Trials@uspto.gov
`571-272-7822
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` Paper 44
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`Entered: August 31, 2016
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`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 IPR2014-01527
`Patent 5,887,243
`
`
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`page 1
`
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`571-272-7822
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` Paper 44
`
`
`Entered: August 31, 2016
`
`
`
`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 IPR2014-01527
`Patent 5,887,243
`
`
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`page 1
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`
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`IPR2014-01527
`Patent 5,887,243
`
`I. INTRODUCTION
`Patent Owner filed this Request for Rehearing (“Reh’g Req.” or
`“Rehearing Request”) asserting that the panel overlooked several issues in
`the Final Written Decision (Paper 42, “FWD”).
`The applicable standard for a rehearing request is set forth in 37
`C.F.R. § 42.71(d), which provides the following:
`A party dissatisfied with a decision may file a request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, opposition, or a reply.
`For the reasons provided below, we deny Patent Owner’s request for
`rehearing.
`
`II. DISCUSSION
`A. Claim Construction Standard
`The Final Written Decision issued on March 23, 2016,1 exactly 17
`
`years from the date of issuance of the ’243 patent, March 23, 1999. Patent
`Owner now argues, in its Rehearing Request, that we should adopt a claim
`construction standard pursuant to Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc). See Reh’g Req. 4–5. Patent Owner does not
`
`
`1 The face of the Final Written Decision erroneously lists an “[e]ntered” date
`of March 23, 2014, a clerical error we hereby correct.
`2
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`point to where in the record it previously urged the Board to adopt such a
`construction.
`
`Patent Owner’s Rehearing Request also does not show how any
`particular claim construction under Phillips would alter the outcome. We
`already determined in the Final Written Decision that “[t]he outcome in this
`case would not be altered under a . . . claim construction standard pursuant
`to Phillips.” FWD 8; see also Dec. on Inst. 8 (citing In re Translogic Tech.
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) and stating that “claim terms are
`presumed to carry their ordinary and customary meaning as would be
`understood by one of ordinary skill in the art at the time of the
`
`invention”).
`B. Second Remote Signal Source
`Patent Owner contends that the Board erroneously construed the
`“second remote source” of claim 13. Reh’g Req. 5–6. Patent Owner does
`not point to where the Board overlooked or misapprehended a previous
`argument by Patent Owner that the written description, which describes a
`remote keyboard, does not support a remote control device as a “second
`remote [signal] source.” See Ex. 1003, 4:12; 4:28. Patent Owner also does
`identify where the Board overlooked or misapprehended a previous
`argument by Patent Owner that a person of ordinary skill would not have
`recognized, pursuant to the plain meaning of a remote signal source, the
`well-known “remote” control device as disclosed in the prior art (infra note
`2) and in the ’243 patent.
`
`3
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`Claim 13 refers to two remote sources: “[c] transmitting at least a
`portion of said data from said first remote data source to said receiver
`station” and “[d] transmitting from a second remote source to said receiver
`station a signal which controls said receiver station.” See FWD 6. The
`claim construction at issue applies to the second remote source, which
`requires transmitting a signal, as opposed to the first remote data source,
`which requires transmitting data. See FWD 6, 38–39, 59–60.
`In the Final Written Decision, we adopted Petitioner’s contention that
`the term “remote” in the “second remote source” encompasses the “remote”
`controls disclosed in the prior art of record, based in part on a description of
`such remote controls (as a “remote keyboard”) in the background of the ’243
`patent. See FWD 20–23.2 These ubiquitous remote control devices,
`described in the ’243 patent and prior art at the time, constitute evidence of
`one plain meaning of the term “remote.” See id. For example, as part of our
`analysis of the “second remote source” with respect to the prior art, we
`found that “the ’243 patent . . ., consistent with the normal meaning of a
`‘remote’ control device, does not preclude Summers’s “‘hand-held remote
`control device of any suitable known form.’” See FWD 59 (quoting Ex.
`1010, 6:35–36).
`
`
`2 See, e.g., FWD 23 (citing Ex.1036 ¶ 28 (noting that Reiter, Ex. 1025, 3:54–
`57, Summers, Ex. 1010, 6:35–40, and another prior art reference each refer
`to a “remote control” wireless device)); Ex. 1003, 3:40–44 (describing a
`“remote keyboard” in the vicinity of, and controlling, a television receiver).
`4
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`In addition, we cited, for support, Brookhill-Wilk 1, LLC v. Intuitive
`Surg., Inc., 334 F.3d 1294, 1297 (Fed. Cir. 2003) (construing “remote
`location” to encompass locations in the same room, and concluding that the
`lower court erred by construing “remote location” as “a location outside the
`operating room where the patient undergoing surgery is located”).
`Brookhill-Wilk did not involve the broadest reasonable construction
`standard, but nonetheless, the court construed “remote” consistent with our
`adoption of Petitioner’s construction; i.e., the term “remote” includes
`relatively local control with respect to the recited “second remote [signal]
`source.”
`Brookhill-Wilk held that “[t]he overall limitation ‘remote location
`beyond a range of direct manual contact’ as used in the claims must be
`construed to encompass all locations where the surgeon is beyond direct
`physical contact with a patient, including locations within the operating
`room.” Id. at 1304. This construction is consistent with a plain meaning of
`“remote” that includes “locations that are separated by intervals greater than
`usual.” 3 Therefore, Brookhill-Wilk supports virtually the same construction
`that we applied here, because a typical prior art remote control device
`allowed a user or operator to control receiver equipment at distances greater
`
`
`3 Brookhill-Wilk “construe[d] the term ‘remote location’ to encompass not
`just locations that are ‘far apart or ‘distant,’ but also those locations that are
`merely ‘separated by intervals greater than usual.’. . . These locations need
`not be outside the operating room.” Id. at 1302.
`
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`5
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`than an arm’s length––which at the time of the invention, were distances
`“separated by intervals greater than usual,” id.,––i.e., otherwise a user would
`have had to control the receiver manually (within an arm’s length). See
`supra note 2; FWD 23 (discussing wireless devices as remote control
`devices).
`Brookhill-Wilk also requires a patentee to “express a manifest
`exclusion or restriction limiting the claim term,” from one of several plain
`meanings encompassed by the patent. Id. at 1301. Furthermore, “where the
`written description otherwise supports the broader interpretation, ‘we are
`constrained to follow the language of the claims’ and to give the claim term
`its full breadth of ordinary meaning as understood by persons skilled in the
`relevant art.” Id. at 1301–02 (citing Teleflex, Inc. v. Ficosa N. Am. Corp.,
`299 F.3d 1313, 1328 (Fed.Cir.2002); Rexnord Corp. v. Laitram Corp., 274
`F.3d 1336, 1342 (Fed. Cir. 2001)).
`Analogous to the remote operating surgeons involved in Brookhill-
`Wilk, 334 F.3d at 1302–04, the ’243 patent shows that the term “remote
`[signal] source” embraces two ordinary and normal meanings: one
`encompassing a remote control device or remote keyboard that sends
`signals, the other encompassing a relatively far away source that may send
`signals and/or data. The cited prior art to Reiter and Summers coalesces
`with the ’243 patent to support the former plain meaning. See note 2. In its
`Request for Rehearing, Patent Owner contends that the “remote keyboard”
`reference in the ’243 patent applies only to prior art instead of the disclosed
`invention. See Reh’g Req. 6. Patent Owner characterizes In re Abbott
`
`6
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`Diabetes Care Inc., 696 F.3d 1142, 1148 (Fed. Cir. 2012) as reversing [a
`claim] construction because “the Board improperly relied on language in its
`patents that was directed . . . to prior art devices.” Id.
`Patent Owner’s characterization overstates the holding and thrust of
`Abbott. In Abbot, the court reversed the Board’s claim construction that
`included sensors with wires based on several factors, including the
`following: 1) “the specification contains only disparaging remarks with
`respect to the external cables and wires of the prior-art sensors,” 2) “the
`claims themselves suggest connectivity without the inclusion of cables or
`wires,” and 3) “the primary purpose of the invention was to provide ‘a
`small, compact device that can operate the sensor and provide signals to an
`analyzer without substantially restricting the movements and activities of the
`patient.’” Abbott, 696 6 F.3d 1149 (emphases added).
`Other factors existed in Abbott, but not one of the factors exist here.
`Regarding the first factor listed above, the ’243 patent does not disparage
`prior art remote control devices as a signal source for any reason, implicitly
`or explicitly, let alone because they were not remote enough (i.e., not far
`enough away from the receiver station). Regarding the second listed point,
`Patent Owner contends that construing “remote” in the context of a prior art
`remote keyboard, or remote control device, effectively ignores the word
`“source” in the claim term “remote source.” Reh’g Req. 5–6. Patent Owner
`also contends we construed “remote” as a noun instead of as an adjective.
`Id. at 5. These arguments do not show an overlooked matter. In the context
`of the ’243 patent, a remote control device or remote keyboard is a remote
`
`7
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`source. Such a remote control device sends a wireless signal––i.e., it is a
`source of the signal that it sends. Based on the ’243 patent’s discussion of
`the remote keyboard in the prior art, and the broad recitation of a remote
`source as a “second remote source” that sends a signal for control, the
`Patentee embraced the remote keyboard or known remote control devices as
`a type of source for the “second remote source.”
`In other words, claim 13 requires that the second remote source
`transmit a control signal: “transmitting from a second remote source to said
`receiver station a signal which controls said receiver station to select and
`process an instruct signal.” Patent Owner ignores the broad claim language
`and the disclosure of a remote control device that tracks claim 13, and
`essentially argues that an implicit geographical limitation exists as to how
`remote the second source must be from the receiver station. But neither
`claim 13, nor the ’243 patent disclosure, specify any degree of remoteness
`for a second remote source, and Patent Owner also does not specify a clear
`degree of required remoteness in its arguments.
`Implicitly addressing the third factor, the primary purpose factor
`discussed in Abbot, Patent Owner contends that our construction “makes no
`sense for an invention which recites a distributed communication system.”
`Reh’g Req. 5. To the contrary, claim 13 does not recite a “distributed
`communication system.” Patent Owner also contends that “every
`embodiment” requires a “geographically remote source.” Id. at 6. First,
`merely disclosing embodiments does not narrow a claim term, and even if it
`did, Patent Owner fails to explain how these embodiments apply to the
`
`8
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`“second remote (signal) source.” Second, the recited term “remote”
`constitutes a generic term and the disclosed term “geographically remote”
`constitutes one subset of the generic term that claim 13 does not recite. See
`Reh’g Req. 6. This is consistent with the ’243 patent’s treatment of the term
`“remote” as a generic term that encompasses a remote keyboard (or remote
`control device) and a geographically remote source. Third, the Rehearing
`Request only identifies a single embodiment––the “Wall Street Week”
`embodiment, and fails to tie that to a second remote (signal) source. Id.
`Regardless, these arguments track the arguments that Brookhill-Wilk
`dismissed:
`Stating that the surgeon would always be in the operating room
`when performing traditional surgery does not foreclose the
`presence of the surgeon within the operating room when
`performing remote surgery. The statements from the description
`of the preferred embodiment are simply that—descriptions of a
`preferred embodiment that permits surgeons to operate from
`across the world. Those statements do not indicate that the
`invention can only be used in such a manner. Absent a clear
`disclaimer of particular subject matter, the fact that the inventor
`anticipated that the invention may be used in a particular manner
`does not limit the scope to that narrow context.
`Brookhill-Wilk, 334 F.3d at 1302.
`Nothing in claim 13 requires a “geographically remote” second
`remote source, and nothing in the ’243 patent indicates that the primary
`purpose of the invention is a system that requires some (unspecified) degree
`of remoteness for a second remote signal source. Claim 13 also fails to
`
`9
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`specify from what entity the second remote source is remote, though it
`recites a receiver station and a first remote source.
`As outlined in the Final Written Decision:
`Relevant objectives of the invention include “combined
`medium programming” and “causing computers to generate and
`transmit programming, and for causing receiver apparatus to
`operate on the basis of programming and information received at
`widely separated times.” Id. at 6:40–52. The ’243 patent
`announces “great potential for combining the capacity of
`broadcast communications media to convey ideas with the
`capacity of computers to process and output user specific
`information.” Id. at 1:57–60. As an example, the [’243]
`Specification describes “[h]ereinafter” referring to “‘combined’
`media” as “the new media” that results from, for example, the
`combination of “general information” for large audiences (e.g.,
`stock market performance) from a television broadcaster with
`“information of specific relevance to each particular user” (e.g.,
`“your stock portfolio went down”). Id. at 1:60–67.
`FWD 14.
`Patent Owner does not contend in its Rehearing Request that we
`overlooked argument or evidence that shows how reading the claimed
`“second remote source” on a remote control device cannot achieve most, if
`not all, of these objectives. Including within the scope of a second remote
`(signal) source a range of remoteness spanning from distances near the
`claimed receiver station to greater distances does not detract from any
`applicable objectives that somehow implicitly may be imputed as a
`limitation in claim 13.
`Patent Owner argues that “the ’243 Patent, for example, describes
`remote stations as stations that are in ‘geographically separate locations.’”
`10
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`PO Resp. 23 (citing Ex. 1003 at 221:50–53). In context, this description
`implies at most that the claimed “first remote data source” and “second
`remote source” as set forth in claim 13 may be geographically separate from
`each other. Also, a second remote source that includes a remote control
`device does not preclude geographically remote receiver stations, and claim
`13 only recites and requires one “receiver station.”
`A remote source sends a signal for control, according to claim 1,
`thereby providing “automatic wireless control of [the receiver station] from
`an undefined distance.” See FWD 22. Patent Owner does not challenge the
`finding in the Final Written Decision pointing out that “remote controls were
`ubiquitous” at the time of the invention, and the determination that “the ’243
`patent does not exclude these ubiquitous remote controls from the ordinary
`meaning of ‘remote’ at the time of the invention.” See FWD 22 (citing
`Ex.1036 ¶ 28 (noting that Reiter, Ex. 1025, 3:54–57, Summers, Ex. 1010,
`6:35–40, and other references refer to a “remote control”)); note 2.
`Regarding Patent Owner’s argument that it supplied a construction
`through its expert that we did not adopt (see Reh’g Req. 5), typically,
`experts “cannot be used to prove ‘the proper or legal construction of any
`instrument of writing,’” Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct.
`831, 841 (2015) (citing Winans v. New York & Erie R. Co., 21 How. 88,
`100–01 (1859)), and “in the actual interpretation of the patent the court
`proceeds upon its own responsibility, as an arbiter of the law, giving to the
`patent its true and final character and force,” id. (citing Markman v.
`Westview Instruments, Inc., 517 U.S. 370, 388 (1996)).
`
`11
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`In any event, Dr. Russ’s testimony is conclusory: it fails to give a
`reason why an ordinarily skilled artisan would require a second remote
`signal source to be geographically remote, what that means in terms of a
`specified distance, and why a second remote signal source excludes a remote
`control device. See Ex. 2009 ¶ 79. Additionally, we considered testimony
`by both experts on the issue, and made the following observation: “Dr.
`Neuhauser and Petitioner also persuasively explain that Patent Owner’s
`assertion that Dr. Neuhauser supports the Patent Owner’s position takes Dr.
`Neuhauser’s testimony out of context. See Ex. 1036 ¶¶ 33–34 (explaining
`that Dr. Russ conflates alternative embodiments advanced by Dr.
`Neuhauser).” FWD 22.4
`
`Patent Owner essentially defines a second remote source by where it
`is not located––i.e., not located within the boundaries of a receiver station––
`a receiver station “does not encompass local peripheral devices.” PO Resp.
`26. Yet, the argument and record do not specify how to determine any
`claimed receiver station boundaries (such as an operating room as argued
`unpersuasively in Brookhill-Wilk). Depending on the boundaries and
`relative power of the source, a remote control device could operate from
`outside those boundaries. See FWD 59–60 (finding that “Summers’s remote
`control device includes ‘any suitable’ degree of power with which to
`facilitate varying degrees of remoteness”) (quoting Ex. 1010, 6:35–36)). In
`
`
`4 Paragraphs 32–34 of Exhibit 1036 refer to Dr. Russ’s testimony at
`paragraph 83 of Exhibit 2009. We considered all cited testimony by both
`experts (and some that was not cited specifically for context).
`12
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`Patent Owner’s view, the power limits of a prior art remote control device
`itself somehow defines the boundaries of the claimed receiver station.
`Nothing in the ’243 patent supports such a construction, and it lacks a
`meaningful line of demarcation for the boundaries of the receiver station.
`Based on the foregoing discussion, we determine Patent Owner has
`not carried its burden of demonstrating that our Final Written Decision
`should be modified. See 37 C.F.R. § 42.71(d).
`
`C. Priority
`The prior art status of Reiter (filed May 28, 1985) under 35 U.S.C.
`§102(e) hinges on the effective priority date for the ’243 patent with respect
`to claim 13. Petitioner contends that the earliest effective priority date for
`the ’243 patent is September 11, 1987. Pet. 9. The ’243 patent was filed as
`a CIP (continuation-in-part) application through a chain of continuing
`applications purportedly having a priority 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”). Patent Owner contends that
`the effective priority date of the ’243 patent is “the November 3, 1981 filing
`date of the ’490 [p]atent.” PO Resp. 8.
`As set forth below, Patent Owner contends that we overlooked or
`misapprehended three central matters issues in determining that the ’243
`patent, a CIP, is not entitled to the earlier filing date of the ’490 patent. See
`Reh’g Req. 3–4.
`
`13
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`1. Mass Medium Program
`Patent Owner contends that we improperly denied priority to the
`earlier filing date of the ’490 patent, because we erroneously determined that
`Patent Owner impermissibly broadened the scope of the term
`“programming” as it appears in the ’490 patent via an amendment to the
`’243 patent Specification.5 See Reh’g Req. 4, 13–15. In our Final Written
`Decision, we determined that the disclosed term “programming” in both
`patents relates to the claim 13 term “mass medium program.” FWD 33. The
`Rehearing Request notes that the two terms are different and contends that
`“the Board’s analysis focuses on the wrong term.” Id. at 14. Also alleging
`that our analysis improperly relies upon the Abstract of the ’490 patent to
`determine the scope of “programming,” the Rehearing Request provides new
`citations to the ’490 patent allegedly as describing “programming” in a
`different context than the Abstract (which we relied upon).6 See FWD 33
`
`
`5 Reference to the ’243 patent “Specification” indicates the “Specification”
`of the ’243 patent being challenged in this inter partes review, whereas
`reference to the ’490 patent “specification” refers to the specification of the
`’490 patent (which is not being challenged here).
`6 The Rehearing Request contends that “in the timeframe in which this
`patent was examined, it was impermissible for the abstract to be used as a
`source for claim construction.” Reh’g Req. 14 (citing MPEP (Rev. 52,
`1977) § 608.01(b)). Patent Owner also contends that we misconstrued the
`import of the earlier Abstract. See id. at 14–15. Accordingly, we address
`and rely on Patent Owner’s new citations to the ’490 patent.
`
`14
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`(citing Ex. 1002, Abstract); Reh’g Req. 14–15 (citing Ex. 1002, 3:51–55,
`10:48–49).7
`These newly-cited passages of the ’490 patent do not discuss the term
`“mass medium program.” Rather, one newly-cited passage refers to
`“provid[ing] techniques whereby automatically, single channel, single
`medium transmissions, television, radio, or other electronic transmissions,
`[which] may be recorded, [and] co[]ordinated in time with other programing
`previously transmitted and recorded.” Ex. 1002, 3:51–56; Reh’g Req. 15.
`The other newly-cited passage states that “[p]rogramming can also be
`manually delivered . . . on prerecorded video tapes and video discs.” Ex.
`1002, 10:48–49); Reh’g Req. 15.
`On the other hand, the later-filed ’243 patent states that “the term
`‘programming’ refers to everything that is transmitted electronically to
`entertain, instruct or inform, including television, radio, broadcast print, and
`
`
`7 The Patent Owner Response does not cite directly to these newly-cited
`passages in Exhibit 1002, although it does cite to Patent Owner’s declarant’s
`testimony, which in turn cites to the passages––amounting to an improper
`incorporation-by-reference under Rule 42.6 (a) (3). See PO Resp. 14 (citing
`Ex. 2009 ¶¶ 40–42). Ordinarily, this type of newly-cited evidence in a
`rehearing request fails to show an overlooked matter. See 37 C.F.R.
`§ 42.71(d) (rehearing request must identify “the place where each matter
`was previously addressed”). Nevertheless, we consider the arguments by
`Patent Owner on this issue (and the disclaimer issue discussed below), as
`Patent Owner contends that addressing an issue not discussed in the
`Institution Decision (albeit raised by both parties in their briefs) for the first
`time in the Final Written Decision is unfair. See Reh’g Req. 6–7; infra
`Section II.C.3 (disclaimer issue).
`
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`computer programming as well as combined medium programming.” See
`Ex. 1003, 6:37–40 (emphasis added); FWD 33 (quoting and relying on a
`portion of this broad disclosure). These newly-cited passages do not upset
`the determination in the Final Written Decision that the later-filed ’243
`patent disclosure is broader with respect to “programming” and “mass
`medium program” than the disclosure of the earlier-filed ’490 patent. See
`FWD 33.
`The Rehearing Request alleges that the determination is “defective,”
`but fails to explain how the newly-cited passages show that the term
`“programming” has materially equal breadth in the two patents. See Reh’g
`Req. 13–15 (alleging five reasons why the determination is “defective”
`without addressing the central issue). The broad definition in the ’243 patent
`potentially includes not only “combined medium programming” and
`“computer programming,” it also includes “everything . . . electronically
`transmitted” (subject to the quoted qualifiers) at the time of filing of the ’243
`patent (i.e., assuming for the sake of argument written description exists for
`“everything” so transmitted), whereas the earlier disclosure, in context, only
`includes “other electronic transmissions”––i.e., in context, those “other”
`transmissions that were similar to conventional “single channel, single
`medium,” “television” or “radio” transmissions at the time of filing of the
`’490 patent. Compare Ex. 1002, 6:37–40, with Ex. 1003, 3:51–56, 10:48–
`49; see Pet. 11–13 (discussing similar differences in the two patent
`disclosures). Accordingly, it follows that “mass medium program,” which is
`a type of a program (or programming) including more than a single channel
`
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`or medium, necessarily also must encompass broader subject matter in the
`later-filed ’243 patent relative to the earlier-filed ’490 patent.8
`Furthermore, as stated in the Final Written Decision, Patent Owner
`“fails to clarify whether or not the broader definition of ‘programming’
`applies to the claim term “mass medium program” as recited in claim 13,
`and Patent Owner “does not dispute that ‘the 1981 [s]pecification [i.e., the
`’490 patent specification] describes the term ‘programming’ differently than
`the 1987 Specification.’” FWD 33 (quoting PO Resp. 13–14). In its
`Rehearing Request, notwithstanding its new citations to the ’490 patent that
`refer to “programming,” Patent Owner not only fails to explain why the ’490
`patent supports the term “mass medium program” in the same material
`fashion as the ’243 patent, Patent Owner implies that “programming” and
`“mass medium program” are not related. See Reh’g Req. at 14 (noting that
`the parties did not construe “programming” or “mass medium program” and
`contending that “the Board’s analysis focuses on the wrong term”).
`As we determined in the Final Written Decision, PowerOasis, Inc. v.
`T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008), controls the outcome
`here. FWD 33 (citing PowerOasis, 522 F.3d at 1306–11 (an original
`specification does not support a claim that receives a broader interpretation
`
`
`8 In a related case that involves a similar issue and the same respective 1981
`and 1987 specifications, Apple Inc. v. Personalized Media Commc’ns, LLC,
`IPR2016-00755, slip. op. at 20, 26 (PTAB June 24, 2016) (Paper 7,
`Preliminary Response), Patent Owner contends that programming includes
`“digital television programming” (id. at 20) having “all digital content” or
`including “an entire digital signal transmission” (id. at 26).
`17
`
`page 17
`
`
`
`IPR2014-01527
`Patent 5,887,243
`
`based on later-filed new matter describing a term of the claim)). Contrary to
`Patent Owner’s arguments, the Rehearing Request fails to distinguish
`PowerOasis. Reh’g Req. 15. Faced with Petitioner’s prima facie evidence
`that claim 13 is not entitled to priority to the earlier-filed ’490 patent (see
`Pet. 9–13 (citing Ex. 1005, 1043, 984–1044), see infra note 10), Patent
`Owner did not come forward and show with sufficient evidence or
`persuasive argument that the ’490 patent supports the disputed term with
`materially the same breadth that the ’243 patent supports it. See PO Resp.
`13–149; PowerOasis, 522 F.3d at 1305–06 (holding that the “district court . .
`. correctly placed the burden on [patentee] PowerOasis to come forward with
`evidence to prove entitlement to claim priority [from a CIP application] to
`an earlier filing date”). Of course, notwithstanding “shifting burden[s]” of
`“going forward with evidence” regarding priority, and assuming Patent
`Owner came forward with “sufficient evidence” or “persuasive argument,”
`Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir.
`2008) (“the phrase ‘going forward with evidence’ . . . mean[s] both
`producing additional evidence and presenting persuasive argument”), the
`burden of showing unpatentability, including a lack of priority, remains with
`
`
`9 Patent Owner’s argument that “the Examiner [in the ’243 patent
`Reexamination, infra note 10] subsequently dropped all rejections of claim
`13 [after finding a lack of priority to the ’490 patent] that relied on prior art
`references post-dating the 1981 priority date” does not mention that the
`Examiner ultimately deemed the issue moot because no intervening
`references were relied upon, as discussed below. See PO Resp. 13–14; FWD
`32 (citing Ex. 1005, 139).
`
`18
`
`page 18
`
`
`
`IPR2014-01527
`Patent 5,887,243
`
`Petitioner. See id. at 1327–28 (discussing PowerOasis). Petitioner satisfies
`its burden of persuasion even if Patent Owner met its burden of going
`forward, because the weight of evidence shows that Patentee effectively
`broadened the scope of claim 13 relative the earlier-filed ’490 patent.
`Attempting to distinguish Power Oasis, Patent Owner contends that
`the finding of a lack of priority “flies in the face” of two prior reexamination
`decisions and fails to consider another reexamination decision. See Reh’g
`Req. 4, 15 (citing Ex. 1005,10 56, Ex. 2003,11 20–21, Ex. 2006,12 13–16).
`Contrary to these arguments, the Final Written Decision does consider each
`reexamination proceeding. See FWD 3, 32–34 (citing and/or discussing Ex.
`1005, 2003, 2006).
`During the course of the instant trial, Petitioner persuasively argued,
`with respect to the 2010 reexamination decision (see Exhibit 2003, note 11),
`that the Board panel in that decision only determined that conditional
`priority existed––i.e., on the condition that Patent Owner limited the term
`
`
`10 Patent Owner cites “Reexam No. 90/006,688,” which we interpret to be a
`citation to Exhibit 1005, 56. See Rehear. Req. 15. Exhibit 1005 contains the
`reexamination record for the ’243 patent, including the Board’s “’243 patent
`Reexamination Decision,” Ex Parte Personalized Media Commc’ns, LLC,
`Appeal 2008-004816 (BPAI Mar. 5, 2009) (Reexam. Control. No.
`90/006,688).
`11 Ex Parte Personalized Media Commc’ns, LLC, App. No. 2009-006825
`(BPAI Jan. 19, 2010) (Reexam. Control Nos. 90/006,563 & 90/006,698, U.S
`Pat. No. 5,335,277).
`12 Ex Parte Personalized Media Commc’ns, LLC, App. No. 2008-004228
`(BPAI Dec. 6, 2008) (Reexam. Control No. 90/006,536, U.S Pat. No.
`4,965,825).
`
`19
`
`page 19
`
`
`
`IPR2014-01527
`Patent 5,887,243
`
`“programming” to the scope of the ’490 patent disclosure (albeit without
`deciding that scope). See Pet. Reply 8 (citing Ex. 2003, 21). For example,
`the Board panel reasoned that “[t]he fact that the later specification allegedly
`broadens the claim term [“programming’] is immaterial because the
`Appellant has a
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