UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE BOARD OF PATENT APPEALS
`AND INTERFERENCES
`
`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
`
`Before LEE E. BARRETT, SCOTT R. BOALICK, and .
`KEVIN F. TURNER, Administrative Patent Judges.
`
`BARRETT, 4dministrative 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.
`
`PMC Exhibit 2005
`Apple v. PMC
`IPR2016-01520
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`
`
`BEFORE THE BOARD OF PATENT APPEALS
`AND INTERFERENCES
`
`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
`
`Before LEE E. BARRETT, SCOTT R. BOALICK, and .
`KEVIN F. TURNER, Administrative Patent Judges.
`
`BARRETT, 4dministrative 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.
`
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`Appeal 2008-4228
`Ex parte Reexamination Control 90/006,536
`Patent 4,965,825
`
`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 ofU.S. ~atent 4,965,825 ('825 patent), entitled
`
`"Signal Processing Apparatus and Methods," is~ued 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 Communications, LLC, New York, NY .. The '825
`
`patent is said to be a contiimation-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 said to be a continuation of
`
`Application 06/317,510, filed November 3, 1981, now U;S. Patent 4,694,490
`
`(hereinafter referred 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 p·atents and various pending patent applications.
`
`Patents 5,109,414, 5,233,654, 5,335,277, and 5,887,243 are all continuations
`
`ofthe 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 1 7. 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,
`
`2
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`Appeal 2008-4228
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`Patent 4,965,825
`
`328 applications were filed having the same specification as the '825 patent,
`
`except for the claims ..
`
`The Board entered a decision on June 30, 2008, in Appeal2007-4044, .
`
`Reexamination Controls 90/006,697 anq 90/006,841 (merged) for
`
`reexamination of Patent 4,704,725, and Appeal2008-0334, Reexamination
`
`I
`
`Control90/006,800 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.
`
`•
`
`J
`
`.
`
`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. bel. 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. 1 :02-CV-824 (CAP) (N.D. Ga.
`
`filed Mar. 28, 2002), which has also been stayed.
`
`3
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`Appeal 2008-4228
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`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 embodiment of the signal processor apparatus.
`
`OTHER
`INPUTS
`
`FIG. 2
`
`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).
`
`'
`
`4
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`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.
`
`Controller 20 may cause ·a transfer of recorded data to a remote site and may
`
`cause the local oscillator to be tuned to a particular 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 computer. This is
`
`referred to as the ~'Wall Street Week" example.
`
`At the program originating television station a series of control
`
`instructions is generated, embedded sequentially in digital 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:
`
`20&1
`
`( rormm)
`
`0
`
`0
`
`VIDEO
`
`205
`
`4
`
`VIDEO
`
`VIDEO
`
`v
`I
`~ o·
`
`20J
`
`· . TV SIGNAL SIGNA
`DECODER
`(FJ G; 2AJ
`ONLY
`
`FIG.1.
`
`5
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`Figure 1 shows a block diagram of a video/computer combined
`
`· medium subscriber station. The station receives the television 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
`
`transmission 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 digital 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, 11. 8-41.
`
`6
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`The combined medium "Wall Street Week" example is illustrated by
`
`Figures lA, lB, and lC reproduced below.
`
`FIG. 1A
`
`,, -
`
`AI
`
`T W T F
`
`,--·--
`
`,.,.,,.,""'.
`
`+1.0
`
`' •Q5
`
`O
`0.5-
`
`FIG. 18
`
`FIG. fC
`
`Figure lA shows an example of a computer generated graphic of the
`
`subscriber's stock portfolio as it would appear by itself on the face of a
`
`television monitor. Figure· 1 B shows a studio generated graphic displayed
`
`on the face of a television monitor. Figure lC shows an example ofthe
`
`graphic of Figure lA overlaid on the graphic of Figure lB.
`
`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
`
`7
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`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 transmissioJ:?-. 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 subscriber's stock portfolio and to construct a graphic
`
`image of that performance as shown in Figure lA ('825 patent, col. 49,
`
`11. 25-34). A second combining synch command causes the computer 205 to
`
`combine the Figure lA information with the Figure lB information and
`
`·transmit the combined information to monitor 202M (col. 49, 11. 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, 11. 8-l7). The combining proc~ss is described in the '825 ·
`
`patent at column i4, line 47, to column 15, line 6.
`
`8
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`
`4. The .claims
`
`1.
`
`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 transmission to detect an
`information transmission thereon; detector means for detecting an
`embedded signal in the information 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 activated 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 thafit 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 monitor the performance and/or output of said .first·
`
`control means"; and (2) "control means for instructing said carrier receiving
`
`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 contro~led an<;!
`
`"recording the receipt of and passing to said devices of said embedded
`
`signals" instead of monitoring the performance and/or output ofthe device.
`
`9
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`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
`accommodate 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 information content .
`does not exist, .
`
`. detecting the presen~e of said instruct-to-generate signal at
`selected receiver stations and coupling said instruct-to-generate signal
`to the computers associated with said ~elected stations, and
`
`causing said last named computer to generate their user specific
`output information content in response to said instruct-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.
`
`Claim 24 is similar ~o 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.
`
`10
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`
`Tazawa·
`Hendrickson
`Briggs
`
`5. The references relied' upon in the rejections
`us 4,156,847
`us 4,292,650
`us 4,360,828
`us 4,388,643
`i us 4,592,546
`
`Aminetzah
`
`· Fascenda
`
`Seth-Smith
`
`US4,829,569
`
`. Auer
`Tsuboka
`
`GB 1,430,641
`JP 55-45248
`
`May 29, 1979
`. Sep. 29, 1981
`Nov. 23, 1982
`(filed Aug. 7, 1978)
`Jun. 14, 1983
`(filed Apr. 6, 1981)
`Jun.3, 1986
`(filed Apr. 26, 1984)
`May 9, 1989
`(filed Jul. 8, 1986)
`Mar. 31, 1976
`Mar. 29, 1980
`
`B. Marti, Broadcast Text Information in France, Online Conferences
`Ltd., i 980, pp. 359-366.
`
`C. Sechet, Captioning ofTelevision Transmissions by the Antiope
`System, New Systems and Services in Telecommunications,
`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 ~onsist 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) Exhibit II to the CBS Petition; and
`(5) Appendix B to Exhibit II (Appendix A is not relied on).
`
`11
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`6. The rejections
`
`Anticipation
`
`. '
`.
`Claim 1 stands rejected under 35 U.S.C. § 1 02(b) as being anticipated
`by Auer. (Sec. I.2.A, Final Rejection 10; Sec. liLA, Ans. 10.)1
`
`·
`
`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. § 1 02(b) as being anticipated
`
`by Tazawa. (Sec. I.2.C, Final Rejection 12; Sec. III.C, Ans .. 16.)
`
`Claim 1 stands rejected under 35 U.S.C. § 102(b) as being anticipated
`
`by Fascenda. (Sec. 1.2.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. 1.2.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. 1.2.H, Final Rejection 17; Sec. III.H,
`
`Ans. 31.)
`
`Claim 23 stands rejected under 35 U.S.C. § 102(e) as being
`anticipated b;r Seth-Smith. (Sec. 1.2.1, Final Rejection 18; Sec .. III.l,
`Ans. 34.)
`
`1 These sections in parenthesis. refer to the location of the Examiner's ·
`rejection in the Final Rejection and the Examiner's Answer.
`'
`
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`Claim 24 stands rejected under 351).S.C. § 102(e) as being
`
`anticipated by Seth-Smith. (Sec. I.2.J, Final Rejection 20; Sec. III.J,
`
`Ans. 36.)
`
`Claim 25 stands rejected under 35 U.S.C. § 102(e) as being
`
`anticipated by Seth-Smith.· (Sec. 1.2.K, Final Rejection 21; Sec. III.K,
`
`Ans. 38.)
`
`Claim 24 stands rejected under 35 U.S.C. § 1 02(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.1.B, Final Rejection 30;
`
`Sec. IV.B, Ans. 47.)
`
`Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpa~entable
`
`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.1.D, Final Rejection 40; Sec. IV.D, Ans. 57.)
`
`13
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`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 ofTsuboka
`
`or Marti. (Sec. Il.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 Antiope teletext standard as
`
`evidenced by Antiope Videotext System, Sechet, and The CBS "Petition for
`
`Rulemaking." (Sec. II.1.H, Final Rejection 4 7; Se.c. 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. liLA, 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.)
`
`14
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`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 ofU.S. Patent 4,704,725.
`
`(Sec. III.E, Final Rejection 56; Sec. V.E, Ans. 76.)
`
`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 5o; 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, Fin,al Rejection 57; Sec. V.H, Ans. 77.)
`
`Claim 22 stands rejected under the judicially created doctrine of
`
`,
`
`obviousness-type double patenting over claim 4 ofU.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.)
`
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`PMC Exhibit 2005
`Apple v. PMC
`IPR2016-01520
`Page 15
`
`
`
`Appeal 2008-4228
`Ex parte Reexamination Control 90/006,536
`Patent 4,965,825
`
`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 R.ejection 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 ofU.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; se·c. V.O, Ans. 80.)
`
`Claim 24 stands rejected under the judiciaily created doctrine of
`
`obviousness-type double patenting over claim 1 ofU.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 ofU.S. Patent 4,704,725.
`
`(Sec. III.R, Final Rejection 59; Sec. V.R, Ans. 81.)
`
`16
`
`PMC Exhibit 2005
`Apple v. PMC
`IPR2016-01520
`Page 16
`
`
`
`Appeal 2008-4228
`Ex parte Reexamination Control 90/006,536
`Patent 4,965,825
`
`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. IlLS, 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. liLT, 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. IILU, Final Rejection.59; Sec. V.U, Ans. 82.)
`
`Claim interpretation
`
`DISCUSSION
`
`Claim interpretation necessarily precedes the addressing of questions
`
`ofpatentability. 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 interpretation 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. ofSci. 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. !d.
`
`However, this appeal involves an expired patent and previous panels of this
`
`17
`
`PMC Exhibit 2005
`Apple v. PMC
`IPR2016-01520
`Page 17
`
`
`
`Appeal 2008-4228
`Ex parte Reexamination Control 90/006,536
`Patent 4,965,825
`
`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
`construction that would render it invalid .
`
`. Ex parte Bowles, 23 USPQ2d 1015, 1017 (BP AI 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 sometimes 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
`applied that principle broadly, and we have certainly not
`endorsed a ~egime in which validity analysis is a regular ·
`component 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 bane),
`
`accord Cross Medical Prods. Inc. v~ Medtronic Sofamor Danek, Inc.,
`
`424 F.3d 1293, 1304 (Fed. Cir. 2005).
`
`18
`
`PMC Exhibit 2005
`Apple v. PMC
`IPR2016-01520
`Page 18
`
`
`
`Appeal 2008-.4228
`Ex parte Reexamination Control 90/006,536
`Patent 4,965,825
`
`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. y. 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 th~ scope of a
`
`claim by interpretation by implicitly reading in disclosed limitations from
`
`the specification which have no express basis in the clai~s. 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 Appeals 2007-4044
`
`. and 2008-0334 that unambiguous clairris in an expired patent should not be
`
`construed more narrowly than their ordinary and customary meaning during
`
`reexamination to preserve patentability.
`
`19
`
`PMC Exhibit 2005
`Apple v. PMC
`IPR2016-01520
`Page 19
`
`
`
`Appeal 2008-4228
`Ex parte Reexamination Control 90/006,536
`Patent 4,965,825
`
`Original patent claims in a reexamination are not examined for
`
`compliance with the definiteness requirements o£35 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 s· ("Plaintiffs further
`contend that the preambles of the claims are not claim limitations.")
`
`·(Exhibit I5 to Request for Reexamination). Requester states that
`
`"[p ]resumably H~rvey believes that this applies to all of the claims of the
`
`seven issued patents, and not merely to the Asserted 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.c Cardinal IG Co., 54 F.3d 1570, 1578,
`
`34 USPQ2d 1673, 1678 (Fed. Cir. 1995) (In the inverse situation: "A
`
`patentee may not proffer an interpretation for the purposes of litigation that
`
`would alter the indisputable 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.
`
`20
`
`PMC Exhibit 2005
`Apple v. PMC
`IPR2016-01520
`Page 20
`
`
`
`Appeal 2008-4228 ·
`Ex parte Reexamination Control 90/006,536
`Patent 4,965,825
`
`As a general comment, although the '825 patent describes the
`
`inventions in the context of signals embedded in television 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 inheres 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 sufficient to
`
`perform the claimed function ih .its entirety." !d. 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 interpretation 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 rejections because
`
`.
`
`Appellant argues tha~ 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 ofthe "first control means" is "to activate and/or
`
`·deactivate equipment external to said signal processor system" in response to
`
`the detected signal.
`
`21
`
`PMC Exhibit 2005
`Apple v. PMC
`IPR2016-01520
`Page 21
`
`
`
`Appeai 2008-4228
`Ex parte Reexamination Control 90/006,536
`Patent 4,965,825
`
`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 fun~tion "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 control 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.
`
`Claim 1 further recites "a recorder means f
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