UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Zynga Inc.
`Petitioner
`
`V.
`
`Personalized Media Communications, LLC
`Patent Owner
`
`Case IPR2013-00171
`
`U.S. Patent No. 7,734,251
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`

`

`Table of Contents
`
`Page
`
`I.
`
`11.
`
`Introduction ...................................................................................................... 1
`
`Claims 18, 19, 22-24 and 28 Are Anticipated by Bakula................................... 2
`
`A.
`
`B.
`
`C.
`
`D.
`
`Bakula Discloses Outputting a Video Presentation to a User That
`Includes Firstly, a Video Image and, Secondly, a Coordinated
`Display .................................................................................................. 2
`
`Bakula Discloses Outputting a Coordinated Display............................... 3
`
`Bakula Discloses Receiving an Information Transmission at a
`Receiver Station That Includes First and Second Discrete Signals .......... 4
`
`Bakula Discloses Organizing a First Discrete Signal and a Second
`Discrete Signal into an Organized Signal................................................ 5
`
`III.
`
`Claims 18, 19 and 22-24 Are Anticipated by Hedges ........................................ 6
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Hedges Discloses Outputting a Video Presentation to a User That
`Includes Firstly, a Video Image and, Secondly, a Coordinated
`Display .................................................................................................. 6
`
`Hedges Discloses Outputting a Coordinated Display .............................. 7
`
`Hedges Discloses Receiving an Information Transmission at a
`Receiver Station with First and Second Discrete Signals ........................ 8
`
`Hedges Discloses Organizing Information Included in a First
`Discrete Signal with Information Included in a Second Discrete
`Signal to Provide an Organized Signal ................................................... 8
`
`Hedges Discloses Generating an Image by Processing Previously
`Stored User Specific Data in Response to an Organized Signal .............. 9
`
`Hedges Discloses “Contacting a Remote Station to Obtain At Least
`One User Specific Subscriber Datum” (Claim 23) ................................ 10
`
`IV.
`
`Claims 18, 19, 22—24 and 28 are Obvious over Hedges in View of Frohbach .. 11
`
`V.
`
`Claim 17 is Obvious Over Hedges in View of Yamamoto .............................. l 1
`
`

`

`Page
`
`A.
`
`B.
`
`The Combination of Hedges and Yamamoto Discloses
`Simultaneously Displaying a Locally Generated Image and an Image
`Received from a Remote Video Source at a Video Output Device........ 1 1
`
`The Combination of Hedges and Yamamoto Discloses Processing
`Both Remotely Originated Data and Previously Stored User Specific
`Data to Generate a Locally Generated Image........................................ 12
`
`VI.
`
`Claim 17 is Obvious Over Yamamoto in View of Bakula ............................... 13
`
`VII.
`
`PMC’S Alleged Secondary Considerations of Non-Obviousness .................... 14
`
`VIII.
`
`Conclusion ..................................................................................................... l 5
`
`

`

`I.
`
`Introduction
`
`Petitioner requests cancellation of claims 17—19, 22—24, and 28 of US. Patent
`
`No. 7,734,251 (“the ’251 patent”) as unpatentable under 35 U.S.C. §§ 102 and 103.
`
`In initiating the trial, the Board correctly found that, unless rebutted by the Patent
`
`Owner, Personalized Media Communications, LLC (“PMC”), these claims of the
`
`’251 patent are unpatentable over the applied references.
`
`In response, PMC filed a
`
`Patent Owner Response but did not seek to amend the claims of the ’251 patent.
`
`Throughout the Patent Owner Response, PMC repeatedly argues for overly
`
`narrow claim constructions that are inconsistent with the broadest reasonable
`
`interpretation standard to be applied in this inter partes review proceeding.
`
`In
`
`effect, PMC asks the Board to treat the claims as if they had been amended without
`
`PMC having done so itself. But if PMC had wanted the claims to be construed more
`
`narrowly, then it should have taken the opportunity afforded by this Office proceeding
`
`and filed a motion to amend to restrict their scope. As explained by the Federal Circuit,
`
`a patent owner’s ability to amend claims to avoid prior art — which exists in these
`
`proceedings — distinguishes Office proceedings from district court proceedings and
`
`justifies the broadest reasonable interpretation standard.
`
`The Board should reject PMC’s requests to improperly import limitations into
`
`the claims via its proposed overly-narrow claim constructions. Accordingly, because
`
`PMC has failed to distinguish the claims, as written, from the cited prior art, the Board’s
`
`

`

`institution decision was correct, and claims 17-19, 22—24, and 28 of the ”251 patent
`
`should be found unpatentable.
`
`II.
`
`Claims 18, 19, 22-24 and 28 Are Anticipated by Bakula
`
`A.
`
`Bakula Discloses Outputting a Video Presentation to a User That
`Includes Firstly, a Video Image and, Secondly, a Coordinated Display
`
`In Bakula, a dual screen mode is used to simultaneously output a news story
`
`being edited by a user (126., a generated image) and a second news story (i.e., a video
`
`image).
`
`(Petition at pp. 47-54.) The display of both stories provides a coordinated
`
`display, such that Bakula’s dual screen mode discloses the outputting step of claim 18.
`
`PMC argues that the sequence of a video image followed by a coordinated
`
`display is not disclosed in Bakula and that Bakula therefore does not disclose the
`
`“outputting” step of claim 18.
`
`(Response at pp. 7—15.) Specifically, PMC argues that
`
`the limitation “requires a temporal sequence of displays where m, a video image is
`
`displayed; and subsequent in time to the display of the video image, a coordinated
`
`display is presented that includes the video image and [generated image].” (Id. at p. 7.)
`
`But PMC’S argument — that the only reasonable interpretation of this claim
`
`element requires a temporal sequence e is without merit. The meaning of claim 18 is
`
`ambiguous. Contrary to PMC’s argument, the terms “firstly” and “secondly” in the
`
`context of claim 18 are not explicitly temporal in character. Petitioner’s interpretation
`
`of the terms “firstly” and “secondly” as meaning “a first portion of a display” and a
`
`“second portion of the display” is equally valid. Such ambiguity in the claim should
`
`

`

`properly be addressed by PMC making a clarifying amendment. (Ex. 1013 at 1111 6-7.)
`
`Evidence that PMC’s “temporal sequence” interpretation is overly narrow and
`
`inconsistent with the broadest reasonable interpretation standard can be found in
`
`previous statements made by PMC.
`
`In its litigation infringement contentions,
`
`in
`
`describing how certain Zynga products allegedly infi‘inge claim 18 of the ’251 patent,
`
`PMC relies on a theory of infiingement that allegedly satisfies all elements of the
`
`“outputting” step at a single point in time.
`
`(Ex. 1002, PMC Infringement Contention
`
`Claim Charts, Part 3 of 15, at pp. 26-44.) Thus, in crafiing its infringement contentions,
`
`PMC did not believe that the “outputting” step required a temporal sequence. Similarly,
`
`in PMC’s litigation expert report, PMC’s expert
`
`includes no indication that
`
`the
`
`“outputting” step requires a temporal sequence.
`
`(EX. 1014 at pp. 50-52 and 132.)
`
`Even assuming that a temporal sequence is required by the “outputting” step of
`
`claim 18, Bakula still meets this limitation. Bakula discloses that after entering the dual
`
`screen mode, i) a news story can be displayed on a first portion of the dual screen (tie,
`
`the “video image”), and ii) then a news story to be edited by a user (229., the “generated
`
`image”) can be added to a second portion of the dual screen, with the display of the two
`
`news stories providing a coordinated display. (See Ex. 1013 at 1111 8-9.)
`
`B.
`
`Bakula Discloses Outputting a Coordinated Display
`
`In the Institution Decision at page 7, the Board adopted the following definition
`
`for coordinated diSplay: “a display where the images used in the display are displayed
`
`

`

`dependent on a defined relationship between the content of the images.” The Board’s
`
`construction thus merely requires that
`
`images are displayed based on a defined
`
`relationship between the content of the images.
`
`In arguing that the coordinated display is not disclosed in Bakula, PMC states:
`
`Bakula must teach computer-controlled coordination between the left
`hand display and right hand display .
`.
`.
`. [T]he two displays .
`.
`. are
`.
`independentbz controlled and displayed.
`.
`. Editing ofthe left hand side
`would not affect the right hand side, and vice versa. (Response at p. 15 .)
`
`PMC attempts to read in a limitation that would require one image to be controlled (tie,
`
`“computer-controlled”) based on the content of the other image. But this is not
`
`required by the Board’s construction of “coordinated display,” and PMC’s attempt to
`
`import limitations into the claim should be rejected.
`
`In Bakula, the right and left hand portions of the display are selected by a user
`
`based on the related content of the images: “[T]he editor [would] have the facilities at
`
`his display terminal to simultaneously display the two stories on different areas of a
`
`common display screen. .
`
`.
`
`.
`
`[T]he editor could use of one of the stories as a base and
`
`then modify it in accordance with what he likes about the other story .
`
`.
`
`. .” (Bakula at
`
`1:50-61.) Bakula discloses the “coordinated display” feature. (Ex. 1013 at W 10—11.)
`
`C.
`
`Bakula Discloses Receiving an Information Transmission at a
`Receiver Station That Includes First and Second Discrete Signals
`
`In Bakula, a user terminal receives information transmissions that include two or
`
`more bits of information (tie, “a first discrete signal and a second discrete signal”),
`
`

`

`including user input at a keyboard of the user terminal, thus disclosing the recited
`
`“receiving at least one information transmission” step of claim 18.
`
`(Petition at pp. 47
`
`and 51-52.) PMC argues that the claim requires a “transmitter station or another
`
`location or source fiom which the information transmission is transmitted” and that the
`
`limitation “cannot be construed so broadly as to cover internal transfers of data between
`
`the keyboard and another component within the terminal.” (Response at pp. 16-17.)
`
`PMC thus argues that the information transmission must be received firm
`
`another location or source. But nothing in the specification of the ’251 patent justifies
`
`such a narrow reading of the claim. (See EX. 1013 at W 12—21.) For example, although
`
`examples in the specification of the ’251 patent disclose a receiver station receiving data
`
`from extemal sources, the specification also discloses receipt of internal information
`
`transmissions from within the receiver station.
`
`(See, e.g., ”251 patent at Fig. 7 and
`
`201:29-202:3, disclosing a receiver station that receives “locally transmitted input”
`
`from an internal input apparatus 252; see also Ex. 1013 at 111] 14-20.)
`
`D.
`
`Bakula Discloses Organizing a First Discrete Signal and a Second
`Discrete Signal into an Organized Signal
`
`In Bakula, bits of information in keyboard inputs (tie. , the first and second discrete
`
`signals) are organized such that a processor can interpret the keystrokes entered at the
`
`keyboard and generate corresponding character data and enhancement characters, thus
`
`disclosing the “organizing” step of claim 18. (Petition at pp. 48 and 52-53.)
`
`PMC argues that the keyboard inputs are hardwired and do not need to be arranged
`
`

`

`or organized in order to be interpreted by the processor.
`
`(Response at pp. 18—20.) But
`
`PMC overlooks the fact that Bakula’s system is able to differentiate between shifted and
`
`unshified keystrokes. (See, e.g., Bakula at 7:19-45 and 14:34-37, cited by Dr. Neuhauser
`
`at 1111 196—207 of Ex. 1011; see also Ex. 1013 at W 22-23.) For example, as shown in
`
`Figs. 3 and 5 of Bakula, the keyboard latch and control circuit 94 receives not only the
`
`individual keystroke data (i.e., a first discrete signal) but also a strobe signal (123., a
`
`second discrete signal) based on the shift state.
`
`(Bakula at col. 11, Table II.) The
`
`combination of both signals is processed (229., organized) by the keyboard latch and
`
`control circuit 94 and the processor to generate a character. (Id. at 14:34-48.)
`
`II]. Claims 18, 19 and 22-24 Are Anticipated by Hedges
`
`A.
`
`Hedges Discloses Outputting a Video Presentation to a User That
`Includes Firstly, a Video Image and, Secondly, a Coordinated Display
`
`In Hedges, a player station includes both a changeable playboard (129., a
`
`generated image) and a live game display (1.8., a video image).
`
`(Petition at pp. 36-39.)
`
`The diSplay of the changeable playboard and the live game display provide a
`
`coordinated display, such that Hedges discloses the “outputting” step of claim 18.
`
`(161)
`
`Here again, PMC argues that the outputting step requires a temporal sequence
`
`and that Hedges does not disclose the temporal sequence. (Response at pp. 21-23.) As
`
`explained above in Section ILA, however, the meaning of claim 18 is ambiguous, and
`
`PMC’s argument relies on an overly-narrow construction that is inconsistent with the
`
`broadest reasonable interpretation. (See EX. 1013 at 1111 24-25.)
`
`

`

`Even assuming that a temporal sequence is required, Hedges still meets this
`
`limitation. The coordination between the playboard and the live game diSplay occurs, at
`
`least in part, as a result of a croupier station entering results that are passed to the
`
`playboard.
`
`(Hedges at 6:60-8:29.) But the live game display shows those results in
`
`advance of this coordination. The live game display of a wagering result (129., video
`
`image) is displayed in advance of the coordinated display of the same wagering result,
`
`thus meeting PMC’s temporal sequence interpretation. (Ex. 1013 at W 26-29.)
`
`B.
`
`Hedges Discloses Outputting a Coordinated Display
`
`In Hedges, the combination of the changeable playboard and the live game
`
`display provides a coordinated display because images in the playboard are displayed
`
`dependent on the content of the live game display.
`
`(Petition at pp. 36-39.) For
`
`example, Hedges discloses that the game playboard may include a field that displays the
`
`amount of time remaining until wagering is closed. (Hedges at Fig. 4 and 4:4-13.) This
`
`field of the game playboard is controlled by a dealer at the croupier station and is
`
`displayed dependent on the content of the live game because it
`
`tracks the time
`
`remaining to enter a wager on the live game currently being diSplayed. (Id. at 7:44-48.)
`
`The Board’s construction of the “coordinated display” limitation requires only
`
`that images are displayed dependent on a defined relationship between the content of
`
`the images.
`
`(See supra Section 11.8.) In attempting to distinguish Hedges, PMC again
`
`seeks to read additional limitations into the claim. Specifically, PMC argues that the
`
`

`

`two monitors are not “coordinated” because the monitors operate independently of each
`
`other and attempts to read in a limitation that would require one diSplay to be controlled
`
`based on the content of the other display. (Response at pp. 23-25.)
`
`In Hedges, the display of the playboard is based on, or coordinated with, the
`
`activities occurring on the live TV feed. This is the very purpose of Hedges’s system.
`
`The Board’s construction of the “coordinated display” limitation requires only
`
`coordination based on the content of the images —— it does not require control of one
`
`display by another display.
`
`In Hedges, the playboard is clearly coordinated with the
`
`content of the live TV feed, and this is all that the claim requires. (Ex. 1013 at 1111 30-32.)
`
`C.
`
`Hedges Discloses Receiving an Information Transmission at a
`Receiver Station with First and Second Discrete Signals
`
`In Hedges, a player station receives multiple types of information transmissions
`
`that include two or more bits of information (228., “a first discrete signal and a second
`
`discrete signal”), including user input at the player station, thus disclosing the recited
`
`“receiving at least one information transmission” limitation of claim 18. (Petition at pp.
`
`33—35 and 38.) PMC argues that the claim requires that “the information transmission is
`
`communicated from a source external to the receiver station.” (Response at p. 26.) But
`
`this argument is faulty, as explained above in Section ILC. (See Ex. 1013 at 1111 33-37.)
`
`D.
`
`Hedges Discloses Organizing Information Included in a First Discrete
`Signal with Information Included in a Second Discrete Signal to
`Provide an Organized Signal
`
`In Hedges, a touch on a touch sensitive keypad causes a generation of an
`
`

`

`encoded position (229., a position byte) of the player’s touch that includes row and
`
`column scans (329., first and second discrete signals). (Petition at pp. 34-35.) The bits of
`
`information in the position byte are organized such that a processor can interpret the
`
`position of the player’s touch and generate a particular game command, thus disclosing
`
`the “organizing” step of claim 18.
`
`(Id) This interpretation is consistent with the
`
`Board’s definitions for the “organizing” step, which require that bits be arranged into a
`
`group, such as a byte, that is recognized by a computer. (Institution Decision at p. 8.)
`
`PMC argues that Hedges’s converting of position bits fiom the touch screen into
`
`game commands is not “organizing” because it does not “re-organize” the position bits.
`
`(Response at pp. 28-29.) But the position bits fiom the touch screen are organized into
`
`stored information for interpretation by the processor, and this is entirely consistent with
`
`the Board’s definitions for the “organizing” step.
`
`(See, e. g, Hedges at 4:28-52,
`
`describing Fig. 3B and disclosing organizing row and column scans into a byte that can
`
`be read by the processor from a data bus; see also Ex. 1013 at 111] 38-40.)
`
`E.
`
`Hedges Discloses Generating an Image by Processing Previously
`Stored User Specific Data in ReSponse to an Organized Signal
`
`In Hedges, an updated image of a playboard (tie, a generated image) is generated
`
`in response to a user input to increase a wager (is, an organized signal) by processing
`
`an original wager previously stored in RAM (1'. a, previously stored user specific data),
`
`thus disclosing the “generating” step of claim 18. (Petition at pp. 35—39.) PMC argues
`
`that the user input to change the wager amount does not disclose processing previously
`
`

`

`stored user specific data to generate an image. (Response at pp. 29-30.)
`
`Contrary to PMC’s argument, in Hedges, the generation of the updated image of
`
`the playboard includes the steps of: 1) processing an original wager previously stored in
`
`RAM; and 2) reading the processed wager stored in RAM.
`
`(Hedges at 9:60-10:1 and
`
`13:24-39.) Clearly, the image of the playboard is influenced by the processing of the
`
`original wager, such that the processing is required in generating the updated image.
`
`(See Ex. 1013 at W 41-43.) PMC itself acknowledges this:
`
`“[T]he old wager is
`
`processed to update the wager value in memory.” (Response at p. 29.)
`
`F.
`
`Hedges Discloses “Contacting a Remote Station to Obtain At Least
`One User Specific Subscriber Datum” (Claim 23)
`
`Hedges discloses receiving user Specific data (e.g., a remaining credit amount)
`
`from a remote credit station, thus meeting the limitations of claim 23. (Petition at p. 41.)
`
`PMC argues that the remaining credit amount does not disclose the “said at least
`
`one user specific subscriber datum” limitation of claim 23 because the remaining credit
`
`amount does not satisfy all limitations of claim 18.
`
`(Response at pp. 30—31; Ex. 2015,
`
`Russ Decl. at 11 140.) But this is incorrect. When user input (1'. 9., an organized signal) is
`
`received to increment or decrement a wager, the prestored remaining credit amount is
`
`processed in order to determine whether the remaining credit amount is exceeded by the
`
`new wager (i.e., the remaining credit amount is compared to the new wager). (Hedges
`
`at 4:4—13.) The result of the comparison is indicated via an “Exceeded Cash Available”
`
`field on the playboard. (See id. at Fig. 4.) Therefore, the remaining credit amount from
`
`-10-
`
`

`

`the remote station is processed in response to the organized signal, as required by claim
`
`18. This is explained in detail by Dr. Neuhauser in EX. 1013 at W 44—55.
`
`IV. Claims 18, 19, 22-24 and 28 are Obvious over Hedges in View of Frohbach
`
`A person of ordinary skill in the art would be motivated to modify Hedges in
`
`view of Frohbach’s teaching of displaying two images on a single display. (Institution
`
`Decision at p. 25, “Zynga proposes replacing two monitors with a single monitor.”)
`
`PMC and its expert provide extensive arguments regarding the alleged difficulty
`
`in physically combining the Hedges and Frohbach references. (ReSponse at pp. 31-33.)
`
`But the test for obviousness is what the combined teachings of the references would
`
`have suggested to one of ordinary skill in the art, and the references need not be
`
`physically combinable. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
`
`In this case, even assuming such difficulty in the physical combining of the
`
`references, a “person of ordinary skill in the art would have recognized that Zynga’s
`
`proposed substitution would allow viewers to see related images on a single monitor
`
`with the additional benefit of reducing the number of monitors.” (Institution Decision
`
`at p. 26.) As such, replacing Hedges’s two monitors with Frohbach’s single monitor
`
`would have been obvious to the .POSITA. (See EX. 1013 at 111} 56—63.)
`
`V.
`
`Claim 17 is Obvious Over Hedges in View of Yamamoto
`
`A.
`
`The Combination of Hedges and Yamamoto Discloses Simultaneously
`Displaying a Locally Generated Image and an Image Received from a
`Remote Video Source at a Video Output Device
`
`In Hedges, a player station simultaneously diSplays a locally generated playboard
`
`-11-
`
`

`

`image and a live video display received from a remote croupier station, thus disclosing
`
`the “simultaneously displaying” step of claim 17. (Petition at pp. 15-19.) PMC argues
`
`that claim 17 requires a si_ngl_e display device and that the combination of two display
`
`devices in Hedges does not meet the limitation. (Response at pp. 35-3 8.)
`
`PMC’s argument, however, is plainly contrary to the Board’s interpretation that a
`
`video output device is “a device which outputs video but is not limited to a single
`
`monitor.”
`
`(Institution Decision at p. 9.) The Board’s interpretation is perfectly
`
`reasonable and no narrower construction is justified. Further, if PMC believes that a
`
`narrower construction is necessary, then it should have proposed an amendment.
`
`PMC also argues that the “Board mistakenly interprets [Hedges] to teach that the
`
`live TV monitor 21 can be part of (integrated into) the playboard.” (Response at p. 38.)
`
`But the Board was not mistaken: Fig. l of Hedges shows a dotted box 10 around both
`
`the playboard 20 and the TV monitor 21, which indicates that both displays 20, 21 may
`
`be part of the same player station 10, as indicated by the Board. (Ex. 1013 at il‘ll 64-65.)
`
`B.
`
`The Combination of Hedges and Yamamoto Discloses Processing
`Both Remotely Originated Data and Previously Stored User Specific
`Data to Generate a Locally Generated Image
`
`In Hedges, processor instructions are executed at a player station to process
`
`1) remotely originated data from the credit station and 2) previously stored user specific
`
`data (eg, user input to the player station) to generate a gaming playboard (1.26., a locally
`
`generated image).
`
`(Petition at pp. 14-19.) PMC argues that the generation of the
`
`-12-
`
`

`

`playboard image does not include processing Eh elements. (Response at pp. 38—46.)
`
`PMC’s argument is incorrect. First, the generated playboard image includes bg‘gh
`
`remotely originated data and user specific data.
`
`(See Ex. 1013 at W 66-67.) For
`
`example, the display includes m game results data (126., remotely originated data) and
`
`wager information (13.6., user specific data). Thus, in order to generate the playboard
`
`image that includes bpth of these types of information, both 9% have been processed
`
`to generate the image. (Hedges at 3:40-45; 4:9-13; and 8:65-92.)
`
`Second, the claim does not require, as PMC seems to imply, that both types of
`
`data be simultaneously processed. (See Ex. 1013 at W 68-69.) For example, at page 45
`
`of the Response, PMC criticizes one application of Hedges to the claim limitation
`
`because the two types of data are not processed “at the same time.” If PMC wanted the
`
`claim to be so limited, PMC should have proposed a claim amendment. As written, the
`
`claim does not require simultaneous processing of both types of data.
`
`VI.
`
`Claim 17 is Obvious Over Yamamoto in View of Bakula
`
`As described in the Petition at pages 23-32, claim 17 of the “251 patent is
`
`obvious over Yamamoto in View of Bakula. With respect to this combination, PMC
`
`first argues that the black box image in Yamamoto (showing the seat reserved by the
`
`user) cannot be the locally generated image “because the black image itself does not
`
`depict the seat reserved. The seat reserved becomes Visualized when the allegedly
`
`‘locally generated image’ is presented with the remotely originated image.” (Response
`
`-13-
`
`

`

`at p. 51.) PMC also argues that Petitioner fails to identify how the black box is
`
`generated by processing remotely originated data and user specific data. (Id)
`
`PMC’s argument is not easily comprehensible. To the extent understood, PMC
`
`is incorrect in its conclusion that in Yamamoto, the “user’s selection (tie, the data
`
`representing the location of the user’s selection) does not affect the appearance of the
`
`black box itself.” (Ex. 2015, Russ Decl. at 11 221.) As shown in Yamamoto’s Fig. 7,
`
`the appearance of the black box is affected by the user’s selection both in the location of
`
`the box and the size and shape of the box itself. (See also Yamamoto at 8:40-73.)
`
`PMC next argues that the combination of Yamamoto and Bakula fails to teach
`
`simultaneously diSplaying the locally generated image and the image received fiom the
`
`remote video source. (Response at p. 52.) PMC argues that “the components necessary
`
`to generate the seating chart are located at the receiving side (e.g, signal producing
`
`device) and therefore the ‘picture image’ indicating the availability of the seats .
`
`.
`
`. is
`
`not an image fiom a remote video source.” (Id) But this is not so.
`
`In the combined
`
`system of Yamamoto and Bakula, a video image of the seating chart would be received
`
`from a remote system, just as in Yamamoto alone. The addition of Bakula is for the
`
`benefit of providing local processing of user inputs and not as a wholesale replacement
`
`of the teachings of Yamamoto’s reservation system. (See Ex. 1013 at W 70-71.)
`
`VII. PMC’s Alleged Secondary Considerations of Non-Obviousness
`
`PMC presents a Declaration from Gerald Holtzman, President of PMC (Ex.
`
`-14-
`
`

`

`2016), that includes alleged evidence of the success of PMC’S licensing program and
`
`patent portfolio valuation as secondary considerations of nonobviousness. Petitioner
`
`submits that Gerald Holtzman has a financial interest in the Harvey patents and that
`
`therefore his declaration should be given little weight.
`
`(See EX. 1018, Deposition
`
`Transcript of Gerald Holtzman (Jan. 15, 2014) at pp. 6-10.) Petitioner further submits
`
`that PMC’s licensing success and portfolio evaluations have little to do with the
`
`obviousness or nonobviousness of its patents, and everything to do with the
`
`effectiveness of the “patent assertion entity” business of which PMC is a part. See Ex.
`
`1015 at Table 2; Ex. 1016 at page 1; Ex. 1017 at page 6. Further, PMC’s evidence
`
`relates to its entire patent portfolio, including more than sixty issued patents, and is not
`
`specific to the ”638 patent.
`
`(See generally Ex. 2016; Ex. 1018 at p. 14.) For at least
`
`these reasons, PMC’S evidence of non—obviousness is unpersuasive.
`
`VIII. Conclusion
`
`In View of the above, Petitioner requests that claims 17-19, 22—24 and 28 of the
`
`’251 patent be found unpatentable. Date: Janum 24, 2014
`
`David B. ochran, Reg. No. 39,142
`Joseph M. Sauer, Reg. No. 47,919
`JONES DAY
`
`North Point, 901 Lakeside Avenue
`
`Cleveland, Ohio 44114
`
`(216) 586-3939
`
`

`

`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
`
`Reply to Patent Owner’s Response, along with all exhibits supporting and filed with
`
`the Reply, were served on January 24, 2014 via email to:
`
`Thomas J. Scott, Jr.
`tscottg£tgoodwinproctencom
`and
`
`
`
`
`
` Dated: January 24, 2014
`
`Stephen Schreiner
`sschreiner@ oodwin rocter.c
`
`By:
`
`

`

`APPENDIX OF EXHIBITS
`
`EXHIBIT
`
`NO.
`
`1001
`
`1 002
`
`1 003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`
`
`US. Patent No. 7,734,251 (“the Harvey ‘251 Patent”)
`
`PMC Infringement Contention Claim Charts against Zynga for the
`Harvey ‘251 Patent, Personalized Media Communications, LLC v.
`Zynga, Inc., Civil Action No. 2: 12—cv-68 (ED. Texas)
`
`Excerpt fiom the file history of the Harvey ‘251 Patent: March 4,
`1999, Supplemental Amendment
`
`.Excerpt fiom the file history of the Harvey ‘251 Patent: February 8,
`2005, Appeal Brief
`
`Excerpt from the file history of the Harvey ‘251 Patent: March 23,
`2009, Decision on Appeal
`
`Excerpt fiom the file history of the Harvey ‘251 Patent: June 26,
`2009, Decision on Request for Rehearing
`
`
`
`US. Patent No. 4,339,798 (“Hedges”)
`
`US. Patent No. 3,668,312 (“Yamamoto”)
`
`US. Patent No. 4,107,735 (“Frohbach”)
`
`US. Patent No. 4,204,206 (“Bakula”)
`
`
`
`Declaration of Dr. Charles J. Neuhauser Under 37 C.F.R. § 1.68 in
`
`

`

`Support of Petition for Inter Partes Review of U.S. Patent No.
`7,73 4,241
`
`
`
`Appendix to the Declaration of Dr. Charles J. Neuhauser: Dr.
`Neuhauser’s current curriculum vitae
`
`
` Rebuttal Declaration of Charles J. Neuhauser, PhD. Under 37
`C.F.R. § 1.68
`
`
`
`
`
`
`Excerpts from Expert Report of Mark Claypool, Ph. D.,
`Personalized Media Communications, LLC v. Zynga, Inc., Civil
`
`Action No. 2: 12-cv-68 (E.D. Texas)
`
`
`
`
`
`
`
`
`
`1015
`
`James Bessen & Michael J. Meurer, The Direct Costsflom NPE
`Disputes, 99 CORNELL L. REV. (forthcoming 2014)
`
`I
`
`1016
`
`Alexander M. Bell, An Autopsy on Submarine Patents (April 17,
`2013) (Honors Thesis, Brown University)
`
`
`1017
`
`Executive Office of the President, Patent Assertion and U.S.
`
`Innovation (June 2013)
`
`|——a———————
`1018
`Deposition Transcript of Gerald Holtzman (Jan. 15, 2014)
`
`1019
`
`1020
`
`Deposition Transcript ofSamuel H. Russ, PhD (January 9, 2014)
`
`I
`
`Deposition Transcript of Samuel H. Russ, PhD (December 20,
`2013)
`
`
`