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