Paper No. 55
`Filed: March 22, 2016
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`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 IPR2014-01534
`Patent 7,827,587 B1
`_______________
`
`
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`
`
`
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`I.
`
`INTRODUCTION
`
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`
`§ 6(c), and this Final Written Decision is issued pursuant to 35 U.S.C.
`
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine
`
`that Petitioner has shown by a preponderance of the evidence that claim 9 of
`
`U.S. Patent No. 7,827,587 B1 (Ex. 1002, “the ’587 patent”) is unpatentable.
`
`We also determine that Patent Owner has not met its burden on its Motion to
`
`Amend regarding entry of proposed substitute claim 22, and thus, we deny
`
`the Motion to Amend.
`
`A. Procedural History
`
`Amazon.Com, Inc. and Amazon Web Services, LLC (“Petitioner”)
`
`filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of claim 9
`
`of the ’587 patent. Personalized Media Communications, LLC (“Patent
`
`Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). Pursuant
`
`to 35 U.S.C. § 314(a), we instituted an inter partes review of claim 9 as
`
`(1) unpatentable under 35 U.S.C. § 103 in view of Monat,1 and (2)
`
`unpatentable under 35 U.S.C. § 103 in view of Calo2. See Paper 7 (“Dec. to
`
`Inst.”), 41.
`
`After institution of trial, Patent Owner filed a Patent Owner Response
`
`(Paper 20, “PO Resp.”), to which Petitioner filed a Reply (Paper 32,
`
`“Reply”). In addition, Patent Owner also filed a Contingent Motion to
`
`Amend the Claim (Paper 21), to which Petitioner filed an Opposition
`
`
`1 US Patent No. 4,556,904; Dec. 3, 1985 (filed Mar. 3, 1983) (“Monat,” Ex.
`1006).
`2 US Patent No. 4,805,134; Feb. 14, 1989 (filed Jan. 9, 1986) (“Calo,” Ex.
`1007).
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`
`
`2
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`(Paper 33). Patent Owner then filed a Reply to Petitioner’s Opposition to
`
`the Motion to Amend the Claims. Paper 40 (“PO Reply”).
`
`Patent Owner filed observations on the cross-examination of
`
`Petitioner’s declarant (Paper 46), to which Petitioner filed a response
`
`(Paper 49). Petitioner filed observations and amended observations on the
`
`cross-examination of Patent Owner’s declarant (Papers 48, 53), to which
`
`Patent Owner filed a response and an amended response (Papers 50, 53).
`
`An oral argument was held on December 8, 2015. A transcript of the
`
`oral argument is included in the record. Paper 54 (“Tr.”).
`
`B. Related Proceedings
`
`Petitioner informs us that the ’587 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. According to Petitioner,
`
`the district court’s judgment in the lawsuit has been appealed to the Court of
`
`Appeals for the Federal Circuit as Appeal No. 15-2008. Paper 35, 1.
`
`Petitioner also informs us that six patents related to the ’587 patent are the
`
`subject of concurrently-filed petitions for inter partes review. Pet. 1; Paper
`
`35, 1; see IPR2014-01527, IPR2014-01528, IPR2014-01530, IPR2014-
`
`01531, IPR2014-01532, and IPR2014-01533.
`
`C. The ’587 Patent
`
`The ’587 patent discloses a system for using embedded signals to
`
`deliver personalized program content to a subscriber station. Ex. 1002,
`
`7:47–48, 15:14–46. One embodiment of the ’587 patent describes a remote
`
`program originating studio that transmits a commercial (“program unit Q”)
`
`in a network transmission to a number of intermediate transmission stations,
`
`
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`3
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`where each intermediate transmission station generates additional
`
`information that is included in a transmission sent to ultimate receiver
`
`stations. Id. at 193:25–57. This embodiment is illustrated in Figures 6A and
`
`6B, reproduced below.
`
`
`
`
`
`Figure 6A shows one intermediate transmission station 50 controlled
`
`by a program originating studio. Id. at 193:47–48. The station receives
`
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`network transmissions at receiver 53 and retransmits the transmission
`
`immediately via modulator 83, shown in Figure 6B. Id. at 193:48–51.
`
`According to the ’587 patent, computer 73 of a given intermediate
`
`transmission station contains “information relevant to the particular
`
`discounts and specials in effect at the particular markets in the vicinity of
`
`said station.” Id. at 193:58–66, Fig. 6A. Specifically, the information may
`
`be “local-formula-and-item information” in the form of specific values for
`
`various variables (“a, p, q, d, Z, r, s, and dd”) corresponding to information
`
`such as the cost of gasoline (“p”) and the distance between a given
`
`warehouse and market (“Z”). See id. at 187:9–54, 193:65–194:30. With
`
`each transmission of the commercial information from the transmitter station
`
`to a subscriber station, the computer program instructions compute the cost
`
`of delivery of a product to a particular subscriber. Id. at 186:38–46, 187:1–
`
`9.
`
`The ’587 patent discloses that after a program originating studio
`
`transmits a “generate-set-information message (#10)” to intermediate
`
`transmission station computers 73 that includes, among other information,
`
`an execution segment, information segment information of an “intermediate
`
`generation set of Q,” and an end of file signal, then computer 73 executes a
`
`program to compile and link “local-formula-and-item information” so that
`
`computer 73 generates a specific program instruction set version—the
`
`program instruction set of Q1—that applies to the particular discounts and
`
`specials in effect at the particular markets in the vicinity of the subscriber
`
`station and at the particular time of the network transmission of Q. Id. at
`
`195:16–196:7.
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`
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`5
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`The ’587 patent further discloses transmitting the complete
`
`information of the program instruction set (e.g., the first portion of the
`
`completed program unit Q1) to a receiver station based on the information of
`
`a “01” header and the address of the subscriber station microcomputers 205
`
`(e.g., the second portion of the completed program unit Q1). Id. at 28:1–29,
`
`46:5–24, 49:6–56. Upon receiving the completed processor instructions, the
`
`receiver station “load[s] and execute[s] at microcomputer 205, the
`
`information segment of the message.” Id. Thus, the second portion of the
`
`completed processor instructions informs the receiver station to load and
`
`execute the information segment of the message, the program instruction set,
`
`at a specific processor (microcomputer 205) of the receiver station. Id. The
`
`instructions (and some data) are downloaded and each receiver station
`
`executes the instructions. Id. at 249:48–251:63. Each receiver station is a
`
`different distance from the warehouse and will compute different estimated
`
`costs for delivery of a product. Id.
`
`Another embodiment of the ’587 patent discloses that stations that
`
`send out programming transmissions use “SPAM” signals to control the
`
`handling, generating, and displaying of programming at subscriber stations.
`
`Ex. 1002, 21:34–39. SPAM signals control and coordinate a wide variety of
`
`subscriber stations. Said stations include so-called “local affiliate” broadcast
`
`stations that receive and retransmit single network transmissions. Id. at
`
`21:40–43. The information of SPAM signals includes data, computer
`
`program instructions, and commands. Id. Data and program instructions are
`
`often recorded in computer memories at subscriber stations for deferred
`
`execution. Id. at 22:4–7. In combined medium communications (television,
`
`
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`radio, and other media) (id. at 22:12–13), particular SPAM commands
`
`control the execution of intermediate generation sets and program instruction
`
`sets and the transmission and display of information generated by said sets
`
`(id. at 22:31–34).
`
`According to the ’587 patent, SPAM signals contain binary
`
`information of the sort well known in the art, for example: (i) including bit
`
`information required for error correction using forward error correction
`
`techniques in point to multi-point communications; (ii) using request
`
`retransmission techniques in point to point communications; and/or (iii)
`
`other error correction techniques, as appropriate. Id. at 23:17–24. The
`
`composition of a SPAM signal is shown in Figure 2E, reproduced below.
`
`
`
`Figure 2E illustrates that a SPAM signal commences with a header, followed
`
`by an execution segment, a meter-monitor segment, and an information
`
`segment. Id. at 23:25–33. The header, execution, and meter-monitor
`
`segments constitute a command. Id. at 23:33–35. Figure 2E also illustrates
`
`the use of “padding bits” in a SPAM signal. Id. at 28:50–56.
`
`The ’587 patent explains that to determine the composition of signal
`
`information, the fact that most computer systems communicate information
`
`in signal words that are of a constant binary length that exceeds one bit must
`
`be taken into account. Id. at 28:30–34. According to the ’587 patent, most
`
`computer information is communicated in so-called “bytes,” each of which
`
`consists of eight digital bits. Id. at 28:34–36. The ’587 patent cautions that
`
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`failure to recognize this fact could result in incomplete signals and/or in
`
`erroneous processing in signal information. Id. at 28:36–38.
`
`Figure 2G, reproduced below, shows an incomplete signal. Id.
`
`
`
`Figure 2G illustrates a command with a header, an execution segment, and a
`
`meter-monitor segment, each of which is of particular bit length. Id. at
`
`28:38–40. The command of Figure 2G, however, is only twenty-one bits
`
`long. Id. at 28:41–42. As Figure 2G shows, the command constitutes two
`
`bytes of eight bits each with five bits left over. Id. at 28:42–43. The
`
`’587 patent explains that in a system that communicates information only in
`
`words that are multiples of eight, a signal whose information is represented
`
`in twenty-one information bits is incomplete. Id. at 28:43–46. According to
`
`the ’587 patent, to constitute a complete communication, said signal must be
`
`transmitted in twenty-four bits. Id. at 28:46–48. The ’587 patent discloses
`
`that to change an incomplete communication to a complete communication,
`
`extra bits are added at the end of a command. Id. at 28:50–55. These extra
`
`bits are called “padding bits” and are illustrated in Figure 2F, shown above.
`
`Id. at 28:55–56, Fig. 2F.
`
`
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`8
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`D. Illustrative Claim
`
`As noted above, an inter partes review was instituted as to
`
`independent claim 9, which is reproduced below:
`
`9. A method of processing signals in a network including:
`receiving at a transmitter station in said network an information
`transmission from a remote station, said transmission including
`incomplete processor instructions;
`receiving at said transmitter station a control signal;
`detecting at said transmitter station said incomplete processor
`instructions and said control signal and passing said incomplete
`processor instructions and said control signal to a computer in said
`transmitter station;
`storing said incomplete processor instructions in said computer;
`generating information to complete said incomplete processor
`instructions by processing, at said computer, information stored in
`said computer based on said control signal, wherein said stored
`information is not part of said transmission;
`completing, at said computer, said incomplete processor instructions
`by placing said generated information into said passed and stored
`incomplete processor instructions; and
`communicating to a processor in a receiver station in said network at
`least a first portion of said completed processor instructions based
`on a second portion of said completed processor instructions.
`
`Ex. 1001, 290:24–48.
`
`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
`
`also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir.
`
`2015 (“Congress implicitly approved the broadest reasonable interpretation
`
`standard in enacting the AIA,” and “the standard was properly adopted by
`9
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`PTO regulation.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee,
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`136 S. Ct. 890 (mem.) (2016). 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). Our analysis in this Decision is not impacted by whether we apply
`
`the broadest reasonable interpretation or the Phillips standard. See Phillips
`
`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
`
`1. “Incomplete Processor Instructions”
`
`The parties disagree on the construction of the phrase “incomplete
`
`processor instructions,” as recited by independent claim 9. In order to
`
`construe the disputed phrase, we must first determine the scope of
`
`“processor instructions.”
`
`a. Processor Instructions
`
`Patent Owner contends the term “processor instructions” means
`
`“‘program instructions that are executed at a processor.’” PO Resp. 14
`
`(citing Ex. 2004 ¶ 52). Patent Owner first argues that treatises describe
`
`microprocessors as executing “programs, which are collections of
`
`instructions that specify the sequence of orders given to the system,”
`
`therefore, “processor instructions” are “the sequenced components of a
`
`computer program--program instructions executed by the processor.” Id.
`
`(citing Ex. 2006, 36). Patent Owner then argues that applying ordinary rules
`
`of construction of English provides concordance: “processor instructions”
`
`are “instructions” that are executed by a “processor.” Id. at 14–15. Patent
`
`Owner lastly argues that the ’587 patent specification supports Patent
`
`
`
`10
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`Owner’s construction. Id. at 16–17. Patent Owner specifically cites to
`
`Examples Nos. 9 and 10 from the Specification as supporting its position.
`
`Id. at 17 (citing Ex. 1002, 183:32–46; Ex. 2004 ¶ 54).
`
`Patent Owner acknowledges that the ’587 patent does not define the
`
`term “processor instructions.” Id. at 18. In fact, the term “processor
`
`instructions” is not used in the specification until claim 9. Instead, the
`
`specification uses the terms “program instructions,” “program instruction
`
`sets,” “operating instructions,” and “microprocessor control instructions”
`
`when describing particular embodiments and examples. See Ex. 1002, 2:53–
`
`57, 19:63–67, 25:4–9, 28:1–5. The ’587 patent specifically teaches that
`
`“program instructions” include steps inputted to a computer that are
`
`executed by the computer upon command. Ex. 1002, 22:4–13, 28:2–11,
`
`46:11–13, 184:8–15. Despite the disclosure found in the ’587 patent, Patent
`
`Owner argues that a “person of ordinary skill in the art would understand,
`
`based on the disclosure of the ’587 Patent that the ‘processor instructions’ of
`
`claim 9 are the program instructions (examples of which are discussed
`
`above) that are executed at a computer.” PO Resp. 18 (citing Ex. 2004 ¶
`
`63). Patent Owner also argues that including data or information or
`
`“everything a computer touches” is unreasonably broad as an instruction.
`
`See id. at 18–19.
`
`We agree with Patent Owner as to the last argument. We do not agree
`
`with Patent Owner regarding its other arguments, however, because Patent
`
`Owner appears to conflate the recitations in claim 9 of “processor
`
`instructions” with the specification’s multiple descriptions of “program
`
`instructions.” Furthermore, Patent Owner’s proposed construction is
`
`
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`inconsistent with the claims of the ’587 patent because claims that depend
`
`from claim 9 indicate that the processor instructions of claim 9 are more than
`
`a “program instruction set.” Two different claims that indirectly depend
`
`from claim 9 recite “a program instruction set.” See Ex. 1002 (claims 18
`
`and 20). If claim 18 is read to include the limitations of claim 9, from which
`
`it indirectly depends, it would separately recite receiving “processor
`
`instructions” and receiving a “program instruction set.” Therefore, we do
`
`not agree that the claim term “processor instructions” is limited to “program
`
`instructions” as argued by Patent Owner. Rather, we determine that
`
`“processor instructions” is broader than “program instructions” and include a
`
`command or an instruction used or executed by a processor but is not limited
`
`to commands or instructions used in or executed by a program. See Ex.
`
`1002, 14:25–28
`
`b. Incomplete Processor Instructions
`
`Petitioner contends the term “incomplete processor instructions”
`
`should be construed as “processor instructions to which information will be
`
`added prior to the processor instructions being transmitted to a particular
`
`receiver station.” Pet. 16. According to Petitioner, the specification of the
`
`’587 patent uses the term “incomplete” to refer to commands, signals or
`
`other instructions that are not yet in the form in which they will be
`
`transmitted to a subscriber station. Id. at 14–15 (citing Ex. 1002, 28:34–49).
`
`Petitioner contends the term is also used in a manner whereby instructions
`
`may be “incomplete” with respect to one type of subscriber station even if
`
`the same instructions would be considered “complete” with respect to
`
`another type of subscriber station, such as a subscriber station in which a
`
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`different signal word bit length applies. Pet. 15–16 (citing Ex. 1002, 29:5–
`
`9)(“the information of each information segment is composed and
`
`transmitted in a bit length that is, itself, exactly a multiple of the particular
`
`signal word bit length that applies in computer communications at said
`
`subscriber stations”).
`
`Petitioner notes that in the co-pending district court litigation
`
`referenced above, Patent Owner has alleged that the term “incomplete
`
`processor instructions” is broad enough to cover not only processor
`
`instructions that will be supplemented, but allegedly it encompasses any
`
`“processor instructions that can be supplemented with other instructions.”
`
`Id. at 16.
`
`Petitioner, thus, argues 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 “incomplete processor instructions” to
`
`be at least as broad as “processor instructions to which information will be
`
`added prior to the processor instructions being transmitted to a particular
`
`receiver station.” Id. (citing Ex. 1001 ¶ 26).
`
`Patent Owner contests Petitioner’s proposed claim construction,
`
`explaining that “incomplete processor instructions,” as used in claim 9
`
`should be construed as “a set of processor instructions that need to be
`
`completed before they can provide the intended function when executed.”
`
`PO Resp. 19. According to Patent Owner, the ordinary meaning of
`
`“incomplete” is “not complete, lacking some part.” Id. at 20 (citing
`
`Ex. 2002, 967; Ex. 2004 ¶ 64). Patent Owner relies on Example No. 10 to
`
`guide its construction of the terms of claim 9. Id. Patent Owner explains
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`that Example No. 10 teaches that (i) an information transmission, which
`
`includes a set of processor instructions, is received at a transmitter station
`
`and needs to be completed before transmission to subscriber stations; (ii) the
`
`processor instructions need to be completed by the addition of formulas for
`
`discounts and so called “cents-off coupon specials” at local supermarkets
`
`(Ex. 1002, 183:32–46); and (iii) without the formulas, the processor
`
`instructions are incomplete because individual subscriber stations will not be
`
`able to compute and display the discounts available to them (id. at 195:16–
`
`47). PO Resp. 20.
`
`Patent Owner further argues that until the processor instructions are
`
`completed they cannot deliver the intended function of telling the consumer
`
`what the discount will be. Patent Owner concludes that a person of ordinary
`
`skill in the art, upon reviewing the specification of the ’587 patent, would
`
`understand that the broadest reasonable construction of “incomplete
`
`processor instructions” in claim 9 is “a set of processor instructions that need
`
`to be completed before they can provide the intended function when
`
`executed.” Id. (citing Ex. 2004 ¶¶ 65–66).
`
`We are charged with interpreting 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). When construing claim terms,
`
`we should “consult the patent’s prosecution history in proceedings in which
`
`the patent has been brought back to the [US Patent and Trademark Office]
`
`for a second review.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
`
`1298 (Fed. Cir. 2015). In this case, the prosecution history of the
`
`
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`’587 patent reveals that in response to an office action rejecting the pending
`
`claims, the patent applicant stated:
`
`In their 1987 continuation-in-part specification, applicants
`disclose “an integrated system of programming communication”
`which encompasses many inventions and deliberately includes
`many embodiments. Their teaching technique is to introduce the
`principles of their integrated system in a series of related
`examples. Each example builds upon structure and principles
`introduced earlier. Examining basic principles in detail in early
`examples, enables the specification with concreteness to expand
`and extend the scope of the teaching in later examples.
`
`Ex. 1003, 285 (emphasis in original).
`
`Because of the integrated nature of the disclosure, no part of the
`specification is intended to be considered in isolation.
`
`Id. at 288 (emphasis in original). Even when specifically discussing
`
`Example Nos. 9, 10, and 11 of the ’587 patent, the patent applicant stated:
`
`Applicants provide these specific embodiments in support of the
`pending claims as by way of example only. The claims must be
`read as broadly as is reasonable in light of the specification, and
`Applicants
`in no way
`intend
`that
`their submission of
`excerpts/examples be construed to unnecessarily bound the
`scope of the claimed subject matter.
`
`Id. at 289.
`
`During our claim construction, we consult the patent’s specification to
`
`help clarify the meaning of claim terms, because the claims “must be read in
`
`view of the specification, of which they are a part.” Trading Technologies
`
`Intern, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (quoting
`
`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995)
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`(en banc), aff’d, 517 U.S. 370, 116 S. Ct. 1384, 134 L.Ed.2d 577 (1996)).
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`We must be careful, however, not to improperly import limitations into the
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`claims or to read a particular embodiment appearing in the written
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`description into the claim if the claim language is broader than the
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`embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
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`Given our mandate under 37 C.F.R. § 42.100(b) and the patent applicant’s
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`statements during the prosecution of the ’587 patent, we understand that the
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`examples laid out in the specification are exemplary and are not to be read as
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`limitations in the claims.
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`On the other side of the claim construction coin, as a general rule,
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`“there is a strong presumption against a claim construction that excludes a
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`disclosed embodiment.” See In re Katz Interactive Call Processing Patent
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`Litig., 639 F.3d 1303, 1324 (Fed. Cir. 2011). Several exceptions to this
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`presumption apply. For example, a claim may be interpreted to exclude
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`embodiments “where those embodiments are clearly disclaimed in the
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`specification . . . or prosecution history.” Oatey Co. v. IPS Corp., 514 F.3d
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`1271, 1277 (Fed. Cir. 2008). Otherwise, “where claims can reasonably [be]
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`interpreted to include a specific embodiment, it is incorrect to construe the
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`claims to exclude that embodiment, absent probative evidence [to] the
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`contrary.” Id. at 1277. “This does not mean, however, that each and every
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`claim ought to be interpreted to cover each and every embodiment.”
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`PPC Broadband, Inc. v. Corning Optical Commc’ns. RF, LLC, No. 2015-
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`01364, 2016 WL 692369, slip. op. at *4 (Fed. Cir. Feb. 22, 2016) (quoting
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`Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010)
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`(“It is not necessary that each claim read on every embodiment.”)).
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`In this case, the specification of the ’587 patent does not define
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`explicitly the term “incomplete processor instructions,” and the
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`embodiments in Examples Nos. 93 and 10, as discussed by Patent Owner, do
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`not use or recite the term “incomplete processor instructions.” See Ex. 1002,
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`183:1–220:21. In fact, the term is not used in the specification except in
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`claims 9 and 10. Although, the embodiments in Examples Nos. 9 and 10 as
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`cited by Patent Owner are instructive, we are unpersuaded by Patent
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`Owner’s argument that claim construction should only be guided by those
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`examples and not by the specification in its entirety, especially in light of the
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`patent applicant’s statements during the prosecution the ’587 patent
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`discussed above.
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`Rather, the disclosure in the ’587 patent teaches embodiments that use
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`the word “incomplete” to refer to commands, signals or other instructions
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`that are not yet in the form in which they will be transmitted to a subscriber
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`station. See id. at 28:34–49. Specifically, the specification discloses that
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`“[i]n a system that communicates information only in words that are
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`multiples of eight, a signal whose information is represented in twenty-one
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`3 Example No. 9 explains that a prerecorded program unit (e.g., a
`commercial) generally is applicable to any and all subscriber station (Ex.
`1002, 184:52–65), but the program unit lacks information regarding
`particular discount formulas and coupons that apply at a specific scheduled
`time for particular business that are local to the subscriber station (id. at
`184:66–185:6). According to the ’587 patent, particular formula-and-item-
`of-this-transmission information is generated and incorporated into a
`particular program instruction set and transmitted with the program unit
`from the transmission station to the subscriber station. Id. at 185:7–19. The
`program unit it transmitted, received, decoded, and played. Id. at 189:56–
`192:39.
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`information bits is incomplete. To constitute a complete communication,
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`said signal must be transmitted in twenty-four bits. To the command of
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`FIG. 2G, three bits must be added.” Id. at 28:43–49 (emphases added).
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`According to the ’587 patent, particular bits are added at the end of any
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`command that is not already a multiple of the particular signal word bit
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`length that is used in the signal processor system at the particular subscriber
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`stations to which the transmission will be transmitted. Id. at 28:50–55. The
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`’587 patent refers to the additional bits as “padding bits.” Id. at 28:55–56.
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`Patent Owner’s proffered claim construction imports selected
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`limitations from specific embodiments in the specification into the claim and
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`provides an overly narrow interpretation of the claim term. We must be
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`careful not to read a particular embodiment into the claim when, as here, the
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`claim language is broader than the embodiment. Patent Owner has not
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`pointed to any definitions or disavowals in the specification or otherwise
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`clearly explained why the specification’s disclosure of incomplete
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`commands and padding bits should not guide our claim construction
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`analysis. Thus, we are unpersuaded by Patent Owner’s contentions, which
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`appear to be based on a narrow reading of the claim that is inconsistent with
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`the broadest reasonable interpretation of the claims.
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`Accordingly, we decline to adopt Patent Owner’s claim construction
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`as it would limit unnecessarily the scope of the claims. Instead, we find the
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`broadest reasonable construction of “incomplete processor instructions” to
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`mean “processor instructions to which data, information, or bits must be
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`added prior to the processor instructions being transmitted to, used, or
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`executed by a particular processor.”
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`2. “generating”
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`Claim 9 recites “generating information to complete said incomplete
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`processor instructions by processing, at said computer, information stored in
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`said computer based on said control signal, wherein said stored information
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`is not part of said transmission.”
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`Petitioner does not address this claim term for purposes of claim
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`construction. Patent Owner contends the term “generating information”
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`requires “more than mere selection or retrieval; it requires the creation of a
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`product through processing.” PO Resp. 21. According to Patent Owner, the
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`ordinary meaning of “generating” is to “create” or “bring into existence” and
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`that ordinary meaning is consistent with the construction proffered by Patent
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`Owner. Id. (citing Ex. 2012).
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`Patent Owner cites to certain examples in the specification where new
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`information is generated by processing existing data, and not merely
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`retrieving or selecting data from storage. Id. at 21–22 (citing Ex. 1002,
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`195:48–62, 185:52–186:37). Patent Owner also cites to a Board decision
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`regarding a related patent, where the Board construed the term “generate” as
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`“to bring into existence” and to require more than just selecting or retrieving.
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`Id. at 23–24 (citing Ex parte Harvey, No. 2007-1837 (BPAI Mar. 20, 2009)
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`(Ex. 2001, 18, 39)).
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`In Harvey, the Board did not construe the term “generate,” but
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`construed the claim element “generating an image by processing at least one
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`user specific subscriber datum,” and, thus, interpreted a different claim
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`phrase than what is at issue here. Additionally, the Board in Harvey
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`reasoned that teletext data itself is not generated by processing user selection
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`data, but is only retrieved from a database, so it cannot be said that an image
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`is generated by processing indir