`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 10
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` Entered: July 25, 2013
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`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 (SCM)
`Patent 7,797,717 B1
`_______________
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`JONI Y. CHANG, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`DECISION
` Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`

`

`Case IPR2013-00164
`Patent 7,797,717 B1
`
`
`I. INTRODUCTION
`
`Zynga Inc. (“Zynga”) filed a petition requesting an inter partes review of
`
`claims 1-7 and 9 of U.S. Patent 7,797,717. (Paper 1, “Pet.”) In response,
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`Personalized Media Communications, LLC (“PMC”) filed a patent owner
`
`preliminary response. (Paper 8, “Prelim. Resp.”) We have jurisdiction under
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`35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`
`§ 314(a):
`
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed 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.
`
`Pursuant to the defined threshold under 35 U.S.C. § 314(a), the Board
`
`institutes an inter partes review of claims 1-7 and 9 of the ’717 patent.
`
`A. Related Proceedings
`
`The ’717 patent and other related patents are the subject of four inter partes
`
`review filings before the Patent Trial and Appeal Board, and District Court
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`litigation in which PMC alleges infringement against Zynga. (See Prelim. Resp. 2;
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`accord Pet. 1-2; Personalized Media Communications, LLC v. Zynga Inc. Civil
`
`Action No. 2:12-cv -68-JRG (E.D. Tex. Feb. 13, 2012).)
`
`Zynga asserts that PMC has conceded in the District Court litigation that the
`
`’717 patent’s earliest effective priority date is September 11, 1987. (Pet. 4.) PMC
`
`does not contest the assertion in its Preliminary Response. Accordingly, the Board
`
`assumes for purposes of this Decision that September 11, 1987 is the effective
`
`filing date of the ’717 patent’s claims at issue here.
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`Case IPR2013-00164
`Patent 7,797,717 B1
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`B. The ’717 Patent
`
`The ’717 patent describes a modified television receiver station which
`
`includes a microcomputer which combines television viewer information and
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`general mass media television broadcasting into personalized media for the
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`television viewer. (See Ex. 1001, Abstract, Fig. 1.) PMC describes the ’717 patent
`
`claims as “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.” (Prelim. Resp. 2.)
`
`Figure 1, below, depicts a block diagram of a receiver station. (Col. 9, ll.
`
`29-30).
`
`PMC and Zynga, through its expert declarant Dr. Charles J. Neuhauser
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`(Neuhauser Decl., Ex. 1012), each similarly describe a disclosed receiver station
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`embodiment which involves a television program called “Farm Plans [or Plan] of
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`Europe.” (See Prelim. Resp. 3; Ex. 1012, ¶ 39.) According to PMC, the television
`
`
`
`program is part of
`
`a content distribution system [which] helps farmers . . . with the
`planning and management of their farms. Each farmer, using a
`receiver station, can receive an information transmission containing a
`television program entitled ‘Farm Plans of Europe,’ information
`
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`Patent 7,797,717 B1
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`relating to commercials [about trucks, services etc.] that might also be
`presented, and a message to be processed at the receiver station to
`coordinate the presentation.
`
`(Prelim. Resp. 2-3 (citations to the ’717 patent omitted).)
`
`A farmer can store crop information specific to the farm in the receiver
`
`station, and upon receipt of the coordinating message, the system accesses that
`
`information to generate and output a cost/benefit analysis relating to the purchase
`
`of the truck or another service. (See Prelim. Resp. 3 (citations to the ’717 patent
`
`omitted).) Thereafter, the farmer can modify the crop information or other stored
`
`information. (See Prelim. Resp. 3-4 (citations to the ’717 patent omitted).)
`
`C. Exemplary Claim
`
`Challenged claim 1 follows:
`
` 1. A method of processing video signals at a receiver station
`
`based on at least one information transmission, the method comprising
`the steps of:
`
`
`
`receiving information content and a first control signal in said
`at least one information transmission at said receiver
`station, said information content describing at least one
`of a product and a service;
`
`generating a benefit datum in response to said first
`control signal by processing subscriber specific data at
`said receiver station;
`
`delivering said information content and said benefit datum at an
`output device at said receiver station, wherein said
`information content and said benefit datum explain a
`benefit of acquiring said product or service specific to
`said subscriber;
`
`
`
`
`
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`
`
`
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`
`
`
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`receiving a subscriber input at said receiver station after said
`
`step of delivering;
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`Case IPR2013-00164
`Patent 7,797,717 B1
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`and controlling said receiver station based on said subscriber
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`input.
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`D. Prior Art Relied Upon
`
`Zynga relies upon the following prior art references:
`
`U.S. Patent 4,204,206 May 20, 1980
`Bakula
`Lockwood U.S. Patent 4,567,359
`Jan. 28, 1986
`Lemon
`U.S. Patent 4,674,041
`June 16, 1987
`Humble
`U.S. Patent 4,825,045 Apr. 25, 1989
`
`
`E. The Asserted Grounds
`
`(Ex. 1010)
`(Ex. 1008)
`(Ex. 1011)
`(Ex. 1009)
`
`Zynga asserts the following grounds of unpatentability under 35 U.S.C.
`
`§§ 102 and 103:
`
`Claims 1-6 and 9 as anticipated by Lockwood;
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`Claims 1-6 and 9 as anticipated by Humble;
`
`Claims 1-6 and 9 as obvious over Lockwood and Bakula;
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`Claims 1-6 and 9 as obvious over Humble, Lockwood, and Bakula;
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`Claim 7 as obvious over Lockwood and Lemon;
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`Claim 7 as obvious over Lockwood, Bakula, and Lemon;
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`Claim 7 as obvious over Humble and Lemon;
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`Claim 7 as obvious over Humble, Lockwood, Bakula, and Lemon.
`
`(Pet. ii)
`
`II. ANALYSIS
`
`A. Claim Construction
`
`The Board interprets each claim in an inter partes review using the
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`“broadest reasonable construction in light of the specification of the patent in
`
`which it appears.” 37 C.F.R. § 42.100(b). See also Patent Trial Practice Guide,
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`77 Fed. Reg. at 48766 (Claim Construction). “Generally speaking, we indulge a
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`‘heavy presumption’ that a claim term carries its ordinary and customary
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`meaning.” See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`
`Cir. 2002). Tempering the presumption, “claims ‘must be read in view of the
`
`specification, of which they are a part. . . .’ [T]he specification ‘is always highly
`
`relevant to the claim construction analysis. Usually, it is dispositive; it is the single
`
`best guide to the meaning of a disputed term.”’ See Phillips v. AWH Corp., 415
`
`F.3d 1303, 1315 (Fed. Circ. 2005) (en banc) (citations omitted).
`
`The parties do not contend that any claim terms or phrases should be given a
`
`meaning other than the ordinary and customary meaning that the terms or phrases
`
`would have to a person of ordinary skill in the art in light of the ’717 patent
`
`specification. See Ayst Technologies Inc. v. Empak, Inc., 268 F.3d 1364, 1369
`
`(Fed. Cir. 2001) (there is “no reason to depart from the position consistently taken
`
`on this issue by the parties”).
`
`Zynga does not provide a claim construction for any of claims of the ’717
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`patent. Rather, Zynga represents that each claim should be construed in
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`accordance with its plain and ordinary meaning under the broadest reasonable
`
`interpretation standard. (Pet. 8.) PMC does not contend otherwise.
`
`However, an implicit disagreement exists over the meaning of the phrase
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`“control signal.” (See, e.g., Pet. 18; Prelim. Resp. 8.) The term “control signal” is
`
`not specifically defined in the ’717 patent. One trade dictionary defines a “control
`
`signal” as an electrical signal that directs a sequence of operations to be performed
`
`by a computer.1 The ’717 patent describes several examples of signals which
`
`appear to be control signals. (See, e.g., Ex. 1001, Abstract.) The ’717 patent
`
`description includes various electronic or other devices, such as displays,
`
`computers, converters, tuners, speakers, printers, and furnaces, which respond to
`
`
`1 Webster’s New World Dictionary of Computer Terms 60 (1983).
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`
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`the signal in a variety of causal or predetermined manners, for example, by
`
`outputting different media, automating connections, etc. (See id.)
`
`As ordinarily understood, the word “signal” means “any electrical quantity,
`
`such as voltage, current, or frequency, that can be used to transmit information.”2
`
`See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (Because
`
`the specification does not provide an explicit definition of the claim term, in
`
`determining the ordinary and customary meaning of the claim term as understood
`
`by a person of ordinary skill in the art, it is appropriate to consult a general
`
`dictionary definition of the word for guidance.)
`
`In light of the record, the term “control signal” reasonably means “an
`
`electrical quantity that is operative to cause a responsive action in a device,
`
`including but not limited to causing an output, an operation, or a sequence of
`
`operations.”
`
`An implicit also disagreement exists over the scope of the phrase
`
`“commercial” information. The ’717 patent refers to “[p]laying each commercial
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`spot [which] causes the combined medium information for said spot to display
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`information for a particular commercial product such as a truck or a particular
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`service such as a software package.” (’717 patent, col. 285, ll. 49-52.) In light of
`
`the ’717 patent, “commercial” information reasonably means “information for a
`
`particular product or service.” Also, as discussed further below, this type of
`
`descriptive information, set forth in a claim, without more, may correspond to
`
`nonfunctional descriptive material.
`
`
`
`
`
`
`
`
`2 Microsoft Computer Dictionary 435 (3rd Ed. 1997).
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`
` B. Asserted Grounds of Unpatentability
`
`I. Humble – Anticipation, Claims 1-6 and 9
`
`Humble discloses a supermarket point of sales (POS) and universal product
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`code (UPC) scanning system for scanning UPC bar codes and generating
`
`promotional messages. (See Ex. 1009, Abstract, col. 1, ll. 12-36, col. 2, ll. 53-65,
`
`Fig. 1.) Humble’s system includes a UPC scanner 12, UPC data store 16, UPC
`
`data buffer 24, UPC purchase promotional plan monitor 32, and an inter-active
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`promotional display unit 26. (See; Ex. 1009, col. 2, ll. 13-47, Fig. 1.)
`
`Zynga reads Humble’s scanner system onto the claimed “receiver station”
`
`and other elements recited in claim 1. (Pet. 25.) Dr. Neuhauser, Zynga’s expert
`
`declarant, further describes the scanner system as follows: “Humble discloses a
`
`computer controlled checkout counter that presents promotional messages to
`
`customers based on the items they are purchasing. . . . The system is capable of
`
`issuing coupons if a customer requests such a coupon after viewing a promotional
`
`message.” (Ex. 1012, ¶ 103.)
`
`PMC similarly describes Humble’s scanner system as
`
`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. . . . The
`scanned UPCs are used to extract price and description information
`from a first data store 16. . . . Additionally, the UPCs are compared to
`a list of UPCs in a second data store 32 which contains UPCs that
`trigger promotions, discounts, and the like. . . . The promotional plans
`could include graphic messages relating to the product purchased,
`discounts on further purchases, and the like.
`(Prelim. Resp. 19-20 (citations to Humble omitted).)
`
`
`
`As to the recited “control signal,” in claim 1, Zynga relies on Humble’s
`
`disclosure that “‘[t]he UPC is thus read and a digital signal indicative of the code is
`
`furnished to a computer whose memory includes such identification and price data
`
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`in storage in address correspondence with the code signal.’” (Pet. 28 (quoting Ex.
`
`1009, col. 1, ll. 18-22).) As to the recited “information content” in claim 1, Zynga
`
`relies, inter alia, on Humble’s disclosure of receiving “‘description and price’”
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`product information from various manufacturers who input that information into
`
`the scanning system to be stored in the UPC data buffer 24 and later displayed.
`
`(See Pet. 25, 28; citing Ex. 1009, col. 2, ll. 24-26, Fig. 1); accord Ex. 1012 ¶ 112
`
`(Dr. Neuhauser testimony).)
`
`
`
`In response, PMC contends that Humble does not disclose “receiving
`
`information content and a first control signal in said at least one information
`
`transmission at said receiver station” as claim 1 recites. (Prelim. Resp. 20.) PMC
`
`reasons that even if the UPC code “can be interpreted as a control signal as Zynga
`
`contends], the UPC code received at the scanner 12 of Humble is not an
`
`information transmission that further includes information content,” because any
`
`“information transmission received from the manufacturers would be clearly
`
`distinct and separate from any information transmission received from scanner 12.”
`
`(Prelim. Resp. 21.)
`
`
`
`Contrary to PMC’s argument, claim 1 does not preclude distinct
`
`transmissions or require the control signal and information content to be in the
`
`same information transmission. Claim 1 only requires the control signal and
`
`information content to be in “at least one information transmission.”
`
`
`
`PMC also contends that Humble does not disclose information content in an
`
`information transmission. According to PMC, “Fig. 1 of Humble . . . does not
`
`depict any manufacturer systems connected to either UPC data buffer 24 or UPC
`
`data store 16, much less a data line through which an information transmission
`
`may be communicated.” (Prelim. Resp. 20.) Contrary to PMC’s contention,
`
`Humble describes that “this information is furnished by lines 18 and 20 to P.O.S.
`
`
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`unit 22” to create a “computer-implemented look-up table having a product
`
`description and price correlated with product UPC.” (Ex. 1009, col. 2, ll. 16-20.)
`
`In other words, the “information content” is included within an “information
`
`transmission” over line 18 or 20 of the system, contrary to PMC’s argument. Line
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`20 is depicted as open-ended thereby signifying that it extends to an external
`
`system. (See Ex. 1009, Fig. 1.)
`
`
`
`PMC also argues that Zynga “fails to demonstrate that Humble teaches the
`
`step of generating a benefit datum in response to said first control signal by
`
`processing subscriber specific data at said receiver station, as recited in
`
`independent claim 1.” (Prelim. Resp. 21.) PMC reasons that Zynga impermissibly
`
`“relie[s] on the UPC received at the scanner 12 as being both the claimed ‘control
`
`signal’ and the claimed ‘subscriber specific data’.” (Id.) However, the “subscriber
`
`specific data” is broad enough to correspond to individual data bars in each UPC
`
`bar code on a product, or a collection of such UPC codes for a group of products
`
`purchased by a specific subscriber.
`
`
`
`On the other hand, the “control signal” corresponds to the transmission of a
`
`collection of such bars making up a UPC bar code or codes. (See Pet. 25-26 (citing
`
`Ex. 1009, col. 1, ll. 17-22, col. 2, ll. 32-65, and relying Humble’s disclosure of
`
`“one or more codes” and “‘a digital signal indicative of the code’”).) Some of
`
`these UPC bar code transmissions ultimately provide a “positive comparison
`
`determination” when the system matches scanned UPC codes for purchased
`
`products with stored UPC codes for pre-planned promotional messages. (See Ex.
`
`1009, col. 2, ll. 36-39; Pet. 28 (referring to UPC code comparisons).)
`
`
`
`Therefore, such UPC code transmissions reasonably correspond to the
`
`recited “control signal,” because the triggered promotional messages correspond to
`
`the recited “benefit datum” as recited in claim 1. (See Pet. 29 (discussing
`
`
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`Humble’s disclosure corresponding to benefit datum including the “‘positive
`
`comparison determination’”).) Accordingly, Zynga establishes a reasonable
`
`likelihood of prevailing on the ground of unpatentability of claim 1 as anticipated
`
`by Humble.
`
`
`
`PMC argues that “[w]ith respect to dependent claim 3, which provides that
`
`said subscriber input modifies said subscriber specific data, Humble further fails
`
`to teach the claimed limitation.” (Prelim. Resp. 22.) As PMC notes, Zynga relies
`
`on the scanning of additional items to modify the subscriber input set forth in claim
`
`3. (Prelim. Resp. 22 (addressing Pet. 32-33).) PMC responds that “this subsequent
`
`scanning does not modify the alleged subscriber specific data–the UPC of the
`
`previous item scanned– whatsoever.” (Prelim. Resp. 22.)
`
`
`
`PMC’s response does not address Zynga’s specific reliance on Humble’s
`
`updating of the “customer-specific-list of items to be purchased by the customer.”
`
`(Pet. 33.) As Zynga maintains, the recited “subscriber specific data” can
`
`correspond to a collection of UPC codes corresponding to a list of items scanned or
`
`to be scanned as discussed supra, so that adding to the collection modifies that
`
`collection. Accordingly, Zynga establishes a reasonable likelihood of prevailing
`
`on the ground of unpatentability of claim 3 as anticipated by Humble.
`
`
`
`PMC also argues that “Humble also fails to teach the additional limitation of
`
`dependent claim 4, providing that ‘said information content comprises a
`
`commercial.’” (Prelim. Resp. 22.) As PMC notes, Zynga relies on Humble’s
`
`disclosure of displaying description and price information. (Id.) PMC contends
`
`that price and description cannot constitute a commercial. (Id. at 22-23.) It is not
`
`clear at this juncture, in light of the claim construction supra, why such product
`
`information cannot be considered a commercial. Moreover, PMC unpersuasively
`
`argues a claim distinction based on the message content; i.e., “printed matter.”
`
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`However, “‘[w]here the printed matter is not functionally related to the substrate,
`
`the printed matter will not distinguish the invention from the prior art in terms of
`
`patentability.’” King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267,
`
`1278-79 (Fed. Cir. 2010) (quoting In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir.
`
`1983) and extending the rationale behind Gulack and In re Ngai, 367 F.3d 1336,
`
`1338-39 (Fed. Cir. 2004) to method claims citing informational instructions).
`
`Here, claim 4 does not require any action based on the type of information content
`
`recited, thereby rendering the commercial information content non-functional
`
`descriptive material.
`
`As to challenged dependent claims 2, 5, 6, and 9, Zynga similarly relies on
`
`Humble and the Neuhauser Declaration, and shows persuasively that Humble
`
`discloses the additional recited limitations in those claims. (See Pet. 32, 34-38.)
`
`PMC’s arguments are directed to claims 1, 3, and 4, and PMC does not contest the
`
`specific limitations in the claims 2, 5, 6, and 9 with separate arguments. Pursuant
`
`to the foregoing discussion, the petition establishes a reasonable likelihood of
`
`prevailing on the ground of unpatentability of claims 1-6 and 9 as anticipated by
`
`Humble under 35 U.S.C. § 102.
`
`2. Lockwood and Bakula – Obviousness, claims 1-6 and 9
`
`Zynga similarly relies on the Neuhauser Declaration in its effort to establish
`
`that the combination of Lockwood and Bakula renders obvious claims 1-6 and 9.
`
`(See Pet. 9-24; 38-42.)3 Lockwood discloses a computer communication system
`
`which automatically dispenses information about desired goods and services, such
`
`as insurance products, from a central data processing center 1 linked between
`
`
`3 As the listed grounds of unpatentability supra indicate, Zynga relies on
`Lockwood for anticipation, and in the alternative, the combination of Lockwood
`and Bakula for obviousness. Zynga’s obviousness analysis incorporates its
`anticipation analysis for most of the claim terms. (See Pet. 38.)
`
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`various seller institution terminals and customers at remotely linked terminals 2.
`
`(See Ex. 1008, Abstract, Fig. 1.) Bakula discloses a computer editing system
`
`which transmits control program information and other content from a host
`
`computer to a local processor driven computer at an editing terminal in order to
`
`facilitate programming and editing at the editing terminal. (See Ex. 1010,
`
`Abstract, col. 5, ll. 10-66, Fig. 2, Pet. 39.)
`
`Claim 1 recites “receiving information content and a first control signal in
`
`said at least one information transmission at said receiver station, said information
`
`content describing at least one of a product and a service.” Zynga primarily relies
`
`on one of Lockwood’s remotely linked customer kiosk terminals 2 to satisfy most
`
`of the limitations in this claim phrase and relies on Bakula to buttress the showing.
`
`(See Pet. 38; Ex. 1012, ¶¶ 61-71, 146, 153; note 1.)
`
`Zynga explains that Lockwood provides the details of an insurance policy,
`
`the “information content” recited in claim 1, to a customer at a kiosk terminal 2,
`
`the “receiver station” recited in claim 1. (See Ex. 1012, ¶ 71.) To the extent that
`
`Lockwood does not disclose that the relied-upon “information content” is not
`
`“received in . . . at least one information transmission” at a receiver station, as
`
`claim 1 recites, Zynga relies on Bakula’s teaching of downloading and receiving a
`
`control program at an editor terminal to suggest receiving information content at
`
`Lockwood’s receiver station. (See Pet. 38-39.)
`
`To support that reliance, Dr. Neuhauser explains that Bakula and Lockwood
`
`disclose “the same basic structure. That is both are groups of terminals connected
`
`to a central processing system.” (Ex. 1012 ¶ 152.) Dr. Neuhauser also explains
`
`that Bakula’s downloading method allows each editing terminal to be personalized
`
`for its particular use or user. (Ex. 1012 ¶ 152; Ex. 10108, col. 5, ll. 10-14.)
`
`Further, Dr. Neuhauser explains that instead of loading programs or other
`
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`information into Lockwood’s remote terminals by magnetic or paper tape, “[i]t
`
`would also have been obvious to one of ordinary skill in the art that the
`
`programming on storage disk 9 of terminal 2 could be placed there from the
`
`processing center 1 by remote downloading [as Bakula suggests] over the modem
`
`21 line connecting the processing center 1 to the terminals 2.” (Ex. 1012 ¶ 153).
`
`Zynga contends that “modifying Lockwood’s system in this manner would involve
`
`a combining of well known prior art elements to achieve a predictable result.”
`
`(Pet. 41 (citing Ex. 1012 ¶¶ 158-159).)
`
`PMC’s response does not show persuasively why Zynga’s proposed
`
`modification would have been unpredictable or unobvious. (See Prelim. Resp. 14-
`
`17.) For example, PMC contends that the downloaded program instructions in
`
`Bakula do not include information content and that “Bakula provides for the
`
`content (stories to be edited) to be sent separately after the program is loaded.”
`
`(Prelim. Resp. 16.) This line of arguments constitutes an unpersuasive separate
`
`attack on Bakula without fully addressing the combined teachings as Zynga
`
`proposes. Also, contrary to PMC’s latter argument, claim 1 does not preclude
`
`distinct transmissions or require the control signal and information content to be in
`
`the same information transmission. As noted in the discussion surrounding
`
`Humble supra, claim 1 only requires the control signal and information content to
`
`be in “at least one information transmission.”
`
`As also indicated supra, as to the recited “information content” in claim 1,
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`Zynga generally refers, inter alia, to Lockwood’s providing of different types of
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`insurance policy and price information at the receiver station kiosk terminal. (Pet.
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`10.) Lockwood states that one object of the invention is to “provide the general
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`public information about comparable insurance coverages from several sources.”
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`(Pet. 14 (quoting Lockwood, col. 1, ll. 31-36).) Lockwood provides, at the remote
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`kiosk terminal or receiver station, “video information storage unit 9 for storing a
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`predetermined information message.” (Ex. 1008, col. 9, ll. 35-36.) Based on the
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`object of Lockwood’s system as providing insurance information to a customer at a
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`terminal, and considering Dr. Neuhauser’s explanation and Bakula’s teachings, one
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`of ordinary skill in the art would have recognized at least the automation benefit of
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`modifying Lockwood’s system. That is, the benefit of providing automatic
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`insurance information updates from the central computer to the receiver station
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`storage unit 9, thereby providing “information content” in “at least one information
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`transmission,” as claim 1 requires. Such information content also might include,
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`for example, information explaining certain benefits related to different customers
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`about certain types of insurance, for example, life, health, or auto insurance. (See
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`Ex. 1008, col. 6, ll. 51-53.)
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`The “control signal” mentioned supra also is recited in a related claim 1
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`phrase, “generating a benefit datum in response to said first control signal by
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`processing subscriber specific data at said receiver station.” PMC argues that
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`“Bakula’s word processing program does not generate any benefit information that
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`explains a benefit of acquiring a product or service specific to the subscriber, nor
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`does it cause the processing of subscriber specific data at the editor terminals of
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`Bakula.” (Prelim. Resp. 16.) PMC also argues that Lockwood’s input device, a
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`keyboard, does not generate a control signal, and that “the customer information is
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`not disclosed as containing any control signals.” (Prelim. Resp. 10.)
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`The arguments fail to address, in a persuasive manner, Dr. Neuhauser’s
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`explanation as to how Lockwood’s keyboard generates control signals received at
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`the terminal 2 and how Lockwood discloses or renders obvious the other claim
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`elements alluded to in PMC’s arguments. (Ex. 1012, ¶ 69.) Dr. Neuhauser
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`testifies as follows:
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`Lockwood discloses a “benefit datum”, namely a personalized
`insurance quote “generated” by central processor 22 based on data
`provided by the person wishing to receive an insurance quotation. The
`“subscriber specific data” is that data entered by the user of terminal
`2, such as age, gender and marital status. Lockwood discloses a “first
`control signal” which is the information entered by the customer at
`terminal 2 via the keyboard (part of monitor 8) or touch pad 13 and
`passed to the processing center 1.
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` (Ex. 1012, ¶ 69.)
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`As indicated in the quotation, Dr. Neuhauser relies on a control signal from
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`Lockwood’s keyboard. Given the definition of control signal supra, Lockwood
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`implies or suggests such a signal as signifying a further response to the condition
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`that a customer has completed entering the necessary customer information, or
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`“subscriber specific data” recited in claim 1, as the following passages from
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`Lockwood demonstrate: “[I]n response to customer information received from any
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`of the terminals,” the central processing unit 22 “send[s] quotation data to the
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`respective terminal[s].” (Ex. 1008, col. 5, ll. 46-49.) “Each sales and information
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`terminal is programmed to gather a predetermined sequence of information from a
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`customer on the services in which the customer is interested, and to transmit the
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`information to the central data processing center.” (Ex. 1008, col. 2, ll. 48-54.)
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`“Once all the necessary information has been gathered at the terminal (see 44), the
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`processing unit 14 auto-dials the central data processing center 1. (Ex. 1008, col. 7,
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`ll. 3-4.) The “[c]ustomer enters the necessary information and selects
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`information/services desired.” (Ex. 1008, col. 6, ll. 3-4.)
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`In other words, this auto-dialing and data gathering by the receiver station
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`processor, or user selection, after the completion of predetermined information,
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`implies or suggests that the processor receives some type of a control signal which
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`originates from the keypad (see the touch pad 13, Ex. 1008, Fig. 2) to indicate that
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`the final required data entry has been made ultimately to trigger an insurance
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`quotation. Stated differently, Lockwood implies or suggests that the keypad sends
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`a “control signal” to a receiver station processing unit 10 or 14 to inform the
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`processing unit(s) to gather the entered and subsequently stored “subscriber
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`specific data,” including age, gender and marital status information, and send that
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`gathered data to the central data processing center so that the latter can respond by
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`sending “benefit datum” in the form of insurance quotations, for example. (See
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`Ex. 1008, col. 6, ll. 51-56.)
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`Further, Lockwood’s system “solicits and allows the customer to enter
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`information via the touch pad 13 displayed on the monitor screen.” (Ex. 1008, col.
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`5, ll. 7-9.) A person of ordinary skill in the art would have recognized that a
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`typical query in Lockwood’s system might be whether or not the customer desires
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`to change any entries or desires another insurance product, for example, after
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`completing the entries in response to the questions. A “no” response, or a similar
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`keyboard signal, reasonably would constitute a control signal signifying data entry
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`completion so that the receiver station can process the data group (of answers) for
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`transmission to another computer, the central data processing center, according to
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`Lockwood.
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`Supplementing the showing of obviousness as to the recited “control signal,”
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`Zynga explains that Bakula’s similar system employs a control signal in a
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`bootstrap program to cause a group of stored programming instructions to be
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`transmitted from another location to another. (Pet. 39; Ex. 1010, col. 5, ll. 10-12.)
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`In other words, Bakula suggests a control signal to instigate gathering a group of
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`information, such as the group of customer answers in Lockwood for further
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`processing.
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`Based on the combined teachings, Zynga reasonably establishes that
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`employing a keypad control signal to be received at Lockwood’s receiver station to
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`signify the completion of data entry and to trigger further processing, or data
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`gathering, of the stored subscriber specific data, and other elements as recited in
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`claim 1, would have been obvious.
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`Claim 3 depends from claim 1 and recites “wherein said subscriber input
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`modifies said subscriber specific data.” Zynga contends that the subscriber input
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`recited in claims 1 and 3 corresponds to either providing credit card information or
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`other billing information (e.g., name, address), or selecting an insurance policy
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`from a particular institution, as Lockwood teaches. (See Pet. 12, 16.) PMC
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`contends that such information is “merely added to the policy information file for
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`the first time at the central data processing center” and “there is no updating of
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`subscriber specific data that was processed in generating a benefit datum.”