UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Zynga Inc.
`Petitioner
`
`V.
`
`Personalized Media Communications, LLC
`
`Patent Owner
`
`Case IPR2013-00164
`
`US. Patent No. 7,797,717
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`

`

`Table of Contents
`
`Page
`
`Introduction ...................................................................................................... 1
`
`II.
`
`Claims 1—6 and 9 Are Anticipated by Humble and Claim 7 is Rendered
`Obvious by Humble in view of Lemon ............................................................. 2
`
`A.
`
`B.
`
`D.
`
`E.
`
`F.
`
`Humble discloses “generating a benefit datum in response to the first
`control signal by processing subscriber specific data”............................. 2
`
`information transmission at said
`Humble discloses “receiving
`receiver station” ..................................................................................... 3
`
`Humble’s checkout system is a “receiver station” ................................... 6
`
`Humble discloses “subscriber input modifies said subscriber specific
`data” (Claim 3)...................................................................................... 7
`
`Humble discloses an “information content comprising a commercia ”
`(Claim 4) ................................................................................................ 7
`
`Humble in combination with Lemon discloses delivering “based on a
`schedule” (Claim 7) ............................................................................... 8
`
`III.
`
`Claims 1-6 and 9 Are Rendered Obvious by Lockwood in View of Bakula
`and Claim 7 is Rendered Obvious in Further View of Lemon ......................... 10
`
`A.
`
`B.
`
`C.
`
`D.
`
`Lockwood in view of Bakula discloses “receiving information
`content and a first control signal in said at least one information
`transmission at said receiver station” .................................................... 10
`
`Lockwood in view of Bakula discloses “generating a benefit datum in
`reSponse to a first control signal” .......................................................... 12
`
`Lockwood in View of Bakula discloses “delivering said information
`content and said benefit datum at an output device” ............................. 13
`
`Lockwood in view of Bakula and Lemon discloses delivering “based
`on a schedule” (Claim 7) ..................................................................... 13
`
`IV.
`
`PMC’s Alleged Evidence of Nonobviousness................................................. 14
`
`Conclusion ..................................................................................................... 1 5
`
`

`

`I.
`
`Introduction
`
`Petitioner requests cancellation of claims 1—7 and 9 of U.S. Patent No.
`
`7,797,717 (“the ‘717 patent”) as unpatentable under 35 U.S.C. §§ 102 and 103.
`
`In
`
`initiating the trial, the Board correctly found that, unless rebutted by the Patent
`
`Owner, Personalized Media Communications, LLC (“PMC”),
`
`the
`
`applied
`
`references render these claims unpatentable.
`
`In response, PMC filed a Patent
`
`Owner Response but did not seek to amend the claims.
`
`Throughout the Patent Owner Response, PMC repeatedly argues for overly
`
`narrow claim constructions that are inconsistent with the broadest reasonable
`
`interpretation standard to be applied in this inter partes review proceeding.
`
`In
`
`effect, PMC asks the Board to treat the claims as if they had been amended without
`
`PMC having done so itself. But if PMC had wanted the claims to be construed more
`
`narrowly, then it should have taken the opportunity afforded by this Office proceeding
`
`and filed a motion to amend to restrict their scope. As explained by the Federal Circuit,
`
`a Patent Owner’s ability to amend claims to avoid prior art — which exists in these
`
`proceedings pursuant to 37 C.F.R. §42.121 — distinguishes Office proceedings fi‘om
`
`district court proceedings and justifies the broadest reasonable interpretation standard.
`
`In re Yamamoro, 740 F.2d 1569, 1572 (Fed. Cir. 1984).
`
`The Board should reject PMC’s requests to improperly import limitations into
`
`the claims via its proposed overly narrow claim constructions. Accordingly, because
`
`

`

`PMC has failed to distinguish the claims as written fiom the cited prior art, the Board’s
`
`institution decision was correct and claims 1-7 and 9 should be cancelled.
`
`II.
`
`Claims 1—6 and 9 Are Anticipated by Humble and Claim 7 is Rendered
`Obvious by Humble in view of Lemon
`
`A.
`
`Humble discloses “generating a benefit datum in response to the first
`control signal by processing subscriber specific data”
`
`Humble discloses a product checkout system that generates a promotional
`
`message in response to a scanner signal by processing UPC data.
`
`(See Ex. 1009 at
`
`1:42-224; Ex. 1014 at W 6-10.) The crux of PMC’s response is that the “same UPC
`
`signal cannot teach both a control signal @ subscriber specific data.” (Response at p.
`
`9.) This argument has been correctly rejected by the Board. (See Decision at p. 10.)
`
`In an attempt to bolster its position, PMC argues that “a single UPC signal
`
`cannot be processed in response to itself.”
`
`(Response at p. 10.) This is false and
`
`mischaracterizes the claim. A simple parsing of the claim language makes clear that it
`
`is the “generating” of the benefit datum that must (1) be “in response to the first control
`
`sign ” and (2) be performed “by processing subscriber specific data.” Both of these
`
`steps are present in Humble’s promotion-generation process.
`
`Specifically, the receipt of the scanner’s signal triggers the promotion-generation
`
`process, which involves processing the UPC data encoded within the signal. The
`
`scanner’s signal
`
`thus acts as both the triggering control signal m a carrier of
`
`information (ten, UPC data). As disclosed by Humble, the checkout system “w
`
`sensible codes of purchased product” and is “responsive to UPC signals provided by a
`
`-2-
`
`

`

`scanner”, which triggers the promotion-generation process. (Ex. 1009 at 3 :57-58, 1:47—
`
`57, emphasis added.) The scanner signal is thus a “control signal,” which the Board
`
`construes to mean “an electrical quantity that is operative to cause a responsive action in
`
`a device. . ..” (Decision at p. 7.)
`
`In response to the detected signal, the checkout system
`
`“discems selected products selected for purchase from such UPC signal[]” and
`
`compares the UPC signal with stored UPC codes corresponding to promotions.
`
`(Ex.
`
`1009 at 1149—5 7.) The processed UPC code is specific to the particular product being
`
`purchased and is thus “subscriber specific data.
`
`Dr. Russ argues that only one
`
`9!
`
`operation—namely the code comparison operation—His performed on the received UPC
`
`code. (Ex. 2019 at 111] 66-68.) But this ignores the fact that the comparison operation
`
`is triggered in response to the detected UPC code. (See Ex. 1014 at M 6-10.)
`
`Significantly, the claim does not indicate from where the “subscriber specific
`
`data” is obtained by the receiver station. The claim only requires “processing
`
`subscriber specific data at said receiver station.” There is nothing that precludes the
`
`“subscriber specific data” from being included as part of the “control signal.”
`
`If
`
`PMC wishes to limit the claim in this way, its proper course was to amend the claim
`
`to clearly recite its intended meaning and not ask the Board to improperly narrow
`
`the claim through claim construction.
`
`B.
`
`Humble discloses “receiving
`receiver station”
`
`information transmission at said
`
`Humble’s checkout terminal receives product data from data store 16 via
`
`

`

`lines 18 and 20.
`
`(Ex. 1009 at 2:15-22.) PMC argues that this does not teach the
`
`“receiving
`
`information transmission at said receiver” limitation because the
`
`transmission must be from an external station and cannot be an internal data
`
`transfer. (See Response at pp. 16-18). This argument is unsupportable.
`
`PMC’s assertion that the claim precludes internal data transfer is based on a
`
`misrepresentation of how the claim would be interpreted by one skilled in the art.
`
`(See Response at pp. 18-19). PMC recognizes that claims must be interpreted in
`
`light of the specification (see Response at p. 18), but ignores the specification’s
`
`repeated description of internal transmissions within a station. For example, the
`
`specification‘s description of the subscriber station of Figure 1, replicated and
`
`annotated below, illustrates this point:
`
`l "The audio {rammission is
`I This tuner outputs conventional
`; inputtedtc TV’mcnith.
`5
`laudio and composite video
`E 2031." 10:50-51.
`5
`/ tmnsmzsswns “—10:49-50."
`
`TELEVISION
`
`
`TWER
`
`
`
`Thex"id-eatransmssmn"
`E is inputted to \idea
`
`
`E transmission dix-ider,4....” :
`....................................
`Microcomputer 205 “has capacity
`'5 10:51-52.
`
`for receiving a composite video
`WEIGML ..
`
`
`DEGODER
`3 transmission... and outpuztiag
`
`i the resulting combined
`-
`'
`a
`1
`:
`.
`.
`.
`I
`
`E infomanonto a TV monitor.
`' Decedfl ‘03 has capamy for
`5
`3 recemns a 6021113351:2:23
`:
`§ 20231. in a composite video
`; transmission
`-
`:
`- transmission " 11-1-6
`------------------------------------- 5'15 1
`
`'
`
`Moreover, the claim itself does not preclude internal transmissions, as it merely
`
`recites “receiving
`
`information transmission at said receiver station.” Thus, a
`
`POSITA, after considering the specification and claim, would understand the claim
`
`-4-
`
`

`

`to include information transmissions received internally at a station. The Board,
`
`therefore, is correct in concluding that the information “furnished by lines 18 and 20
`
`to P.O.S. unit 22” satisfies this limitation.
`
`(See Ex. 1014 at 111] 11-25.) PMC’s
`
`request to improperly narrow the claim to require information received from an
`
`external station should be rejected.
`
`PMC further argues that a “transmission” should mean “a signal transmission
`
`enveloped within a signal carrier wave,” in order to argue that internal data transfers
`
`are not “transmissions” as they do not use carrier waves.
`
`(See Response at pp. 19—
`
`20.) First, PMC’s attempt to have the Board read a limitation into the claim is
`
`improper absent a motion to amend. Second, PMC’s citation to a Federal Circuit’s
`
`claim construction decision is irrelevant to this IPR as that case involved a different
`
`claim term (tie. ,
`
`‘ elevision programming transmission”) from a different patent and
`
`was based on a different construction standard. (See EX. 1014 at W 20-21.)
`
`Moreover, in addition to receiving data from the data store 16 via lines 18
`
`and 20, the Petitioner submits that Humble’s “description and price information”
`
`must also be received by memory store
`
`16
`
`from,
`
`for example, external
`
`manufacturers. PMC argues that Humble does not explicitly say so. (See Response
`
`at p. 15.) But it is inherent that store 16 in Humble must necessarily be supplied
`
`with the product description and price information from some information source
`
`because the information cannot otherwise get into the store 16. This information
`
`

`

`transfer
`
`is sufficient
`
`to meet
`
`the claim limitation, which only requires an
`
`information transmission be received at a receiver station, under the broadest
`
`reasonable interpretation standard. (See Ex. 1014 at 1111 22-25.)
`
`C.
`
`Humble’s checkout system is a “receiver station”
`
`Humble discloses a checkout system that receives “UPC signals provided by
`
`a scanner.”
`
`(See EX. 1009, Abstract.) PMC argues that this system is not a
`
`“receiver station,” but this argument is based on an improper request for the Board
`
`to construe “receiver station” to mean a “station that can receive transmission from
`
`other stations.” (Response at pp. 20-21.)
`
`If PMC wanted to narrow the claim it
`
`could have filed a motion to amend, but it chose not to. The claim must be afforded
`
`the broadest reasonable interpretation in its current form, which encompasses
`
`systems that receive data from input devices and other internal components.
`
`Under the broadest reasonable interpretation, anything capable of receiving
`
`information should be construed as a receiver station without regard to where the
`
`information is from.
`
`It is perfectly reasonable that one portion or component of a
`
`system can be a receiver station in that it receives signals or data from other portions
`
`of the system (e.g., a system bus has both bus drivers and bus receivers).
`
`(See Ex.
`
`1014 at W 26-31.) The claim itself recites “receiving a subscriber input at said
`
`receiver station,” which shows that a station that receives user input from an input
`
`device—much like Humble’s UPC scanner—constitutes a “receiver station.” This is
`
`

`

`further supported by the specification’s description of a receiver station receiving
`
`input from a keyboard: “At the [receiver] station ..., the subscriber enters TVS 68*
`
`at the keyboard of local input, 225, which causes said input, 225, to transmit
`
`said
`
`TV568* information to the controller
`
`of said station.” (Ex. 1001 at 261157-61.)
`
`Both the claim and specification support reading the claimed “receiver station” on a
`
`system that receives input from an input device like a UPC scanner.
`
`D.
`
`Humble discloses that “subscriber input modifies said subscriber
`specific data” (Claim 3)
`
`Humble’s preferred embodiment relates to a supermarket checkout system
`
`with the typical functionality of tracking purchased products and calculating their
`
`price total. (See Ex. 1009 at 1:12—28.) PMC argues that Humble does not anticipate
`
`claim 3 because Humble’s checkout system cannot maintain a list of scanned
`
`products and prices for the customer (the “subscriber specific data”).
`
`(See
`
`Response at p. 23.) PMC is wrong. Humble expressly states that the disclosed
`
`invention is an improvement over known checkout systems capable of “price
`
`totalization and preparation of a complete record of the customer’s purchases.” (Ex.
`
`1009 at 1:23-26, 1:39—41.) The customer’s purchase list is modified as products are
`
`scanned or removed, thus satisfying claim 3. (See Ex. 1014 at W 32-34.)
`
`E.
`
`Humble discloses an “information content comprising a commercial”
`
`(Claim 4)
`
`As discussed supra in Section II-C, Humble’s system receives product
`
`description and price information. PMC’s argument that the Board should narrowly
`
`-7-
`
`

`

`construe “commercial” to exclude such product description and price information is
`
`without merit.
`
`(See Ex. 1014 at W 35-38.) A person seeing a billboard showing a
`
`product and its price would not find it unreasonable to call
`
`it a commercial.
`
`Tellingly, during its litigation against Zynga, PMC broadly read the “717 patent’s
`
`“commercial” limitation on precisely a listing of products and prices, as shown in
`
`the figures below from PMC’s Infringement Expert Report (Ex. 1015, p. 86):
`
`
`
`Thus, PMC’s own interpretation of the claim lends credence to a broadest
`
`reasonable interpretation of “commercia ” that
`
`includes description and price
`
`information. Again, if PMC finds the Board’s construction broader than it would
`
`like, it should have made a motion to amend claim 4. The Board should not change
`
`its reasonable interpretation because PMC wants to avoid amending its claims.
`
`F.
`
`Humble in combination with Lemon discloses delivering “based on a
`
`schedule” (Claim 7)
`
`Lemon discloses a coupon dispensing system with “means for displaying a
`
`plurality of Video menu pages in a particular sequence, each page being displayed
`
`-3-
`
`

`

`for a particular time.” (Lemon 32:31-34, emphasis added; see Ex. 1014 at 111] 39-44.)
`
`PMC does not dispute that Lemon teaches coupons displayed based on a
`
`“schedule,” but argues a lack of motivation to combine Lemon’s teaching with
`
`Humble’s display of product description and price information.
`
`(See Response at
`
`45—46.) PMC, however, forgets that Humble relates to an interactive promotion
`
`system that the user can interact with by, for instance, touching displayed 1%.
`
`(See Ex. 1009 1:6-9, 3:26—29.) In order to effectively promote and provide the user
`
`an opportunity to interact with the system, one skilled in the art would recognize a
`
`motivation to display each item and promotion for a short period of time before
`
`moving on to the next item if no input is forthcoming. This is precisely the teaching
`
`of Lemon.
`
`(See Ex. 1011 at 5:32-38.) Moreover, Lemon’s scrolling coupon
`
`terminal enables Humble’s small,
`
`low cost 1986 display unit to provide more
`
`detailed information. Thus, there is ample motivation to combine Humble with
`
`Lemon. (See Ex. 1014 at 111145—47.)
`
`Lemon’s system also selects coupons for display based on the current time
`
`and the coupons’ availability dates, which also satisfies the “schedule” limitation of
`
`claim 7. Specifically, Lemon’s terminal can “display only those coupons available
`
`for selection to the customer at that time” and print coupons with “a same day
`
`expiration date to encourage immediate use of the coupon.” (Ex. 1011 at 30:13-14,
`
`6:36-40, emphasis added; see also 22:49-56, Fig. 3b.) Lemon thus discloses
`
`

`

`coupons, which are “commercials” (claim 4), being delivered based on time
`
`“schedules” (claim 7). As further explained by Dr. Neuhauser in Ex. 1014, a
`
`POSITA would find it obvious to combine Lemon’s coupon delivery system with
`
`Humble, which also discloses a system that
`
`is “customer-interactive for
`
`the
`
`dispensing of coupons.” (EX. 1014 at W 45-47; EX. 1009 at 1:55-57.)
`
`The Humble/Lemon combination discloses
`
`the “receiving information
`
`content” limitation of claim 1, as Lemon further teaches that a terminal can receive
`
`“updated coupon information” and “a new coupon array for display” from a remote
`
`host.
`
`(Ex. 1011 at 7:25—27, 29:29-34, Fig. 2.) The rest of the claim limitations are
`
`satisfied by Humble, as discussed supra in Section II—A (cg, “benefit datum”
`
`corresponds to promotional messages). Accordingly, all limitations of claim 7 are
`
`satisfied by the combined teachings of Humble and Lemon.
`
`III. Claims 1—6 and 9 Are Rendered Obvious by Lockwood in View of Bakula
`and Claim 7 is Rendered Obvious in Further View of Lemon
`
`A.
`
`Lockwood in view of Bakula discloses “receiving information content
`and a first control signal in said at least one information transmission
`at said receiver station”
`
`Lockwood characterizes its “system for dispensing information and goods” as
`
`“comprising a data processing center M several remote satellite facilities linked to the
`
`center.” (Ex. 1008 at 1:45-50.) The system receives insurance policy information from
`
`external
`
`insurance companies as well as internal data transfers between system
`
`components.
`
`(Id. 1:56-2:12.)
`
`Petitioner has reasonably interpreted the entire
`
`-10-
`
`

`

`Lockwood system to be the claimed “receiver station.” (See Ex. 1014 at 111] 49-54.)
`
`PMC argues that the overall system described in Lockwood cannot be a “receiver
`
`station” because it is possible for the central computer to be far apart from the self-
`
`service terminals. But the ‘717 patent places no such proximity restriction between a
`
`receiver station’s components. For example, Figure 7 of the ‘7 17 patent, which depicts
`
`“an ultimate receiver station,” includes a variety of external components such as
`
`“utilities meter,” “window opening and closing means,” “fiirnace,” and “air
`
`con[ditioning] system.” (Ex. 1001 at 10:16-17, Fig. 7.) These components are clearly
`
`not within the same enclosure and are not necessarily within the same room, floor, or
`
`building, yet they are depicted as a “receiver station.” Moreover, PMC was not hesitant
`
`in drawing the boundary of a “receiver station” to include Lockwood’s self-service
`
`terminal and its keyboard (see Response at p. 35), even though PMC’s own patent
`
`acknowledges that keyboards could be of the “remote keyboard” variety (Ex. 1001 at
`
`4:8—11; see Ex. 1014 at 1111 49-54). Despite PMC’s own arbitrary drawing of the
`
`“receiver station” boundary, PMC now argues that once the proximity between system
`
`components reaches an arbitrary limit, the system no longer constitutes a “receiver
`
`station.” Whether that arbitrary limit should be measured in inches, feet, or miles
`
`cannot be discerned.
`
`Indeed, it is precisely this type of claim ambiguity that is best
`
`addressed by claim drafiing and not through claim interpretation.
`
`If PMC wants a
`
`“receiver station” to have components confined to, for instance, a ten-foot radius (to
`
`_11-
`
`

`

`accommodate a remote keyboard), it should propose a clarifying amendment.
`
`PMC further argues that a control signal
`
`transmitted between the central
`
`computer and terminal is not a transmission “received fiom a source externai to the
`
`receiver station.” (Response at p. 42, original emphasis.) But as described above in
`
`Section 11.8, the claim requires no such limitation and the ‘717 specification supports
`
`
`internal
`
`information transmissions.
`
`Thus,
`
`the “receiving a first control signal”
`
`limitation is taught by either the receipt of a control signal from a keyboard (Petition at
`
`p. 1 l) or the downloading of a terminal control program (Petition at p. 38), regardless of
`
`where it originates from. (See Ex. 1014 at W 55-5 6.)
`
`B.
`
`Lockwood in View of Bakula discloses “generating a benefit datum in
`response to a first control signal”
`
`Lockwood in View of Bakula discloses a terminal control program being
`
`downloaded onto the Lockwood self-service terminals and causing the terminal to
`
`request insurance quotes fi'om the central computer.
`
`(See Petition at pp. 38—41.) PMC
`
`does not dispute that Lockwood’s central computer generates insurance policy
`
`information (129., “benefit datum”).
`
`(See Response at p. 40.) PMC argues, however,
`
`that the insurance policy information generated by the central computer is not “in
`
`response” to the terminal control program (rte, “first control signal”) downloaded to the
`
`self—service terminal. But PMC concedes that “[w]ithout question, the terminal control
`
`program in the proposed system executes at the user terminal to control the operations
`
`of the user terminal.” (Id. at p. 43.) One such “Operation” is to solicit and send “the
`
`-12-
`
`

`

`gathered information to the center (46) and wait[] to receive an insurance quotation. . ..”
`
`(Ex. 1008 at 7:5—10.) The insurance quote is thus generated by Lockwood’s central
`
`computer in response to the operation of the terminal control program, thus satisfying
`
`the “in response to said first control signal” limitation. (See Ex. 1014 at 1111 57-61.)
`
`C.
`
`Lockwood in View of Bakula discloses “delivering said information
`content and said benefit datum at an output device”
`
`Lockwood’s central computer not only provides terminals with insurance
`
`quotations, it also “transmit[s] selected stored information to said terminal,” such as
`
`“comparable insurance coverages from several sources for comparison pu_rposes....”
`
`(Ex. 1008 at 1:27-36, 10:31-34, emphasis added.) PMC argues, however, that the only
`
`information delivered by the central computer is the insurance quotations (1’. e., the
`
`“benefit datum”) and not any “information content.” (See Response at pp. 43-44.) But
`
`in order for a customer to compare insurance coverages,
`
`information about
`
`the
`
`coverages must be provided along with the insurance quotations, as expressly disclosed
`
`in Lockwood.
`
`(See, e.g., Ex. 1012 at 11 71.) This insurance coverage information
`
`constitutes the claimed “information content.” (See Ex. 1014 at W 62—64.)
`
`D.
`
`Lockwood in view of Bakula and Lemon discloses delivering “based
`
`on a schedule” (Claim 7)
`
`Lemon discloses a “means for displaying a plurality of video menu pages in a
`
`particular sequence, each page being displayed for a particular time. ...” (Ex. 1011 at
`
`32:31—34.) This feature enables Lockwood’s system to display multiple insurance
`
`policies in an orderly fashion and facilitates Lockwood’s objective of letting customers
`
`_13_
`
`

`

`compare insurance coverages.
`
`(See Ex. 1008 at 1:31-36.) PMC argues that combining
`
`Lemon’s scrolling display with Lockwood’s terminal would “disrupt the core function
`
`of the terminal in displaying a predetermined video presentation.” (See Response at p.
`
`49.) But Lockwood’s video presentation has nothing to do with the system’s ability to
`
`display multiple insurance policies.
`
`(See Ex. 1014 at W 65-66.) That is, Lockwood’s
`
`videodisc playback, relied upon by PMC, simply outputs a user mterface (1'. e., a
`
`presentation asking the user to make a purchase) and not the insurance policy and quote
`
`information, which originates fi‘om the central computer.
`
`(See Ex. 1003 at 5:16-21.)
`
`PMC’s arguments therefore fail to address the combination of Lockwood and Lemon as
`
`it applies to claim 7. (See also Ex. 1014 at 1111 65-68.)
`
`IV.
`
`PMC’s Alleged Evidence of Nonobviousness
`
`PMC presents a Declaration from Gerald Holtzman, President of PMC (Ex.
`
`2020), that includes alleged evidence of the success of PMC’s licensing program and
`
`patent portfolio valuation as secondary considerations of nonobviousness. Petitioner
`
`submits that Gerald Holtzman has a financial interest in the Harvey patents and that
`
`therefore his declaration should be given little weight.
`
`(See Ex. 1020 at pp. 6—10.)
`
`Petitioner further submits that PMC’s licensing success and portfolio evaluations have
`
`little to do with the obviousness or nonobviousness of its patents, and everything to do
`
`with the effectiveness of the “patent assertion entity” business of which PMC is a part.
`
`See, e.g., Ex. 1016 at Table 2; Ex. 1017 at page 6; Ex. 1018 at page 1 (citing PMC’s
`
`-14-
`
`

`

`litigation against Zynga as an example of the exploitation of “submarine patents”).
`
`Moreover, PMC’s evidence is not specific to the “717 patent.
`
`(See Ex. 2020.)
`
`PMC presents the licensing history of its entire patent porgbeo (including more than
`
`sixty issued patents) as evidence of nonobviousness for the “717 patent.
`
`(1d. at M 4—21;
`
`Ex. 1020 at p. 14.) But the ‘717 patent was never asserted against any of those
`
`licensees.
`
`In fact, the ‘717 patent was not even issued when many of those licenses
`
`were entered into. Thus, the existence of the prior licenses carries no weight as to
`
`whether the claims of the ‘717 patent are non-obvious. Further, while the ‘717 patent
`
`shares the same specification as the rest of PMC’s patents, PMC has provided no
`
`evidence that they share similar claim scope. The specification is 287 columns in
`
`length, and the ‘717 patent claims relate to Q1; narrow aspect of that specification.
`
`PMC has not shown how any of the claims that were the subject of its prior
`
`enforcement efforts relate to the ‘717 patent claims.
`
`V.
`
`Conclusion
`
`Petitioner requests that claims 1-7 and 9 of the ‘7 l7 patent be declared invalid.
`
`Date: January 24, 2014
`
`David B. ochran, Reg. No. 39,142
`Joseph M. Sauer, Reg. No. 47,919
`JONES DAY
`
`North Point, 901 Lakeside Avenue
`
`Cleveland, Ohio 441 14
`
`(216) 586—3939
`
`-15-
`
`

`

`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
`
`Reply to Patent Owner’s Response, along with all exhibits supporting and filed with
`
`the Reply, were served on January 24, 2014 Via email to:
`
`Thomas J. Scott, Jr.
`tscott@.goodwinprocter.corn
`and
`
`Stephen Schreiner
`sschreiner® oodwin rocterem
`
`Dated: January 24, 2014
`
`

`

`APPENDIX OF EXHIBITS
`
`EXHIBIT
`
`N00
`
`TITLE
`
`1001
`
`US. Patent No. 7,787,717 (“the Harvey ‘717 Patent”)
`
`Excerpt from the file history of the Harvey ‘7 17 Patent: May 23,
`1995 Preliminary Amendment
`
`Excerpt from the file history of the Harvey ‘71 7 Patent: Notice of
`Allowance dated April 8, 2010
`
`Plaintiffs Disclosure of Asserted Claims and Infringement
`Contentions, Personalized Media Communications, LLC v. Zynga,
`Ina, Civil Action No. 2:12—cv-68 (ED. Texas)
`
`Excerpt from the file history of the Harvey ‘71 7 Patent: September
`
`PMC Infringement Contention Claim Charts against Zynga for the
`Harvey ‘717 Patent, Personalized Media Communications, LLC v.
`Zynga, Inc., Civil Action No. 2: 12-cv-68 (ED. Texas)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6, 2002 Office Action
`
`
`
`
`
`
`1007
`
`Excerpt from the file history of the Harvey ‘71 7 Patent: March 6,
`2003 Amendment
`
`1008
`
`US. Patent No. 4,567,359 (“Lockwood”)
`
`
`
`1009
`
`US. Patent No. 4,825,045 (“Humble”)
`
`1010
`
`US. Patent No. 4,204,206 (“Bakula”)
`
`

`

`
`
`
`1012
`
`1013
`
`
`
`
`
`Appendix to the Declaration of Dr. Charles J. Neuhauser: Dr.
`Neuhauser’s current curriculum vitae
`
`
`
`Rebuttal Declaration of Charles J. Neuhauser, PhD. Under 37
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`US. Patent No. 4,674,041 (“Lemon”)
`
` Declaration of Dr. Charles J. Neuhauser Under 37 CPR. § 1.68 in
`Support of Petition for Inter Partes Review of US. Patent No.
`7,797,717
`
`C.F.R. § 1.68
`
`Excerpt from Expert Report of Mark Claypool, Ph.D., July 19,
`2013, Personalized Media Communications, LLC v. Zynga, Ina,
`Civil Action No. 2: 12-cv—68 (E .D. Texas)
`
`James Bessen & Michael J. Meurer, The Direct Costsflom NPE
`Disputes, 99 CORNELL L. REV. (forthcoming 2014)
`
`1017
`
`Patent Assertion and US. Innovation, Executive Office of the
`
`President (June 2013)
`
`1018
`
`1019
`
`
`
`1020
`
`Alexander M. Bell, An Autopsy on Submarine Patents,
`Departments of Economics and Computer Science, Brown
`University (April 20 1 3)
`
`Deposition transcript of Samuel H. Russ, Ph.D. (December 20,
`2013)
`
`Deposition transcript of Gerald Holtzman (January 15, 2014)
`
`
`
`
`
`
`
`
`
`
`