IPR2013-00164
`Patent No. 7,797,717 B1
`
`
`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
`___________________________
`
`PATENT OWNER RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`PURSUANT TO 37 C.F.R. 42
`
`
`
`
`
`
`
`
`
`
`
`Patent No. 7,797,717 B1
`
`
`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
`___________________________
`
`PATENT OWNER RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`PURSUANT TO 37 C.F.R. 42
`
`
`
`
`
`
`
`
`
`
`
`
`Table of Contents
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`
`B.
`
`Humble fails to disclose receiving information content and a
`first control signal in at least one information transmission at
`
`Overview .......................................................................................................... 1
`I.
`Claim Construction .......................................................................................... 4
`II.
`Petitioner’s expert declaration ......................................................................... 5
`III.
`IV. Ground 1. Claims 1-6 and 9 under 35 U.S.C. 102 based on Humble ............. 6
`A. Humble fails to disclose generating a benefit datum in response
`to the first control signal by processing subscriber specific data .......... 7
`B.
`the receiver station ............................................................................... 13
`Humble’s system is a not a “receiver station” .................................... 20
`C.
`D. Dependent Claims ............................................................................... 22
`V. Ground 2. Claims 1-6 and 9 under 35 U.S.C. 103 based on Lockwood
`and Bakula ..................................................................................................... 29
`A.
`The Board’s Read ................................................................................ 32
`1.
`one information transmission at said receiver station ............... 33
`2.
`processing subscriber specific data at the receiver station ....... 38
`The Petitioner’s Read .......................................................................... 41
`1.
`transmission at said receiver station ......................................... 41
`
`Lockwood and Bakula do not teach receiving an
`information content and a first control signal in at least
`
`Lockwood and Bakula fail to disclose generating a
`benefit datum in response to the first control signal by
`
`Lockwood and Bakula fail to teach receiving a first
`control signal in said at least one information
`
`
`
`ii
`
`
`
`
`
`Lockwood and Bakula fail to teach delivering said
`information content and said benefit datum at an output
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`Lockwood and Bakula fail to teach generating a benefit
`datum in response to a first control signal by processing
`
`2.
`subscriber specific data at a receiver station ............................. 42
`3.
`device at said receiver station ................................................... 43
`Dependent Claims ..................................................................... 44
`4.
`VI. Ground 3. Claim 7 as obvious based on Humble and Lemon ....................... 44
`VII. Ground 4. Claim 7 as obvious based on Lockwood, Bakula, and
`Lemon ............................................................................................................ 47
`VIII. Objective Evidence of Nonobviousness ........................................................ 49
`A.
`Commercial Success: Licensing......................................................... 50
`B.
`Industry Praise: Ocean Tomo ............................................................. 51
`C.
`Industry Praise: Citations by Others .................................................. 52
`D.
`Long Felt Need & Failure of Others: Deficiencies of Teletext ......... 53
`IX. Conclusion ..................................................................................................... 55
`
`
`
`
`
`
`
`
`iii
`
`
`
`
`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`
`Page(s)
`
`Asyst Tech., Inc. v. Emtrak, Inc.,
`544 F.3d 1301, 1316 (Fed. Cir. 2008)............................................................................51
`
`Autogiro Co. of America v. U.S.,
`181 Ct. Cl. 55, 384 F.2d 391, 404, 155 U.S.P.Q. 697 (1967) ..................................26
`
`Clearstream Wastewater Sys., Inc. v. Hydro-Action, Inc.,
`206 F.3d 1440, 1446, 54 U.S.P.Q.2d 1185 (Fed. Cir. 2000) ................................... 26
`
`Geo M. Martin Co. v. Alliance Mach. Sys. Intern. LLC,
`618 F.3d 1294, 1305 (Fed. Cir. 2010)............................................................................51
`
`Graham v. John Deere Co. of Kan. City,
`383 U.S. 1, 17–18 (1966) ..................................................................................................50
`
`In re Bond,
`910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990) ........................................................7
`
`In re Gordon,
`733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) .........................................................46
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255, 1259 (Fed. Cir. 2010)...................................................................... 18-19
`
`Jazz Photo Corp. v. U.S.,
`439 F.3d 1344, 1350 (Fed. Cir. 2006)..............................................................................4
`
`King Pharm., Inc. v. Eon Labs, Inc.,
`616 F.3d 1267, 1278-79 (Fed. Cir. 2010) .....................................................................27
`
`Leo Phrama. Prod., Ltd. v. Stanek,
`2012-1520 (2013) ................................................................................................................50
`
`PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,
`491 F.3d 1342, 1365 (Fed. Cir. 2007)............................................................................51
`
`
`
`iv
`
`
`
`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) ...........................................................5
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`
`Personalized Media Commc’n v. ITC,
`161 F.3d 696, 707 (Fed. Cir. 1998) .......................................................................... 19-20
`
`Schultz v. iGPS Co. LLC,
`2013 WL 212927, *3-*4 (N.D. Ill. 2013) ........................................................... 19
`
`SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp.,
`225 F.3d 1349, 1358-59 (Fed. Cir. 2000) .....................................................................50
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530, 1538 (Fed. Cir. 1983)............................................................................50
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA,
`Inc.,
`699 F.3d 1340, 1349 (Fed. Cir. 2012)............................................................................50
`
`Varco, L.P. v. Pason Systems USA Corp.,
`436 F.3d 1368, 1373, 77 U.S.P.Q.2d 1948, 1952 (Fed. Cir. 2006) ........................38
`
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987) ......................................7
`
`STATUTES
`
`35 U.S.C. § 102(e) ................................................................................................................6, 29
`
`35 U.S.C. § 103(a) ..................................................................................................29, 45, 47, 49
`
`35 U.S.C. § 316(e) ......................................................................................................................4
`
`OTHER AUTHORITIES
`
`Chisum on Patents, § 505[3], at 5-971 (Matthew Bender 2012) ...................................................50
`
`RULES
`
`37 C.F.R. § 1.68
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 3
`
`
`
`v
`
`
`
`
`
`I.
`
`OVERVIEW
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`
`Patent Owner, Personalized Media Communications LLC (“PMC” or
`
`“Patent Owner”), submits the following Patent Owner’s Response to the petition
`
`filed by Zynga, Inc. (the “Petitioner” or “Zynga”) on February 26, 2013 requesting
`
`inter partes review of claims 1-7, and 9 of U.S. Patent No. 7,797,717 (Ex. 1001,
`
`the “’717 Patent”). (Paper 4, “Pet.” or the “Petition”.) The Patent Trial and Appeal
`
`Board (the “Board”) instituted this proceeding in the Inter Partes Review Decision
`
`(Paper 12, “Dec.” or “Decision”) on July 25, 2013 for the following grounds:
`
`1. Claims 1-6 and 9 for anticipation by U.S. Patent No. 4,825,045 to
`
`Humble (Ex. 1009, “Humble”);
`
`2. Claims 1-6 and 9 for obviousness over the combination of U.S.
`
`Patent No. 4,567,359 to Lockwood (Ex. 1008, “Lockwood”) and U.S. Patent
`
`No. 4,204,206 to Bakula et al. (Ex. 1010, “Bakula”);
`
`3. Claim 7 for obviousness over the combination of Humble and U.S.
`
`Patent No. 4,674,041 to Lemon et al. (Ex. 1011, “Lemon”); and
`
`4. Claim 7 for obviousness over the combination of Lockwood,
`
`Bakula, and Lemon.
`
`The claims at issue are directed to a method of processing video signals at a
`
`receiver station based on at least one information transmission. Prior to the
`
`conception and development of the inventions disclosed in the ’717 Patent,
`
`
`
`1
`
`
`
`
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`communication systems in the art, such as those based on teletext, were flawed and
`
`limited in capability. The inventors recognized that improvements could be made
`
`to provide an advanced unified system for programming communications and
`
`delivering information and instructions to various stations. These inventions have
`
`since been applied across numerous industries to facilitate the delivery of media
`
`content to electronic devices.
`
`Certain of the methods for processing video signals, including those claimed
`
`in the ’717 Patent, deliver truly personalized advertising to subscriber stations:
`
`receiving an information transmission containing a control signal and information
`
`content about a product/service; generating benefit data by processing user-specific
`
`data based on the control signal; and the delivery of information on the
`
`product/service along with user-specific benefit information. Like the teletext-
`
`based systems already considered in prosecution, none of the asserted prior art
`
`systems are capable of performing all of these and numerous other claimed
`
`operations.
`
`In one example provided in the specification, embodiments of the invention
`
`present to farmers, a “Farm Plans of Europe” program, with accompanying
`
`commercials. (Ex. 1001, ’717 Patent, col. 274 ll. 54- 64, col. 285 ll. 1-24.) Upon
`
`receipt of an information transmission message containing information and a
`
`control signal, the farmer’s station accesses stored subscriber specific data (e.g.,
`
`
`
`2
`
`
`
`
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`the farmer’s crop plan) and generates a cost/benefit financial analysis of the benefit
`
`of acquiring and using a particular product or service described in the commercial.
`
`(Id. at col. 285 ll. 34-60.) After the commercial and the benefit analysis
`
`information are provided to the farmer, the farmer can provide an input that
`
`controls various operations of his or her station. (Id. at col. 285 l. 61-col. 286 l. 9.)
`
`In addition to this Response, PMC submits the Declaration of Dr. Samuel H.
`
`Russ, Ph. D., under 37 C.F.R. § 1.68 (Ex. 2019, “Russ Decl.”). Dr. Russ is a
`
`computer scientist and professor with extensive experience in the field of computer
`
`science and electrical engineering, and particularly computer communications and
`
`microprocessor systems and design. Dr. Russ’s declaration provides an analysis of
`
`the cited prior art, from the standpoint of a person of ordinary skill at the time,
`
`viewing the claims and specification. His declaration also addresses certain
`
`testimony that Petitioner’s expert Dr. Neuhauser submitted in his declaration. (Ex.
`
`1012, “Neuhauser Decl.”.) PMC also submits the cross-examination deposition
`
`testimony of Dr. Neuhauser, which was conducted on October 1-2, 2013.1 (Ex.
`
`
`1 Petitioner and Patent Owner have agreed to allow cross-designation of materials
`
`among the four related IPR proceedings (IPR Nos. 2013-00156, -00162, -00164, -
`
`00171) so that evidence elicited at the depositions may be cited and relied upon in
`
`another IPR proceeding, subject to any appropriate objection as to admissibility.
`
`
`
`3
`
`
`
`
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`2017, “Neuhauser Dep. Oct. 1”; Ex. 2018, “Neuhauser Dep. Oct. 2”.) PMC also
`
`submits the Declaration of Gerald Holtzman, PMC’s President, regarding certain
`
`facts related to secondary indicia of nonobviousness. (Ex. 2020, “Holtzman
`
`Decl.”.)
`
`35 U.S.C. § 316(e) states “[i]n an inter partes review instituted under this
`
`chapter, the Petitioner shall have the burden of proving a proposition of
`
`unpatentability by a preponderance of the evidence.” The Federal Circuit has
`
`defined a preponderance of the evidence as meaning “the greater weight of the
`
`evidence, evidence which is more convincing than evidence which is offered in
`
`opposition to it.” Jazz Photo Corp. v. U.S., 439 F.3d 1344, 1350 (Fed. Cir. 2006).
`
`As set forth in detail below, PMC provides evidence which establishes by a
`
`preponderance of the evidence that the Petitioner has failed to meet its burden to
`
`demonstrate that challenged claims 1-7 and 9 of the ’717 Patent are anticipated or
`
`rendered obvious by the prior art references asserted by the Petitioner.
`
`II. CLAIM CONSTRUCTION
`Petitioner recited the legal standard that claims be “given their broadest
`
`reasonable construction in light of the specification,” but offered no particular
`
`constructions. (Pet. 5.) Under the broadest reasonable construction standard,
`
`claims are presumed to be given their ordinary and customary meaning as would
`
`be understood by “one of ordinary skill in the art” when considered “in light of the
`
`
`
`4
`
`
`
`
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`specification of the patent in which it appears” (Dec. 5, emphasis added.)
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “Ordinary
`
`and customary meaning” is not a definition itself. That is why it must be
`
`considered “in light of the specification,” and from the perspective of a person of
`
`ordinary skill reviewing the specification.
`
`In many instances, the Petitioner is interpreting and applying the claims in a
`
`manner totally inconsistent with the ’717 specification, such as finding that a
`
`receiver station can be the combination of a central server station and a user
`
`terminal (Lockwood/Bakula) located 50 miles apart or that a receiver station can
`
`be a self-contained terminal incapable of receiving information transmission from
`
`any other stations (Humble). These and other problems will be explored below.
`
`III. PETITIONER’S EXPERT DECLARATION
`Obviously, the weight to be accorded to any expert declaration must depend
`
`to a very large extent on the care and objectivity of its analysis. In the Patent
`
`Owner’s view, the declaration of Dr. Neuhauser exhibits a lack of objective indicia
`
`of the requisite care and objectivity. For example, in its introduction, the
`
`Neuhauser declaration disparages the disclosure of the Harvey specification for
`
`alleged technical shortcomings. One principal example was that the Harvey
`
`applicants failed to provide any formulas or computer software (Ex. 1012,
`
`Neuhauser Decl., ¶ 24, “[f]or example, there are no formulae, computer programs,
`
`
`
`5
`
`
`
`
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`descriptions of circuitry or the like”) to support their inventive techniques. In
`
`deposition, Dr. Neuhauser conceded that the Harvey patent specification described
`
`dozens of examples of formulas and software. (Ex. 2017, Neuhauser Dep. Oct. 1,
`
`82:18-91:14 (examples of formulas in specification); 117:11-121:18 (examples of
`
`software). Likewise, the declaration offers that the figures in the specification are
`
`rather ordinary--they “do not show . . . any unusual circuitry or interconnection of
`
`components.” (Ex. 1012, Neuhauser Decl., ¶ 24.) That statement is hard to
`
`reconcile with the multiple, highly detailed figures in the patent. These and other
`
`assertions in the declaration are so totally at odds with the actual Harvey
`
`specification that one must question the reliability of the declaration as a whole.
`
`IV. GROUND 1. CLAIMS 1-6 AND 9 UNDER 35 U.S.C. 102 BASED ON
`HUMBLE
`
`Petitioner challenges claims 1-6 and 9 of the ’717 Patent under 35 U.S.C.
`
`§ 102(e) over Humble. (Pet. 23-38.) As explained below, Humble fails to teach
`
`several key limitations of Claim 1. Independent Claim 1 recites (emphasis added):
`
`
`
`6
`
`
`
`
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`
`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;
`receiving a subscriber input at said receiver station after said step of
`delivering; and
`controlling said receiver station based on said subscriber input.
`
`For a proper showing that a claim is anticipated, all elements of the claim
`
`must be disclosed in the cited reference. “A claim is anticipated only if each and
`
`every element as set forth in the claim is found … in a single prior art reference.”
`
`Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d
`
`1051, 1053 (Fed. Cir. 1987) (emphasis added). Furthermore, the elements must be
`
`arranged as required by the claim. In re Bond, 910 F.2d 831, 15 USPQ2d 1566
`
`(Fed. Cir. 1990) (emphasis added).
`
`A. Humble fails to disclose generating a benefit datum in response to
`the first control signal by processing subscriber specific data
`Humble does not teach generating a benefit datum in response to said
`
`first control signal by processing subscriber specific data. The Petitioner relies
`
`upon the operations at the UPC purchase/promotional monitor 32 and promotional
`
`message store 36 to teach this step. (Pet. 25-26.) In relevant part, Humble
`
`
`
`7
`
`
`
`
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`describes that after a UPC is scanned by scanner 12, the UPC is communicated to
`
`the UPC purchase/promotional plan monitor 32, where a comparison takes place:
`
`Comparison is effected in monitor 32 as between the UPC of the
`actual product purchased by the customer and then being scanned by
`the checker and the plurality of UPCs placed in the memory of
`monitor 32. Upon positive comparison determination, monitor 32
`activates the corresponding one of its output lines 34, which are
`connected as inputs to promotional message store 36.
`… Upon activation of lines 34, store 36 furnishes promotional
`messages to output line 38 which conveys same to promotional
`display unit 26 for presentation to the customer.
`(Ex. 1009, Humble, col. 2 ll. 32-47.) Thus, if a UPC received at monitor 32
`
`matches one of the UPCs stored in a comparator (i.e., elements 40-46 of Figure 2)
`
`in monitor 32, an output signal is communicated from the comparator to a memory
`
`address connected to line 34.
`
`
`
`The Petitioner contends that a promotional message (i.e., “benefit datum”) is
`
`generated at the promotional message store 36 in response to a scanned UPC signal
`
`(i.e., first control signal) by processing this same UPC signal (i.e., “subscriber
`
`specific data”) received over line 30. (Pet. 25; Ex. 1012, Neuhauser Decl. ¶¶ 112,
`
`114.) Dr. Neuhauser, for instance, asserts that the “first control signal” is taught by
`
`“the signal 30 from the UPC scanner 12,” and the “subscriber specific datum” is
`
`taught by “particular UPC product coded scanned, which is specific to the
`
`
`
`8
`
`
`
`
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`particular customer making th[e] purchase.” (Ex. 1012, Neuhauser Decl. ¶ 114.)
`
`The Petitioner’s argument can be visualized with the following annotated Figure 2.
`
`
`
`
`
`One should immediately recognize that “Signal 30” and the “particular UPC
`
`product coded scanned” are one and the same. (Ex. 2019, Russ Decl., ¶¶ 66-67.)
`
`Line 30 contains the signal of a UPC that has been scanned by scanner 12 and thus,
`
`both the Petitioner and Dr. Neuhauser rely upon the UPC signal received over line
`
`30 to meet both the “first control signal” and the “subscriber specific signal.” This
`
`is simply improper.
`
`
`
`The same UPC signal cannot teach both a control signal and subscriber
`
`specific data. (Id.) It would violate the claim language and render a nonsensical
`
`result. As applied by Petitioner, the claim thus reads: “generating a benefit datum
`
`
`
`9
`
`
`
`
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`in response to the UPC signal (control signal) by processing the UPC signal
`
`(subscriber specific data) at the receiver station.” Thus, the claim language and
`
`common sense dictate that benefit datum is not generated both (a) in response to
`
`the UPC signal and (b) by processing the same UPC signal, as the generating step
`
`would require. Yet, Dr. Neuhauser admitted in deposition that to be his position.
`
`(Ex. 2018, Neuhauser Dep. Oct. 2, 386:10-387:3.)
`
`
`
`The disclosure of Humble illustrates the Patent Owner’s position. The
`
`output gate of the memory address (e.g., memory 64) of store 36 is triggered when
`
`the inputted UPC signal 30 matches the reference UPC signal stored at the
`
`comparator’s buffer (e.g., buffer 48). (Ex. 1009, Humble, col. 2 l. 66-col. 3 l. 10.)
`
`Thus, the output of a promotional message in Humble is determinated on a single
`
`comparison at the comparator, meaning Humble cannot satisfy both (a) and (b) of
`
`the second step of the claim. By relying on the same signal to teach both
`
`limitations, the Petitioner attempts to delete one of the two clauses from the claim
`
`altogether.
`
`Indeed, the Petitioner’s position that UPC signal 30 is both the “first control
`
`signal” and the “subscriber specific data,” is completely at odds with the ordinary
`
`understanding of those in the art in 1987 – a single UPC signal cannot be processed
`
`in response to itself. (Ex. 2019, Russ Decl., ¶¶ 68-70.) This is an inherent
`
`requirement of the claim that excludes the possibility that the control signal and the
`
`
`
`10
`
`
`
`
`
`subscriber specific data can be the same.
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`
`
`
`The Board recognizes that the same signal 30 cannot teach both of these
`
`elements of the generating step, but attempts to make up for the Petitioner’s flawed
`
`reading by suggesting that the “individual data bars in each UPC bar code on a
`
`product” can teach the “subscriber specific data” while the “transmission of a
`
`collection of such bars” (i.e., UPC signal 30) teaches the “first control signal.”
`
`(Dec. 10.) Even with this arbitrary segregation of a bar code, the fact remains that
`
`the outputting a promotional message is the result of a single comparison
`
`operation. A UPC transmission (i.e., UPC signal 30) does not cause the processing
`
`of the individual UPC bars. As described below, the single bars of a UPC are also
`
`not processed individually.
`
`The Board’s reliance on “individual data bars in each UPC bar code” is
`
`incongruous with the claim requirements, for one, because an “individual data bar”
`
`of a UPC is not a “subscriber specific datum.” A single bar of a UPC has no
`
`meaning. (Ex. 2019, Russ Decl., ¶ 73.) A single bar of a UPC does not identify a
`
`customer or product and is not otherwise associated with a “specific subscriber”
`
`and therefore is not a datum that describes a “specific subscriber.” (Id.) In
`
`deposition, Dr. Neuhauser confirmed that a single bar, or even several bars taken
`
`from a UPC, has no meaning. (Ex. 2018, Neuhauser Dep. Oct. 2, 375:11-376:7.)
`
`It is only when all of the bars are read together that the collections of bars can be
`
`
`
`11
`
`
`
`
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`converted to a UPC code (i.e., signal 30 or what the Board considers to be the first
`
`control signal) that can be understood as a specific item being purchased by the
`
`customer. (Ex. 2019, Russ Decl., ¶ 73) (See generally Ex. 2025, Savir, D.; Laurer,
`
`G. J., The characteristics and decodability of the Universal Product Code symbol,
`
`14 IBM SYS. J. 16, 16-34 (1975).)
`
`Indeed, Humble does not describe that the comparator processes the
`
`individual bars of a UPC code or even segregates a UPC into “individual bars” for
`
`processing. Humble does not describe the composition of the UPC signal 30,
`
`much less that the “individual data bar” data can be individually processed.
`
`Rather, the UPC signal 30 is described as a “digital signal indicative of the code”
`
`that is inputted and compared as a homogenous signal against the UPC signal from
`
`buffer “A” 48. (Ex. 1009, Humble, col. 1 ll. 16-22; Ex. 2019, Russ Decl., ¶ 76.)
`
`Humble does not even mention “bar”. In deposition, Dr. Neuhauser agreed that the
`
`UPC signal is the digital code, not the collection of bars that were scanned. (Ex.
`
`2018, Neuhauser Dep. Oct. 2, 378:4-11.)
`
`Alternatively, the Board suggests that the “subscriber specific data”
`
`limitation may also correspond to “a collection of … UPC codes for a group of
`
`products purchased by a specific subscriber.” (Dec. 10.) Thus, the Board suggests
`
`that Humble teaches the outputting of a promotional message in response to a
`
`signal 30 containing a collection of UPC codes (or even one UPC code) by
`
`
`
`12
`
`
`
`
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`processing the collection of UPC codes. PMC respectfully submits that this
`
`interpretation is insufficient for the same reasons described above. (See also Ex.
`
`2019, Russ Decl., ¶ 78.) Moreover, a signal 30 containing multiple UPC codes (or
`
`a single UPC code) does not cause the processing of the multiple UPCs. Instead,
`
`UPCs are processed one at a time, as described in Humble. This theory also does
`
`not square with the claim, which states that a control signal (UPC code) causes
`
`subscriber specific data (collection of UPC codes for the purchased goods) to be
`
`processed. That is not what occurs in Humble. (Id.)
`
`Furthermore, while the Petitioner alleges that “one or more UPC codes for
`
`products selected by a customer” is received over line 30, Humble only describes
`
`that the signal 30 from scanner 12 includes data of a single UPC, not multiple
`
`UPCs. (See Ex. 1009, Humble, col. 2 ll. 32-49; col. 2 l. 66-col.3 l. 15; Fig. 2; col. 1
`
`ll. 18-23 (“The UPC is thus read and a digital signal indicative of the code is
`
`furnished ...”).) As a UPC is scanned at scanner 12, it is immediately
`
`communicated over line 30 to monitor 32 where the UPC is inputted into
`
`individual comparators. (Id.) At the monitor 32, a single UPC is inputted into
`
`each of the comparators contained in monitor 32. (Id.)
`
`B. Humble fails to disclose receiving information content and a first
`control signal in at least one information transmission at the
`receiver station
`
`It can already be seen that the Petitioner’s read and the Board’s read of
`
`
`
`13
`
`
`
`
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`Humble are different. Some of the reads themselves are internally inconsistent.
`
`The following chart is intended to track the various reads:
`
`Claim 1
`Information content and a
`control signal
`Information content is received
`in an information transmission at
`the receiver station
`
`Subscriber specific data
`
`Benefit data by processing
`subscriber specific data per
`control signal
`Present information about
`product + benefit data explaining
`specific benefit
`
`Humble
`Information content = price & description
`Control signal = scanned UPC signal
`Receive from “various manufacturers” price &
`content (Petitioner)
`Receive from system owner via “appropriate
`input devices” (Neuhauser)
`Internal data transfer on lines 18 & 20 (Board)
`Scanned UPC signal (Petitioner)
`Individual bar on bar code (Board)
`Group of UPCs for group of products (Board)
`Promotion retrieved if scanned UPC =
`promotional UPC
`
`Display with price & description + promotion
`
`Humble fails to teach receiving an information content and a first control
`
`signal in said at least one information transmission at said receiver station.
`
`Humble teaches that a scanner 12 scans a UPC of an item that a customer brings to
`
`a checkout counter for purchase. (Ex. 1009, Humble, col. 1 ll. 13-21.) The
`
`scanning of an item by scanner 12 causes the UPC to be communicated from
`
`scanner 12 to UPC Purchase Promotional Plan monitor 32 over line 12. (Id. at col.
`
`2 ll. 25-38.) A scanned UPC is also communicated through line 14 to UPC data
`
`store 16, where the usual price and description information for that UPC can be
`
`determined. (Id. at col. 2 ll. 25-35.) The price and description information is
`
`
`
`14
`
`
`
`
`
`ultimately displayed at display 26.
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`
`Petitioner relies on this “description and price” information to teach the
`
`“information content” and contends that this information content is “received at the
`
`system from various manufacturers offering products for sale in the supermarket
`
`and includes ‘description and price’ information for products.” (Pet. 25, citing to
`
`Ex. 1009, Humble, col. 2 ll. 24-26., emphasis added.) Petitioner offers this
`
`conjecture because Figure 1 of Humble discloses price and description being
`
`locally-stored in memory 16—it does not show the receiver station “receiving [an]
`
`information transmission” with that information.
`
`
`
`Humble’s system is not disclosed as receiving “price and description
`
`information” from “various manufacturers offering products for sale in the
`
`supermarket.” The section relied upon by the Petitioner for this proposition
`
`recites:
`
`Store 16 is of known configuration in widespread use, being a
`computer-implemented look-up table having product description and
`price correlated with product UPC. In known checkout systems, this
`information is furnished by lines 18 and 20 to P.O.S. unit 22, line 20
`and unit 22 being shown in phantom, since they need not be employed
`in practice under the invention herein.
`
`(Ex. 1009, Humble, col. 2 ll. 16-23.) There is no mention of “various
`
`manufacturers.” Petitioner’s scenario is not just hypothetical—and one that
`
`
`
`15
`
`
`
`
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`contradicts conventional practice at that— a supermarket would not allow
`
`manufacturers to set its prices. Nor can Petitioner’s “various manufacturers”
`
`theory be deemed inherent—description and price information could be received in
`
`numerous fashions not involving an information transmission from a manufacturer,
`
`e.g., a floppy disk sent in the mail. (Ex. 2019, Russ Decl., ¶ 56.)
`
`
`
`The Board attempts to clarify the Petitioner’s position by stating that “Line
`
`20 [of Figure 1] is depicted as open-ended thereby signifying that it extends to an
`
`external system” (Dec. 20.) that, presumably, would be sending information
`
`transmissions to Humble’s check-out system. PMC respectfully submits that line
`
`20 is not depicted as open-ended at all. (Ex. 2019, Russ Decl., ¶ 57.) Rather, line
`
`20 is described to connect to line 18, which is shown in Figure 1 as being
`
`connected to UPC data store 16. In deposition, Dr. Neuhauser indicated that line
`
`20 carries UPC codes provided by UPC data store 16 (Ex. 2018, Neuhauser Dep.
`
`Oct. 2, 394:15-395:2.); in other words, it is not connected to an external system.
`
`Furthermore, line 20 is depicted as having dashes (as opposed to solid lines)
`
`because line 20 and P.O.S. unit 22 “need not be employed in practice the invention
`
`herein”—not because it “extends to an external system” as the Board proposes.
`
`(Ex. 1009, Humble, col. 2 ll. 18-23; Ex. 2019, Russ Decl. ¶ 57.) Accordingly, the
`
`Petitioner has failed to demonstrate that the alleged “information content” is
`
`received at the receiver station in “an information transmission” from
`
`
`
`16
`
`
`
`
`
`manufacturers.
`
`IPR2013-00164
`Patent No. 7,797,717 B1
`
`
`
`
`Dr. Neu
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
