Docket No. PMC-006
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________
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`ZYNGA, INC.
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`Petitioner
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`V.
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`PERSONALIZED MEDIA COMMUNICATIONS LLC
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`Patent Owner
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`___________________________
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`Case No. IPR2013-00164
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`U.S. Patent No. 7,797,717
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`___________________________
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`PRELIMINARY PATENT OWNER RESPONSE TO
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`PETITION FOR INTER PARTES REVIEW
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`PURSUANT TO 37 C.F.R. 42
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________
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`ZYNGA, INC.
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`Petitioner
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`V.
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`PERSONALIZED MEDIA COMMUNICATIONS LLC
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`Patent Owner
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`___________________________
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`Case No. IPR2013-00164
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`U.S. Patent No. 7,797,717
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`___________________________
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`PRELIMINARY PATENT OWNER RESPONSE TO
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`PETITION FOR INTER PARTES REVIEW
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`PURSUANT TO 37 C.F.R. 42
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`Table of Contents
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`I.
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`INTRODUCTION ......................................................................................... 1
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`A.
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`Personalized Media Communications and the Zynga
`Litigation .............................................................................................. 1
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`B. Overview of the ’717 Patent ............................................................... 2
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`II.
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`THE PETITION SHOULD BE DENIED ................................................... 4
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`The Petition Fails to Establish a Reasonable Likelihood that
`at Least One of Claims 1-6 and 9 is Anticipated by
`Lockwood ............................................................................................. 6
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`The Petition Fails to Establish a Reasonable Likelihood that
`at Least One of Claims 1-6 and 9 is Rendered Unpatentable
`by Lockwood in View of Bakula ...................................................... 14
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`The Petition Fails to Establish a Reasonable Likelihood that
`Claim 7 is Rendered Obvious by Lockwood in View of
`Lemon or Lockwood in View of Bakula and Lemon ..................... 18
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`The Petition Fails to Establish a Reasonable Likelihood that
`at Least One of Claims 1-6 and 9 is Anticipated by Humble ........ 19
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`The Petition Fails to Establish a Reasonable Likelihood that
`at Least One of Claims 1-6 and 9 is Rendered Obvious by
`Humble in view of Lockwood and Bakula ...................................... 23
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`The Petition Fails to Establish a Reasonable Likelihood that
`Claim 7 is Rendered Obvious by Humble in view of Lemon
`or Humble in view of Lockwood, Bakula and Lemon ................... 26
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`III. Conclusion .................................................................................................... 28
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`Certificate of Service .............................................................................................. 29
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`I.
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`INTRODUCTION
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`Patent Owner, Personalized Media Communications LLC (“PMC”), submits
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`the following preliminary response to the petition filed by Zynga, Inc. (the
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`“Petitioner”) on February 26, 2013 requesting inter partes review of claims 1-7,
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`and 9 of U.S. Patent No. 7,797,717 (the “’717 Patent”) (Zynga Ex. 1001) (the
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`“petition”). The Petitioner has failed to establish that there is a reasonable
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`likelihood that it will prevail as to at least one claim. Accordingly, PMC
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`respectfully requests that the Patent Trial and Appeal Board (the “Board”) decline
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`to institute inter partes review of the ’717 Patent pursuant to 37 C.F.R.
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`§ 42.108(b).
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`A.
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`Personalized Media Communications and the Zynga Litigation
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`PMC is the owner of a broad intellectual property portfolio developed over
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`thirty years by inventor and founder John C. Harvey. This portfolio includes fifty-
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`eight (58) new patents issued to PMC in the last two years, including the ’717
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`Patent that is the subject of the petition. Broadly speaking, the patents relate to
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`various applications of control and information signals to electronic media content
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`to generate output for display. The inventions covered by these patents have a
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`wide range of application across many fields and can be delivered via the Internet,
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`cellular wireless, cable/satellite, and other networks to any number of different user
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`1
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`devices for consumption. The PMC inventions enable publishers, advertisers,
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`social networks, businesses and consumers to enjoy the full benefit of new media
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`content in a variety of ways and have been licensed to a wide range of technology
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`companies including Sony Corporation, Motorola Mobility, and Cisco Systems.
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`On February 13, 2012, PMC filed a patent infringement suit in the United
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`States District Court for the Eastern District of Texas against Zynga, Inc., a
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`developer and provider of social computer games, for infringement of four of
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`PMC’s patents, United States Patent Nos. 7,797,717; 7,908,638; 7,734,251; and
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`7,860,131, regarding the use of control and information signals operating on
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`electronic media content to generate output for display that is relevant to specific
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`users. Zynga has filed a petition for inter partes review for each of these patents.
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`B. Overview of the ’717 Patent
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`The claims of the ’717 Patent are generally directed to a method for
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`processing an information transmission that is received at a receiver station to
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`locally generate content by processing stored subscriber data.
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`The ‘717 Patent has numerous embodiments corresponding to the claims. In
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`one extensive example, a content distribution system helps farmers across Europe
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`with the planning and management of their farms. Each farmer, using a receiver
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`station, can receive an information transmission containing a television program
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`2
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`entitled “Farm Plans of Europe,” information relating to commercials that might
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`also be presented, and a message to be processed at the receiver station to
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`coordinate the presentation. Ex. 1001 at Col. 274, ll. 54- 64; Col. 285, ll. 1-24.
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`The commercials describe products such as trucks and the delivery of services. Id.
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`at Col. 283, l. 48, Col. 284, l. 17. At each farmer station, crop plan information
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`specific to the farmer is stored in a file called PLANTING.DAT. Id. at Col. 283,
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`ll. 39-53. Upon the receipt of the message contained in the information
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`transmission, the receiver station accesses the subscriber specific data of
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`PLANTING.DAT and generates a cost/benefit financial analysis of the benefit of
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`acquiring and using a particular product or service in comparison with information
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`stored in the PLANTING.DAT regarding the farmer’s existing product or service
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`of like kind. Id. at Col. 285, ll. 34-60. The receiver station outputs the locally-
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`generated cost/benefit analysis as part of a commercial for the particular product or
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`service following the “Farm Plan of Europe” television program. This cost/benefit
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`analysis describes the benefit to that subscriber of acquiring the product or service.
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`Id. at Col. 285, ll. 34-60. After the commercial is delivered, the farmer can
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`provide an input to load and execute an instruction module and enter information
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`that modifies the file PLANTING.DAT. Id. at Col. 285, l. 61-Col. 286, l. 9. After
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`the farmer enters the input, the instruction module causes the receiver station to
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`3
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`transmit the PLANTING.DAT file, now modified by the input, to a remote station
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`for processing. Id. at Col. 285, l. 61-Col. 286, l. 9.
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`Claims 1-7, and 9, in particular, are directed to a method of processing video
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`at a receiver station based on at least one information transmission that is received.
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`The information transmission, as claimed, includes a control signal and
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`information content that describes a product or a service. The control signal causes
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`the generation of additional content by processing subscriber specific data at the
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`receiver station. In particular, additional content is generated in the form of a
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`benefit datum that explains the benefit to that subscriber of getting the product or
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`service. The transmitted information content about the product and the locally-
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`generated benefit datum are then presented to the subscriber at an output device at
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`the receiver station. The subscriber can respond with an input and based on the
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`input, the receiver station is controlled.
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`II. THE PETITION SHOULD BE DENIED
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`The Board should deny the petition and decline to institute a trial. The
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`petition has failed to meet the minimum threshold requirement required under 35
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`U.S.C. § 314 for the institution of inter partes review. See also 37 C.F.R.
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`§ 42.108. In particular, “The Director may not authorize an inter partes review to
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`be instituted unless the Director determines that the information presented in the
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`4
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`petition filed under section 311 and any response under section 313 shows that
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`there is a reasonable likelihood that the Petitioner would prevail with respect to at
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`least 1 of the claims challenged in the petition.” 35 U.S.C. §314(a) (2013). This
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`requirement, instituted with the passing of the America Invents Act, is a
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`heightened standard.1 Moreover, 35 U.S.C. § 325 provides that the Director may
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`reject the petition or request because the same or substantially the same prior art or
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`arguments previously were presented to the Office.
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`1 The “reasonable likelihood” standard was intended by Congress to be a
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`substantially higher barrier to patent validity challenges than the former
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`“substantial new question of patentability” test used for inter partes reexamination
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`proceedings. See H.R. Rep. No. 112-98 (part 1) at 47 (2011) (“The threshold for
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`initiating an inter partes review is elevated from ‘significant new question of
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`patentability’ – a standard that currently allows 95% of all requests to be granted –
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`to a standard requiring Petitioners to present information showing that their
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`challenge has a reasonable likelihood of success.”). Accordingly, inter partes
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`review is available only in exceptional cases where serious doubts about the
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`patent’s validity are raised and where a prima facie case has been established by
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`the petitioner. See 157 Cong. Rec. S1375 (Mar. 8, 2011) (statement of Sen. Kyl
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`(D-Ariz)).
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`5
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`The Petitioner challenges claims 1-7 and 9 of the ’717 Patent over an
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`unlikely combination of four references, U.S. Patent No. 4,567,359 to Lockwood
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`(“Lockwood”) (Zynga Ex. 1008); U.S. Patent No. 4,825,045 to Humble
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`(“Humble”) (Zynga Ex. 1009); U.S. Patent No. 4,204,206 to Bakula et al.
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`(“Bakula”) (Zynga Ex. 1010); and U.S. Patent No. 4,674,041 to Lemon et al.
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`(“Lemon”) (Zynga Ex. 1011). As shown below, the Petitioner fails to establish
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`that there is a reasonable likelihood that it will prevail as to at least one challenged
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`claim and therefore the petition should be rejected.
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`A. The Petition Fails to Establish a Reasonable Likelihood that at
`Least One of Claims 1-6 and 9 is Anticipated by Lockwood
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`The Petitioner challenges claims 1-6 and 9 of the ’717 Patent under 35
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`U.S.C 102(b) over Lockwood. Petition at 9-23 (Section V.A.)
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`Lockwood was cited previously and considered by the Examiner during the
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`original prosecution of the ’717 Patent, as acknowledged by the Petitioner.
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`Petition at 6. Thus, the same prior art reference was previously presented before
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`the Office and was not found to anticipate the claims of the ’717 Patent. Title 35
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`of the U.S. Code states:
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`In determining whether to institute or order a proceeding under . . .
`chapter 31, the Director may take into account whether, and reject the
`petition or request because, the same or substantially the same prior
`art or arguments previously were presented to the Office.
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`6
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`35 U.S.C. § 325(d) (2013). The Office has acknowledged that it will “exercise its
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`authority under 35 U.S.C. 325(d), where appropriate, to deny petitions that submit
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`the same or substantially the same prior art or arguments previously presented to
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`the Office.” 77 Fed. Reg. 48679, 48702 (Aug. 14, 2012). Here, the Petitioner fails
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`to overcome the presumption that the same prior art reference and/or arguments
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`were already considered by the Office during prosecution of the ’717 Patent.
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`Accordingly, the Office should exercise its authority to deny the petition.
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`The petition further fails to demonstrate that the claims are anticipated by
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`Lockwood. “A claim is anticipated only if each and every element as set forth in
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`the claim is found, either expressly or inherently described, in a single prior art
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`reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631
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`(Fed. Cir. 1987), see also MPEP § 2131.02. “The identical invention must be
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`shown in as complete detail as is contained in the . . . claim.” Richardson v. Suzuki
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`Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). Accordingly, “there must be no
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`difference between the claimed invention and the reference disclosure, as viewed
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`by a person of ordinary skill in the field of the invention.” Scripps Clinic &
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`Research Found. V. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991). Thus,
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`in order to determine whether a reference anticipates a claim one must look to the
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`elements of the claim and see whether they are found in the reference.
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`7
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`Lockwood is directed to a self-service clearinghouse for the distribution of
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`insurance policy information. Lockwood discloses a plurality of self-service sales
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`terminals that are remotely linked to central data processing center. Ex. 1008 at
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`Abstract; Col. 2, ll. 8-19; Fig. 2. The self-service terminals are configured to
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`collect customer information necessary to process an insurance quotation for the
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`customer and forward the customer information to the central data processing
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`center for remote processing. Id. at Col. 2, ll. 48-55; Col. 3, ll. 18-32. In return,
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`the customer is provided with a quotation delivered from the central data
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`processing center that the customer may select from and purchase. Id.
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`The functionality of Lockwood’s insurance quotation system is quite
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`different from that of the claimed invention. The cited reference describes a
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`system wherein insurance quotation calculations are conducted at the central data
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`processing center and that information is transmitted to self-service terminals for
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`display. Id. This is in contrast to the invention covered by claim 1 of the ’717
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`Patent, which is directed to a transmission of information content and a control
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`signal that causes the receiver station to generate data by processing subscriber
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`specific information, and then to deliver to the user the transmitted information
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`content and the locally-generated data.
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`Because of this key difference in functionality between the system of
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`Lockwood and the claimed invention, Lockwood fails to teach several limitations
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`8
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`of the claims. The petition, accordingly, is unable to demonstrate that Lockwood
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`anticipates the claims, as alleged.
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`For one, Lockwood fails to teach receiving information content and a first
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`control signal in said at least one information transmission, as recited in
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`independent claim 1. With respect to this limitation, Petitioner points to
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`Lockwood’s central data processing center,2 which receives program and insurance
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`policy information from various insurance companies. Petition at 9-11; 13-14
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`(citing to Ex. 1008 at Col. 5, ll. 37-55). Even if such program and insurance policy
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`information was received in an information transmission, Lockwood fails to
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`disclose that information transmission having any control signals, as claimed.
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`Certainly, Lockwood does not disclose control signals with the program and
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`insurance policy information received from an insurance company that cause the
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`generating of a benefit datum for a specific subscriber. Petitioner also cites to the
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`central data processing center’s receipt of customer information as teaching the
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`2 Here, the petition asserts that the claimed “receiver station” that delivers output to
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`a subscriber is Lockwood’s central data processing center instead of Lockwood’s
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`self-service terminals. Elsewhere, the petition asserts that the entire Lockwood
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`system is the “receiver station”.
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`9
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`claimed information transmission. Again, however, the customer information is
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`not disclosed as containing any control signals.
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`Continuing with a shotgun approach, the petition further contends that a
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`control signal is received at the terminals from “an input device (i.e., a keyboard)
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`operated by a customer.” Petition at 11. Yet, even if this was taken as true, a local
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`input originating from a keyboard at the terminal is not included in any information
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`transmission. Claim 1 recites a receiver station receiving an information
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`transmission that includes “information content describing . . . a product [or]
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`service” and a “control signal” that causes the receiver station to generate
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`additional content about the product or service. The use of a keyboard by a
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`customer in Lockwood does not remotely disclose that claim limitation.
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`The reference does not disclose any control signals that are communicated
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`from the self-service terminals to the central data processing center as part of an
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`information transmission further containing information content. The terminals are
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`described as simply gathering a predetermined sequence of information from a
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`customer on the services of interest, and transmitting the information to the central
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`data processing center. Id. at Col. 2, ll. 48-55; see also Ex. 1008 at, Col. 3, ll. 18-
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`24 (“customer [is] asked pertinent questions [and t]he gathered information is sent
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`to the central data processing center); Col. 6, ll. 3-6 (“Customer enters necessary
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`information . . . [and] Information [is] relayed to central data processing center);
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`10
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`Col. 6, ll. 51 – Col. 7, l. 10 (the necessary information gathered is sent to the center
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`(46)). That does not correspond to the claim limitation.
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`Furthermore, Petitioner fails to point to any portion of Lockwood that
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`discloses the receiving of an information transmission at the receiver station and
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`the generating of the benefit datum in response to a first control signal by
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`processing subscriber specific data at the receiver station, as required by
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`independent claim 1. Because the reference does not teach self-service terminals
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`with that functionality, the Petitioner attempts to overcome this deficiency by
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`contending that the entire Lockwood system—self-service terminals combined with
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`the central data processing center, etc.—is a “receiver station.” The plain and
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`ordinary reading of this limitation within the context of the claims, even under the
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`broadest reasonable interpretation, does not allow for Petitioner’s attempt to
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`interpret Lockwood’s entire insurance quotation dispensing system, which can
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`include the central data processing center 1, sales terminals 2, credit information
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`terminal 3, and data processing terminals 4 of various insurance companies (Id. at
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`Col. 4, ll. 1-6; Fig. 1) as a “receiver station.”. Such an interpretation of Lockwood
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`is simply not credible.
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`Moreover, while arguing that the Lockwood system for dispensing insurance
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`quotations is the claimed “receiver station,” Petitioner limits this (alleged
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`anticipatory) system to the “central data processing center and one or more user
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`11
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`terminals.” Petition at 10. Petitioner conveniently excludes the credit information
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`terminal 3 and data processing terminals 4 from the system as part of the alleged
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`“receiver station.” See Id. at Col. 4, ll. 1-6. It is obvious that Petitioner made this
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`exclusion in order to leave something in Lockwood for the “receiving of the
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`information content” limitation.3 Petitioner is simply cherry-picking bits and
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`pieces of Lockwood in an effort to make the square peg fit the round hole.
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`Ultimately, Petitioner’s tortured interpretation of Lockwood on the claimed
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`“receiver station” is illogical and unsupportable. At best, Lockwood discloses a
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`“receiver station” – the self-service terminal – with a limited set of capabilities that
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`does not include the ability to receive information content and a first control signal
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`in said at least one information transmission at said receiver station and generate
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`a benefit datum in response to said first control signal by processing subscriber
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`specific data at said receiver station.
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`Dependent claims 2-6 and 9 further limit independent claim 1 and the
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`petition fails to demonstrate that there is a reasonable likelihood that it would
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`succeed as to these claims for at least the same reasons as discussed above with
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`regard to independent claim 1.
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`3 If all of the components of the disclosed system are read to be the alleged receiver
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`station, then it does not receive any information content, as claimed.
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`12
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`Dependent claim 3 further provides that “said subscriber input modifies said
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`subscriber specific data.” The petition fails to demonstrate that Lockwood teaches
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`this additional limitation.
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`For claim 3, the petition contends that when the customer is buying a policy
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`his “entry of the customer’s name and address for billing purposes” is “used to
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`update the information stored for the particular customer.” Petition at 18.
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`However, Lockwood does not “update” any “information stored for the particular
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`customer” upon the purchase of an insurance policy. The reference discloses that
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`during the interview process with the customer, “each valid answer is stored (41)
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`until all necessary information has been gathered,” where the answers are then
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`communicated to the central data processing center for processing. Ex. 1008 at
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`Col. 6, ll. 51-65. At the central data processing center, the insurance quotation is
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`determined and sent to the self-service terminal. A history of quotations is stored
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`at the central data processing center. Id. at Col. 7, l. 68-Col. 8, l. 2. When a
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`customer purchases a policy and enters his or her name and address, the customer’s
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`information is added to the policy information file for the first time at the central
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`data processing center. Id. at Col. 8, ll. 12-19. There is no modification of the
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`customer information that takes place – it is simply stored into the file. Certainly,
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`there is no updating of subscriber specific data that was processed in generating a
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`benefit datum, as set forth in claim 3.
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`13
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`For the foregoing reasons, the Petitioner has failed to demonstrate that there
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`is a reasonable likelihood that it will prevail as to at least one claim based on its
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`proposed rejection over Lockwood under 35 U.S.C. § 102(b).
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`B.
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`The Petition Fails to Establish a Reasonable Likelihood that at
`Least One of Claims 1-6 and 9 is Rendered Unpatentable by
`Lockwood in View of Bakula
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`Recognizing that Lockwood does not teach the step of receiving information
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`content and a first control signal in said at least one information transmission at a
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`receiver station, Petitioner cites to Bakula in an attempt to make up for this
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`deficiency and challenges claims 1-6 and 9 under 35 U.S.C. 103(a) over Lockwood
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`in view of Bakula. Petition at 38-41.
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`A claim may be found obvious if all the claimed elements were known in the
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`prior art and one skilled in the art could have combined the elements as claimed by
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`known methods with no change in their respective functions, and the combination
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`yielded nothing more than predictable results to one of ordinary skill in the art.
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`KSR International Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007); Sakraida v. AG
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`Pro, Inc., 425 U.S. 273, 282 (1976); Anderson’s-Black Rock, Inc. v. Pavement
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`Salvage Co., 396 U.S. 57, 62-63 (1969); Great Atlantic & P. Tea Co. v.
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`Supermarket Equipment Corp., 340 U.S. 147, 152 (1950). Here, the Petitioner
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`does not even contend that Bakula makes up for all of the deficiencies of
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`14
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`Lockwood identified in Section II.A. Hence, even if Bakula disclosed what
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`Petitioner asserts, it remains the case that the combined teachings of Lockwood
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`and Bakula still would not yield the subject matter recited in claims 1-6 and 9 and
`
`therefore, these claims remain patentable over Lockwood and Bakula for at least
`
`this reason.
`
`In addition, Bakula also does not teach the step of receiving information
`
`content and a first control signal in said at least one information transmission at a
`
`receiver station as the Petitioner contends. For this reason, Petitioner has failed to
`
`demonstrate a reasonable likelihood of prevailing on the proposed rejections of the
`
`claims 1-6, and 9 as being obvious in view of Lockwood and Bakula.
`
`Bakula is directed to a “video display system,” where a central host
`
`computer may provide an editor terminal with a program to allow a newspaper
`
`editor to perform word processing. Ex. 1010 at Abstract. After the word processor
`
`program is loaded at the terminals, the editor terminal can request from the host
`
`processor one or more specific news stores for editing. Id.; Ex. 1010 at Col. 5, ll.
`
`10-14.
`
`As described in Section II.A, Lockwood fails to teach the receiving of an
`
`information transmission that contains both information content and a first control
`
`signal. To the extent that Bakula’s word processing program can be considered a
`
`control signal, Bakula does not teach that the word processing program is received
`
`
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`15
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`
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
`
`
`in an information transmission that further contains information content. As
`
`described in Bakula, in response to the terminal identification supplied to the host
`
`computer HC, the “host computer will download program instructions to the
`
`terminal for storage in a main memory M.” Id. Bakula does not disclose that the
`
`program instructions for the word processing program include information content.
`
`On the contrary, Bakula provides for the content (stories to be edited) to be sent
`
`separately after the program is loaded. Id. at Col. 5, ll. 3-27.
`
`
`
`In addition, the Petitioner fails to demonstrate how the alleged “control
`
`signal” (word processing program) causes the generating of a benefit datum.
`
`Claim 1 of the ’717 Patent, in particular, recites a step of generating a benefit
`
`datum in response to said first control signal by processing subscriber specific
`
`data at said receiver station. The function of the word processing program of
`
`Bakula is limited to the editing of news stories. See e.g., Ex. 1010 at Col. 1, ll. 15-
`
`40. Bakula’s word processing program does not generate any benefit information
`
`that explains a benefit of acquiring a product or service specific to the subscriber,
`
`nor does it cause the processing of subscriber specific data at the editor terminals
`
`of Bakula.
`
`
`
`Furthermore, Petitioner fails to identify a reason why a person of ordinary
`
`skill in the art would combine the insurance quotation dispensing system of
`
`Lockwood with Bakula’s alleged teaching “regarding how to program terminals in
`
`
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`16
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`
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
`
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`a distributed system.” Petition at 40. While the Petitioner vaguely refers to a
`
`benefit of “allowing new programs and program updates to be delivered remotely
`
`to the system,” it is not at all clear why (or how) a person of ordinary skill in the
`
`art would modify Lockwood’s insurance quotation dispensing system to receive
`
`information content and a first control signal in a at least one information
`
`transmission at a receiver station. Petitioner’s application of Lockwood cannot
`
`even be reconciled with its proposed modification by Bakula. As discussed in
`
`Section II.A, Petitioner asserts that the recited “information transmission” is the
`
`information flowing into the central data processing center of Lockwood from self-
`
`service terminals or insurance companies. It defies common sense that a person of
`
`ordinary skill would modify Lockwood by inserting a word processing program (or
`
`other computer program) to be sent with customer data from a self-service
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`terminal. Nor would it make sense for Lockwood’s system to be modified so that
`
`insurance companies could send a word processing program along with insurance
`
`data to the central data processing center. There would be no need to allow
`
`insurance companies or self-service terminals to update or otherwise modify the
`
`programs running at the central processing center.
`
`For the foregoing reasons, the Petitioner has failed to demonstrate that there
`
`is a reasonable likelihood that it will prevail as to at least one claim based on its
`
`proposed rejection over Lockwood in view of Bakula under 35 U.S.C. § 103(a).
`
`
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`17
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
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`
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`C. The Petition Fails to Establish a Reasonable Likelihood that
`Claim 7 is Rendered Obvious by Lockwood in View of Lemon or
`Lockwood in View of Bakula and Lemon
`
`The Petitioner concedes that Lockwood does not teach the limitation of
`
`dependent claim 7, which claims the method of claim 6, wherein the step of
`
`delivering the information content and benefit datum “is performed based on a
`
`schedule.” Petitioner relies on Lemon to address this deficiency of Lockwood.
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`Similarly, the Petitioner concedes that Lockwood and Bakula do not teach the
`
`limitation of dependent claim 7 and relies on Lemon to address the limitation.
`
`Petition at 43-44.
`
`Claim 7 further limits the claims analyzed above. Here, the Petitioner does
`
`not contend that Lemon makes up for all of the deficiencies of Lockwood
`
`identified in Section II.A, nor does it resolve the deficiencies of the
`
`Lockwood/Bakula combination addressed in Section II.B. Hence, even if the
`
`alleged teachings of Lemon asserted in the Petition were accepted, it remains the
`
`case that the combined teachings of Lockwood and Lemon and, similarly,
`
`Lockwood, Bakula and Lemon, do not render any of the challenged claims
`
`obvious. The claims remain patentable over these references for at least this
`
`reason.
`
`
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`18
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`IPR2013-00164
`Patent No. 7,797,717 B1
`Atty. Docket: PMC-006
`
`In addition, Petitioner, fails to demonstrate a prima facie case of obviousness
`
`for claim 7 under 35 U.S.C. § 103. Lemon, which is directed to a system for the
`
`distribution of coupons, does not teach the delivery of information content and
`
`benefit datum at an output device based on a schedule. Instead, Lemon simply
`
`discloses that the screen of terminal T displays a page containing a number of
`
`manufacturer coupons. See Ex. 1011 at Fig. 2. Accordingly, even if the teaching
`
`of Lemon is combined as alleged, claim 7 would not be rendered unpatentable.
`
`D. The Petition Fails to Establish a Reasonable Likelihood that at
`Least One of Claims 1-6 and 9 is Anticipated by Humble
`
`Petitioner challenges claims 1-6 and 9 of the ’717 Patent under 35 U.S.C.
`
`§ 102(e) over Humble. Petition at 23-38.
`
`Humble is directed to an improved supermarket check-out counter processor
`
`that includes a separate display for displaying promotions and commercials based
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`on the Universal Product Codes (UPCs) of items purchased. Ex. 1009 at Abstract.
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`A scanner generates the UPCs of items the consumer brings for purchase. Id. at
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`Col. 2, ll. 25-35. The scanned UPCs are used to extract price and description
`
`information from a first data store 16. Id. at Col. 2, ll. 25-35. Additionally, the
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`UPCs are compared to a list of UPCs in a second data store 32 which contains
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`UPCs that trigger pr
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