`
`Zynga, Inc. v. Personalized Media Communications, LLC
`
`Case |PR2013-00171 (SCM)
`
`
`
`IPR2013-00171
`Patent No. 7,734,251 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. IPR2013-00171
`U.S. Patent No. 7,734,251
`___________________________
`
`DECLARATION OF SAMUEL H. RUSS, PH.D.
`PURSUANT TO 37 C.F.R. § 1.68
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I, Dr. Samuel H. Russ, do hereby declare:
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`1.
`
`I am making this declaration at the request of Patent Owner
`
`Personalized Media Communications, LLC (“PMC”) in the matter of the Inter
`
`Partes Review, No. IPR2013-00171, of U.S. Patent No. 7,734,251 (“the ’251
`
`Patent.”)
`
`I.
`
`QUALIFICATIONS & ENGAGEMENT
`2. My qualifications for forming the opinions set forth in this
`
`Declaration are summarized here and explained in more detail in my curriculum
`
`vitae, which is attached as part of Exhibit 2019. Exhibit 2019 also includes a list
`
`of my publications and the cases in which I have testified at deposition, hearing, or
`
`trial during the past four years.
`
`3.
`
`I received a Bachelor’s degree in Electrical Engineering from the
`
`Georgia Institute of Technology (“Georgia Tech”) in 1986 and a Ph.D. in
`
`Electrical Engineering from Georgia Tech in 1991.
`
`4.
`
`From 2007 to the present, I have been a member of the faculty of the
`
`University of South Alabama as an Assistant and Associate Professor in the
`
`Department of Electrical and Computer Engineering. During that time, I have won
`
`awards for excellent teaching and have been actively publishing research in home
`
`networking and digital video recording (DVR) technologies. I am active in the
`
`Institute of Electrical and Electronic Engineers (IEEE) and am a Distinguished
`
`
`
`1
`
`
`
`
`
`
`Lecturer for the IEEE Consumer Electronics Society. As a consultant, I have
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`conducted briefings for members of the financial community on technology trends
`
`in the cable, satellite, and IPTV sectors. I teach classes in subjects including
`
`encryption, digital system design, signal integrity, systems engineering, software
`
`development, embedded system development, digital logic design, and computer
`
`engineering.
`
`5.
`
`From 2000 to 2007, I worked for Scientific-Atlanta (now Cisco’s
`
`Service Provider Video Tech. Group), where I managed a cable set-top box (STB)
`
`design group that designed four STB models, including the Explorer 4200 (non-
`
`DVR) and 8300 (DVR) models. Set-top boxes contain numerous features relevant
`
`to the Harvey patents, including networking, communications, interactivity, the
`
`ability to download software, video and audio processing, and digital audio and
`
`video. Both models sold several million units. As design-group manager, I was
`
`responsible for managing the design and prototyping activities of the group, for
`
`interfacing with other groups (especially integrated-circuit design, procurement,
`
`software developers, the factory where prototypes were built, and product
`
`managers), and for maintaining the hardware and mechanical development
`
`schedule. Since the products were produced in extremely high volumes, the
`
`projects had very high visibility in the company, and therefore carried a great deal
`
`of responsibility. In order to manage the design of cable set-top boxes, I had to be
`
`
`
`2
`
`
`
`
`
`
`an expert in communications, signal processing, networking, distributed systems,
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`remote downloading of software, encryption/decryption, and software
`
`development, including coding and testing.
`
`6.
`
`Also while at Scientific-Atlanta, I became a staff expert in home
`
`networking, conducting demonstrations of breakthrough wireless video-
`
`distribution technology and managing a group that developed a new coaxial home
`
`networking system. The coaxial system won a Technology and Engineering
`
`Emmy® Award in 2013. I became a staff expert in DVR reliability and led a team
`
`that improved the software, hardware, repair, manufacturing processes, and vendor
`
`qualifications of DVR set-tops and hard disk drives. I was a named an inventor on
`
`forty-eight (48) patent applications that were filed while I was at Scientific-
`
`Atlanta, twenty five (25) of which have issued as patents as of the writing of this
`
`Declaration.
`
`7.
`
`From 1999 to 2000, I was a Staff Electrical Engineer and then Matrix
`
`Manager at IVI Checkmate (now Ingenico), where I managed the hardware design
`
`team that completed the design of the eN-Touch 1000 payment terminal. This
`
`terminal was in widespread use, for example, at the self-checkout at Home Depot®.
`
`8.
`
`I also served on the faculty of Mississippi State University from 1994
`
`to 1999 as an Assistant Professor in the Department of Electrical & Computer
`
`Engineering where I taught circuit board design and two-way interactive video
`
`
`
`3
`
`
`
`
`
`
`classes, among other things. I managed the development of a distributed run-time
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`environment that could run complex physical simulations on networked
`
`workstations, and could migrate software between workstations while it was
`
`running.
`
`9.
`
`I have also authored 32 journal articles and conference papers. A
`
`recent conference paper on digital video recording won second place in a “best
`
`paper” competition at the 2011 International Conference on Consumer Electronics
`
`in Las Vegas, NV. A complete list of publications is included in my curriculum
`
`vitae, attached as Exhibit 2019.
`
`10.
`
`In my current capacity as an independent consultant, I have reviewed
`
`and verified the operation of a wide variety of technical systems, including
`
`processors, personal computers, television devices, smart phones, peripherals, and
`
`bus systems.
`
`11.
`
`In forming the opinions expressed in this Declaration, I have relied
`
`upon my education and my 22 years of professional and academic experience.
`
`12.
`
`I am being compensated for my work in this matter at my standard
`
`hourly rate of $300 for consulting services. My compensation for this matter is not
`
`determined by or contingent on the outcome of this case.
`
`
`
`4
`
`
`
`
`
`
`II. MATERIALS REVIEWED AND RELIED UPON
`13.
`In preparing this Declaration, I reviewed and considered the following
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`materials:
`
`a.
`
`b.
`
`The ’251 Patent and its file history;
`
`The Petition for Inter Partes Review of the ’251 Patent filed by
`
`the Zynga Inc. (“the Petitioner”) (“The Petition” or “Pet.”) and the exhibits
`
`that are cited by the Petition, including, the Declaration of Charles J.
`
`Neuhauser, Ph.D. (“Neuhauser Declaration”, or “Dr. Neuhauser.” or
`
`“Neuhauser Decl.”) (Ex. 1011);
`
`c.
`
`The Patent Trial and Appeal Board’s (“the Board”) Decision on
`
`Institution of Inter Partes Review of the ’251 Patent, dated July 25, 2013
`
`(“the Decision” or “Dec.”);
`
`U.S. Patent No. 4,204,206 to Bakula (“Bakula”) (Ex. 1010);
`
`U.S. Patent No. 4,339,798 to Hedges (“Hedges”) (Ex. 1007);
`
`U.S. Patent No. 3,668,312 to Yamamoto (“Yamamoto”) (Ex.
`
`d.
`
`e.
`
`f.
`
`1008);
`
`g.
`
`U.S. Patent No. 4,107,735 to Frohbach (“Frohbach”) (Ex.
`
`1009);
`
`h.
`
`Transcripts of the Deposition of Dr. Neuhauser on October 8-9,
`
`2013 (“Neuhauser Dep.”) (Exs. 2013, 2014);
`
`
`
`5
`
`
`
`
`
`
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`i. March 20, 2009 Decision on Appeal by the Board of Patent
`
`Appeals and Interference (“March 20, 2009 Decision”) (Ex. 1005);
`
`j.
`
`June 26, 2009 Decision on Request for Rehearing by the Board
`
`of Patent Appeals and Interference (“June 26, 2009 Decision”) (Ex. 1006);
`
`and
`
`k.
`
`All other documents cited and used in my Declaration.
`
`14.
`
`In addition to the materials above, I have reviewed materials in
`
`connection with related inter partes proceedings Case Nos. IPR2013-00156,
`
`IPR2013-00162, and IPR2013-00164. The ’251 Patent and the Patents-at-issue in
`
`these related cases, U.S. Patent Nos. 7,860,131, 7,797,717, and 7,908,638, which I
`
`refer to as the “Harvey Patents” all share a common disclosure directed to the
`
`integrated system of programming communication that I describe in the
`
`background of the technology section below.
`
`15. An additional basis for my opinions is my own experience as an
`
`engineer, acquired, for example, while I was a manager and a staff expert at
`
`Scientific-Atlanta (“S-A”). As noted above, I have managed the design of four
`
`electronic products that entered mass production (three cable set-top boxes, the
`
`Explorer 1840, 4200, and 8300, and one point-of-sale retail terminal, the eN-Touch
`
`1000). Two of those products (the Explorer 4200 and 8300) were produced in
`
`million-unit quantities. I also became a staff expert in home networking and DVR
`
`
`
`6
`
`
`
`
`
`
`reliability and performance, as well as all aspects of cable, satellite, and IPTV
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`“Pay-TV“ networks.
`
`16.
`
`I have also relied on my years of education, teaching, research, and
`
`experience concerning software, circuit design, signal integrity, computer
`
`architecture, digital logic design and synthesis, embedded systems, distributed
`
`computing, computer and network security, and networking.
`
`III. SUMMARY OF CONCLUSIONS
`17. As described in detail below, it is my opinion that claims 17-19, 22-
`
`24, and 28 of the ’251 Patent are novel and non-obvious over the prior art cited by
`
`the Petitioner, including Bakula, Hedges, Frohbach and Yamamoto.
`
`18. Also, for the reasons set forth below, I conclude that a person of
`
`ordinary skill in the art at the time of the invention would not have had reason to
`
`modify the prior references in the manner stated in the Petition and in the
`
`Neuhauser Declaration, that are relied upon by the Board in its Decision.
`
`IV. LEGAL STANDARDS
`19.
`I am not an attorney. I have been advised of the following general
`
`principles of patent law to be considered in formulating my opinions as to whether
`
`the claims of the ’251 Patent are anticipated or would have been obvious to a
`
`person of ordinary skill in the art at the time of the invention in view the prior art.
`
`
`
`7
`
`
`
`
`
`
`
`20.
`
`It is my understanding that in determining whether a patent claim is
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`anticipated or obvious in view of the prior art, the Patent Office must construe the
`
`claim by giving the claim its broadest reasonable interpretation consistent with the
`
`specification. For the purposes of this review, I have construed each claim term in
`
`accordance with its plain and ordinary meaning under the required broadest
`
`reasonable interpretation.
`
`A. Anticipation
`
`21.
`
`It is my understanding that anticipation under 35 U.S.C. § 102
`
`requires that a single prior art reference or product, discloses or contains, expressly
`
`or inherently, every limitation of the claimed invention. The standards for
`
`anticipation from 35 U.S.C. §102(a) and (b) are reproduced below:
`
`a.
`
`The invention was known or used by others in this country, or
`
`patented or described in a printed publication in this or a foreign country,
`
`before the invention thereof by the applicant for patent, or
`
`b.
`
`The invention was patented or described in a printed
`
`publication in this or a foreign country or in public use or on sale in this
`
`country, more than one year prior to the date of the application for patent in
`
`the United States.
`
`(35 U.S.C. §§102(a)-(b) (2012).)
`
`
`
`8
`
`
`
`
`
`
`
`22.
`
`I understand that, in general, the anticipation analysis under 35 U.S.C.
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`§ 102 is limited to the use of a single reference. I further understand that portions
`
`of additional documents may be relied upon as part of the anticipation analysis if
`
`the primary reference incorporates the additional documents by reference. In order
`
`for the primary reference to incorporate additional documents by reference, the
`
`primary reference must identify with detailed particularity what specific material it
`
`incorporates, and clearly indicate where that material is found in the additional
`
`documents. A mere reference to another document is insufficient to incorporate
`
`that document by reference.
`
`23.
`
`I understand that a claimed invention is anticipated under 35 U.S.C. §
`
`102(e) if that invention is described in another U.S. Patent that was filed earlier,
`
`unless the inventor of the claimed invention conceived of the claimed invention
`
`before the other U.S. Patent was filed.
`
`B. Obviousness
`
`24.
`
`It is my understanding that a claim is invalid for obviousness under 35
`
`U.S.C. § 103 if two or more prior art references in combination disclose, expressly
`
`or inherently, every claim limitation so as to render the claim, as a whole, obvious.
`
`Alternatively, a claim can be invalid under 35 U.S.C. § 103 if a single prior art
`
`reference combined with the knowledge of one of ordinary skill in the art discloses
`
`
`
`9
`
`
`
`
`
`
`every claim limitation so as to render the claim, as a whole, obvious. The relevant
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`standard for obviousness is as follows:
`
`a.
`
`A patent may not be obtained even though the invention is not
`
`identically disclosed or described as set forth in section 102 of this title, if
`
`the differences between the subject matter sought to be patented and the
`
`prior art are such that the subject matter as a whole would have been obvious
`
`at the time the invention was made to a person having ordinary skill in the
`
`art to which said subject matter pertains. Patentability shall not be negated
`
`by the manner in which the invention was made.
`
`(35 U.S.C. §103(a) (2012).)
`
`25.
`
`I understand that in determining whether or not a patented invention
`
`would have been obvious, the following factors should be considered: (a) the scope
`
`and content of the prior art; (b) the differences between the prior art and the claims
`
`at issue; (c) the level of ordinary skill in the art; and (d) whatever “secondary
`
`considerations” may be present.
`
`26.
`
`I understand that certain “secondary considerations” may be relevant
`
`in determining whether or not an invention would have been obvious, and that
`
`these secondary considerations may include commercial success of a product using
`
`the invention, if that commercial success is due to the invention; long-felt need for
`
`the invention; evidence of copying of the claimed invention; industry acceptance;
`
`
`
`10
`
`
`
`
`
`
`initial skepticism; failure of others; praise of the invention; and the taking of
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`licenses under the patents by others.
`
`27.
`
`I understand that a patent composed of several elements is not proved
`
`obvious merely by demonstrating that each of its elements was, independently,
`
`known in the prior art. But multiple prior art references or elements may, in some
`
`circumstances, be combined to render a patent claim obvious. I understand that I
`
`should consider whether there is an “apparent reason” to combine the prior art
`
`references or elements in the way the patent claims. To determine whether such an
`
`“apparent reason” to combine the prior art references or elements in the way a
`
`patent claims, it will often be necessary to look to the interrelated teaching of
`
`multiple patents, to the effects of demands known to the design community or
`
`present in the marketplace, and to the background knowledge possessed by a
`
`person having ordinary skill in the art.
`
`28.
`
`I also understand that when the prior art “teaches away” from
`
`combining prior art references or certain known elements, discovery of a
`
`successful means of combining them is more likely to be non-obvious. A prior art
`
`reference may be said to “teach away” from a patent when a person of ordinary
`
`skill, upon reading the reference, would be discouraged from following the path set
`
`out in the patent or would be led in a direction divergent from the path that was
`
`taken by the patent. Additionally, a prior art reference may “teach away” from a
`
`
`
`11
`
`
`
`
`
`
`claimed invention when substituting an element within that prior art reference for a
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`claim element would render the claimed invention inoperable.
`
`29.
`
`I also understand that it is not permissible to use hindsight in assessing
`
`whether a claimed invention is obvious. Rather, I understand that, to assess
`
`obviousness, you must place yourself in the shoes of a person having ordinary skill
`
`in the relevant field of technology, at the time the inventions were made, who is
`
`trying to address the issues or solve the problems faced by the inventor, and ignore
`
`the knowledge you currently now have of the inventions.
`
`C.
`
`30.
`
`Persons of Ordinary Skill in the Art
`
`I believe that the ’251 Patent is addressed to a person with at least the
`
`equivalent of a first college degree in digital electronics, electrical engineering,
`
`computer engineering, computer science, or a related technical degree, with several
`
`years (e.g., 2-5 years) of post-degree experience in a similar field. In determining
`
`who would be a person of ordinary skill, I considered at least the following criteria:
`
`(a) the type of problems encountered in the art; (b) prior art solutions to those
`
`problems; (c) the rapidity with which innovations are made; (d) the sophistication
`
`of the technology; and (e) the education level of active workers in the field.
`
`
`
`12
`
`
`
`
`
`
`V. BACKGROUND TECHNOLOGY OF THE ’251 PATENT AND
`RELATED PATENTS
`31. The ’251 Patent foresaw a world in which control signals enabled the
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`merger of multimedia content with, for example, broadcast television to provide
`
`graphical content and audio content, tailored to the needs of individual subscribers.
`
`Prior to the ’251 Patent, the art of the era involved terminals connected to
`
`mainframes, standalone computers, or broadcast television. The ’251 Patent
`
`combined this functionality in a novel manner to provide personalized, and
`
`interactive combined medium programming.
`
`32. At a high level, the ’251 Patent describes an integrated system of
`
`programming communication, and it involves the fields of computer processing,
`
`computer communications, television, radio, and other electronic communications.
`
`(’251 Patent, 1:20-27.) The inventors understood that there was great potential for
`
`combining the capacity of broadcast communications media to convey ideas with
`
`the capacity of computers to process and output user specific information. For
`
`example, such a system could combine the capacity for conveying general
`
`information to large audiences (such as telling them that stock prices rose today in
`
`heavy trading) with information of specific relevance to each particular user in the
`
`audience (such as telling a particular person “but the value of your stock portfolio
`
`went down. ”). (’251 Patent, 1:52-60.)
`
`33. As the patents explains,
`
`
`
`13
`
`
`
`
`
`
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`Unlocking this potential is desirable because these new media will add
`substantial richness and variety to the communication of ideas,
`information and entertainment. Understanding complex subjects and
`making informed decisions will become easier.
`
`To unlock this potential fully requires means and methods for
`combining and controlling receiver systems that are now separate.
`
`(’251 Patent, 1:63-2:3.)
`
`34. While the ’251 Patent describes what could be a large and
`
`complicated system for delivering many types of personalized programming, the
`
`inventors recognized that in specific situations fewer functions would be required,
`
`and that, in such situations, one or more of the specific operating elements
`
`described in the patent could be omitted. Indeed, a central objective of the
`
`invention was to provide flexibility regarding the installed equipment. By
`
`including such a capacity for wide variation, individual subscribers were given the
`
`widest range of information options at the least cost in terms of installed
`
`equipment. The inventors described a system with flexibility for expanding the
`
`capacity of installed systems through transmitted software, for altering installed
`
`systems in a modular fashion by adding or removing components, and for
`
`restricting the programming to only certain subscribers if such was desired. (’251
`
`Patent, 9:1-16.)
`
`
`
`14
`
`
`
`
`
`
`
`35. The specification is organized around a set of examples that show
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`numerous ways in which the inventions can be practiced. The patent specification
`
`shared by the ’251 Patent begins by describing an example that creates a
`
`personalized presentation using the “Wall Street Week” television program
`
`combined with local data about the subscriber’s own stock portfolio. That
`
`introductory example is then followed with eleven additional examples that show
`
`applications of the inventions to such areas as the sale of pork bellies, the
`
`preparation of Indian food, and the coordination of farming activities.
`
`36. One of the examples described in the patent involves the television
`
`show Wall Street Week. As the patents explain, with the patented invention, Wall
`
`Street Week goes from being a television show that merely conveys general stock
`
`market information to a wide audience to become instead a personalized combined
`
`media experience in which each individual viewer sees his or her own individual
`
`stock portfolio performance in combination with the general stock market
`
`information. For this to work, the subscriber needs more than just a television set.
`
`The subscriber station described in this example includes a microprocessor or
`
`microcomputer and a disk drive. Stored on this disk drive is a file that contains
`
`information about the subscriber’s stock portfolio. (’251 Patent, 11:29-58.)
`
`37. The microcomputer accesses this data file and calculates the
`
`performance of the subscriber’s stock portfolio. The microcomputer then
`
`
`
`15
`
`
`
`
`
`
`constructs a graphic image showing that individual performance. The system
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`accesses a local “portfolio data file” for information, and calculates the
`
`performance of the subscriber’s personal stock portfolio to prepare a graphic image
`
`of that performance. (’251 Patent, 13:24-29.) An example of such a graphic image
`
`is shown in Figure 1A of the patent.
`
`38. While these calculations are occurring, the conventional television
`
`image and the sound of the transmitted “Wall Street Week” program are presented
`
`on the TV monitor. During this time, the program may show the “talking head” of
`
`the host as he describes the behavior of the stock market over the course of the
`
`week. At some point, the host says, “Now as we turn to the graphs, here is what
`
`the Dow Jones Industrials did in the week just past,” and a studio generated
`
`graphic is transmitted. (’251 Patent, 13:58-66.) An example of a graphic image
`
`showing the general stock market condition is shown in Figure 1B of the patent.
`
`39. So far, nothing personalized has been presented to the subscriber. But
`
`then the host says, “And here is what your portfolio did,” and the viewer becomes
`
`engaged in a personalized media presentation. A signal instructs the
`
`microcomputer to overlay the personalized graphic information of Figure 1A onto
`
`the received information of Figure 1B and transmit the combined information to a
`
`monitor, which displays an image showing the subscriber’s own portfolio
`
`
`
`16
`
`
`
`
`
`
`
`
`
`
`performmance overllaid on thee graphic describing tthe markett at large. ((’251 Patennt,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2013-000171
`
`
`Patent NNo. 7,734,2551 B1
`
`
`
`13:67-14:15; 230:9-16.)
`
`
`
`
`
`
`
`
`
` (’251 PPatent, Fig.. 1B; Fig. 11C.)
`
`
`
`440. As thhe patent exxplains, this process
`
`
`
`
`
`
`
`
`
`
`
`would nott be a one-ttime event
`
`
`
`: “In
`
`
`
`actualityy, the proccess of conttrolling computer-baased combiined mediaa operationns is
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`continuous and involves sysstematic inpputting andd maintainning of up-tto-date useer
`
`
`
`
`
`
`
`
`
`specificc data at eaach subscribber stationn.” For exaample, onlyy at subscrriber statio
`
`
`
`
`
`
`
`
`
`
`
`
`
`ns
`
`
`
`where uuser specifiic stock daata is mainttained systtematicallyy and up-too-date can tthe
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`system generate immages thatt actually s
`
`
`
`
`
`
`
`how the peerformancee of the poortfolios of f the
`
`
`
`
`
`
`
`
`
`subscribbers. (’2511 Patent, 2330:45-54.))
`
`
`
`
`
`
`
`
`
`441. Anotther exampple provideed is the “EExotic Meaals of Indiaa” programm and
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`advertissements forr pork belllies. As wiith the Walll Street WWeek exampple, portio
`
`
`
`
`
`ns
`
`
`
`
`
`
`
`
`
`of the cooking shoow are commmon to alll of the subbscribers.
`
`
`
` But once
`
`
`
`again, usinng
`
`
`
`the pateented invenntion, the ccooking shoow becom
`
`
`
`
`
`
`
`
`
`es a personnalized expperience, aand
`
`
`
`
`
`
`
`the pateent gives twwo examples of that ppersonalizaation. In oone examplle, the pricce of
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`17
`
`
`
`
`
`
`pork bellies varies from person to person based on the supermarket that is nearest
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`that individual, the “spot” price of pork bellies, and the transportation costs to the
`
`customer. By accessing user specific information, the system is able to calculate
`
`an individualized pork belly price for each viewer of the cooking program. During
`
`a commercial break, an announcer promises to “deliver to you, at cost, all the pork
`
`you need to entertain five hundred people for this low, low price” -- at which point
`
`your personalized price appears on the screen. Using the patented invention, each
`
`subscriber can be shown a different, personalized price on his or her TV monitor.
`
`(’251 Patent, 252:19-38.)
`
`42. When the cooking show returns from the commercial break, the
`
`announcer says that the special ingredients for tonight’s show are available for
`
`delivery from a local supermarket chain. And, once again, the cooking show
`
`becomes a personalized experience. The system uses user specific information to
`
`determine the telephone number of the supermarket that is nearest your house, and
`
`the number of that supermarket is displayed on the screen. Other features of this
`
`example described in the patents include the ability for each subscriber to see
`
`different food choices based on their personal tastes (such as mild or spicy) and the
`
`ability to transmit a personalized shopping list back to the supermarket when the
`
`user enters a special code at the subscriber station. (’251 Patent, 253:65-254:33.)
`
`
`
`18
`
`
`
`
`
`
`
`43. As discussed above, the inventions in the ’251 Patent are explained
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`using numerous examples and platforms as illustrations, but, as the ’251 Patent
`
`also explains, the inventions are not limited to just those examples and platforms.
`
`The disclosed system has wide applicability, involving “the fields of computer
`
`processing, computer communications, television, radio, and other electronic
`
`communications. ” (’251 Patent, 1:20-27.) “The programming may be delivered
`
`by any means including over-the-air, hard-wire, and manual means. ” (’251
`
`Patent, 7:6-8.) The term “programming” is defined broadly: “The present
`
`invention consists of an integrated system of methods and apparatus for
`
`communicating programming. The term ‘programming’ refers to everything that is
`
`transmitted electronically to entertain, instruct, or inform, including television,
`
`radio, broadcast print, and computer programming was well as combined medium
`
`programming.” (’251 Patent, 6:24-29.)
`
`44. Further, a key feature of the disclosed inventions is expandability:
`
`“Yet another objective is expandability. As the operating capacities of computer
`
`hardware have grown in recent decades, increasingly sophisticated software
`
`systems have been developed to operate computers. Often incompatibilities have
`
`existed between newly developed operating system software and older generations
`
`of computer hardware. It is the objective of the system of signal composition of
`
`the present invention to have capacity for expanding to accommodate newly
`
`
`
`19
`
`
`
`
`
`
`developed subscriber station hardware while still serving older hardware
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`generations.” (’251 Patent, 22:54-63.)
`
`45. Flexibility is another key feature: “A central objective of the present
`
`invention is to provide flexibility in regard to installed station apparatus. At any
`
`given time, the system must have capacity for wide variation in individual station
`
`apparatus in order to provide individual subscribers the widest range of
`
`information options at the least cost in terms of installed equipment. Flexibility
`
`must exist for expanding the capacity of installed systems by means of transmitted
`
`software and for altering installed systems in a modular fashion by adding or
`
`removing components.” (’251 Patent, 9:5-14.)
`
`46. The inventors saw “great potential” in their disclosed inventions, and
`
`they believed that unlocking that potential would “add substantial richness and
`
`variety to the communication of ideas, information and entertainment.” (’251
`
`Patent, 1:52–1:67.) Their objective was “to unlock this great potential in the fullest
`
`measure.” ( ’251 Patent, 2:42-45.) The illustrations they used to show how that
`
`potential could be unlocked were “presented by way of example only. ” (’251
`
`Patent, 161:63, 286:67.) The invention was “not to be unduly restricted” by those
`
`examples “since modifications may be made in the structure of the various parts or
`
`in the methods of their functioning without functionally departing from the spirit of
`
`the invention.” (’251 Patent, 285:38-41.)
`
`
`
`20
`
`
`
`
`
`
`VI. BAKULA
`47.
`I have been asked to consider whether Bakula anticipates claims 18,
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`19, 22-24 and 28 of the ’251 Patent. As I describe below, I conclude that none of
`
`the claims are anticipated. I conclude that the Petitioner failed to demonstrate that
`
`Bakula – when understood from the perspective of a person of ordinary skill in the
`
`art at the time of the invention – discloses independent claim 1 of the ’251 Patent
`
`and its dependent claims.
`
`48. U.S. Patent 4,204,206 to Bakula et al. (“Bakula“) was filed on August
`
`30, 1977 and issued on May 20, 1980.
`
`49. Bakula describes a “video display terminal” allowing an editor to “call
`
`up a story entered into the data base storage,” “view the story on his display screen
`
`and make whatever editing corrections he requires,” and “actuate a send key” to
`
`cause the edited story to “be stored at the data base storage.” (Bakula, 4:3-25.)
`
`The terminal displays “data characters stored in main memory” by routing the data
`
`characters “to the character generator where the data characters are decoded to
`
`obtain the proper video dot pattern for display on the CRT screen.” (Bakula, 5:28-
`
`33.)
`
`A. Claim 18
`
`50. Claim 18 recites:
`
`
`
`21
`
`
`
`
`
`
`
`IPR2013-00171
`Patent No. 7,734,251 B1
`
`18. A method of outputting a video presentation at a receiver station,
`said method comprising the steps of:
`
` receiving at least one information transmission at said receiver
`station, said at least one information transmission including a first
`discrete signal and a second discrete signal;
`
`detecting said first discrete signal and said second discrete signal in
`said at least one information transmission;
`
`passing said detected at least one first discrete signal and said second
`discrete signal to at least one processor;
`
`organizing information included in said at least one first discrete
`signal with information included in said second discrete signal to
`provide an organized signal at said receiver station;
`
`generating an image in response to said organized signal by
`processing at least one user specific subscriber datum, said at least one
`user specific subscriber datum being stored at said receiver station
`prior to said step of organizing and based on information supplied by
`a user of said receiver station, said generated image including at least
`some information content that does not include any information from
`said discrete signals; and
`
`outputting said video presentation to said user, said video presentation
`comprising, firs