Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 18
`Entered: November 4, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00717
`Patent 6,108,686
`_______________
`
`
`Before BRIAN J. MCNAMARA, DAVID C. MCKONE,
`and FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 18
`Entered: November 4, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00717
`Patent 6,108,686
`_______________
`
`
`Before BRIAN J. MCNAMARA, DAVID C. MCKONE,
`and FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00717
`Patent 6,108,686
`
`
`I. INTRODUCTION
`
`A. Background
`
`Samsung Electronics Co., Ltd. (“Petitioner”) filed a Petition (Paper 1,
`
`“Pet.”) to institute an inter partes review of claims 1, 2, 20, 23, 29, and 30 of
`
`U.S. Patent No. 6,108,686 (Ex. 1001, “the ’686 patent”). Pet. 4. Samsung
`
`Electronics America, Inc., and Samsung Telecommunications America,
`
`LLC, are identified by Petitioner as real parties-in-interest.1 Pet. 1. Black
`
`Hills Media (“Patent Owner”) filed a Preliminary Response (Paper 9,
`
`“Prelim. Resp.”). Upon consideration of the Petition and Preliminary
`
`Response, we conclude, under 35 U.S.C. § 314(a), that Petitioner has shown
`
`a reasonable likelihood that it would prevail with respect to claims 1, 2, 20,
`
`23, 29, and 30. Accordingly, we institute an inter partes review of claims 1,
`
`2, 20, 23, 29, and 30 of the ’686 patent.
`
`
`
`B. Related Matters
`
`The ’686 patent has been asserted against multiple defendants in
`
`Black Hills Media, LLC v. Samsung Electronics Co., Ltd., No. 2-13-cv-
`
`00379 (E.D. Tex.). Pet. 1; Paper 5, at 2.
`
`The ’686 patent is also at issue in Black Hills Media, LLC v. Yamaha
`
`Corporation of American, No. 2:14-cv-00101 (C.D. Cal.); Black Hills
`
`Media, LLC v. Sonos, Inc., No. 2:14-cv-00486 (C.D. Cal); and Black Hills
`
`
`1 We previously granted-in-part Patent Owner’s Motion for Additional
`Discovery (Paper 15) on whether Petitioner should have identified Google,
`Inc., as a real party in interest. Paper 17.
`
` 2
`
`
`
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`IPR2014-00717
`Patent 6,108,686
`
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`Media, LLC v. Pioneer Electronics Inc., No. 2:14-cv-00471 (C.D. Cal).
`
`Paper 5, at 2.
`
`
`
`C. References Relied Upon
`
`Petitioner relies upon the following prior art references:
`
`Reilly et al., US 5,740,549, issued Apr. 14, 1998, filed June 12, 1995
`(Ex. 1003, “Reilly”)
`
`Jiri Weiss, New Places to Go Online, Vol. 14, No. 8, TECHNOLOGY &
`LEARNING 109–15 (May/June 1994) (Ex. 1004, “Technology &
`Learning”)
`
`
`
`D. The Asserted Grounds
`
`Petitioner contends that the challenged claims are unpatentable based
`
`on the following specific grounds (Pet. 4):
`
`References
`
`Reilly
`
`Reilly and Technology &
`Learning
`
`
`E. The ’686 Patent
`
`Basis
`
`Claims Challenged
`
`§ 102(e)
`
`§ 103(a)
`
`1, 2, 20, 23, 29,
`and 30
`1, 2, 20, 23, 29,
`and 30
`
`The ’686 patent is directed to techniques for retrieving information
`
`about a specific subject from remote databases. Ex. 1001, Abstract. At the
`
`time of the invention, high speed data connections were excessively
`
`expensive for many consumers, making it difficult to obtain information
`
`over the Internet and World Wide Web quickly. Id. at col. 1, ll. 12–39. The
`
`invention of the ’686 patent uses a search agent to retrieve information
`
`relating to a single, predefined subject, stores that information in a local
`
` 3
`
`
`
`
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`IPR2014-00717
`Patent 6,108,686
`
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`database, and allows a user to access the locally stored information. Id. at
`
`col. 2, ll. 8–23. Examples of subjects on which a user can seek information
`
`include news, cooking, weather, and sports. Id. at col. 3, ll. 40–43. The
`
`’686 patent terms such a system a subject-specific information retrieval and
`
`viewing system (“SIRViS”). Id. at Abstract.
`
`A SIRViS includes a graphical user interface (“GUI”) in cooperation
`
`with a search agent. Id. at col. 5, ll. 21–22. The GUI includes a control
`
`panel component and a content viewer component. Id. at col. 5, ll. 22–24.
`
`Figure 4 of the ’686 patent, reproduced below, illustrates an example of a
`
`SIRViS:
`
` 4
`
`
`
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`IPR2014-00717
`Patent 6,108,686
`
`
`
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`Figure 4 is a block diagram illustrating the functions of a SIRViS. Id. at
`
`col. 2, ll. 40–41.
`
`A user defines a set of search rules for a subject area (e.g., sports),
`
`using control panel 26. Ex. 1001, col. 5, ll. 24–28. The control panel
`
`component includes dialog boxes and other features, which, in a Windows-
`
`based environment, allow a user to enter, using a mouse, touchpad, etc., a set
`
` 5
`
`
`
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`IPR2014-00717
`Patent 6,108,686
`
`
`of search rules that define the type of information the user wants to access.
`
`Id. at col. 5, ll. 24–38. Control panel 26 maintains dataset 40 containing the
`
`search rules for the user and other users. Id. at col. 6, ll. 50–52. For
`
`example, each member of a family can define his or her own search rules for
`
`accessing information on the family’s personal computer. Id. at col. 5,
`
`ll. 27–30. To retrieve the subject-based information for the user, search
`
`agent 25 accesses dataset 40, selects the rules defined by the user, retrieves
`
`information relating to the subject (e.g., sports) from remote database 34,
`
`and stores the retrieved information in local database 30. Id. at col. 6, ll. 53–
`
`57.
`
`Search agent 25 can perform the search periodically, at scheduled
`
`times, or directly in response to a user request. Id. at col. 6, ll. 61–65. When
`
`the user wants to access the information, content viewer 27 retrieves the
`
`user’s stored information from local database 30 and displays it to the user in
`
`a Windows-based environment. Id. at col. 6, ll. 14–24, 40–45.
`
`
`
`Claim 1, reproduced below, is illustrative of the claimed subject
`
`matter:
`
`1. A device for providing a plurality of local
`users with information stored remotely on a
`network, the device comprising:
`
`a rule generation unit configured to define,
`for each of the plurality of local users,
`a set of search rules applicable to a
`predefined subject; and
`
`retrieve
`to
`a search agent configured
`information on only the predefined
`subject from a database on
`the
`network based on each set of search
`
` 6
`
`
`
`
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`
`
`IPR2014-00717
`Patent 6,108,686
`
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`the retrieved
`to store
`rules and
`information in a local database.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`As a step in our analysis for determining whether to institute a trial,
`
`we determine the meaning of the claims. The Board interprets claims of an
`
`unexpired patent using the broadest reasonable construction. See 37 C.F.R.
`
`§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, at
`
`48,766. Claim terms generally are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007).
`
`Petitioner proposes constructions of the terms “rule generation unit,”
`
`“search agent,” “to store the retrieved information,” “storing the retrieved
`
`information,” “user interface,” “using the computer system to receive the set
`
`of user inputs from said one of the local users,” and “using the computer
`
`system to output the information to said one of the local users.” For
`
`purposes of this decision, however, no term in claims 1, 2, 20, 23, 29, and 30
`
`requires express construction at this time.
`
`
`
`
`
`B. Asserted Grounds of Unpatentability
`
`1. Cited Prior Art
`
`a. Reilly
`
`Reilly describes a system for matching information to subscribers’
`
`interests, retrieving the information, and displaying the information, together
`
` 7
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`IPR2014-00717
`Patent 6,108,686
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`with advertisements, in screen savers on the subscribers’ computers.
`
`Ex. 1003, col. 1, ll. 4–10; col. 5, ll. 20–23.
`
`Figure 1 of Reilly, reproduced below, illustrates an example:
`
`
`
`Figure 1 is a block diagram of an information and advertising distribution
`
`system. Ex. 1003, col. 3, ll. 30–32. Several subscriber computers, or clients
`
`102, are connected to information server 104 via the Internet 119. Id. at
`
`col. 4, ll. 8–10. Additional clients are connected to local area network
`
`(“LAN”) server 108 on LAN 106, and LAN server 108 is connected to
`
` 8
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`IPR2014-00717
`Patent 6,108,686
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`information server 104 via the Internet 119. Petitioner focuses particularly
`
`on this LAN embodiment, as will be explained below.
`
`
`
`Information server 104 includes newswire interface 120 that receives
`
`news feeds from services such as the Associated Press (“AP”), the DOW
`
`news feed, and sports news feeds. Id. at col. 4, ll. 28–31. Information editor
`
`130 edits and formats the received news items into a form suitable to
`
`distribute to subscribers and stores the formatted items in information
`
`database 134. Id. at col. 4, ll. 31–38. Information editor 130 assigns each
`
`news item to an information category and, in some instances, a sub-category.
`
`Id. at col. 4, ll. 39–42. Information database 134 also stores advertisements
`
`138, which also are assigned to information categories. Id. at col. 4, l. 66–
`
`col. 5, l. 1.
`
`
`
`Each client 102 (or in the case of clients networked together in LAN
`
`106, the LAN server 108) includes category managers. Id. at col. 6, ll. 62–
`
`67. There can be a separate category manager for each information
`
`category. Id. at col. 7, ll. 3–6. Each category manager includes a category
`
`profiler, which presents a dialog box to a subscriber to determine whether
`
`the subscriber is interested in specific subcategories (e.g., by selecting and
`
`deselecting boxes corresponding to specific sports or specific sports teams,
`
`as shown in Figure 5). Id. at col. 7, ll. 13–18; col. 9, ll. 36–57. The
`
`categories selected by the subscriber are stored in a category profile data
`
`structure. Id. at col. 7, ll. 18–20; col. 9, ll. 58–61.
`
`
`
`A subscriber computer connects to the information server at a time
`
`that the subscriber is not likely to be using the computer (e.g., once in the
`
`middle of the night) or periodically (e.g., every four hours) to download
`
`news items and advertisements, which then are stored in the subscriber
`
` 9
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`IPR2014-00717
`Patent 6,108,686
`
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`computer’s local information database. Id. at col. 8, ll. 19–31. In the case of
`
`a LAN server serving several clients, the LAN server downloads news items
`
`and advertisements for all of the clients and stores them on its local
`
`database. Id. at col. 15, ll. 19–27. When an individual subscriber on a client
`
`computer of the LAN wants to view news items, the news items are filtered
`
`according to the subscriber’s user profile and the subscriber is presented
`
`with only those items and advertisements that match the profile. Id. at
`
`col. 15, ll. 27–39.
`
`
`
`For a particular subscriber, a screen saver program displays news
`
`items and advertisements (e.g., as shown in Figure 6). Id. at col. 11, ll. 40–
`
`52. Advertisements are displayed on subscribers’ workstations
`
`simultaneously with news items that have been assigned to the same
`
`category. Id. at col. 5, ll. 1–4. If the subscriber wants to read a particular
`
`news item, the subscriber can give a command (e.g., click on the news item
`
`with the mouse), after which a data viewer (Figure 2, data viewer 208, and
`
`Figure 10) is launched to display the full news story associated with the
`
`news item. Id. at col. 9, ll. 11–17; col. 13, ll. 29–37.
`
`
`
`b. Technology & Learning
`
`Technology & Learning describes products offered by PRODIGY and
`
`Scholastic on which classroom users search for and display information.
`
`Ex. 1004, at 109. Petitioner cites Technology & Learning for its description
`
`of different business models described for presenting information in a
`
`classroom. Pet. 20–21. For example, according to Technology & Learning,
`
`the Classroom PRODIGY product charged a user fee but blocked the display
`
`of advertisements. Ex. 1004, at 109, 114. In contrast, the Scholastic
`
`
`
`
`10
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`
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`IPR2014-00717
`Patent 6,108,686
`
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`Network displayed advertisements and charged a user fee, although a
`
`smaller user fee than Classroom PRODIGY. Id. at 110.
`
`
`
`2. Anticipation by Reilly
`
`Petitioner contends that Reilly anticipates claims 1, 2, 20, 23, 29,
`
`and 30. Pet. 42. Regarding claim 1, Petitioner contends that Reilly’s LAN
`
`server 108 is a “device for providing a plurality of local users with
`
`information stored remotely on a network.” Pet. 21–22, 43. According to
`
`Petitioner, the clients in LAN 106 are the plurality of local users. Id.
`
`Petitioner further contends that Reilly’s category profiler is a “rule
`
`generation unit,” the data structure the category profiler generates is a “set of
`
`search rules,” and Reilly’s example category “football” corresponds to a
`
`“predefined subject.” Id. at 22, 44–45.
`
`Petitioner also contends that Reilly describes LAN server 108 as
`
`configured to retrieve news items and advertisements relating to a category
`
`selected by a subscriber and, thus, includes “a search agent configured to
`
`retrieve information on . . . the predefined subject from a database on the
`
`network based on each set of search rules.” Id. at 23, 45–46. Petitioner
`
`argues that because both the news items and advertisements retrieved by
`
`LAN server 108 relate to the same subject (e.g., “football”), the search agent
`
`of the LAN server retrieves information “on only the predefined subject.”
`
`Id. at 22. Petitioner contends that LAN server 108, when it downloads news
`
`items into its local database, “store[s] the retrieved information in a local
`
`database.” Id. at 23, 45–46.
`
`Regarding claim 2, Petitioner contends that Reilly’s data viewer 208,
`
`implemented on LAN server 108, is a “user interface” that enables Reilly’s
`
`
`
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`11
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`IPR2014-00717
`Patent 6,108,686
`
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`subscribers to access the information associated with the search rules from
`
`the LAN server’s local database. Pet. 46.
`
`Regarding claims 20 and 23, Petitioner makes substantially the same
`
`contentions as it does for claim 1. Pet. 46–50. Regarding claims 29 and 30,
`
`Petitioner makes substantially the same contentions as it does for claims 1
`
`and 2. Pet. 51–57.
`
`Based on our consideration of the evidence in the Petition and
`
`included claim charts (Pet. 21–25, 42–57) and the Declaration of Dr. Kevin
`
`C. Almeroth (Ex. 1005 ¶¶ 26–35), we are persuaded that Petitioner has made
`
`a threshold showing that Reilly discloses the limitations of claims 1, 2, 20,
`
`23, 29, and 30. Patent Owner does not present in the Preliminary Response
`
`any argument regarding Reilly’s disclosure for this ground. Prelim. Resp. 2.
`
`On this record, Petitioner has demonstrated a reasonable likelihood that it
`
`would prevail in showing that Reilly anticipates claims 1, 2, 20, 23, 29,
`
`and 30.
`
`
`
`3. Obviousness over Reilly and Technology & Learning
`
`Petitioner contends that claims 1, 2, 20, 23, 29, and 30 would have
`
`been obvious over Reilly and Technology & Learning. Pet. 25. Petitioner
`
`raises this ground in the event that Reilly’s “news” and “advertisements” are
`
`interpreted as separate subjects (as opposed to items corresponding to a
`
`single subject, such as news and advertisements relating to “football,” as
`
`detailed above in Petitioner’s anticipation allegations). Pet. 22, 25–26, 30–
`
`31. If news and advertisements are separate subjects, Reilly’s LAN server is
`
`not “configured to retrieve information on only the predefined subject.” Id.
`
`
`
`12
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`IPR2014-00717
`Patent 6,108,686
`
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`According to Petitioner, based on the disclosure in Technology &
`
`Learning, a person of ordinary skill in the art, applying Reilly’s system in
`
`other contexts, such as education, would have considered other revenue
`
`models that eliminated advertisements. Id. at 26–27. Using that model,
`
`Reilly’s LAN server would retrieve only news and not advertisements, and,
`
`thus, would be configured to retrieve information on “only the predefined
`
`subject,” as recited in claim 1, and similarly recited in claims 20 and 29.
`
`Id. at 27, 34–35, 38–39. Regarding the remaining limitations of claims 1, 2,
`
`20, 23, 29, and 30, Petitioner applies Reilly in the same manner as in its
`
`anticipation allegations described above. Pet. 27–42.
`
`Patent Owner argues that Petitioner’s proposed modification of Reilly
`
`would have rendered it unsatisfactory for its intended purpose. Prelim.
`
`Resp. 5. According to Patent Owner, Reilly’s entire disclosure, and thus its
`
`intended purpose, is directed to a system for distributing advertising with
`
`information. Id. at 5–7. For example, Patent Owner cites to the Abstract
`
`and Summary of the Invention of Reilly as referring to “an information and
`
`advertising distribution system.” Id. at 6 (quoting Ex. 1003, Abstract and
`
`col. 2, ll. 62–63).
`
`We are not persuaded by Patent Owner’s argument. “A reference may
`
`be read for all that it teaches, including uses beyond its primary purpose.”
`
`In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012). For the reasons Patent
`
`Owner gives, delivering information and advertising together is one purpose
`
`of Reilly’s invention. See, e.g., Ex. 1003, col. 1, ll. 46–52. However,
`
`another purpose of Reilly’s invention is to address the problem of delivering
`
`the content generally associated with news magazines and television
`
`(including text, graphics, and animation) while facing communications
`
`
`
`
`13
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`IPR2014-00717
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`bandwidth constraints. Id. at col. 2, ll. 4–16. We are not persuaded that this
`
`purpose of Reilly would have been defeated by eliminating advertising.
`
`Patent Owner also contends that a person of ordinary skill in the art
`
`would not have had reason to consider different revenue models for the
`
`system described in Reilly. Prelim. Resp. 8. According to Patent Owner,
`
`Petitioner’s own statement of the level of skill of an ordinarily skilled artisan
`
`lacks any mention of education or experience related to revenue models.
`
`Id. at 9. Patent Owner argues that the skill set of an artisan in the computer
`
`sciences and the skill set of an artisan in the field of revenue models would
`
`have been very different. Id. at 10. Similarly, Patent Owner contends that
`
`Petitioner’s declarant, Dr. Almeroth, lacks a background in business and
`
`revenue models and, hence, his opinions should be given little weight. Id. at
`
`12–14.
`
`Petitioner and Dr. Almeroth, however, do not rely simply on the
`
`knowledge and background of an ordinarily skilled artisan to show how
`
`different revenue models could be applied in a classroom setting. Rather,
`
`Petitioner cites to Technology & Learning, which explicitly describes the
`
`revenue models used by Classroom PRODIGY and Scholastic Network.
`
`Pet. 26–27 (citing Ex. 1004, 109–10, 114); Ex. 1005 ¶ 39. Indeed,
`
`Technology & Learning gives a reason to eliminate advertising, namely,
`
`“barring kids from material parents and educators may find objectionable.”
`
`Ex. 1004, 109. Dr. Almeroth also explains that such a modification to Reilly
`
`would have been easy to implement as it would have involved only the
`
`removal of a feature. Ex. 1005 ¶ 41. On this record, Petitioner has shown
`
`that a skilled artisan would have had reason to apply the teachings of
`
`Technology & Learning to Reilly and would have had the skill to do so.
`
`
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`IPR2014-00717
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`In sum, on this record, Petitioner has demonstrated a reasonable
`
`likelihood that it would prevail in showing that claims 1, 2, 20, 23, 29,
`
`and 30 would have been obvious over Reilly and Technology & Learning.
`
`
`
`III. CONCLUSION
`
`We institute an inter partes review of claims 1, 2, 20, 23, 29, and 30.
`
`The Board has not yet made a final determination of the patentability of
`
`these claims or the construction of any claim term.
`
`
`
`IV. ORDER
`
`For the reasons given, it is
`
`ORDERED that inter partes review is instituted as to claims 1, 2, 20,
`
`23, 29, and 30 on the following grounds:
`
`(1) Claims 1, 2, 20, 23, 29, and 30 under 35 U.S.C. § 102(e) as
`
`anticipated by Reilly; and
`
`(2) Claims 1, 2, 20, 23, 29, and 30 under 35 U.S.C. § 103(a) as
`
`obvious over Reilly and Technology & Learning.
`
`No other ground is authorized;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ʼ686 patent is hereby instituted commencing on the
`
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`
`§ 42.4, notice is hereby given of the institution of a trial; and
`
`FURTHER ORDERED that an Initial Conference Call is scheduled
`
`for Thursday, November 20, 2014, at 4:00 p.m. Eastern time. The parties
`
`should be prepared to discuss whether and how to coordinate the oral
`
`
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`15
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`IPR2014-00717
`Patent 6,108,686
`
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`arguments, if necessary, for the inter partes review proceedings initiated by
`
`Petitioner against Patent Owner. After the Initial Conference Call, the Board
`
`will issue a Scheduling Order in due course.
`
`
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`16
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`IPR2014-00717
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`PETITIONER:
`
`Andrea Reister
`Gregory Discher
`COVINGTON & BURLING LLP
`areister@cov.com
`gdischer@cov.com
`
`PATENT OWNER:
`
`Andrew Crain
`Vivek Ganti
`THOMAS | HORSTEMEYER, LLP
`Andrew.crain@thomashorstemeyer.com
`Vivek.ganti@thomashorstemeyer.com
`
`
`
`
`17
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`
`
`
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