IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Inter Partes Review of US Patent No. 7,797,717
`
`Trial No.: IPR2013-00164
`
`Issued: September 14, 2010
`
`Filed: May 23, 1995
`
`Inventors: John Christopher Harvey, 83‘ a1.
`
`Assignee: Personalized Media Communications, LLC
`
`Title: SIGNAL PROCESSING APPARATUS AND METHODS
`
`REBUTTAL DECLARATION OF CHARLES J. NEUHAUSER, Ph.D.
`UNDER 37 C.F.R. 1.68
`
`I, Dr. Charles J. Neuhauser, do hereby declare:
`
`l.
`
`I am making this rebuttal declaration at the request of Zynga, Inc. in
`
`the matter of the Inter Partes Review of US Patent No. 7,797,717 (“the ‘717
`
`Patent”)
`
`2.
`
`I am being compensated for my work in this matter at my standard
`
`hourly rate of $375 for consulting services. My compensation in no way depends
`
`on the outcome of this proceeding.
`
`3.
`
`I previously submitted a declaration in support of the Petition for Inter
`
`Partes Review filed by Zynga, Inc. on February 26, 2013 (Exhibit 1012, referred to
`
`herein as “Neuhauser I”).
`
`4.
`
`This declaration is in rebuttal to the Patent Owner Response (Paper
`
`No. 15) (referred to herein as “PMC Resp”) and the Declaration of Samuel H.
`
`ZYNGA EX. 1014
`
`
`
`In the Inter Partes Review of US Patent No. 7,797,717
`
`Trial No.: IPR2013-00164
`
`Issued: September 14, 2010
`
`Filed: May 23, 1995
`
`Inventors: John Christopher Harvey, 83‘ a1.
`
`Assignee: Personalized Media Communications, LLC
`
`Title: SIGNAL PROCESSING APPARATUS AND METHODS
`
`REBUTTAL DECLARATION OF CHARLES J. NEUHAUSER, Ph.D.
`UNDER 37 C.F.R. 1.68
`
`I, Dr. Charles J. Neuhauser, do hereby declare:
`
`l.
`
`I am making this rebuttal declaration at the request of Zynga, Inc. in
`
`the matter of the Inter Partes Review of US Patent No. 7,797,717 (“the ‘717
`
`Patent”)
`
`2.
`
`I am being compensated for my work in this matter at my standard
`
`hourly rate of $375 for consulting services. My compensation in no way depends
`
`on the outcome of this proceeding.
`
`3.
`
`I previously submitted a declaration in support of the Petition for Inter
`
`Partes Review filed by Zynga, Inc. on February 26, 2013 (Exhibit 1012, referred to
`
`herein as “Neuhauser I”).
`
`4.
`
`This declaration is in rebuttal to the Patent Owner Response (Paper
`
`No. 15) (referred to herein as “PMC Resp”) and the Declaration of Samuel H.
`
`ZYNGA EX. 1014
`
`
`
`Russ, Ph.D. (Exhibit 2019) (referred to herein as “Russ Deal”) both filed on
`
`October 25, 2013.
`
`I.
`
`Anticipation by Humble
`
`5.
`
`As set forth in Neuhauser I, claims 1, 2, 3, 4, 5, 6 and 9 of the Harvey
`
`‘717 are anticipated by Humble (4,825,043) and therefore are unpatentable.
`
`A.
`
`Claim 1:
`
`(i)
`
`Humble Discloses “Generating a Benefit Datum in
`Response to the First Control Signal by Processing
`Subscriber Specific Data.”
`
`6. With respect to the second element of claim 1, I have identified the
`
`‘3?er control signal” as signal 30 from the UPC scanner and the “subscriber
`
`specific data” as the particular UPC code scannedl [Neuhauser I, 11112, 1114,
`
`respectively]. PMC suggests that I have identified the same aspect of. Humble,
`
`namely the signal received over line 30, to Show anticipation of both “first control
`
`signal” and “subscriber specific data ” [PMC Resp. p.9]. Dr. Russ makes a similar
`
`argument at Russ Decl. 1166-70.
`
`7.
`
`There are, in fact, two aSpects to the signal 30 that is provided by UPC
`
`scanner 12. There is the presence of the signal, which indicates that an item has
`
`been scanned and, in addition, there is the content of the signal that indicates the
`
`1 Alternatively, I identified the “subscriber specific data” as the total product
`purchased [Neuhauser I 11114].
`
`
`
`UPC code associated with the particular item that was scanned. Although the
`
`signal 30 may be a single electrical signal,
`
`it contains both of these aspects,
`
`namely, a presence that signals the start of an action (i.e. indicating that something
`
`has been scanned) and the contents of the signal, which defines the product
`
`scanned.
`
`In this case the presence-of the signal indicates that a UPC bar code has
`
`been scanned so that the comparator of “717 Figure 2 may begin operation, and the
`
`data contained in signal 30 indicates the particular UPC code, which may or may
`
`not correspond to the stored UPC codes 48, 50, 60 and 62. Humble makes this
`
`clear at 1:16-22 where the action of the checker (i.e. passing the item over the
`
`scanner) causes generation of the signal, which contains the actual UPC code
`
`scanned:
`
`Typically,
`
`the checker passes the article over a universal
`
`product code (UPC) scanner. The UPC is thus read and a
`
`digital signal indicative of the code is furnished to a computer
`
`whose memory includes such identification and price data in
`
`storage in address correspondence with the code signal.
`
`(Humble, 1 :16-22.)
`
`8.
`
`Further, at 3:52-61 Humble describes that the “sensible codes” of the
`
`scanned products are detected and then used to compare against stored codes.
`
`Thus, clearly showing that there is a difference between the presence of an
`
`information transmission, which functions here as a “control signal” and the data
`
`DJ
`
`
`
`contained within that signal, which is the product code and corresponds to the
`
`“subscriber specific data”.
`
`In its method for
`
`the checkout of products bearing
`
`sensible codes indicative and for the promotion of related
`
`products,
`
`the invention provides the steps of storing codes
`
`indicative of preselected of the products for use in such
`
`promotion,
`
`storing
`
`for
`
`display
`
`promotional messages
`
`concerning products, detecting sensible codes of purchased
`
`products, comparing such detected codes of purchased products
`
`with such stored codes, and displaying the stored promotional
`
`messages selectively in accordance with the results of such
`
`comparison. (Humble 352-61.)
`
`9.
`
`In describing the system at 1:47-57, Humble teaches that the checkout
`
`system is “responsive” to UPC signals provided by the scanner. One of ordinary
`
`skill in the art would understand that the system is responsive to the presence of the
`
`UPC signal on line 30 for example, and that it uses the data contained within this
`
`signal to determine what action, if any, to take.
`
`The display unit is furnished with information from a system
`
`responsive to UPC signals provided by a scanner. Such system
`
`discems selected products selected for purchase from such UPC
`
`signals, such products being those in connection with which a
`
`promotional plan has been preestablished, either
`
`for such
`
`products or other products.
`
`The system then provides
`
`information implementing the promotional plan to the display
`
`
`
`unit, which may be customer-interactive for the dispensing of
`
`coupons of the like. (Humble 1:47-57.)
`
`10. At paragraph 68 Dr. Russ says: “That is, the personalized advertising
`
`promotion in Humble is not selected in response to the UPC signal by processing
`
`the some UPC signal”. However, that is exactly what is happening. Once the
`
`UPC signal is received then the comparison can take place. Without responding to
`
`the reception of the UPC code how would the comparators (e.g., 40) know when to
`
`undertake the comparison of the data that signal 30 contains? Unless they respond
`
`to the affirmative presence of the signal they would respond, perhaps erroneously,
`
`to partial UPC codes or even to received noise. The section from Humble at 1:16-
`
`22 that I have cited above clearly indicates that line 30 “furnishes” a signal
`
`indicative of the UPC code for the product.
`
`It can do this because the signal
`
`represents both the fact that a product has been scanned and that it had a specific-
`
`UPC.
`
`(ii) Humble Discloses “Receiving... Information
`Transmission At Said Receiver Station.”
`
`11.
`
`In its response PMC asserts that
`
`the “information content” (i.e.
`
`product price and descriptive information) is not received “at said receiver station”
`
`as required in the first element of claim 1 [PMC Resp., p. 16]. Dr. Russ makes a
`
`similar assertion at 1157 of his declaration because he apparently believes that
`
`“information transmission” can only be received from an external source, such as
`
`
`
`transmission stations shown in some of the preferred embodiments of the ‘717
`
`patent.
`
`[See also, Exhibit 1019, Deposition Transcript of Samuel H. Russ, pg. 254,
`
`line 3 — pg. 255, line 3.]
`
`12.
`
`However, claim 1 of the ‘717 patent does not place any restrictions
`
`on how a “receiver station” making use of the method obtains the “information
`
`content There is no reason why this “information content” could not be received
`
`from some other part of the “receiver station” or from some source external to the
`
`“receiver station”. The only requirement is that the information content and the
`
`control signal must be received in an “information transmission at said receiver
`
`station”
`
`One of ordinary skill in the art would recognize just from looking at
`
`Humble Figure 1 that the product price and description information on lines 18 and
`
`20 are received by UPC Data Buffer 24 and by POS display 22, because
`
`transmitting and receiving information within a processor based system, such as
`
`Humble, is a basic engineering concept.
`
`13.
`
`Furthermore, even the language within claim 1 itself demonstrates that
`
`information can be received “at said receiver station” because the fourth claim
`
`element requires “receiving subscriber input at said receiver station” [287230-31].
`
`Consider, Example #9 — Exotic Meals of India, which is one of the preferred
`
`embodiments of the ‘717 [see generally, 241:46-245z32].
`
`In this example,
`
`in
`
`response to a prompt from the television broadcast, the subscriber may enter a
`
`
`
`sequence of characters at their Widget Signal Generator and Local Input (i.e. Local
`
`Input 225, which is a keyboard). This information is “transmitted” from local
`
`input 225 to controller 20. Both of these components are identified in Figure 7 as
`
`part of the “ultimate receiver station”. Thus, one of ordinary skill in the art would
`
`understand directly from claim 1 that information can be transmitted and received
`
`internally within a “receiver station”. However, if they needed further Clarification
`
`then simply reviewing the Exotic Meals of India example would demonstrate that
`
`this was the proper way to understand the claim:
`
`Halfway through the program the host says, “If you are
`
`interested in cooking what we are preparing here and want a
`
`[sic] your own printed copy of the recipe tailored to your own
`
`tastes and your own shopping list for a charge of only 10 cents,
`
`enter on your Widget Signal Generator and Local Input the
`
`information the you see on your screen.” The information that
`
`appears on the screen of each subscriber is “TV567#”.
`
`Each subscriber — in particular,
`
`the subscriber of the
`
`station of FIGS. 7 and 7F, said second subscriber, and said third
`
`subscriber — enters W567#, in a fashion well known in the art,
`
`at the keyboard of the specific local
`
`input, 225, of his own
`
`station which causes said input, 225, to transmit a particular
`
`preprogrammed
`
`process-local-input
`
`instruction
`
`and
`
`said
`
`TV567# information to the controller, 20, of the signal
`
`processor, 200, of said station.
`
`
`
`Receiving said instruction and information causes the
`
`controller, 20, at each station where TV567# is entered, in a
`
`predetermined fashion, to retain said TV567# information at
`
`particular last—local—input—# memory.
`
`(Harvey ‘717 Patent,
`
`242:58 — 243:9)
`
`14.
`
`The specification of the ‘717 patent is replete with similar examples.
`
`Figure l, the exemplary figure of the patent,
`
`is described generally at 10:40 to
`
`11:24 and teaches transmitting and receiving signals between various components
`
`within the receiver station of Figure 1.
`
`For example, microcomputer 205 is
`
`described as receiving and processing information bearing signals from TV signal
`
`decoder 203 [see, e.g., 10:53-11:6]:
`
`One is inputted continuously to TV signal decoder, 203, and the
`
`other to microcomputer, 205. TV signal decoder, 203, which is
`
`described more fully below, has capacity for receiving a
`
`composite video transmission; detecting digital
`
`information
`
`embedded therein; correcting errors in the received information
`
`by means of forward error checking techniques, well known in
`
`the art; converting the received information, as may be
`
`required, by means of input protocol techniques, well known in
`
`the art, into digital signals that microcomputer, 205, can receive
`
`and
`
`process
`
`and
`
`that
`
`can
`
`control
`
`the
`
`operation of
`
`microcomputer,
`
`205;
`
`and
`
`transferring
`
`said
`
`signals
`
`to
`
`microcomputer, 205. Microcomputer, 205, is a conventional
`
`microcomputer system with disk drives that is adapted to have
`
`
`
`capacity for receiving signals from decoder, 203; for generating
`
`computer graphic information; for receiving a composite video
`
`transmission; for combining said graphic information onto the
`
`video information of said transmission by graphic overlay
`
`techniques, well known in the art; and for outputting the
`
`resulting combined information to a TV monitor, 202M, in a
`
`composite video transmission.
`
`(Harvey ‘717 patent, 10:53—
`
`11:6)
`
`15. Other discussion in the specification related to the “receiver station”
`
`of Figure 7 also teaches the internal transmission and reception of information
`
`bearing signals. For example, a laser disk player and a record player are included
`
`as part of the “other input apparatus” 252 that can provide transmissions to the
`
`“receiver station” of Figure 7 and yet are clearly part of the receiver station.
`
`Input apparatus
`
`include satellite earth station, 250,
`
`satellite receiver circuitry, 251, converter boxes, 201 and 222
`
`(by means of which the station of FIG. 6 receives the
`
`multiplexed multi—channel cable transmission of the cable head
`
`end station of FIG. 6), antennas, 298 and 299, and other input
`
`apparatus, 252 (which may be, for example, a laser disc player
`
`or a record player); and the subscriber station of FIG. 4 has
`
`capacity for receiving wireless programming transmissions (for
`
`example, at a satellite earth station, 250, and satellite receiver
`
`circuitry 251), a multi—channel cable transmission (for example,
`
`at converter boxes, 201 and 222), and locally transmitted input
`
`
`
`(for example, at other input apparatus, 252).
`
`(Harvey “717
`
`patent, 202:11-22)
`
`16.
`
`Later in the description of Figure 7 at 203:12-23 the matrix switches
`
`258 and 259 are described as communicating “information transmission” among
`
`station apparatus. One of ordinary skill in the art would recognize this description
`
`as supporting the notion that “information transmission” can be transmitted and
`
`received entirely within the receiver station.
`
`Two matrix switches, 258 and 259, communicate the
`
`programming
`
`and
`
`SPAM message/control
`
`information
`
`transmissions among station apparatus. Matrix switch, 258, is a
`
`conventional matrix switch, well known in the art, with
`
`capacity
`
`for
`
`switching
`
`programming
`
`transmissions
`
`of
`
`television, radio, and other forms of electronically transmitted
`
`programming. Matrix switch, 259, is a digital matrix switch,
`
`well known in the art, with
`
`capacity for switching binary
`
`information transmissions. By means of matrix switch, 259, all
`
`apparatus communicate control information and the information
`
`of SPAM messages that have been detected in programming
`
`transmission. (Harvey ‘717 patent, 203212—23)
`
`17.
`
`Perhaps PMC and Dr. Russ believe that there is a difference in the
`
`“receiving at” limitation in the first and fourth element of claim 1 as they seem to
`
`imply [see, e.g. PMC Resp, pp. 17-18 and Russ Decl. 111160—63]. The only point of
`
`difference would be that the first element includes the notion of an “information
`
`10
`
`
`
`transmission”. However, as I pointed out above in the preferred example of Exotic
`
`Meals of India,
`
`the subscriber input characters are clearly an “information
`
`transmission” originating at the “Widget Signal Generator and Local Input” device.
`
`It
`
`is unclear what
`
`the “Widget Signal Generator and Local
`
`Input” of this
`
`description is. Surely,
`
`it includes a Local Input 225 as illustrated in Figure 7.
`
`However, one of ordinary skill in the art would understand that the Local Input 225
`
`might also be a “remote keyboard”, such as that described with respect to a
`
`“receiver station” of the prior art at ‘717 Patent, 4:4-13. This is related to the cited
`
`prior art of Bourassin (US Pat. No. 4,337,480),
`
`in which the keyboard is a
`
`conventional remote control.
`
`The local input 225 of the ‘717 patent is either
`
`wired or wireless, but in any case the information it provides is received “at a
`
`receiver station”. Further, such reception must be an “information transmission”,
`
`just as required in the first claim element, as this is what one of ordinary skill in the
`
`art would understand. Thus, one of ordinary skill
`
`in the art would certainly
`
`understand that signals generated by various components of the “receiver station”
`
`are received “at” the receiver station, just as the first and fourth claim elements
`
`require and further that they are “information transmissions”.
`
`18. During his deposition, Dr. Russ indicated that based on his review of
`
`the ‘717 Patent, there is no discussion of receiving an information transmission at a
`
`ll
`
`
`
`receiver station where the transmission originates within the receiver station, and
`
`that this was a basis for his interpretation of the claim term “receiver station”:
`
`Q. Are you saying that, based on your review of the Seven One
`
`Seven patent specification, there is no discussion of receiving
`
`an information transmission at a receiver station where that
`
`transmission originates within the receiver station?
`
`A.
`
`I believe that’s correct.
`
`Q.
`
`Is that an important basis for your interpretation of the term
`
`“receiver station”?
`
`A. That is one basis.
`
`[Exhibit 1019, pgs. 277—278.]
`
`19. As demonstrated by the numerous examples set forth above, it is my
`
`opinion that Dr. Russ is incorrect in his conclusion that there is no discussion in the
`
`‘717 Patent of receiving an information transmission at a receiver station where
`
`that transmission originates within the receiver station.
`
`20. With respect to the notion of an “information transmission”, PMC and
`
`Dr. Russ appear to believe that this term must be interpreted as a transmission
`
`included within a carrier wave [PMC Resp. p. 19-20; Russ Decl. 111162-63]. In their
`
`response PMC argues that a “television program transmission” describes “a single
`
`transmission enveloped within a single carrier wave” [PMC Resp, Pp. 19-20].
`
`I
`
`disagree. First, it is my understanding that this definition was provided by Court of
`
`Appeals for the Federal Circuit with respect
`
`to a different patent, But more
`
`12
`
`
`
`importantly, claim 1
`
`is not related to a “television program transmission”, only to
`
`an “information transmission”. Whatever characteristics are ascribed to a
`
`“television program transmission” simply do not apply to claim 1, which speaks
`
`more broadly of an “information transmission” that
`
`is unrestricted in its
`
`characteristics. Whether or not Humble makes use of carrier waves is irrelevant to
`
`what one of ordinary skill in the art would understand about claim 1.
`
`21.
`
`Further, based on his deposition, it is not apparent that Dr. Russ even
`
`reviewed the Federal Circuit’s decision or the relevant patent before adopting the
`
`Court’s inapplicable interpretation of a “television program transmission”:
`
`Q.
`
`In Paragraph 62 of your declaration, you refer to a
`
`claim construction issued by the Court of Appeals for the
`
`Federal Circuit.
`
`In preparing your declaration, did you review that
`
`Opinion?
`
`A.
`
`I don’t recall.
`
`I know that I reviewed the specific
`
`term that’s quoted there.
`
`I don’t recall how much of the rest of
`
`the opinion that I reviewed.
`
`Q. What patent was the Court of Appeals for the Federal
`
`Circuit construing in that opinion?
`
`A. I don’t recall, as I sit here today.
`
`Q. Are you aware what claim that the Federal Circuit
`
`was construing in that opinion?
`
`A.
`
`I don’t recall right now.
`
`Q. Did you study the claim?
`
`13
`
`
`
`A. Well, I don’t know, since I don’t remember which
`
`claim it is.
`
`Q. Did you review the file history of the patent being
`
`construed in that case?
`
`A. No, I did not.
`
`[Exhibit 1019, Deposition of Dr. Russ, pg. 304.]
`
`22.
`
`PMC argues at page 14—16 that “information content” is not received
`
`by the system of Humble. Dr. Russ’s arguments in support of PMC position can
`
`be found in his declaration at 1111 53-56.
`
`In my initial declaration, I identified the
`
`“information content” as the price and product description data store in UPC data
`
`store 162 (Neuhauser 1, $112). Clearly this information is present in the system of
`
`Humble, because it is stored in the UPC data store 16. One of ordinary skill in the
`
`art would understand that this information can only be in the UPC data store 16 if
`
`it was received from someplace, for example, from the owner of the system
`
`through an appropriate input device. One of ordinary skill
`
`in the art would
`
`recognize that this might be done in a number of ways, but ultimately for the
`
`information to reside in the UCP data store it must be received. Dr. Russ does not
`
`dispute this:
`
`2 In Neuhauser I the item number of the UPC data store is given as 26, but the
`actual item number is 16 (see Humble, Fig. 1)
`
`l4
`
`
`
`Q.
`
`In an application such as Humble, would one of skill
`
`in the art, ordinary skill in the art in 1987, have understood that
`
`product description information about or correlated to particular
`
`bar codes would need to be placed in the point-of-sale terminal?
`
`A.
`
`The person of ordinary skill
`
`in the art would
`
`understand that there has to be data in the data store, but he
`
`would understand that there is a variety of mechanisms that the
`
`data could get there.
`
`Q. Would he have understood that the data that was in
`
`the data store would have to include price information and
`
`product description information?
`
`A. Well, I suppose the answer is yes, although I’ll note it
`
`is specifically called out in the patent specification.
`
`Q. What would one of ordinary skill in the art in 1987
`
`have understood about the need to at times update price and
`
`product description information in point—of-sale terminal?
`
`A. Well, he would, or she would have to understand that
`
`some sort of mechanism for updating I guess would be
`
`necessary.
`
`[Exhibit 1019, Deposition of Dr. Russ, pages 282-283.]
`
`23.
`
`Claim 1 of the ‘717 patent places no restrictions on the reception of
`
`the “information content” other than that it must be in “at least one information
`
`transmission”.
`
`There are no restrictions in claim 1 or expressed in the
`
`specification on how the “information transmission” must be accomplished.
`
`Further, there is no restriction, as PMC and Dr. Russ seem to imply, that the
`
`15
`
`
`
`transmission come from some other station or
`
`that
`
`it have some special
`
`characteristic [PMC Resp., p.
`
`15—17, Russ Decl. W 54-56].
`
`There is no
`
`requirement that the price and product description stored in UPC data store be
`
`received in a transmission from another station as PMC and Dr. Russ seem to
`
`imply. For example, Dr. Russ in proposing an alternative method of loading the
`
`UPC data store 16 proposes that the price and product description representing
`
`“information content” might be loaded from a floppy disk sent through the mail
`
`(Russ Decl. 1156). That is certainly one possibility, but the system of Humble
`
`would still be receiving the price and product description in a “transmission”
`
`because it would be receiving the information from the floppy disk drive and its
`
`associated electronics.
`
`24.
`
`In his deposition, Dr. Russ again acknowledges that price and product
`
`information may be loaded into Humble’s UPC data store 16 from a floppy disk.
`
`Dr. Russ argues, however, that loading data into a data store from a floppy disk is
`
`not receiving the data in a transmission because, in his opinion, the floppy disk
`
`drive is part of the same computer system:
`
`Q. So the floppy disk drive would read the magnetic
`
`regions on the floppy disk? Is that what would happen next?
`
`A. Well, the disk drive, which is part of the computer,
`
`would be used to copy data from one part of the computer, the
`
`floppy disk, to another part of the computer, the data store.
`
`16
`
`
`
`Q. But before you actually start to copy, you get the
`
`package with the floppy disk in it, you Open the package, you
`
`remove the floppy disk, and you insert it into the computer,
`
`correct?
`
`A.
`
`I agree that those steps are performed, but I would not
`
`call that an information transmission.
`
`Q. Would you call it a receipt?
`
`A.
`
`I would call it the computer copying data from one
`
`part of the computer to another.
`
`[Exhibit 1019, Deposition of Dr. Russ, pgs. 284-285.]
`
`25.
`
`I respectfully disagree with Dr. Russ’ overly narrow interpretation of
`
`an “information transmission” to exclude data received from a floppy disk or other
`
`similar means. One of ordinary skill
`
`in the art would not understand an
`
`“information transmission” to have such an overly restrictive definition. This is
`
`especially true in view of the specification of the ‘717 Patent, which discloses that
`
`programming (i.e., an information transmission) may be delivered by “any means
`
`including over the air, hardware and manual means.”
`
`[See Harvey “717 Patent,
`
`7212-14.] From his deposition testimony it is clear that Dr. Russ did not consider
`
`this teaching from the Harvey ‘717 Patent when formulating his overly restrictive
`
`claim interpretation:
`
`Q. Column Seven, could you read aloud the sentence
`
`that spans Lines 12 to 14?
`
`17
`
`
`
`A. The sentence begins “the programming may be”?
`
`Q. Probably.
`
`I don’t have a copy of it here.
`
`A. “The programming may be delivered by any means
`
`including over the air, hardware and manual means.”
`
`Q.
`
`So does the Seven One Seven patent contemplate
`
`delivery of television programming by manual means?
`
`A.
`
`It looks like that sentence is saying that programming
`
`can be delivered by manual means.
`
`Q. What do you interpret it to mean by “manual means,”
`
`for delivery of programming?
`
`MR. SCHREINER: Objection, scope.
`
`THE WITNESS: Well,
`delivered by manual means.
`
`BY 1V[R. TOUTON:
`
`that programming can be
`
`Q.
`
`Can you give an example of what would be
`
`comprehended in the “manual means” it’s referring to here?
`
`A. Oh, I don’t know.
`
`I have not thought about that.
`
`[Exhibit 1019, Deposition of Dr. Russ, pgs. 289-290.]
`
`(iii) Humble’s Checkout System is a “Receiver Station”
`
`26.
`
`PMC and Dr. Russ also argue that “information content” cannot be
`
`received from an “information transmission” that occurs within a “receiver
`
`station” [PMC Resp. 17—19, Russ 111157—63]. Related to this argument
`
`is an
`
`unreasonably restricted notion of what a “receiver station” is or could be. This is
`
`an issue that I have addressed above (see paragraphs 11-16). One of ordinary skill
`
`18
`
`
`
`in the art reading claim 1 of the “717 patent with reference to the specification
`
`would not believe that “receiving information content” would be restricted to
`
`receiving information content from some external place. There is simply nothing
`
`in the claim language itself that expresses this notion. The claim only speaks about
`
`the action of “receiving” and does not limit where that
`
`information could be
`
`received from.
`
`It also does not place any technical limitation on the form or
`
`mechanism by which the information content is received. To assume otherwise
`
`would be to contradict
`
`the teaching of the ‘717 as Show in the preferred
`
`embodiments.
`
`27. One of ordinary skill in the art thinking in the broadest reasonable
`
`terms would surely see internal transmission and reception of information as
`
`meeting the broad language of claim 1. For example, information provided at a
`
`keyboard is clearly “received” by a personal computer whether a keyboard is
`
`physical attached by a wire or incorporated into the case of the personal computer.
`
`Personal computers were widely available in 1987 and I see nothing in the claim 1
`
`that would exclude personal computers as a receiver station, and certainly not
`
`under a broad and reasonable interpretation.
`
`In fact, one of the preferred
`
`embodiments of the ‘717 patent is expressly based on the use of an IBM personal
`
`computer [‘717 Fig. 1, item 205; 11:6-12]. The system of Humble is nothing more
`
`than a highly specialize computer system. Transmitting and receiving information
`
`19
`
`
`
`between subsystems, like the UPC scanner 12, is what computer based systems do
`
`and how they would be understood by those of ordinary skill in the art in 1987.
`
`Although at 1161 of his report Dr. Russ proposes that “information content” must be
`
`received in a transmission from an external source, there is nothing in claim 1 that
`
`requires this. One of ordinary skill in the art would not understand this from the
`
`specification unless they were to assume “receiving” could only occur as the
`
`preferred embodiments show. Even then, the ‘717 patent is clear that receiving
`
`could be carried out entirely within a “receiver station” as I have explained above
`
`with respect to Figures 1, 7 and the preferred embodiments related to these figures.
`
`28.
`
`As a basic issue PMC and Dr. Russ believe that an “information
`
`transmission” cannot be received at a “receiver station” unless it is received from
`
`some external source, like a “transmission station” [PMC Resp, pp. 20-21; Russ
`
`Decl., 7150—52]. This would be a very restricted notion of what it means to receive
`
`an information transmission. Figure 7 for example shows an “ultimate receiver
`
`station” [‘717 patent, 201 153-5 8].
`
`FIG. 7 exemplifies one embodiment of an ultimate
`
`receiver station; is a subscriber station in the field distribution
`
`system, 93, of the intermediate transmission station of FIG. 6;
`
`and may be a home, an office, a theater, a hotel, or any other
`
`station where programming such as television or radio is
`
`displayed to persons. (Harvey “717 patent, 201 :53-58)
`
`20
`
`
`
`29.
`
`Based on this reference one of ordinary skill
`
`in the art would
`
`understand the “receiver station” to be everything shown in Figure 7. At 201:35 to
`
`204:55 the ‘717 patent describes a number of aspects of this preferred embodiment
`
`of a “receiver station”. This includes receiving “transmissions” from various
`
`apparatus shown, including “other input apparatus” 252, which may be a laser disk
`
`player or even a record player.
`
`[“717 Patent, 202-11:22].
`
`Clearly in this
`
`description the laser disk player, for example, is part of the receiver station and
`
`further inputs its received information to the matrix switch [see, e.g. ‘717 patent
`
`202:23—25]. This is an operation that is entirely internal to the ultimate receiver
`
`station and yet is still characterized in the ‘717 patent as receiving information:
`
`Input apparatus
`
`include satellite earth station, 250,
`
`satellite receiver circuitry, 251, converter boxes, 201 and 222
`
`(by means of which the station of FIG. 6 receives the
`
`multiplexed multi-channel cable transmission of the cable head
`
`end station of FIG. 6), antennas, 298 and 299, and other input
`
`apparatus, 252 (which may be, for example, a laser disc player
`
`or a record player); and the subscriber station of FIG. 4 has
`
`capacity for receiving wireless programming transmissions (for
`
`example, at a satellite earth station, 250, and satellite receiver
`
`circuitry 251),
`
`a multi-channel
`
`cable
`
`transmission (for
`
`example, at converter boxes, 201 and 222), and locally
`
`transmitted input (for example, at other input apparatus, 252).
`
`(Harvey ‘7 1 7 patent, 202: 1 1-22)
`
`21
`
`
`
`30.
`
`Furthermore, the ‘717 speaks directly of “information transmissions”
`
`being communicated among station apparatus, for example at 203: 120-23:
`
`Two matrix switches, 258 and 259, communicate the
`
`programming
`
`and
`
`SPAM message/control
`
`information
`
`transmissions among station apparatus. Matrix switch, 258, is
`
`a conventional matrix switch, well known in the art, with
`
`capacity
`
`for
`
`switching
`
`programming
`
`transmissions
`
`of
`
`television, radio, and other forms of electronically transmitted
`
`programming. Matrix switch, 259, is a digital matrix switch,
`
`well known in the art, with
`
`capacity for switching binary
`
`information transmissions. By means of matrix switch, 259,
`
`all
`
`apparatus
`
`communicate
`
`control
`
`information and the
`
`information of SPAM messages that have been detected in
`
`programming transmission. (Harvey ‘717 patent, 203:12-23)
`
`31.
`
`These short discussions, related only to the ultimate receiver station,
`
`would certainly inform one of ordinary skill
`
`in the art
`
`that “information
`
`transmissions” could be “received” within a “receiver station, which would clearly
`
`be receiving “at a receiver station”. Even without referring to the specification of
`
`the ‘717 patent one of ordinary skill in the art would understand this because
`
`transmitting and receiving information within systems is a basic aspect of the
`
`structure of computer based systems, such as that shown in Figure. 7.
`
`For
`
`example, all persons of ordinary skill in the art understand that peripherals in a
`
`22
`
`
`
`processor system are connected by buses that transmit and receive information
`
`within the system.
`
`B.
`
`
`Claim 3:
`
`(i)
`
`Humble Discloses That “Subscriber Input Modifies Said
`Subscriber Specific Data”
`
`32. With respect to my application of Humble to Claim 3, PMC argues
`
`that the scanning of additional items does not modify the subscriber specific data
`
`[See PMC Resp. pp. 22-24; Russ Decl. WEB-85]. In Neuhauser I [11114] I note that
`
`the “subscriber specific data ” may also be the total volume of product purchased.
`
`In identifying this aspect of Humble, I made reference to Humble [3:16-34], which
`
`describes various scenarios under which a promotion plan pre—programmed into
`
`the system of Humble might present coupons or offers with respect to a particular
`
`product (in the example, the purchase of Brand X pea soup). One of ordinary skill
`
`in the art would see that
`
`the example involving purchase
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