Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 7
`Filed: March 26, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMAZON.COM, INC. and AMAZON WEB SERVICES, LLC,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-01533
`Patent 7,805,749
`_______________
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`APPLE EX. 1011
`Page 1
`
`
`571.272.7822
`
`
`Paper No. 7
`Filed: March 26, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMAZON.COM, INC. and AMAZON WEB SERVICES, LLC,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-01533
`Patent 7,805,749
`_______________
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`APPLE EX. 1011
`Page 1
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`IPR2014-01533
`Patent 7,805,749
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`
`I.
`
`INTRODUCTION
`
`A. Background
`Amazon.Com, Inc. and Amazon Web Services, LLC (“Petitioner”)
`filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of claims
`2, 3, 9–13, 18, 24, 49, 52, and 53 of U.S. Patent No. 7,805,749 (Ex. 1001,
`“the ’749 patent”). Personalized Media Communications, LLC (“Patent
`Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes
`review may not be instituted “unless . . . there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.”
`Upon consideration of the Petition and Patent Owner’s Preliminary
`Response and the associated evidence, we conclude Petitioner has
`established a reasonable likelihood it would prevail with respect to at least
`one of the challenged claims. Accordingly, for the reasons that follow, we
`institute an inter partes review.
`B. Related Proceedings
`Petitioner informs us that the ’749 patent is the subject of a lawsuit:
`Personalized Media Commc’ns, LLC v. Amazon.com, Inc., No. 1:13-cv-
`1608-RGA (D. Del. filed Sept. 23, 2013). Pet. 1. Petitioner also informs us
`that six patents related to the ’749 patent are the subject of concurrently-filed
`petitions for inter partes review. Id.; see IPR2014-01527, IPR2014-01528,
`IPR2014-01530, IPR2014-01531, IPR2014-01532, and IPR2014-01534.
`
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`C. The ’749 Patent
`The ’749 patent discloses a system for using embedded signals to
`deliver personalized program content to a subscriber station. Ex. 1001,
`7:47–48; 15:14–46. One embodiment of the disclosed system is illustrated
`in Figure 7, and is reproduced below.
`
`
`
`Figure 7 shows that TV set 202, printer 221, and local input device 225 are
`connected to a system that includes micro-computer 205 and signal
`processor 200. Id. at 242:31–59. The ’749 patent describes personalized
`content being delivered to a subscriber substation by transmission of a
`message, which can be encrypted and decrypted. Id. at 246:26–29. The
`content is decrypted using a decryptor that is provided with the personalized
`content-containing message. Id. at 15:21–27. Personalized content can be
`
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`sent to and coordinated through computers, television, and printers. Id. at
`241:57–60.
`Another embodiment of the ’749 patent describes a subscriber
`watching a television program called “Exotic Meals of India.” Id. at
`241:50–246:58. According to the ’749 patent, mid-way through the program
`“Exotic Meals of India,” subscribers are offered a print out of the recipe and
`shopping list of the meal that is being prepared on the show. Subscribers are
`prompted to enter a code, TV567#, into a local input device. Id. at 242:63–
`749:23. A receiver station receives the code, and accesses preprogrammed
`information (including “particular program unit information and TV567#
`information”) that is stored in a buffer at microcomputer 205. Id. at 241:61–
`65; 749:24–56; Figs. 7, 7F. One minute later, the program originating studio
`embeds a second signal that includes “unit code identification information
`that identifies the programming of the information segment of said message”
`and a computer program for generating a user-specific recipe. Id. at 243:60–
`244:3. Receipt of this second signal causes the receiver stations where the
`TV567# code was entered to execute the program (instructions) to generate a
`user-specific recipe. Id. at 244:4–59. The’749 patent states that the
`information of the second message, i.e., the message containing the
`instructions for generating the recipe and shopping list, “can be encrypted
`and caused to be decrypted in any of the methods described above—for
`example, in the method of the first message of example #4.” Id. at 246:26–
`29.
`
`Example #4 of the ’749 patent specifically provides a process for
`decrypting a message in which a receiver station selects a “program unit
`
`
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`APPLE EX. 1011
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`identification code,” selects preprogrammed key information, decrypts a
`message using a key, and stores the program unit information and decryption
`key information in a “meter record” at a recorder. Id. at 102:25–117:2. The
`information in the record is transferred to a remote billing station via a
`telephone connection. Id. at 48:45–60.
`D. Illustrative Claim
`As noted above, Petitioner challenges claims 2, 3, 9–13, 18, 24, 49,
`52, and 53 of the ’749 patent, of which claims 2, 18, and 49 are the only
`independent claims. Claim 2 is illustrative of the challenged claims and is
`reproduced below:
`2. A method for mass medium programming promotion and delivery for
`use with an interactive video viewing apparatus comprising the steps
`of:
`receiving a first portion of said mass medium programming in a first
`programming signal, said first portion of mass medium
`programming including a video image that promotes a second
`portion of said mass medium programming;
`displaying said video image, said interactive video viewing apparatus
`having an input device to receive input from a subscriber;
`prompting said subscriber for a reply, during said step of displaying
`said video image, as to whether said subscriber wants said second
`portion of said mass medium programming promoted in said step
`of displaying of said video image, said interactive video viewing
`apparatus having a transmitter for communicating said reply to a
`remote site;
`receiving said reply from said subscriber at said input device in
`response to said step of prompting said subscriber, said interactive
`video viewing apparatus having a processor for processing said
`reply;
`processing said reply and selecting at least one of a code and a datum
`designating said second portion of said mass medium
`5
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`APPLE EX. 1011
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`
`Date
`Apr. 19, 1988
`Aug. 20, 1985
`1980
`
`Exhibit
`1005
`1006
`1014
`
`programming to authorize delivery of said second portion of said
`mass medium programming;
`communicating said selected at least one of a code and a datum to a
`remote site;
`receiving said second portion of said mass medium programming in a
`second programming signal;
`decrypting said second portion of said mass medium programming by
`using said at least one of a code and a datum in response to said
`step of processing said reply; and
`delivering said mass medium programming to an output device.
`
`E. The Evidence of Record
`Petitioner relies upon the following references, as well as the
`Declaration of Michael O. Slinn (Ex. 1004):
`Reference
`Patent/Printed Publication
`US Patent No. 4,739,510
`Jeffers
`Campbell
`US Patent No. 4,536,791
`Chris Powell, Prestel: the
`Powell
`Opportunity for Advertising,
`VIEWDATA AND
`VIDEOTEXT 1980-81:
`AWORLDWIDE REPORT
`US Patent No. 4,337,483
`
`Guillou
`
`June 29, 1982
`
`1022
`
`F. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 2, 3, 9–13, 18, 24, 49,
`52, and 53 of the ’749 patent based on the following grounds:
`Reference(s)
`Basis
`Claims Challenged
`§ 102
`2, 3, 9–13, 18, 24, 49, 52, and
`53
`
`Jeffers
`
`
`
`6
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`
`Reference(s)
`Campbell
`
`Powell and Guillou
`
`
`
`Basis
`§ 103
`
`§ 103
`
`Claims Challenged
`2, 3, 9–13, 18, 24, 49, 52, and
`53
`2, 3, 9–13, 18, 24, 49, 52, and
`53
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`In re Cuozzo Speed Technologies, LLC, No. 2014-1301, 2015 WL 448667,
`at *6 (Fed. Cir. Feb. 4, 2015). Under that standard, and absent any special
`definitions, we give claim terms their ordinary and customary meaning, as
`would be understood by one of ordinary skill in the art at the time of the
`invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`
`Independent claims 2, 18, and 49 each recite “decrypting.” Petitioner
`contends the term should be construed broadly so as include analog
`descrambling. Pet. 17. According to Petitioner, any assertion that the term
`“decrypting” does not include analog descrambling directly contradicts the
`Specification of the ’749 patent. Id. Petitioner cites to the Specification,
`which discloses the following:
`It is obvious to one of ordinary skill in the art that the foregoing
`is presented by way of example only and that the invention is
`not to be unduly restricted thereby since modifications may be
`made in the structure of the various parts without functionally
`departing from the spirit of the invention. . . . [F]or example,
`the ‘Wall Street Week’ transmission may be of conventional
`7
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`APPLE EX. 1011
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`
`analog television, and the decryptors, 107, 224, and 231, may
`be conventional descramblers, well[] known in the art, that
`descramble analog television transmissions and are actuated by
`receiving digital key information.
`
`
`Id. (citing Ex. 1001, 161:16–31). Petitioner, thus, concludes that a person of
`ordinary skill in the art at the time of the alleged invention would have
`understood the broadest reasonable construction of the claim limitation
`“decrypting” to include both decrypting digital information and
`descrambling analog signals. Id. at 17 (citing Ex. 1004 ¶ 38).
`Patent Owner contests Petitioner’s proposed claim construction,
`explaining that “descrambling” is not within the scope of the claim term and
`to construe it to include such action is unreasonably broad. Prelim. Resp.
`14. Patent Owner argues that “decrypting” should be construed as “a device
`or method that uses a digital key in conjunction with an associated
`mathematical algorithm to decipher (render intelligible or usable) digital
`data.” Id. Patent Owner relies, in part, on a prior Board decision involving a
`related patent (which also discloses the same specification as the ’749
`patent) that construes the term “decryption” as referring to operations on
`digital data and not encompassing the descrambling of analog television
`transmissions. Id. (citing Ex. 1026, 67–68).
`The Board in the prior decision found that (1) interpreting a decryptor
`as a decoder would be an improper broadening of the claim term and
`(2) interpreting decryption to be applicable to analog signals was not
`supported by the specification. Ex. 1026, 68. Specifically, the Board stated:
`[E]ven if the use of decryption, at the time of filing of the
`instant invention, would have been understood to include
`decryption of analog signals, there is nothing in the instant
`8
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`APPLE EX. 1011
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`
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`Id.
`
`Specification that would guide such an interpretation. In
`interpretation of claim
`terms,
`the broadest
`reasonable
`interpretation should be applied, but such an interpretation
`cannot be divorced from the Specification.
`
`Although the Specification of the ’749 patent uses the term
`“decryption” in connection with analog descrambling (Ex. 1001, 161:16–
`31), Patent Owner argues that the Specification actually indicates a
`distinction between the decryption and descrambling. Prelim. Resp. 17.
`According to Patent Owner, the cited disclosure is “an alternate embodiment
`where descrambling is performed using descramblers because the digital
`television programming content has been replaced with analog television.”
`Id. In contrast, the main embodiment described in Example #7 of the
`Specification, the content is sent to a digital television and the system uses
`decryptors to decrypt digital content. Id. (citing Ex. 1001, 149:50–62).
`Thus, Patent Owner concludes that decryption is distinct from and does not
`encompass descrambling. Prelim. Resp. 17.
`We are charged with interpreted claim terms according to their
`broadest reasonable construction in light of the specification of the patent in
`which they appear. 37 C.F.R. § 42.100(b). As a general rule, “there is a
`strong presumption against a claim construction that excludes a disclosed
`embodiment.” See In re Katz Interactive Call Processing Patent Litig.,
`639 F.3d 1303, 1324 (Fed. Cir. 2011). Several exceptions to this
`presumption apply. For example, a claim may be interpreted to exclude
`embodiments “where those embodiments are clearly disclaimed in the
`specification . . . or prosecution history.” Oatey Co. v. IPS Corp., 514 F.3d
`
`
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`1271, 1277 (Fed. Cir. 2008). Similarly, where the disputed term is not
`present in the other independent claims of the patent-in-suit, it is permissible
`to construe the term so as to exclude an embodiment. This is because the
`other claim terms “leave[] open the possibility that claims not at issue in [the
`claim construction] encompass omitted embodiments.” Helmsderfer v.
`Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir. 2008).
`Otherwise, “where claims can reasonably [be] interpreted to include a
`specific embodiment, it is incorrect to construe the claims to exclude that
`embodiment, absent probative evidence [to] the contrary.” Oatey Co.,
`514 F.3d at 1277.
`In this case, the disclosure in the ’749 patent states that “decryptors,
`107, 224, and 231, may be conventional descramblers” and may be used to
`descramble content for analog televisions, and we are not persuaded of any
`disclaimer in the Specification (Ex. 1001) or prosecution history (Ex. 1003)
`that the alleged invention should not encompass such an embodiment.
`Ex. 1001, 161:28–29 (emphasis added). Additionally, the term “decrypting”
`is present in all independent claims1, appearing to foreclose the possibility
`that unchallenged claims encompass the alternative embodiment.2
`
`
`1 Unchallenged independent claims 1, 15, 17, 25, and 26 recite varying
`forms of “decrypt,” “decrypter,” “decrypting,” and “decryption.” Ex. 1001,
`286:61–292:50.
`2 We note that claims 30 and 48 recite the term “decoding.” Ex. 1001,
`293:8–15; 295:24–32. We are not persuaded that the term “decoding”
`encompasses the embodiment directed to analog descrambling, because
`(1) claims 30 and 48 depend from claims that recite “decrypting” and (2) the
`
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`10
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`Accordingly, we find the broadest reasonable construction of
`“decryption,” for purposes of this decision, to encompass analog
`descrambling.
`B. Priority of the Challenged Claims
`Depending on the priority date for the ’749 patent with respect to all
`challenged claims, the prior art status of Jeffers and Campbell, respectively
`as prior art under 35 U.S.C. § 102 and § 103, is at issue. For reasons that
`follow, we find that the ’749 patent is entitled to a filing date of November
`3, 1981. Thus, Jeffers and Campbell do not qualify as prior art under 35
`U.S.C. § 102.
`Petitioner contends that the earliest priority date for the ’749 patent is
`September 11, 1987. Pet. 12. The ’749 patent was filed as a CIP application
`through a chain of continuing applications ultimately having a filing date of
`November 3, 1981 –– the filing date of the earliest-filed ancestor patent in
`the chain, U.S. Patent No. 4,694,490. See Ex. 1002 (“the ’490 patent”).
`According to Petitioner, the ’490 patent expressly limits the term
`“programming” to mean “everything transmitted over television or radio
`intended for communication of entertainment or to instruct or inform” (Pet.
`13 (citing Ex. 1002, Abstract)), while the later filed 1987 Specification
`redefines “programming” to mean “everything that is transmitted
`electronically to entertain, instruct or inform, including television, radio,
`broadcast print, and computer programming as well as combined medium
`
`
`Specification describes a decoder (203) as a partner component to a
`decrypting microcomputer (205). Id. at 282:39–51; Figs. 7–7F.
`
`
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`programming” (Pet. 13 (citing Ex. 1001, 6:28–32)). Petitioner contends that
`the scope of the term “programming,” as used in the ’749 patent, relies on
`new matter from the 1987 Specification and does not have written
`description support in the ’490 patent. Id. at 14. Petitioner relies on the
`holding in PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306–
`1311 (Fed. Cir. 2008), to support its position that “[w]here a claim term
`would receive a broader or more inclusive claim construction in view of the
`later specification which includes new matter, the claim is not entitled to the
`earlier filing date.” Pet. 12.
`The Federal Circuit in PowerOasis, Inc., 522 F.3d 1299, found that
`claims asserted from a continuation-in-part (“CIP”) application were not
`entitled to an effective filing date of the original application, because the CIP
`added language describing a vending machine with a user interface located
`remotely from the vending machine, such as on a user’s laptop, while the
`original application only disclosed a user interface that was part of a unitary
`vending machine. Id. at 1306. Although the original application disclosed
`multiple embodiments of a “user interface,” all such embodiments made a
`user interface part of a unitary vending machine apparatus, and thus, did not
`support claims directed to a user interface located remotely from a vending
`machine. Id. Petitioner argues that the facts in PowerOasis are similar to the
`present case, thus, Petitioner argues that the claims at issue in the ’749 patent
`cannot obtain the benefit of the 1981 filing date. Pet. 13.
`Patent Owner contests Petitioner’s position and argues that the
`priority date of the ’749 patent is the November 3, 1981 filing date of the
`’490 patent. Prelim. Resp. 9–10. According to Patent Owner, Petitioner’s
`
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`analysis that compares the disclosures of the 1981 and 1987 Specification is
`improper, and the proper standard to determine priority of a patent claim is
`whether the claimed invention is supported in the earlier application as
`required by 35 U.S.C. § 120 and § 112. Id. at 10 (citing Thenna-Tru Corp.
`v. Peachtree Doors Inc., 44 F.3d 988, 992 (Fed. Cir. 1995)). Patent Owner
`further argues that the Board, in prior decisions relating to the ’749 patent,
`has rejected Petitioner’s priority framework as legally improper. Id. at 10–
`11 (citing Exs. 1026, 1027). Patent Owner concludes that 1981
`Specification supports every element of the challenged claims, and thus, the
`claims are entitled to the filing date of the 1981 Specification. Id. at 12.
`Despite the differences in their posture, Patent Owner and Petitioner
`appear to agree that a patent application is entitled to the benefit of the filing
`date of an earlier filed application if the disclosure of the earlier application
`provides written description support for the claims of the later application.
`See PowerOasis, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (citing In re
`Chu, 66 F.3d 292, 297 (Fed. Cir. 1995)); see also Augustine Med., Inc. v.
`Gaymar Indus., Inc., 181 F.3d 1291, 1302–03 (Fed.Cir.1999) (“Different
`claims of [a CIP] application may therefore receive different effective filing
`dates. . . . Subject matter that arises for the first time in [a] CIP application
`does not receive the benefit of the filing date of the parent application.”).
`To satisfy the written description requirement, the disclosure of the
`prior application must “convey with reasonable clarity to those skilled in the
`art that, as of the filing date sought, [the inventor] was in possession of the
`invention.” Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64
`(Fed.Cir.1991) (emphasis in original). The disclosure, however, does not
`
`
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`have to contain precisely the same words as found in the asserted claims in
`order to provide written description support. Ralston Purina Co. v. Far–
`Mar–Co, Inc., 772 F.2d 1570, 1573 (Fed.Cir.1985); see also Purdue Pharma
`LP v. Faulding Inc., 230 F.3d 1320, 1323 (Fed.Cir.2000) (The disclosure
`does not have to provide in haec verba support in order to satisfy the written
`description requirement.).
`In the present case, Patent Owner has added to and altered material in
`the 1981 Specification resulting in the 1987 Specification. Compare Ex.
`1001 (’749 Specification resulting from the 1987 disclosure with 296
`columns), with Ex. 1002 (’490 Specification resulting from the 1981
`disclosure with 24 columns). Patent Owner also has broadened the scope of
`the term “programming” from “everything transmitted over television or
`radio” (Ex. 1002, Abstract) to “everything that is transmitted electronically”
`(Ex. 1001, 6:28–32). Yet, the 1981 Specification teaches that the claims are
`directed to more than just television and radio broadcasts, explicitly stating
`that
`
`[t]he signal processor apparatus described here is configured to
`receive broadcast TV transmissions and cablecast TV and radio
`transmissions. Were it desirable to process signals in other
`transmissions such as broadcast microwave transmissions or
`cablecast transmissions on other than standard TV and radio
`frequencies, the mixers and switches would be appropriately
`reconfigured and one or more other signal decoders as
`described in FIG. 2C would be added.
`
`Ex. 1002, 7:22–30.
`
`Additionally, there is disclosure in the 1981 Specification that
`supports the challenged claims, because there is an embodiment directed to a
`
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`program with two parts, where the second part of the program is requested
`by a user, and then decrypted and delivered to the user. Ex. 1002, 20:16–68.
`Specifically, the 1981 Specification teaches about a viewer watching a
`television program on cooking techniques, where “[h]alfway through the
`program, the host says, ‘If you are interested in cooking what we are
`preparing here and want a printed copy of the recipe for a charge of only 10
`cents, press 567.’” Id. at 20:19–23. A user can then press 567 on their input
`device. Five minutes later, another signal is transmitted that determines
`whether “567” has been entered by the user, and if so, the tuner tunes the
`cable converter box to the appropriate channel to receive the recipe in
`encoded form. Id. at 20:28–38. When the encrypted recipe is received, a
`“signal word” (e.g., a decryption key) is passed to a processor, which uses
`the signal word to decrypt the recipe. Id. at 20:38–43. The processor then
`“conveys to its data recorder, 16, information that the 567 order was placed
`by the viewer and all necessary equipment was enabled.” Id. at 20:43–47.
`The signal processor subsequently transfers the data in its data recorder via
`telephone to a remote site for billing purposes, which can determine that the
`recipe was received. Id. at 20:55–59.
`Based on these disclosures, we are persuaded on this record that the
`1981 Specification discloses the disputed element of the challenged claims,
`thus, providing written description support for the claims as challenged.
`Petitioner argues that the cooking show example in the 1981
`Specification “is neither incorporated by reference nor copied in the [1987]
`patent. Instead, the applicants included a different embodiment, in which
`the cooking show is the ‘Exotic Meals of India.’” Pet. 7. The cooking
`
`
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`shows disclosed in the 1981 Specification and the 1987 Specifications are
`similar, and we are not persuaded they differ significantly. Whether the
`exact example from the 1981 Specification is copied verbatim or
`incorporated by reference into the 1987 Specification is not relevant to our
`inquiry.
`Therefore, on the record before us, we are persuaded Petitioner has
`failed to establish that the priority date of the challenged claims of the ’749
`patent is September 11, 1987. Rather, we are persuaded, for purposes of this
`decision, that the ’749 patent is entitled to a filing date of November 3, 1981.
`C. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`
`
`16
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`
`D. Level of Ordinary Skill in the Art
`According to Petitioner’s declarant, Mr. Slinn, a person of ordinary
`skill in the art relevant to the ’749 patent would have “a Bachelor’s degree in
`Electrical Engineering or closely related field” and would have between two
`and four years of experience in “implementation of communications systems
`and controlling these systems (or similar types of systems) through the use
`of computer technology.” Ex. 1004 ¶ 24.
`Patent Owner does not offer, at this time, any contrary explanation
`regarding who would qualify as a person of ordinary skill in the art relevant
`to the ’749 patent. Based on our review of the ’749 patent, the types of
`problems and solutions described in the ’749 patent and cited prior art, and
`the testimony of Petitioner’s declarant, we adopt, for purposes of this
`decision, Petitioner’s definition of a person of ordinary skill in the art at the
`time of the claimed invention. Based on the stated qualifications of Mr.
`Slinn (Ex. 1004 ¶¶ 1–9) and his Curriculum Vitae (Ex. 1008), Petitioner’s
`declarant meets the requirements of this definition. We note that the applied
`prior art also reflects the appropriate level of skill at the time of the claimed
`invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`E. Asserted Anticipation of Claims 2, 3, 9–13, 18, 24, 49, 52, and 53
`by Jeffers
`Petitioner contends claims 2, 3, 9–13, 18, 24, 49, 52, and 53 of the
`’749 patent are unpatentable under 35 U.S.C. § 102 as anticipated by Jeffers.
`Pet. 21–24. Patent Owner contends Jeffers does not qualify as prior art
`under 35 U.S.C. § 102 and cannot be used as an anticipatory reference.
`Prelim. Resp. 19.
`
`
`
`17
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`APPLE EX. 1011
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`
`Jeffers was filed on April 2, 1987, published on April 19, 1988, and is
`a continuation of an abandoned application filed May 1, 1985. Ex. 1005,
`1:1–2. As discussed above, we found that the claims of the ’749 patent are
`entitled to a priority date of November 3, 1981. Because the priority date of
`the ’749 patent predates the earliest filing and publication dates of Jeffers,
`Jeffers does not qualify as prior art under 35 U.S.C. § 102.
`Accordingly, we conclude Petitioner has failed to establish a
`reasonable likelihood it would prevail in showing that claims 2, 3, 9–13, 18,
`24, 49, 52, and 53 are anticipated under 35 U.S.C. § 102 by Jeffers.
`F. Asserted Obviousness of Claims 2, 3, 9–13, 18, 24, 49, 52, and 53
`in View of Campbell
`Petitioner contends claims 2, 3, 9–13, 18, 24, 49, 52, and 53 of the
`’749 patent are unpatentable under 35 U.S.C. § 103 in view of Campbell.
`Pet. 24–45. Patent Owner contends Campbell does not qualify as prior art
`under 35 U.S.C. § 102 and cannot be used in an obviousness analysis.
`Prelim. Resp. 34–36.
`Campbell issued on August 20, 1985 and claims priority to abandoned
`U.S. Patent Application No. 348,937, filed November 27, 1981. Ex. 1006.
`As noted on the face of the Campbell ’791 patent, the priority date for
`purposes of determining whether Campbell qualifies as prior art under
`35 U.S.C. § 102(e) is November 27, 1981. Id.
`Patent Owner contends Petitioners have failed to meet their obligation
`to establish that Campbell is prior art, because “[t]he prior art relied on by
`Petitioners is the Campbell ’791 Patent, not the related (but different)
`WO81/02961 publication. Indeed, the WO81/02961 publication is not even
`an exhibit to the Petition.” Prelim. Resp. 35 (citing Pet., Exhibit List 1–2).
`18
`
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`According to Patent Owner, Petitioners cannot rely on the filing or
`publication of the WO81/02961 to establish that the Campbell ’791 patent is
`prior art because
`the WO81/02961
`[t]he corresponding PCT application of
`publication is PCT/US1981/000414 (“’414 PCT application”)
`filed on March 31, 1981, which asserted priority to U.S.
`Application Ser. No. 135,987 (“’987 application”) filed one year
`earlier in the U.S., on March 31, 1980. As the face of the
`Campbell ’791 Patent indicates, the Campbell ’791 Patent is not a
`continuation of the ’987 application, but is a continuation-in-
`part of the ’791 application. Indeed, the specifications of the
`Campbell ’791 Patent and the ’987 application (and likewise the
`WO81/02961 publication) are different. While a U.S. Patent that
`claims the benefit of an earlier filing date under pre- AIA 35
`U.S.C § 102(e) could be accorded the earlier filing date for
`purposes of determining priority, Petitioners have the burden to
`first show that the relevant subject matter is disclosed in the
`earlier-filed application. Petitioners made no attempt to show that
`the relied upon subject matter in the Campbell ’791 Patent was
`found in either the WO81/02961 publication or the ’987
`application.
`
`Prelim. Resp. 35.
`
`
`We note that the Petitioner challenges claims 2, 3, 9–13, 18, 24, 49,
`52, and 53 of the ’749 patent based on Campbell (Ex. 1006) and not the
`WO81/02961 publication as cited by Patent Owner. Thus, we are persuaded
`by Patent Owner’s position and find that Petitioner has failed to provide
`sufficient evidence to establish that Campbell is entitled to priority date
`under 35 U.S.C. § 102(e) earlier than November 27, 1981.
`As discussed above, we found that the claims of the ’749 patent are
`entitled to a priority date of November 3, 1981. Because the priority date of
`
`
`
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`
`the ’749 patent predates Campbell’s priority date of November 27, 1981,
`Campbell does not qualify as prior art under 35 U.S.C. § 102.
`Accordingly, we conclude Petitioner has failed to establish a
`reasonable likelihood it would prevail in showing that claims 2, 3, 9–13, 18,
`24, 49, 52, and 53 would have been obvious under 35 U.S.C. § 103 in view
`of Campbell.
`G. Asserted Obviousness of Claims 2, 3, 9–13, 18, 24, 49, 52, and 53
`in View of Powell and Guillou
`Petitioner contends claims 2, 3, 9–13, 18, 24, 49, 52, and 53 of the
`’749 patent are unpatentable under 35 U.S.C. § 103 in view of Powell and
`Guillou. Pet. 45–59. For reasons that follow, we determine Petitioner has
`demonstrated a reasonable likelihood of prevailing as to claims 2, 3, 9–13,
`
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