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