Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 60
`Filed: March 8, 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 IPR2014-01533
`Patent 7,805,749
`_______________
`
`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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`APPLE EX. 1030
`Page 1
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`571.272.7822
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`Paper No. 60
`Filed: March 8, 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 IPR2014-01533
`Patent 7,805,749
`_______________
`
`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 claims 2,
`3, 9–13, 18, 24, 49, 52, and 53 of U.S. Patent No. 7,805,749 (Ex. 1001, “the
`’749 patent”) are unpatentable. We also determine that Patent Owner has
`not met its burden on its Motion to Amend regarding entry of proposed
`substitute claims 56–67, 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
`claims 2, 3, 9–13, 18, 24, 49, 52, and 53 of the ’749 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 claims 2, 3, 9–13, 18, 24, 49, 52, and 53
`as unpatentable under 35 U.S.C. § 103 in view of Powell1 and Guillou.2 See
`Paper 7 (“Dec. to Inst.”), 30.
`After institution of trial, Petitioner filed a request for rehearing
`(Paper 11), as did Patent Owner (Paper 14). The requests for rehearing were
`considered and denied. Papers 16, 23. Patent Owner then filed a Patent
`
`
`1 Chris Powell, Prestel: the Opportunity for Advertising, VIEWDATA AND
`VIDEOTEXT 1980–81: AWORLDWIDE REPORT, 1980 (“Powell,” Ex. 1014).
`2 U.S. Patent No. 4,337,483, issued June 29, 1982 (“Guillou,” Ex. 1022).
`2
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`Owner Response (Paper 27, “PO Resp.”), to which Petitioner filed a Reply
`(Paper 38, “Reply”).
`In addition, Patent Owner also filed a Motion to Amend the Claims
`(Paper 26), to which Petitioner filed an Opposition (Paper 39). Patent
`Owner then filed a Reply to Petitioner’s Opposition to the Motion to Amend
`the Claims. Paper 46.
`Patent Owner filed observations on the cross-examination of
`Petitioner’s declarant (Paper 51), to which Petitioner filed a response
`(Paper 54). Petitioner filed observations and amended observations on the
`cross-examination of Patent Owner’s declarant (Papers 53, 56), to which
`Patent Owner filed a response and an amended response (Papers 55, 58).
`An oral argument was held on Dec. 8, 2015. A transcript of the oral
`argument is included in the record. Paper 59 (“Tr.”).
`B. Related Proceedings
`Petitioner informs us that the ’749 patent is the subject of a lawsuit:
`Personalized Media Commc’ns, LLC v. Amazon.com, Inc., No. 1:13-cv-
`1608-RGA (D. Del. filed Sept. 23, 2013). Pet. 1. 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 41, 1.
`Petitioner also informs us that six patents related to the ’749 patent are the
`subject of concurrently-filed petitions for inter partes review. Pet. 1; Paper
`41, 1; see IPR2014-01527, IPR2014-01528, IPR2014-01530,
`IPR2014-01531, IPR2014-01532, and IPR2014-01534.
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`C. The ’749 Patent
`The ’749 patent discloses a system for using embedded signals to
`deliver personalized program content to a subscriber station. Ex. 1001,
`7:47–48, 15:14–46. One embodiment of the disclosed system is illustrated
`in Figure 7, and is reproduced below.
`
`
`
`Figure 7 shows that TV set 202, printer 221, and local input device 225 are
`connected to a system that includes micro-computer 205 and signal
`processor 200. Id. at 242:31–59. The ’749 patent describes personalized
`content being delivered to a subscriber substation by transmission of a
`message, which can be encrypted and decrypted. Id. at 246:26–29. The
`content is decrypted using a decryptor that is provided with the personalized
`content-containing message. Id. at 15:21–27. Personalized content can be
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`sent to and coordinated through computers, television, and printers. Id. at
`241:57–60.
`Another embodiment of the ’749 patent describes a subscriber
`watching a television program called “Exotic Meals of India.” Id. at
`241:50–246:58. According to the ’749 patent, midway through the program
`“Exotic Meals of India,” subscribers are offered a printout of the recipe and
`shopping list for the ingredients of the meal that is being prepared on the
`show. Id. at 242:63–66. Subscribers are prompted to enter a code, TV567#,
`into a local input device. Id. at 242:63–243:23. A receiver station receives
`the code, and accesses preprogrammed information (including “particular
`program unit information and TV567# information”) that is stored in a
`buffer at microcomputer 205. Id. at 241:61–65, 243:24–56; Figs. 7, 7F. One
`minute later, the program-originating studio embeds a second signal that
`includes “unit code identification information that identifies the
`programming of the information segment of said message” and a computer
`program for generating a user-specific recipe. Id. at 243:60–244:3. Receipt
`of this second signal causes the receiver station where the TV567# code was
`entered to execute the program (instructions) to generate a user-specific
`recipe. Id. at 244:4–59. The ’749 patent states that the information of the
`second message, i.e., the message containing the instructions for generating
`the recipe and shopping list, “can be encrypted and caused to be decrypted in
`any of the methods described above—for example, in the method of the first
`message of example #4.” Id. at 246:26–29.
`Example #4 of the ’749 patent specifically provides a process for
`decrypting a message in which a receiver station selects a “program unit
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`identification code,” selects preprogrammed key information, decrypts a
`message using a key, and stores the program unit information and decryption
`key information in a “meter record” at a recorder. Id. at 115:60–117:2. The
`information in the record is transferred to a remote billing station via a
`telephone connection. Id. at 48:45–60.
`D. Illustrative Claim
`As noted above, an inter partes review was instituted as to claims 2, 3,
`9–13, 18, 24, 49, 52, and 53 of the ’749 patent, of which claims 2, 18, and 49
`are the only independent claims. Claim 2 is illustrative of the challenged
`claims and is reproduced below:
`2. A method for mass medium programming promotion and delivery for
`use with an interactive video viewing apparatus comprising the steps
`of:
`receiving a first portion of said mass medium programming in a first
`programming signal, said first portion of mass medium
`programming including a video image that promotes a second
`portion of said mass medium programming;
`displaying said video image, said interactive video viewing apparatus
`having an input device to receive input from a subscriber;
`prompting said subscriber for a reply, during said step of displaying
`said video image, as to whether said subscriber wants said second
`portion of said mass medium programming promoted in said step
`of displaying of said video image, said interactive video viewing
`apparatus having a transmitter for communicating said reply to a
`remote site;
`receiving said reply from said subscriber at said input device in
`response to said step of prompting said subscriber, said interactive
`video viewing apparatus having a processor for processing said
`reply;
`processing said reply and selecting at least one of a code and a datum
`designating said second portion of said mass medium
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`programming to authorize delivery of said second portion of said
`mass medium programming;
`communicating said selected at least one of a code and a datum to a
`remote site;
`receiving said second portion of said mass medium programming in a
`second programming signal;
`decrypting said second portion of said mass medium programming by
`using said at least one of a code and a datum in response to said
`step of processing said reply; and
`delivering said mass medium programming to an output device.
`
`Ex. 1001, 287:17–52.
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`In re Cuozzo Speed Technologies, LLC, 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
`PTO regulation”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee,
`84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446). 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).
`Petitioner proposes a construction of the term “decrypting” in the ’749
`patent. Pet. 17–18. Patent Owner contests Petitioner’s proposed
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`construction for “decrypting” and contends that the terms “designating” and
`“selecting” should be construed. PO Resp. 9–18. We note that only terms
`which are in controversy need to be construed, and then only to the extent
`necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). We determine that no
`express constructions of these claim terms are required for our analysis as
`they are not necessary to resolve this proceeding. Our determination that
`none of the claim terms require construction is not impacted by whether we
`apply the broadest reasonable interpretation or the Phillips standard during
`our analysis of the claim. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
`Cir. 2005).
`B. Principles of Law
`To prevail in its challenges to the patentability of the claims, a
`petitioner must establish facts supporting its challenges by a preponderance
`of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
`unpatentable under 35 U.S.C. § 103(a) if the differences between the subject
`matter sought to be patented and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) objective evidence of nonobviousness, i.e., secondary
`considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`We analyze the instituted grounds of unpatentability in accordance
`with the above-stated principles.
`C. Level of Ordinary Skill in the Art
`According to Petitioner’s declarant, Mr. Slinn, a person of ordinary
`skill in the art relevant to the ’749 patent would have had “a Bachelor’s
`degree in Electrical Engineering or a closely related field” and would have
`had between two and four years of experience in “implementation of
`communications systems and controlling these systems (or similar types of
`systems) through the use of computer technology.” Ex. 1004 ¶ 24. Patent
`Owner does not offer any contrary explanation regarding who would have
`qualified as a person of ordinary skill in the art relevant to the ’749 patent
`and appears to agree with Petitioner’s characterization. See PO Resp. 5.
`Additionally, Patent Owner’s declarant, Dr. Alfred C. Weaver (“Dr.
`Weaver”), uses the level of skill in the art articulated by Mr. Slinn. Ex. 2014
`¶¶ 39, 40.
`Based on our review of the ’749 patent, the types of problems and
`solutions described in the ’749 patent and cited prior art, and the testimony
`of Petitioner’s declarant, we adopt Petitioner’s definition of a person of
`ordinary skill in the art at the time of the claimed invention. We note that
`the applied prior art also reflects the appropriate level of skill at the time of
`the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001).
`D. Asserted Obviousness of Claims 2, 3, 9–13, 18, 24, 49, 52, and 53
`in View of Powell and Guillou
`Petitioner contends claims 2, 3, 9–13, 18, 24, 49, 52, and 53 of the
`’749 patent are unpatentable under 35 U.S.C. § 103 in view of Powell and
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`Guillou. Pet. 45–59; Reply 2–21. Patent Owner disputes Petitioner’s
`position, arguing that the cited references fail to disclose all the elements
`required by the challenged claims (PO Resp. 26–33, 38–50), there was no
`motivation to combine the cited references (id. at 34–38), and evidence of
`secondary considerations outweighs a prima facie finding of obviousness
`(id. at 51–56). We have reviewed the Petition, the Patent Owner’s
`Response, and Petitioner’s Reply, as well as the relevant evidence discussed
`in those papers and other record papers. For reasons that follow, we
`determine that Petitioner has shown by a preponderance of the evidence that
`the challenged claims of the ’749 patent would have been obvious in view of
`Powell and Guillou.
`1. Overview of Powell
`Powell discloses potential advertising opportunities on an interactive
`videotex system known as Prestel. Ex. 1014, 233. Videotex generally
`referred to a point-to-point computer network system in which a user could
`query a host computer for “pages” of information through a telephone line
`using a modem, and the retrieved information would be displayed on a TV.
`Ex. 1004 ¶ 78. Prestel’s videotex data was transmitted via telephone or
`cable television lines to a computer and users were billed for time spent
`searching, accessing, and retrieving information. Ex. 1015, 8–12.
`Powell discusses several different types of advertising as available on
`videotex systems, such as Prestel. One embodiment in Powell discloses that
`one form of advertising on videotex systems was by way of a one-line
`banner advertisement at the bottom of the page. Ex. 1014, 238. According
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`to Powell, Prestel provides the opportunity to promote related information
`on another page and thereby prompt the user to select that page:
`Then there will be that advertising that cannot be squeezed into
`a single line and here I think we will have something of a
`“come on” advertisement slotted into related interest pages.
`This will be the sort of “find out more – go to Page 2617.”
`There has already been some development along these lines by
`corporate advertisers: I can imagine much more. For example,
`one could imagine Cadbury Schweppes taking one line on
`pages giving their company details offering more information
`and some other bonus like a Chairman’s statement on the
`prospects for the next year by turning to their page.
`
`Id. at 240.
`
`2. Overview of Guillou
`Guillou teaches a method for providing and receiving encrypted
`content in teletext and viewdata systems. Ex. 1022, Abstract; 1:8–20,
`21:23–28 (the encryption/decryption techniques can be applied to the Prestel
`system). Guillou teaches that, in a teletext system, the decryption key would
`be specific to a “magazine,” i.e., a set of teletext pages. Id. at 5:8–10.
`Guillou teaches that the control portion (heading) of a page, which includes
`the page number, is not encrypted, but that the information portion of the
`page is encrypted. Id. at 3:29–61, 5:17–25. The information portion is
`encrypted using the page number and an “operating key K.” Id. at 5:34–37.
`At the receiver station, the information portion is decrypted using the same
`information, i.e., the operating key K and the page number. Id. at 6:17–29,
`7:64–69.
`Guillou further teaches that a “double key system” may be used,
`wherein the operating key K may be encrypted using a subscriber key Ci,
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`resulting in a message Mi. Ex. 1022, 8:15–58. The subscribers’ keys Ci are
`distributed separately to the subscribers. Id. at 15:46–50, 16:26–29. The
`encrypted pages and the encrypted messages Mi are transmitted to the user’s
`receiver, which uses a stored subscribers’ key Ci to decrypt and extract the
`operating key K from the encrypted messages Mi. Id. at 15:66–16:10,
`20:34–21:12. After decrypting operating key K, the receiver station uses
`this operating key K to decrypt the encrypted content. Id. at 10:41–66.
`One embodiment of the method taught by Guillou is shown in
`Figure 10, reproduced below.
`
`
`Figure 10 illustrates an encryption system including decoding circuit 145,
`generator 26’ that decodes octets, subscription card 106 that contains
`memory 108, circuit 110 for restoring the key K from Mi and Ci, and
`comparator 42. Ex. 1022, 20:9–13, 20:40–45. Decoder 145 initializes
`generator 26’ to decode octets according to a specific process. Id. at 20:29–
`33; see also 13:13–14:62 (describing process for decoding octets).
`Comparator 42 distinguishes the octets belonging to columns 0 and 1, which
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`are interpreted directly to form memory 146, and the octets of columns 2 to
`7, which pass through the OR-exclusive gate 46, before being interpreted
`and directed towards the memory 146. Id. at 20:13–17.
`3. Analysis
`Independent Claim 2
`i.
`Petitioner contends the combined disclosure of Powell and Guillou, as
`summarized above, taken together with the knowledge of a person of
`ordinary skill in the art, teaches or suggests each limitation of independent
`claim 2 of the ’749 patent. Pet. 45–59; Reply 2–21.
`Petitioner argues that the “come on” advertising in Powell is “virtually
`identical to the promotion and prompting disclosed in the ’749 patent,
`wherein a cooking show is aired and the customer is prompted to receive
`additional related material (the recipe) by entering a code.” Pet. 46–47.
`According to Petitioner, such cross-promotion was widely known. Id.
`(citing Ex. 1004 ¶ 83; Ex. 1016, 179–80; Ex. 1017, 373–75). Petitioner then
`explains that the only limitation in the challenged claims not found in Powell
`is the encrypting and decrypting of a second portion of programming.
`Pet. 47. Petitioner, however, argues that (i) encryption and decryption
`processes were well known in the 1970s, and (ii) Guillou teaches a method
`for providing and receiving encrypted content in teletext and viewdata
`systems, such as the Prestel system described in Powell. Id. at 48–49 (citing
`Ex. 1022, 21:23–28; Ex. 1004 ¶ 86).
`Petitioner also contends that a person of ordinary skill in the art would
`have had reason to combine the teachings of Powell and Guillou, because
`one of the problems encountered by those providing content through
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`teletext/videotex systems is how to charge users for access to certain
`information. Ex. 1022, 4:4–7. According to Petitioner, Guillou’s system is
`intended to solve the problem of charging a user of a teletext system,
`because Guillou teaches that promoted content may be encrypted thereby
`providing access control and billing opportunity. Id. at 4:4–38. Petitioner
`supports its position with the Declaration of Mr. Slinn, who testifies that a
`person of skill in the art would have used the advertising method described
`in Powell to promote related content for which the service provider would
`charge a fee for access or for which access would be limited, in which case
`the related content would be encrypted and decrypted using the techniques
`described in Guillou. Ex. 1004 ¶ 98.
`Patent Owner disagrees with Petitioner’s assertion that Powell and
`Guillou teach or suggest the challenged claims for several reasons.
`PO Resp. 19–51. First, Patent Owner argues that Petitioner’s challenge is
`premised on an unrealistic combination of Powell and Guillou so that a
`consumer would be charged a separate fee for viewing advertising. Id. at
`26–29. According to Patent Owner, advertising has always been delivered
`in a manner that is easy and free. Id. at 27. Patent Owner also argues that
`the Prestel Viewdata system discussed in Powell “was a failure in the U.S.
`and around the world because it was prohibitively expensive for consumers.”
`Id. (citing Ex. 2037, 182–183). Patent Owner postulates that “Petitioners’
`proposal for a Guillou-modified Prestel system where consumers would pay
`a fee each time they viewed a commercial would have only hastened the
`demise of Viewdata and, thus, would never have been taken seriously.” Id.
`at 28–29.
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`Second, Patent Owner argues that Petitioner does not undertake any
`analysis regarding how one of ordinary skill in the art would have gone
`about combining the elements, or what modifications one of ordinary skill in
`the art necessarily would have made in order to combine the elements. Id. at
`29–30. Patent Owner further argues that the redesign necessary to
`implement Guillou’s system to operate with the Prestel Viewdata system
`would require substantial modification, including replacement or
`reconfiguration of many of the components described in the patent.
`PO Resp. 31 (citing Ex. 2014 ¶ 95).
`Patent Owner relies on the declaration of Dr. Weaver to support its
`position. Dr. Weaver testifies that combining Powell with Guillou would
`not have been simple substitutions as the two systems are different:
`Guillou’s decryption method requires the use of teletext
`magazine pages including an access control page with messages
`Mi, teletext line numbers and teletext page numbers. There is no
`direct equivalent for these three variables in the Viewdata
`system. There is also no evidence of record that suggests Prestel
`pages even included embedded page and line numbers. It would
`not be possible to decrypt content under Guillou’s scheme
`without embedded page and line numbers.
`
`Ex. 2014 ¶ 94 (citation omitted); Ex. 1022, 7:65–8:4; 10:41–66; 18:60–
`21:14. Patent Owner asserts that because the systems of Powell and Guillou
`differ significantly (i.e., different transmission schemes, different hardware)
`and lack compatibility, there would have been no motivation for a person of
`ordinary skill in the art to combine Powell and Guillou. PO Resp. 31–38
`(citing Ex. 2014 ¶¶ 91–93; Ex. 1022, 20:6–18).
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`Third, Patent Owner argues that the combination of Powell and
`Guillou fails to teach “decrypting [the] second portion of [the] mass medium
`programming by using [the] at least one of a code and a datum in response to
`[the] step of processing [the] reply” as recited by the challenged claim 2.
`PO Resp. 38. According to Patent Owner, the “Page 2617” identified by a
`receiver station in response to a user’s input would not be used at the
`receiver station of Powell and Guillou to decrypt a Viewdata page. Id. at 40.
`Patent Owner relies on the supporting testimony of Dr. Weaver, who
`explains that the identification of “2617” in processing the user reply has a
`single use at the receiver station: to operate as a request that identifies the
`requested Viewdata page to the Prestel transmitting station. Ex. 2014 ¶ 101.
`Patent Owner argues that this request identifier is distinct from the keys that
`are used to decrypt a Viewdata page, because Guillou provides that its
`receiver stations generate the decoding octets based on the operating key, as
`well as the page and line numbers embedded in each transmitted teletext
`page. PO Resp. 40 (citing Ex. 1022, 3:29–55, 22:61–66 (generating the
`decoding octets using “the page numbers, the line numbers of the data
`transmitted”)). Patent Owner then asserts that even if Guillou could have
`been combined in a Prestel system, the decryption of a Prestel page would
`have been dependent on the operating key K and the page and line numbers
`embedded in a transmitted Viewdata page, not the user’s input of “2617.”
`Id. at 40–41 (citing Ex. 2014 ¶ 101).
`We disagree with Patent Owner’s contentions, because (1) we agree
`with Petitioner’s explanation of why a person of ordinary skill in the art
`would have combined the teachings of Powell and Guillou, and (2) we agree
`
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`with Petitioner’s arguments regarding the collective teachings of Powell and
`Guillou from the perspective of one of ordinary skill in the art. See KSR,
`550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their
`primary purpose, and in many cases a person of ordinary skill will be able to
`fit the teachings of multiple patents together like pieces of a puzzle.”).
`To the contrary, we agree with Petitioner’s contentions with respect to
`claim 2 and adopt them as our own. We specifically credit the testimony of
`Mr. Slinn that a skilled artisan would have looked to the teachings of
`Guillou in combination with Powell in an attempt to solve the problem of
`controlling access to content and providing billing opportunities for content
`(even advertising content) accessible via a videotext system and address the
`same problem–control and management of those communications. See
`Ex. 1004 ¶ 100. We also are satisfied that Petitioner has shown that one of
`skill in the art would have had the ability to apply the teachings of Guillou to
`Powell, because Guillou specifically states that its methods are applicable to
`the Prestel system discussed in Powell “without any difficulty for the man
`skilled in the art.” Ex. 1022, 21:23–28. Such points weigh in favor of
`finding that a person of ordinary skill in the art would have “fit the
`teachings” of Guillou and Powell together to render the challenged claims
`obvious. See KSR, 550 U.S. at 420 (“Under the correct analysis, any need or
`problem known in the field of endeavor at the time of invention and
`addressed by the patent can provide a reason for combining the elements in
`the manner claimed.”).
`Moreover, the test for obviousness is not whether the features of a
`secondary reference may be bodily incorporated into the structure of the
`
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`primary reference. In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012).
`Rather, “the test for obviousness is what the combined teachings of the
`references would have suggested to those having ordinary skill in the art.”
`See id. (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Thus, Patent
`Owner’s contentions regarding backward compatibility are not persuasive
`and fail to show that a skilled artisan would have been discouraged from
`combining the teachings of the cited references in the manner claimed.
`Additionally, many of the arguments presented by Patent Owner
`appear to attack the references individually, rather than in combination.
`PO Resp. 26–37. Nonobviousness cannot be established by attacking the
`references individually when a challenge is predicated upon a combination
`of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097
`(Fed. Cir. 1986). In attacking the references individually, Patent Owner both
`fails to address Petitioner’s actual challenges and neglects to establish an
`insufficiency in the combined teachings of the references, especially given
`the knowledge of a skilled artisan as indicated by the disclosures found in
`Exhibits 1015, 1019, 1020, and 1023 and explained by Mr. Slinn (Ex. 1004).
`We agree that Petitioner has shown that the combination of Powell
`and Guillou teach “decrypting [the] second portion of [the] mass medium
`programming by using [the] at least one of a code and a datum in response to
`[the] step of processing [the] reply,” as recited by the challenged claim 2.
`Specifically, we are satisfied that the Viewdata page number (2617)
`described in Powell constitutes a “code or datum” designating the second
`portion of the mass medium programming. See PO Resp. 16–17 (construing
`“designating” as to “indicate, name, or specify”), 40 (admitting that the page
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`number “identifies” the requested Viewdata page); Reply 2. According to
`Petitioner, a user inputs “2617” into a controller and then the receiver station
`processes that reply and selects the code or datum (i.e., page number 2617),
`which designates the second portion of the mass medium programming the
`user wants. Tr. 89–90; see Ex. 1004 ¶ 93. Patent Owner appears to
`acknowledge that the page number (2617) is used in Guillou’s decryption
`process. Reply 2 (citing PO Resp. 40 (decryption depends on “the page and
`line numbers embedded in a transmitted Viewdata page”), 41). Therefore,
`we agree with Petitioner that Guillou discloses this limitation.
`After consideration of the language recited in claim 2 of the ’749
`patent, the Petition, the Patent Owner Response, and Petitioner’s Reply, as
`well as the relevant evidence discussed in those papers, we conclude that one
`of ordinary skill in the art would have considered this independent claim
`obvious over Powell in view of Guillou.
`ii.
`Dependent Claims 3 9, 10, and 13
`Claims 3, 9, 10, and 13 depend from claim 2. Petitioner contends that
`Powell and Guillou, as summarized above, taken together with the
`knowledge of a person of ordinary skill in the art teaches or suggests aspects
`of each dependent claim. Pet. 53–55, 59. We agree with Petitioner’s
`contentions with respect to claims 3, 9, 10, and 13 and adopt them as our
`own.
`
`Patent Owner does not provide separate contentions regarding the
`additional limitations recited in dependent claims 3, 9, 10, and 13. PO Resp.
`41; see 37 C.F.R. § 42.23(a).
`
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`After consideration of the language recited in claims 3, 9, 10, and 13
`of the ’749 patent, the Petition, the Patent Owner Response, and Petitioner’s
`Reply, as well as the relevant evidence discussed in those papers, we
`conclude that one of ordinary skill in the art would have considered these
`dependent claims obvious over Powell in view of Guillou.
`iii. Dependent Claims 11 and 12
`Claim 11 depends from claim 2 and further comprises the step of
`“storing, at said storage device, an instruct signal which is effective to
`process a subscriber reaction to a content of an information transmission
`which includes said mass medium programming.” Ex. 1001, 288:61–67.
`Claim 12 depends from claim 11 and further recites the step of “storing, at
`said storage device, an instruct signal which is effective to establish
`communications with a remote station.” Id. at 289:1–4.
`Petitioner contends that the combined disclosure of Powell and
`Guillou, as summarized above, taken together with the knowledge of a
`person of ordinary skill in the art, teaches or suggests each limitation of
`claims 11 and 12 of the ’749 patent. Pet. 54–55; Reply 3–6. Petitioner
`specifically contends that nothing in the claim requires the instruct signal to
`be “responsive” to the subscriber “input.” According to Petitioner, the claim
`sim
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