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`2008 WL 5373184 (Bd.Pat.App. & Interf.)
`
`Board of Patent Appeals and Interferences
`Patent and Trademark Office (P.T.O.)
`
`*1 Ex Parte Personalized media communications, LLC
`
`Appeal 2008-4228
`Ex Parte Reexamination Control 90/006,536
`U.S. Patent 4,965,825 Technology Center 3900
`
`Decided: December 19, 2008
`
`Counsel for Patent Owner:
`GOODWIN PROCTER LLP
`901 NEW YORK AVENUE, N.W.
`WASHINGTON, DC 20001
`Counsel for Third-Party Requester Thomson, Inc.:
`
`A. J. Usher, IV
`KRIEG DeVAULT LLP
`One Indiana Square, Suite 2800
`Indianapolis, IN 46204-2079
`
`Before LEE E. BARRETT, SCOTT R. BOALICK, and KEVIN F. TURNER
`Administrative Patent Judges
`BARRETT
`Administrative Patent Judge
`
`DECISION ON APPEAL
`
`This is a decision on appeal under 35 U.S.C. §§ 134(b) and 306 from the final rejection of claims 1, 2, and 14-25. The
`Examiner has confirmed the patentability of claims 3-13.
`
`We affirm-in-part.
`
`STATEMENT OF THE CASE
`
`1. Reexamination proceeding
`Reexamination Control 90/006,536 was filed on February 4, 2003, by third party requester Thomson, Inc. (Requester), to
`request reexamination of claims 1, 2, 14-18, and 20-25 of U.S. Patent 4,965,825 ('825 patent), entitled “Signal Processing
`Apparatus and Methods,” issued October 23, 1990, to John C. Harvey and James W. Cuddihy, based on Application
`07/096,096, filed September 11, 1987. The real party in interest is the patent owner, Personalized Media Communica-
`tions, LLC, New York, NY. The '825 patent is said to be a continuation-in-part (CIP) of Application 06/829,531, filed
`February 14, 1986, now U.S. Patent 4,704,725 (hereinafter referred to as the 1986 application or '725 patent), which is
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`said to be a continuation of Application 06/317,510, filed November 3, 1981, now U.S. Patent 4,694,490 (hereinafter re-
`ferred to as the 1981 application or '490 patent).
`
`2. Related proceedings
`The '825 patent is part of a chain of patents that includes four additional later issued patents and various pending patent
`applications. Patents 5,109,414, 5,233,654, 5,335,277, and 5,887,243 are all continuations of the present '825 patent.
`Each of the seven related patents is involved in reexamination proceedings (Br. 3). Before June 8, 1995, when the patent
`term was changed from 17 years from the date of issue to 20 years from the filing date of the earliest application relied
`on under 35 U.S.C. § 120, 328 applications were filed having the same specification as the '825 patent, except for the
`claims.
`
`*2 The Board entered a decision on June 30, 2008, in Appeal 2007-4044, Reexamination Controls 90/006,697 and
`90/006,841 (merged) for reexamination of Patent 4,704,725, and Appeal 2008-0334, Reexamination Control 90/006,800
`for reexamination of Patent 4,694,490 (hereinafter “Appeals 2007-4044 and 2008-0334”). The Board entered a decision
`on rehearing in Appeals 2007-4044 and 2008-0334 on December 18, 2008. These decisions are partly incorporated by
`reference as discussed in the claim interpretation section (unambiguous claims in an expired patent in reexamination are
`not entitled to a narrower interpretation than their ordinary and customary meaning to define over the prior art) and the
`obviousness rejection over the CBS “Petition for Rulemaking” in view of Tsuboka or Marti (meaning of “user specific”).
`
`The Brief identifies (at Br. 3-6) a number of related U.S. Patent and Trademark Office (USPTO), International Trade
`Commission, and court proceedings.
`
`The '825 patent is asserted in Pegasus Development Corp. and Personalized Media Comm., LLC v. DIRECTV Inc., No.
`CA 00-1020 (GMS) (D. Del. filed Dec. 4, 2000), which the Brief indicates (at Br. 5) has been stayed, and is also asserted
`in Personalized Media Communications, LLC v. Scientific-Atlanta, Inc. et al, No. l:02-CV-824 (CAP) (N.D. Ga. filed
`Mar. 28, 2002), which has also been stayed.
`
`3. Appellant's inventions
`The rejected claims relate to two inventions.
`
`1.
`
`Claims 1, 2, and 14-19 relate to a signal processor apparatus and method for detecting a signal embedded in a carrier
`transmission (such as a television or radio broadcast) and monitoring its use. Figure 2, reproduced below, shows one em-
`bodiment of the signal processor apparatus.
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`Figure 2 is a block diagram of a signal processor apparatus which, in relevant part, receives a carrier transmission
`through a cable (upper left); the carrier transmission is demodulated by the local oscillator 6 and mixer 3; the embedded
`signal is detected and extracted by the TV signal decoder 30; and the signal is passed to a controller 12 (which may be a
`microprocessor). Controller 12 determines whether the signals are to be passed to external equipment via the jack ports
`or to buffer/comparator 14 or both. The buffer/comparator 14 may transmit signal records to a digital recorder 16. Con-
`troller 20 may cause a transfer of recorded data to a remote site and may cause the local oscillator to be tuned to a partic-
`ular channel at a predetermined time. See '825 patent, col. 16, line 7, to col. 19, line 10, and especially col. 17, line 56, to
`col. 18, line 50.
`
`2.
`
`Claims 20-25 relate to methods of generating “user specific” information for output at a receiver station having a com-
`puter. This is referred to as the “Wall Street Week” example.
`
`*3 At the program originating television station a series of control instructions is generated, embedded sequentially in di-
`gital form on lines of the vertical interval of the television signal, and transmitted ('825 patent, col. 12, 11. 32-36). The
`receiver is shown in Figure 1 reproduced below.
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`Figure 1 shows a block diagram of a video/computer combined medium subscriber station. The station receives the tele-
`vision broadcast transmission at television tuner 215. The tuner 215 outputs conventional audio and composite video
`transmissions. The audio transmission is inputted to TV monitor 202M. The video transmission is inputted to video trans-
`mission divider 4, which splits the transmission into two paths: one is inputted continuously to TV signal decoder 203
`and the other to microcomputer 205. TV signal decoder 203 receives a composite video transmission and detects the di-
`gital information embedded therein and converts the digital information into digital signals that microcomputer 205 can
`receive and process and that can control the operation of microcomputer 205. Microcomputer 205 can store signals from
`the decoder 203, generate computer graphic information, combine graphic information onto the video information of the
`transmission by known graphic overlay techniques, and output the combined information to a TV monitor 202M. See '
`825 patent, col. 11, ll. 8-41.
`
`The combined medium “Wall Street Week” example is illustrated by Figures 1A, IB, and 1C reproduced below.
`
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`Figure 1A shows an example of a computer generated graphic of the subscriber's stock portfolio as it would appear by it-
`self on the face of a television monitor. Figure 1B shows a studio generated graphic displayed on the face of a television
`monitor. Figure 1C shows an example of the graphic of Figure 1A overlaid on the graphic of Figure 1B.
`
`The program “Wall Street Week” is transmitted with embedded information and instruction signals. The microcomputer
`205 is programmed to hold a portfolio of the viewer's stocks. Microcomputer 205 is preprogrammed to receive signals
`from the decoder 203 and to respond in a predetermined fashion to instruction signals embedded in the “Wall Street
`Week” programming transmission. A first combining synch command signal causes computer 205 to load and run the
`program set instruction set transmitted in the information segment of the signal to calculate the performance of the sub-
`scriber's stock portfolio and to construct a graphic image of that performance as shown in Figure 1A ('825 patent, col. 49,
`ll. 25-34). A second combining synch command causes the computer 205 to combine the Figure 1A information with the
`Figure 1B information and transmit the combined information to monitor 202M (col. 49, ll. 54-62). A third combining
`synch command causes computer 205 to cease combining and transmit only the received composite video transmission to
`the monitor 202M (col. 50, ll. 8-17). The combining process is described in the '825 patent at column 14, line 47, to
`column 15, line 6.
`
`4. The claims
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`1.
`
`*4 Claim 1, reproduced below, is representative of the first invention.
`1. In a signal processor system, carrier transmission receiving means; means for demodulating said carrier transmis-
`sion to detect an information transmission thereon; detector means for detecting an embedded signal in the informa-
`tion transmission and removing it from said information transmission; first control means responsive to said detected
`signal to activate and/or deactivate equipment external to said signal processor system; second control means activ-
`ated by said detected signal to monitor the performance and/or output of said first control means; a recorder means
`for receiving and recording data collected by said monitor means; and control means for instructing said recorder to
`direct information recorded thereon to a remote site.
`
`Independent claim 2 is similar to claim 1 except that it recites: (1) “means activated by said detected signal to monitor
`the performance and/or output of said external equipment” instead of “means activated by said detected signal to monit-
`or the performance and/or output of saidfirst control means”; and (2) “control means for instructing said carrier receiv-
`ing means to receive the appropriate carrier transmission within a predetermined time interval and to direct said received
`carrier transmission to said demodulating means and said detector means,” which refers to tuning to receive a television
`program on a particular channel at a predetermined time.
`
`Independent claim 14 is a method claim similar to claim 1 except that it recites passing embedded signals to a device to
`be controlled and “recording the receipt of and passing to said devices of said embedded signals” instead of monitoring
`the performance and/or output of the device.
`
`2.
`
`Claim 20, reproduced below, is representative of the second invention.
`20. A method of generating computer output at a multiplicity of receiver stations each of which includes a computer
`adapted to generate and transmit user specific signals to one or more associated output devices, with at least some of
`said computers being programmed to process modification control signals so as to modify said computers' method of
`processing data and generating output information content, each of said computers being programmed to accommod-
`ate a special user application, comprising the steps of:
`transmitting an instruct-to-generate signal to said computers at a time when corresponding user specific output in-
`formation content does not exist,
`detecting the presence of said instruct-to-generate signal at selected receiver stations and coupling said instruct-
`to-generate signal to the computers associated with said selected stations, and
`causing said last named computer to generate their user specific output information content in response to said in-
`struct-to-generate signal, thereby to transmit to each of their associated output devices an output signal comprising
`the user specific output information content and the user specific signal of its associated computer, the output signals
`at a multiplicity of said output devices being different, with each output signal specific to a specific user.
`
`*5 Claim 24 is similar to claim 20 except that it does not include the “detecting” limitation. Claim 25 is similar to claim
`20 except that it does not include the “transmitting” limitation.
`
`5. The references relied upon in the rejections
`
`Tazawa
`Hendrickson
`
`US 4,156,847
`US 4,292,650
`
`May 29, 1979
`Sep. 29, 1981
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`Nov. 23, 1982 (filed Aug. 7, 1978)
`US 4,360,828
`Briggs
`Jun. 14, 1983 (filed Apr. 6, 1981)
`US 4,388,643
`Aminetzah
`Jun. 3, 1986 (filed Apr. 26, 1984)
`US 4,592,546
`Fascenda
`May 9, 1989 (filed Jul. 8, 1986)
`US 4,829,569
`Seth-Smith
`Mar. 31, 1976
`GB 1,430,641
`Auer
`Mar. 29, 1980
`JP 55-45248
`Tsuboka
`B. Marti, Broadcast Text Information in France, Online Conferences Ltd., 1980, pp. 359-366.
`C. Sechet, Captioning of Television Transmissions by the Antiope System, New Systems and Services in Telecommu-
`nications, Nov. 24-26, 1980, pp. 55-59.
`Antiope Videotex System, TDF-TFTV-CCETT-SOFRATEV-DGT, brochure, copyright 1979.
`Dages, PlayCable: A technological alternative for information services, IEEE Trans, on Consumer Electronics, Vol.
`CE-26, Aug. 1980,pp.482-486.
`CBS “Petition for Rulemaking” papers, filed with the Federal Communications Commission (FCC) on or about July
`29, 1980 (CBS Petition papers). The CBS Petition papers consist of five documents: (1) a CBS cover letter addressed
`to FCC Secretary William J. Tricarico; (2) the fifteen-page CBS Petition; (3) Exhibit I to the CBS Petition; (4) Ex-
`hibit II to the CBS Petition; and (5) Appendix B to Exhibit II (Appendix A is not relied on).
`
`6. The rejections
`
`Anticipation
`Claim 1 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Auer. (Sec. I.2.A, Final Rejection 10; Sec.
`III.A, Ans. 10.)[FN1]
`
`Claim 1 stands rejected under 35 U.S.C. § 102(e) as being anticipated by Briggs. (Sec. I.2.B, Final Rejection 11; Sec.
`III.B, Ans. 13.)
`
`Claim 1 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Tazawa. (Sec. I.2.C, Final Rejection 12; Sec.
`III.C, Ans. 16.)
`
`*6 Claim 1 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Fascenda. (Sec. I.2.D, Final Rejection 13;
`Sec. III.D, Ans. 18.)
`
`Claims 14, 15, and 17-19 stand rejected under 35 U.S.C. § 102(b) or § 102(e) as being anticipated by Aminetzah. (Sec.
`I.2.F, Final Rejection 14; Sec. III.F,Ans. 21.)
`
`Claim 20 stands rejected under 35 U.S.C. § 102(e) as being anticipated by Seth-Smith. (Sec. 1.2.G, Final Rejection 16;
`Sec. III.G, Ans. 27.)
`
`Claim 22 stands rejected under 35 U.S.C. § 102(e) as being anticipated by Seth-Smith. (Sec. I.2.H, Final Rejection 17;
`Sec. III.H, Ans. 31.)
`
`Claim 23 stands rejected under 35 U.S.C. § 102(e) as being anticipated by Seth-Smith. (Sec. 1.2.1, Final Rejection 18;
`Sec. III.I, Ans. 34.)
`
`Claim 24 stands rejected under 35 U.S.C. § 102(e) as being anticipated by Seth-Smith. (Sec. I.2.J, Final Rejection 20;
`Sec. III.J, Ans. 36.)
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`Claim 25 stands rejected under 35 U.S.C. § 102(e) as being anticipated by Seth-Smith. (Sec. I.2.K, Final Rejection 21;
`Sec. III.K, Ans. 38.)
`
`Claim 24 stands rejected under 35 U.S.C. § 102(b) as being anticipated by PlayCable. (Sec. I.2.L, Final Rejection 22;
`Sec. III.L, Ans. 40.)
`
`Obviousness
`Claims 14, 16, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Briggs or Tazawa in view of
`Hendrickson. (Sec. II. 1.A, Final Rejection 26; Sec. IV.A, Ans. 43.)
`
`Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Briggs or Tazawa and Hendrickson. (Sec. II.l.B,
`Final Rejection 30; Sec. IV.B, Ans. 47.)
`
`Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable over The CBS “Petition for Rulemaking” in view of
`Tsuboka or Marti. (Sec. II.l.C, Final Rejection 33; Sec. IV.C, Ans. 50.)
`
`Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable over The CBS “Petition for Rulemaking” in view of
`Tsuboka or Marti. (Sec. II.l.D, Final Rejection 40; Sec. IV.D, Ans. 57.)
`
`*7 Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over The CBS “Petition for Rulemaking” in
`view of Tsuboka or Marti. (Sec. II.l.E, Final Rejection 40; Sec. IV.E, Ans. 57.)
`
`Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over The CBS “Petition for Rulemaking” in
`view of Tsuboka or Marti. (Sec. II.l.F, Final Rejection 41; Sec. IV.F, Ans. 58.)
`
`Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the “Mode 2” captioning feature of the Antiope
`teletext standard as evidenced by Antiope Videotext System, Sechet, and The CBS “Petition for Rulemaking.” (Sec. II.l.G,
`Final Rejection 42; Sec. IV.G, Ans. 59.)
`
`Claims 20-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the “Mode 2” captioning feature of the Anti-
`ope teletext standard as evidenced by Antiope Videotext System, Sechet, and The CBS “Petition for Rulemaking.” (Sec.
`II.l.H, Final Rejection 47; Sec. IV.H, Ans. 65.)
`
`Obviousness-type double patenting
`Claim 20 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 3 of U.S.
`Patent 4,704,725. (Sec. III.A, Final Rejection 50; Sec. V.A, Ans. 69.)
`
`Claim 20 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 1 of U.S.
`Patent 4,694,490. (Sec. III.B, Final Rejection 54; Sec. V.B, Ans. 73.)
`
`Claim 20 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 7 of U.S.
`Patent 4,694,490. (Sec. III.C, Final Rejection 56; Sec. V.C, Ans. 76.)
`
`Claim 20 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 1 of U.S.
`Patent 4,704,725. (Sec. III.D, Final Rejection 56; Sec. V.D, Ans. 76.)
`
`Claim 21 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 3 of U.S.
`Patent 4,704,725. (Sec. III.E, Final Rejection 56; Sec. V.E, Ans. 76.)
`
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`Claim 21 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 1 of U.S.
`Patent 4,694,490. (Sec. III.F, Final Rejection 56; Sec. V.F, Ans. 77.)
`
`Claim 21 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 7 of U.S.
`Patent 4,694,490. (Sec. III.G, Final Rejection 57; Sec. V.G, Ans. 77.)
`
`Claim 21 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 1 of U.S.
`Patent 4,704,725. (Sec. III.H, Final Rejection 57; Sec. V.H, Ans. 77.)
`
`*8 Claim 22 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 4 of
`U.S. Patent 4,704,725. (Sec. III.I, Final Rejection 57; Sec. V.I, Ans. 78.)
`
`Claim 22 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 2 of U.S.
`Patent 4,694,490. (Sec. III.J, Final Rejection 57; Sec. V.J, Ans. 78.)
`
`Claim 22 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 8 of U.S.
`Patent 4,694,490. (Sec. III.K, Final Rejection 57; Sec. V.K, Ans. 78.)
`
`Claim 22 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 2 of U.S.
`Patent 4,704,725. (Sec. III.L, Final Rejection 57; Sec. V.L, Ans. 79.)
`
`Claim 24 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 3 of U.S.
`Patent 4,704,725. (Sec. III.M, Final Rejection 58; Sec. V.M, Ans. 79.)
`
`Claim 24 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 1 of U.S.
`Patent 4,694,490. (Sec. III.N, Final Rejection 58; Sec. V.N, Ans. 79.)
`
`Claim 24 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 7 of U.S.
`Patent 4,694,490. (Sec. III.O, Final Rejection 58; Sec. V.O, Ans. 80.)
`
`Claim 24 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 1 of U.S.
`Patent 4,704,725. (Sec. III.P, Final Rejection 58; Sec. V.P, Ans. 80.)
`
`Claim 24 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 4 of U.S.
`Patent 4,694,490. (Sec. III.Q, Final Rejection 58; Sec. V.Q, Ans. 80.)
`
`Claim 25 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 3 of U.S.
`Patent 4,704,725. (Sec. III.R, Final Rejection 59; Sec. V.R, Ans. 81.)
`
`Claim 25 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 1 of U.S.
`Patent 4,694,490. (Sec. III.S, Final Rejection 59; Sec. V.S, Ans. 81.)
`
`Claim 25 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 7 of U.S.
`Patent 4,694,490. (Sec. III.T, Final Rejection 59; Sec. V.T, Ans. 81.)
`
`Claim 25 stands rejected under the judicially created doctrine of obviousness-type double patenting over claim 1 of U.S.
`Patent 4,704,725. (Sec. III.U, Final Rejection 59; Sec. V.U, Ans. 82.)
`
`DISCUSSION
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`Claim interpretation
`*9 Claim interpretation necessarily precedes the addressing of questions of patentability. See, e.g., Gechter v. Davidson,
`116 F.3d 1454, 1457 (Fed. Cir. 1997) (“Implicit in our review of the Board's anticipation analysis is that the claim must
`first have been correctly construed to define the scope and meaning of each contested limitation.”). We state our inter-
`pretation of limitations which we feel are in need of interpretation or clarification.
`
`Ordinarily, claims under reexamination are given their broadest reasonable interpretation consistent the patent disclosure.
`See In re Am. Acad, of Set Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Construing claims broadly is not unfair to
`the patentee because the patentee has the opportunity to amend the claims to obtain more precise claim coverage. Id.
`However, this appeal involves an expired patent and previous panels of this Board have held:
`[I]n reexamination proceedings in which the PTO is considering the patentability of claims of an expired patent
`which are not subject to amendment, a policy of liberal claim construction may properly and should be applied. Such
`a policy favors a construction of a patent claim that will render it valid, i.e., a narrow construction, over a broad con-
`struction that would render it invalid.
`Ex parte Bowles, 23 USPQ2d 1015, 1017 (BPAI 1991) (quoting Ex parte Papst-Motoren, 1 USPQ2d 1655, 1656 (BPAI
`1986)) (both nonprecedential). We have not found any CCPA or Federal Circuit cases on this issue. While it is some-
`times said that claims should be construed to uphold their validity, it is now recognized that this claim construction is
`limited to resolving ambiguities in a claim:
`While we have acknowledged the maxim that claims should be construed to preserve their validity, we have not ap-
`plied that principle broadly, and we have certainly not endorsed a regime in which validity analysis is a regular com-
`ponent of claim construction. See Nazomi Communications [Inc. v. ARM Holdings, PLC], 403 F.3d [1364,] 1368-69
`[(Fed. Cir. 2005)]. Instead, we have limited the maxim to cases in which “the court concludes, after applying all the
`available tools of claim construction, that the claim is still ambiguous.”Liebel-Flarsheim [Co. v. Medrad, Inc.], 358
`F.3d [898,] 911 [(Fed. Cir. 2004)] [other citations omitted].
`Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (en banc), accord Cross Medical Prods. Inc. v. Medtronic
`Sofamor Danek, Inc., 424 F.3d 1293, 1304 (Fed. Cir. 2005).
`
`*10 Importantly, it is improper to use the possible invalidity of the claims, if broadly construed, over the prior art as the
`reason for construing them narrowly. The Saunders Group, Inc. v. ComforTrac, Inc., 492 F.3d 1326, 1335 (Fed. Cir.
`2007) (citing Liebel-Flarsheim, 358 F.3d at 911). As stated by Judge Learned Hand in Foxboro Co. v. Taylor Instruments
`Companies, 157 F.2d 226, 232 (2d Cir. 1946):
`We should have no warrant for limiting the claims by the elements of the disclosure which they do not include, even
`if the elements were new. A patentee who claims broadly must prove broadly; he may not claim broadly, and recede
`as he later finds that the art unknown to him has limited his invention. That is the chance he must take in making
`broad claims … He may not keep them by interpretative limitation ….
`A fundamental principle of patent law is that the claims measure the invention. United Carbon Co. v. Binney & Smith Co.
`, 317 U.S. 228, 232 (1942). It is improper, and unfair to the public, to narrow the scope of a claim by interpretation by
`implicitly reading in disclosed limitations from the specification which have no express basis in the claims. There should
`be no exception for claims of an expired patent; there is no unfairness to patentee who has received the full patent term
`for the broad construction.
`
`We expressly adopt and incorporate by reference the Board's reasoning in the decision and decision on rehearing in Ap-
`peals 2007-4044 and 2008-0334 that unambiguous claims in an expired patent should not be construed more narrowly
`than their ordinary and customary meaning during reexamination to preserve patentability.
`
`Original patent claims in a reexamination are not examined for compliance with the definiteness requirements of 35
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`U.S.C. § 112 ¶ 2.
`
`Third Party Reexamination Requester Thomson (hereinafter “Requester”) notes that Appellant represented in litigation
`that the preambles of the asserted claims are not claim limitations (Req. for Reexam 30).See Plaintiffs Joint Objections
`And Response to Defendant Thomson Multimedia, Inc.'s First Set of Interrogatories at 5 (“Plaintiffs further contend that
`the preambles of the claims are not claim limitations.”) (Exhibit 15 to Request for Reexamination). Requester states that
`“[p]resumably Harvey believes that this applies to all of the claims of the seven issued patents, and not merely to the As-
`serted Claims” (Req. for Reexam. 30). Except to the extent terms in the preamble provide antecedent basis for terms in
`the claim body, we assume that the preambles are not claim limitations based on Appellant's assertion in litigation. Cf.
`Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1578, 34 USPQ2d 1673, 1678 (Fed. Cir. 1995) (In the in-
`verse situation: “A patentee may not proffer an interpretation for the purposes of litigation that would alter the indisput-
`able public record consisting of the claims, the specification and the prosecution history, and treat the claims as a ‘nose
`of wax.”’). Our interpretation for the purposes of determining patentability in no way limits Requester from arguing in
`litigation that the preambles are, in fact, claim limitations for purposes of determining infringement.
`
`*11 As a general comment, although the '825 patent describes the inventions in the context of signals embedded in televi-
`sion and radio signals, the claims are not limited to any particular kind of medium.
`
`Claim 1
`Claim 1 contains seven “means” terms. When a claim uses the term “means” to describe a limitation, a presumption in-
`heres that the inventor used the term to invoke § 112 ¶ 6. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir.
`2003).“This presumption can be rebutted when the claim, in addition to the functional language, recites structure suffi-
`cient to perform the claimed function in its entirety.”Id. Appellant's Brief does not identify any of the “means” terms as
`being in means- plus-function format under 35 U.S.C. § 112 ¶ 6 or state what structure in the patent corresponds to the
`claimed function as required by 37 C.F.R. § 41.37(c)(1)(v). Several of the “means” terms fall under within a § 112 ¶ 6 in-
`terpretation because no structure is recited to perform the function, such as the “first control means,” the “second control
`means,” and the “control means.” However, the scope of the “means” limitations are not critical to the patentability re-
`jections because Appellant argues that the functions are not performed.
`
`Claim 1 recites “first control means responsive to said detected signal to activate and/or deactivate equipment external to
`said signal processor system.”The only function of the “first control means” is “to activate and/or deactivate equipment
`external to said signal processor system” in response to the detected signal.
`
`Claim 1 recites “second control means activated by said detected signal to monitor the performance and/or output of said
`first control means.”We note three things. First, since the only function of the first control means is to “activate and/or
`deactivate” external equipment, the function “monitor the performance and/or output of said first control means” requires
`monitoring whether the first control has performed its function of activating or deactivating the external equipment or
`has output a signal to perform the function of activating or deactivating the external equipment. Second, the second con-
`trol means must be “activated by said detected signal.” Third, the limitation does not require the second control means to
`monitor the “instantaneous” performance or output of the first control means; it could monitor the performance or output
`at any time after detecting the signal.
`
`*12 Claim 1 further recites “a recorder means for receiving and recording data collected by said monitor means.”There is
`no antecedent basis for “said monitor means.” Compare this to claim 2 which recites a “monitor means.” For this appeal,
`we assume that “monitor means” refers to the “second control means … to monitor ….” The data collected by the monit-
`or means and recorded by the recorder means must at least include data regarding the activation or deactivation of ex-
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`PMC Exhibit 2021
`Apple v. PMC
`IPR2016-00755
`Page 11
`
`

`
`Page 12
`
`ternal equipment.
`
`Claim 2
`Claim 2 recites “control means responsive to said detected signal to activate and/or deactivate equipment external to said
`signal processor system.”The only claimed function of the “control means” is “to activate and/or deactivate equipment
`external to said signal processor system” in response to the detected signal, as discussed in connection with claim 1.
`Claim 2 further recites “monitor means activated by said detected signal to monitor the performance and/or output of said
`external equipment,” which includes monitoring any performance or output of the external equipment. This is unlike
`claim 1 which is limited to monitoring a first control means which only performs the function of activating or deactivat-
`ing external equipment.
`
`Claim 14
`Claim 14 recites a series of steps in the form “the step of.” There is no presumption that claims in “step of” format, as
`opposed to “step for” format, are in step-plus-function format. See Masco Corp. v. United States, 303 F.3d 1316, 1327
`(Fed. Cir. 2002).
`
`Claim 14 recites “(d) the step of passing said embedded signals to a device or devices to be controlled based on instruc-
`tions identified within said embedded signals.”This limitation is somewhat ambiguous in the sense that it is not clear
`whether the limitation “based on instructions identified within said embedded signals” qualifies the step of “passing” or
`the devices to be “controlled.” The '490 patent, from which priority is claimed, describes both passing signal words to
`external equipment based on instructions (e.g., col. 7, ll. 49-52) and the external equipment being controlled based on the
`instructions (e.g., the microcomputer 205 in Fig. 7A). Since the next limitation of claim 14 recites “(e) the step of con-
`trolling said devices based on the instructions,” we interpret step (d) to mean that embedded signals are passed to a
`device or devices without such passing being based on instructions in the embedded signals.
`
`Claims 20-25
`Claims 20 and 24 recite a “method of generating computer output at a multiplicity of receiver stations each of which in-
`cludes a computer” in the preamble, and the step of “transmitting an instruct-to-generate signal to said computers at a
`time when corresponding user