-254:17.)
`
`33. The advertisement, at one instance, promises to “deliver to you, at
`
`cost, all the pork you need to entertain five hundred people for this low, low price”
`
`(Id. at 252:51-53.) -- at which point the personalized price appears on the screen.
`
`The commercial spot Q is tailored based on the subscriber’s location (e.g.,
`
`commercial is for a supermarket that is closest to that viewer) and dietary habits
`
`(e.g., the commercial for the first family could be for “Patak's low-salt Vindaloo
`
`Curry Paste” whereas the commercial for the second family could be for something
`
`different, “Patak's Quick Curry Paste (Hot)”. (See, e.g., ’131 Patent at 185:45-
`
`187:16; 250:11-251:26; 252:11-254:51.) Personalized audio is also delivered
`
`because the announcer states “represents a saving to you of over [forty-three/forty
`
`six/etc.] percent.” (Id. at 253:33-254:17.) Using the patented invention, each
`
`
`
`15
`
`
`
`
`
`
`subscriber can be shown a different, personalized price on his or her TV monitor.
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`The subscribers are receiving personalized commercials. (Id. at 252:34-253:29.)
`
`34. A person of ordinary skill in the art would further recognize that the
`
`advertisements included in the programming are functionally integral to the
`
`invention claimed by substitute claim 12. Advertisements, and in particular, the
`
`content of the advertisement included in the programming, transforms the
`
`particular steps that are taken by the computer, as recited in the claim. The
`
`advertisement and its content transform the selection of a specific datum from
`
`the prestored data based on subscriber specific data. Similarly, it affects the
`
`information that is placed into the portion to be completed, where the
`
`information is the result of processing the selected datum. The commercials
`
`that are provided are not merely any commercial, but rather, as recited in the claim,
`
`are part of programming that is completed based on subscriber specific data. The
`
`content of the commercial is integral to the selection of data from the prestored
`
`data. In the “Exotic Meals of India” commercial example, the prestored data that
`
`is selected relates to the current prices of Pork at the nearest store, the location of
`
`the viewer’s home versus the nearest grocery store, the dietary habits of the viewer
`
`and his or her family and other information. Moreover, the claim recites that the
`
`advertisement is delivered from the station to the subscriber. Without the
`
`advertisement, the selection, placing and processing operations of the claimed
`
`
`
`16
`
`
`
`
`
`
`invention, a station of a particular kind would not deliver complete programming
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`in the same manner. For this reason, the advertisements included in the
`
`programming are functionally integral to the claimed invention.
`
`35.
`
`In my opinion, a person of ordinary skill in the art would have found
`
`the invention claimed by the substitute claim to be significant. At the time of the
`
`invention, the inventors understood that there was great potential for combining the
`
`capacity of broadcast communications media to convey ideas with the capacity of
`
`computers to process and output user specific information. For example, such a
`
`system could combine the capacity for conveying general information to large
`
`audiences (such as telling them that stock prices rose today in heavy trading) with
`
`information of specific relevance to each particular user in the audience (such as
`
`telling a particular person “but the value of your stock portfolio went down.”).
`
`(’131 Patent, 1:57-65.)
`
`36. Part of the significance of the invention is the ability for programming
`
`to be completed based in part on subscriber specific data, i.e., by the selecting from
`
`prestored data based on subscriber specific data. This allows for programming to
`
`be tailored to individual subscribers. Significantly, the prior art systems of 1987
`
`were unable to provide such customization. Furthermore, it is significant that the
`
`completed programming can include advertisements. This allows even for
`
`advertisements to be tailored to specific subscribers.
`
`
`
`17
`
`
`
`
`
`
`
`37. As evident from the examples described in the ’131 Patent these and
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`other features of the claimed invention allow for users to enjoy programming that
`
`is tailored specifically for the user, e.g., based on information about the user that
`
`may be available at each station. As the patents explain, “Unlocking this potential
`
`is desirable because these new media will add substantial richness and variety to
`
`the communication of ideas, information and entertainment. Understanding
`
`complex subjects and making informed decisions will become easier. To unlock
`
`this potential fully requires means and methods for combining and controlling
`
`receiver systems that are now separate.” (Id. at 2:1-11.)
`
`VII. CLAIM CONSTRUCTION
`38. As seen above, PMC’s substitute claim recites that the completed
`
`programming includes at least an advertisement for delivery from the station
`
`of a particular kind to a subscriber.
`
`39.
`
`In my opinion, “advertisement” requires no construction. The term
`
`should be construed according to its plain and ordinary meaning.
`
`40.
`
`It is my understanding that a term must be given its ordinary and
`
`customary meaning as it would be understood by one of ordinary skill in the art
`
`considered in light of the specification of the patent. With this requirement in
`
`mind, to the extent the Board requires construction of the term, a person of
`
`ordinary skill in the art in 1987 would construe the term “advertisement” to be its
`
`
`
`18
`
`
`
`
`
`
`plain and ordinary meaning: a notice or statement about goods, products or
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`services for the purpose of attracting customers or supporters.
`
`41. The ’131 Patent is organized around a set of examples that show
`
`numerous ways in which the inventions can be practiced. Many of these examples
`
`describe advertisements included in completed programming. In particular, these
`
`advertisements take the form of notices or statements that are provided to the
`
`viewer describing goods, products or services for the purpose of attracting
`
`customers or supporters. In the “Exotic Meals of India” program that I described
`
`above, the advertisements are commercials that are provided to the subscriber to
`
`attract the customer into purchasing pork that can be delivered to the customer’s
`
`home for a user-specific price. During this advertisement, the announcer
`
`announces:
`
`Think how much your friends enjoy outdoor barbecues.
`
`(’131 Patent, 252:44.)
`
`For a limited time only, Super Discount Supermarkets make this
`special offer to you. Super Discount Supermarkets will deliver to you,
`at cost, all the pork you need to entertain five hundred people for this
`low, low price . . .
`
`(Id. at 252:48-52.) A user-specific price is generated and provided to the
`viewer. Then, the announcer announces:
`Super Discount Supermarkets makes this offer-today only-at cost, and
`this offer represents a saving to you of over . . .
`
`
`
`19
`
`
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`
`(Id. at 253:30-34.) Then the computer is caused to output the percentage of
`saving to the user in the announcer’s voice saying “forty-six”. (Id. at
`252:34-253:29.) Subsequently, the commercial continues, and announces to
`the viewer:
`To confirm this very special limited offer to you in writing, we are
`now printing, at your printer . . . the current specials and coupon
`offers of Super Discount Supermarkets which include a special
`coupon for you with which you can buy enough pork for your own
`barbecue party.
`
`(’131 Patent, 254:61-257:7)
`
`42.
`
`In another example, farmers are provided with programming that
`
`helps them plan for the upcoming year. As part of the programming provided to
`
`the viewer, the ’131 Patent describes that the receiver station of the farmer is
`
`capable of receiving a series of advertisements in the form of spot commercials.
`
`The ’131 Patent describes that these spot commercials are “for a particular new
`
`farm truck, a particular new farm tractor, a particular new farm disk harrow.”
`
`Automatically, under control of its received program instruction set,
`the microcomputer, 205, of its farmer’s station records complete
`information of said farmer’s crop planting plan at its A: disk in a file
`named PLANTING.DAT.
`
`Then automatically, under control of its particular program instruction
`set, each farmer’s microcomputer, 205, computes and retains
`information of a particular schedule of spot commercials. Information
`of twenty-six specific potential commercials of any given schedule are
`included in the information of its set, and the specific commercials
`
`
`
`20
`
`
`
`
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`include, for example, commercials for a particular new farm truck, a
`particular new farm tractor, a particular new farm disk harrow,
`software of a particular new “PROPRIET.MOD” module for
`analyzing crop planting plans and generating recommended planting
`plans in a “new improved fashion,” etc. Under control of the
`instructions of its particular set, by analyzing the budget information
`of the farmers’ crop planting plan, each microcomputer, 205,
`automatically identifies four commercial spots that are of a particular
`possible highest potential value to its farmer. For example, by
`analyzing equipment depreciation information, one
`microcomputer, 205, determines that its farmer has an old truck, a
`new tractor, and a new disk harrow and selects, as one of its four
`commercials, the commercial of the new truck. Meanwhile, another
`microcomputer, 205, determines that its farmer has an old truck, a
`new tractor, and an old disk harrow and selects the commercial of the
`new truck because a new truck is costlier than a disk harrow and may
`be more valuable to its farmer. Automatically, the microcomputer,
`205, of each station inputs to the signal processor, 200, of its station
`particular schedule information of its four identified commercial
`spots. In due course, the recorder, 76, of each local intermediate
`station transmits further additional SPAM messages that are
`embedded in its prerecorded programming and that are addressed to
`URS microcomputers, 205, then transmits a particular local-second-
`cueing message (#11) that is addressed to ITS computers, 73.
`
`(’131 Patent, 283:29-59.)
`
`Playing each commercial spot causes the combined medium
`information of said spot to display information of a particular
`commercial product such as a truck or a particular service such as a
`software package; to access the prerecorded “A:PLANTING.DAT”
`
`
`
`21
`
`
`
`
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`
`disk file information of a farmer’s crop planting plan; in a fashion
`well known in the art, to generate cost/benefit financial analysis of the
`incremental benefit of acquiring and using the displayed product or
`service (by comparison with the farmer’s existing product or service
`of like kind); and to display (or otherwise output) information of said
`analysis (if said analysis results in a positive net present benefit).
`
`(’131 Patent, 285:23-34.)
`
`43. The advertisement included in the programming provides a series of
`
`messages that are provided, in this case,