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` Paper 42
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`Entered: March 23, 2014
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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.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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` Paper 42
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`Entered: March 23, 2014
`
`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.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`I. INTRODUCTION
`Petitioner filed a Petition requesting an inter partes review of
`claim 13 of U.S. Patent No. 5,887,243 (Ex. 1003, “the ’243 patent”). Paper
`1 (“Pet.”). Patent Owner filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”). The panel instituted an inter partes review of claim 13. Paper 7
`(“Dec. on Inst.” or “Institution Decision”), 36.
`Patent Owner filed a Response (Paper 20, “PO Resp.”), to which
`Petitioner filed a Reply (Paper 29, “Pet. Reply”). Patent Owner filed
`Observations on Cross Examination (Paper 38), and Petitioner filed
`Responses to Patent Owner’s Observations (Paper 40). The parties
`presented arguments at an oral hearing before the panel, which was
`transcribed by a court reporter. See Paper 41 (“Tr.).
`In this Final Written Decision, issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73, we determine Petitioner has shown by a
`preponderance of the evidence that challenged claim 13 is unpatentable.
`A. Related Proceedings
`According to the Petition, the ’243 patent, including claim 13, is
`involved in Personalized Media Commc’ns, LLC v. Amazon.com, Inc., No.
`1:13-cv-1608-RGA (D. Del., filed Sept. 23, 2013) and Personalized Media
`Commc’ns, LLC v. Motorola Inc., No. 2:08-cv-70-RSP (E.D. Tex., filed
`2008). Pet. 1–2. Granting a motion for judgment on the pleadings, the U.S.
`District Court for the District of Delaware found claim 13 of the ’243 patent
`invalid as not directed to patentable subject matter. See Personalized Media
`Commc’ns, LLC v. Amazon.com, Inc., No. 1:13-cv-1608-RGA,
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`Memorandum Opinion, slip op. at 5–6 (D. Del. Aug. 10, 2015) (cited in IPR
`2014-01528 as Ex. 1040). According to Petitioner, Patent Owner appealed
`that judgment in the Court of Appeals for the Federal Circuit as Appeal No.
`15-2008. Paper 31, 1.
`The ’243 patent also was involved in an ex parte reexamination,
`which culminated in an appeal to the Board: Personalized Media
`Commc’ns, LLC, Appeal 2008-004816 (BPAI Mar. 5, 2009) (Reexam.
`Control. No. 90/006,688) (“the ’243 Reexam. Appeal,” Ex. 1005, 56).
`Petitioner filed petitions seeking inter partes review of related U.S. Patent
`Nos. 7,783,252 B1 (IPR2014-01528); 7,864,956 B1 (IPR2014-01530);
`8,046,791 B1 (IPR2014-01531); 7,801,304 B1 (IPR2014-01532); 7,805,749
`B1 (IPR2014-01533); and 7,827,587 B1 (IPR2014-01534).
`B. The ’243 Patent
`The ’243 patent discloses a system for viewing a conventional
`broadcast program simultaneously with relevant user specific information at
`a subscriber station. Ex. 1003, 6:61–67.
`Figure 1, below, is illustrative of the system.
`
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`Figure 1 “is a block diagram of a video/computer combined medium
`receiver station.” Ex. 1003, 9:39–40. The subscriber (receiver) station
`includes television tuner 215 for receiving a broadcast transmission, divider
`4, TV signal decoder 203, microcomputer 205, and TV monitor 202M.
`Microcomputer 205 sends a query to a remote data source, and after
`receiving data from that source, generates graphics from that data that can be
`combined with the television broadcast video signal displayed by TV
`monitor 202M. Id. at 10:56–11:37; 236:65–237:20.
`The ’243 patent provides an example of combining a graph of the
`market performance from a “Wall Street Week” program and financial data
`specific to each subscriber. In other words, monitor 205 displays “Wall
`Street Week” at the same time it displays previously stored data from
`another remote source that contains data about a user’s stock portfolio. Id. at
`14:13–39. Microprocessor 205 accesses a floppy disk that holds a data file
`containing a portfolio of financial instruments owned by the specific
`subscriber at that subscriber station. During a program broadcast,
`microcomputer 205 also receives instruction signals embedded in the “Wall
`Street Week” programming transmission. Id. at 14:23–37. The embedded
`signals include a set of control instructions to control microcomputer 205 at
`each subscriber station. Id. at 13:1–14:38.
`In response to the embedded signals, microcomputer 205 enters
`information at the video RAM of the graphics card for graphing the
`subscriber’s portfolio information. Id. at 13:44–65. A subsequent
`embedded signal instructs the microcomputer to overlay the graphic
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`information onto the received video broadcast and transmit the combined
`information to TV monitor 202M, thereby displaying a dual graph showing a
`subscriber’s portfolio performance relative to the overall market
`performance generated during the “Wall Street Week” show. Id. at 14:23–
`36.
`
`Figure 1C below, reproduced from the ’243 patent, depicts such an
`overlay:
`
`
`Figure 1C above depicts a dual graph representing an individual
`
`subscriber’s portfolio performance overlaid on the Wall Street Week graph
`that represents overall market performance. As an example of creating the
`instruction signal to stimulate the overlay, during the broadcast of Wall
`Street Week, after the host describes overall market performance,
`the host says, “[a]nd here is what your portfolio did.” At this
`point, an instruction signal is generated at said program
`origination studio, embedded in the programming transmission,
`and transmitted. . . . Said signal instructs microcomputer[] 205 .
`. . to overlay composite video information and transmit the
`combined information to TV monitor [205].
`Id. at 14:23–33.
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`[a] storing said data at said first remote data source;
`
`C. Challenged Claim
`
`13. A method of providing data of interest to a receiver
`station from a first remote data source, said data of interest for
`use at said receiver station in at least one of generating and
`outputting a receiver specific datum, said method comprising
`the steps of:
`
`
`
`[b] receiving at said remote data source a query from said
`
`receiver station;
`
`[c] transmitting at least a portion of said data from said
`
`first remote data source to said receiver station in response to
`said step of receiving said query, said receiver station selecting
`and storing said transmitted at least a portion of said data and;
`
`[d] transmitting from a second remote source to said
`
`receiver station a signal which controls said receiver station to
`select and process an instruct signal which is effective at said
`receiver station to coordinate presentation of said at least a
`portion of said data with one of a mass medium program and a
`program segment presentation sequence.
`Id. at 300:14–33; see also Pet. 8–9 ([a]–[d] nomenclature added by
`Petitioner).
`
`D. Asserted Prior Art References
`
`Ciciora, U.S. 4,233,628 (Nov. 11, 1980) (Ex. 1006).
`
`Millar et al., GB 1,370,535 (Oct. 16, 1974) (“Millar,” Ex. 1009).
`
`Summers et al., U.S. 4,306,250 (Dec. 15, 1981) (“Summers,” Ex. 1010).
`
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`Reiter et al., U.S. 4,751,578 (June 14, 1988) (“Reiter,” Ex. 1025).
`
`Petition for Rulemaking, CBS, Inc., Fed. Commc’n Comm. (July 29, 1980)
`(the “CBS Petition,” Ex. 1007).
`
`Joseph Blatt et al., The Promise of Teletext for Hearing-Impaired Audiences,
`IEEE TRANSACT. CONS. ELECTRON., vol. CE-26, 717–722 (Nov. 1980)
`(“Blatt,” Ex. 1008).
`
`S. Fedida, Viewdata, WIRELESS WORLD, vol. 83, no. 1494, 32–36 (Feb.
`1977) (“Fedida I,” Ex. 1026).
`
`S. Fedida, Viewdata–2 WIRELESS WORLD, vol. 83, no. 1495, 52–54 (Mar.
`1977) (“Fedida II,” Ex. 1027).
`
`S. Fedida, Viewdata–3, WIRELESS WORLD, vol. 83, no. 1496, 65–69 (Apr.
`1977) (“Fedida III,” Ex. 1028).
`
`
`E. Challenges Instituted Against Claim 13
`
`Basis
`
`§ 102(e)
`
`§ 103(a)
`
`§ 103(a)
`Dec. on Inst. 36.
`
`References
`
`Reiter
`Summers, Fedida,1 and the CBS Petition,
`Blatt, or Millar
`Ciciora, and the CBS Petition, Blatt, or Millar
`
`
`1 “Fedida” collectively refers to the three-part collection of articles in
`Wireless World by Fedida, listed above: Fedida I (Ex. 1026), Fedida II (Ex.
`1027), and Fedida III (Ex. 1028).
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`II. ANALYSIS
`A. Claim Construction
`The claims of an unexpired patent are interpreted using the broadest
`
`reasonable interpretation (“BRI”) in light of the specification of the patent in
`which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed
`Techs., LLC, 778 F.3d 1271, 1276–79 (Fed. Cir. 2015) (concluding that
`“Congress implicitly adopted the broadest reasonable interpretation standard
`in enacting the AIA” and that “the standard was properly adopted by PTO
`regulation”), cert. granted, Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890
`(mem.) (2016). A claim term generally carries its “ordinary and customary
`meaning”––the meaning that the term would have to a person of ordinary
`skill in the art in question in view of the specification. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The outcome in this case
`would not be altered under a court claim construction standard pursuant to
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
`The parties dispute the construction of certain terms recited in step d
`of challenged claim 13. Claim 13, step d, recites four claim terms that
`require claim construction:
`[d] transmitting from a second remote source to said receiver
`station a signal which controls said receiver station to select
`and process an instruct signal which is effective at said receiver
`station to coordinate presentation of said at least a portion of
`said data with one of a mass medium program and a program
`segment presentation sequence.
`
`
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`1. Coordinate Presentation
`Patent Owner contends that “to coordinate presentation” means “to
`place or arrange in a proper position relative to each other in time, location,
`fashion of playing or manner of presentation based on a defined relationship
`between the content of the data and the programming.” PO Resp. 22
`(emphasis added); Ex. 2009 ¶ 78. Petitioner disagrees and contends that
`Patent Owner asserted in a prior litigation involving claim 13 that the term
`“coordinate” should be given its ordinary meaning, “to place or arrange
`(things) in proper position relative to each other. The term ‘[c]oordinate’
`may relate to time, location (place), fashion of playing, or manner of
`presentation.” Pet. 18–19 (citing Ex. 1018 (the “Atlanta lawsuit”), 3).2 The
`Institution Decision employs the Atlanta lawsuit construction. See Dec. on
`Inst. 9–11.
`Patent Owner does not address the finding in the Institution Decision,
`or Petitioner’s contention that Patent Owner advanced a claim construction
`in the Atlanta lawsuit that conflicts with its claim construction presented
`here. See Dec. on Inst. 9–11; PO Resp. 15–24. Patent Owner cited the
`Atlanta lawsuit in a prior reexamination proceeding involving the ’243
`patent and urged that the construction was “relevant.” See Dec. on Inst. 9–
`10 & n.3; Prelim. Resp. 16–17 n. 5 (citing Ex. 1005, 868–69) (indicating
`that the district court adopted the above construction).
`
`
`2 Personalized Media Commc’ns, LLC v. Scientific-Atlanta, Inc., No. 1:02-
`cv-824-CAP (N.D. Ga. March 5, 2005) (Special Master’s Report and Rec.).
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`Rather than relying on a claim construction advanced in the Atlanta
`lawsuit, Patent Owner relies on a prior ex parte Board decision involving a
`related patent (which also discloses the same or similar “Wall Street Week”
`example of Figure 1C) and construing the claim phrase “a coordinated
`display using said generated image and said video image.” Prelim. Resp. 17
`(citing Ex. 2005, 3–4, “the ’1837 Reh’g Decision”)3; PO Resp. 20–21.
`Relying on the ’1837 Reh’g Decision, which held that a “coordinated
`display” means “a display where the images used in the display are
`displayed dependent on a defined relationship between the content of the
`images” (Ex. 2005, 3), Patent Owner submits that Petitioner’s construction is
`too broad, because it merely requires any simultaneous display of data and a
`program unrelated to the content of the program. See PO Resp. 21.
`Contrary to Patent Owner’s position, however, unlike the claim involved in
`the ’1837 Reh’g Decision, claim 13 does not require using two images, let
`alone a relationship between images in terms of content. Rather, claim 13
`requires a coordinated presentation of data and a program. The ’1837 Reh’g
`Decision reveals that the distinction is critical.
`Furthermore, the record does not show that the Board considered the
`Atlanta lawsuit claim construction in reaching the ’1837 Reh’g Decision.
`See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1324 (Fed. Cir. 2015)
`(remanding to the Board because “the board failed to acknowledge the
`
`
`3 Ex Parte Harvey, Appeal 2007-001837 (Serial No. 08/470,571), Dec. on
`Req. for Reh’g (BPAI June 26, 2009).
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`district court’s claim construction or to assess whether [the district court’s]
`interpretation of the term ‘coupled’ was consistent with the broadest
`reasonable construction of the term”).
`Without remarking on the Atlanta lawsuit claim construction, the
`Board panel in the ’1837 Reh’g Decision interpreted a different claim
`phrase, “a coordinated display using said generated image and said video
`image.” Ex. 2005, 2 (emphases added). In reaching its claim construction,
`the Board responded to appellant’s argument in that Rehearing Request that
`the Board erred in its interpretation “by failing to give the words
`‘coordinated’ and ‘using’ different meanings.” Ex. 2005, 3 (emphases
`added).
`Of course, the Board in the ’1837 Reh’g Decision construed the claim
`terms involved there in the context of surrounding terms in light of the
`specification, including the coordinated display of using two images. See,
`e.g., Ex. 2005, 3 (taking into account the context of “using” and
`“coordinated” based on applicant’s arguments asserting error and citing the
`“Wall Street Week” example). Furthermore, rather than tracking claim 13,
`the disclosed “Wall Street Week” example more closely tracks the narrower
`claim language of the claim involved in the ’1837 Reh’g Decision.
`In its rehearing request that culminated in the ’1837 Reh’g Decision,
`Patent Owner argued that “common usage would require that, if the display
`of the Subject Claims required no more than using the two images at the
`same time (in any fashion), the claim limitation at issue should read, ‘a
`display consisting of said generated image and said video image.’”
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`Ex. 3001, 4. Patent Owner also persuaded the Board in the ’1837 Reh’g
`Decision that the Board had misconstrued the claim involved there because
`the initial claim construction (prior to the rehearing decision) “does nothing
`more than give the words ‘coordinated’ and ‘using’ the very same meaning.
`This conflicts with the obligation to give each word in the claim its own
`meaning.” See Ex. 3001, 4 (emphasis added) (“By equating ‘coordinated’
`and ‘using’, the Decision reads the claim word, ‘coordinated’ completely out
`of the claim, which is plain error.”). In contrast, claim 13 does not recite
`both words, “using” and “coordinated.”
`Therefore, even without considering the Atlanta lawsuit, Patent
`Owner’s prosecution history arguments imply that claim 13 should not be
`narrowed by disclaimer. Based on Patent Owner’s prosecution arguments,
`any disclaimer about the claim phrase at issue in the ’1837 Reh’g Decision
`simply does not unambiguously limit claim 13, because claim 13 does not
`closely track the same “Wall Street Week” example, involves a broader
`claim, and does not recite both “using” and “coordinated.” “An ambiguous
`disclaimer . . . does not advance the patent’s notice function or justify public
`reliance, and the court will not use it to limit a claim term’s ordinary
`meaning.” SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1286,
`1287 (Fed. Cir. 2005) (“There is no ‘clear and unmistakable’ disclaimer if a
`prosecution argument is subject to more than one reasonable interpretation,
`one of which is consistent with a proffered meaning of the disputed term.”).
`Given the difference between the claims involved in the two proceedings,
`and the arguments advanced by Patent Owner with respect to the narrower
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`claim not involved here, Patent Owner did not disclaim clearly a claim term
`involved in this proceeding. Cf. Andersen Corp. v. Fiber Composites, LLC,
`474 F.3d 1361, 1368–69 (Fed. Cir. 2007) (construing claim language based
`on statements made during prosecution of parent application regarding
`similar claim language).
`With respect to the Atlanta lawsuit, as noted in the Institution
`Decision,
`
`. . . Patent Owner characterizes its proposed definition as
`consistent with the plain and ordinary meaning of the disputed
`term and with the term as construed in the Atlanta lawsuit. See
`Prelim. Resp. 16–17, n.5. . . . For example, Patent Owner cites to
`dictionaries as evidence that the plain and ordinary meaning of
`“coordinate” is “to place or arrange in proper order or position;”
`“to place in harmonious relation or action;” or “to place in proper
`order or relation.” See Prelim. Resp. 18 (quoting Ex. 2002, Ex.
`2004). These cited definitions and determination in the Atlanta
`lawsuit lack a specific reference to a relationship based on
`relative content.
`Dec. on Inst. 11–12.
`Tracking the ordinary meaning advanced by Patent Owner in its
`Preliminary Response, as noted in the Institution Decision quoted above,
`nothing in the ’243 patent Specification shows that the claimed
`“coordinat[ed] presentation” must involve a display of an image and data
`related in content to that image. Rather, the ’243 patent Specification
`describes several relevant deficiencies in the prior art, implying the
`’243 patent solves those deficiencies, and several relevant objectives. See
`Ex. 1003, 3:31–9:37.
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`Examples of relevant alleged deficiencies in the prior art include the
`ability to control the timing of viewing of overlays, “the capacity to cause
`the video players to record programming from any source,” and the
`“capacity to operate under control of instructions transmitted by
`broadcasters.” Id. at 3:30–39, 3:67–4:1, 4:3–5. The prior art also allegedly
`has “no capacity for coordinating the programming content transmitted by
`any given peripheral system with any other programming transmitted to a
`television receiver.” Id. at 4:32–36.
`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 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. Even in this example, a display
`layout or configuration does not vary depending on relative content.
`Furthermore, in contrast to any possible definition implied by the
`“[h]ereinafter” reference in a specific example disclosed in the ’243 patent
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`Specification, claim 13 does not recite “combined media,” and it broadly
`recites using “data of interest.” Within the broad objectives of the
`’243 patent and even in the specific example noted, a display layout does not
`differ depending on the relative content between specific computer and
`general television information. Rather, as outlined above, the Specification
`generally describes combining information stored at a computer (which may
`or may not be user specific) and television programs (perhaps implying the
`use of signals associated with the television program to aid in combining the
`information and program).
`Accordingly, several factors tilt against narrowing the claim from its
`plain and ordinary meaning (in view of the Specification) based on the ’1837
`Reh’g Decision, including the (1) broader scope of claim 13 (relative to the
`claim at issue in the ’1837 Reh’g Decision), (2) different claim phrases
`recited in the two claims, (3) contradictory arguments by Patent Owner
`before different tribunals (i.e., the Atlanta lawsuit and the Board), (4) the
`lack of a close example or clear disclaimer in the Specification applicable to
`claim 13, (5) broad objectives for combining content from different sources
`as described in the Specification, and (6) the lack of clarity as to what Patent
`Owner disclaimed during prosecution relative to claim 13. See Tempo
`Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014) (The “court
`also observes that the PTO is under no obligation to accept a claim
`construction proffered as a prosecution history disclaimer, which generally
`only binds the patent owner.”); Keystone Bridge Co. v. Phoenix Iron Co., 95
`U.S. 274, 279 (1877) (patents are procured ex parte; the public is not bound
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`by decision of the Patent Office to issue a patent); Switzer v. Sockman, 333
`F.2d 935 (CCPA 1964) (decision made during ex parte examination not
`binding in subsequent interference involving application in which holding
`was made); Sze v. Bloch, 458 F.2d 137, 140 (CCPA 1972) (same).
`Consistent with the ’243 patent Specification, and taking into account
`prior arguments by Patent Owner, regardless of whether or not the content of
`data of interest and the program relate to each other, a proper (coordinated)
`relative position of the two would include a simultaneous presentation of
`data of interest and a program. Such a simultaneous presentation may
`include an overlay, or a separate window, for example, of some form of the
`data (e.g., a graph) with the program, as discussed in connection with Figure
`1C.
`
`The particular content relationship between the data and program may
`be discernable by the presentation thereof. As noted in the Institution
`Decision:
`[I]n the ’1837 Reh’g Decision, the Board indicated that an
`example of coordinating a display of text with a broadcast video
`image includes closed-captioning: “It appears that the display of
`closed-captions for a television program would have a defined
`relationship to the television program image so as to constitute a
`‘coordinated display.’” Ex. 2005, 4. Patent Owner’s citation to
`the ’1837 Reh’g Decision indicates agreement with the Board’s
`reasoning there. See Prelim. Resp. 17.
`Dec. on Inst. 12 n.5 (quoting Ex. 2005, 4).
`
`Patent Owner does not dispute this finding, as quoted above, that
`closed-captioning, as described in the ’1837 Reh’g Decision, would satisfy
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`the “coordinated presentation” under Patent Owner’s narrower claim
`construction. See id.; PO Resp. 17–21.
`Based on the foregoing discussion, in light of the prosecution history,
`Atlanta litigation, the ’243 patent Specification, and other factors noted
`above, “coordinate presentation” means “to place or arrange data of interest
`and a program in a proper position relative to each other in time, location,
`fashion of playing, content, or manner of presentation.” In other words, a
`“proper” presentation may or may not include one in which a viewer is able
`to discern that the content of the data and program are related, as in, for
`example, closed-captioning.
`2. Signal, Instruct Signal
`Claim 13 recites a “signal which controls said receiver station to
`select and process an instruct signal.” Claim 13 also requires the “instruct
`signal” to be “effective” to “coordinate presentation” of “data” with a
`“program.” The ’243 patent Specification does not define the terms “signal”
`and “instruct signal,” which are related as set forth in claim 13. In the
`Institution Decision, the panel initially construed an “instruct signal” as a
`signal that “coordinates presentation of data with a program.” Dec. on Inst.
`14. Although the parties do not dispute that specific construction explicitly,
`in light of various arguments presented pointing to the language of claim 13,
`the construction is slightly modified to track the language of claim 13 as
`follows: an “instruct signal” is “effective” to “coordinate presentation” of
`“data” with a “program.”
`
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`As described above in Section I.B (Introduction, ’243 patent), as an
`example of creating an “instruction signal” to stimulate the overlay of a
`stock portfolio, during the broadcast of “Wall Street Week,” after the host
`describes overall market performance,
`the host says, “[a]nd here is what your portfolio did.” At this
`point, an instruction signal is generated at said program
`origination studio, embedded in the programming transmission,
`and transmitted. . . . Said signal instructs microcomputer[] 205. .
`. to overlay composite video information and transmit the
`combined information to TV monitor [205].
`Id. at 14:23–33 (emphasis added).
`As the passage implies, the statement by the host somehow causes
`something at a studio (i.e., television station) transmitter to generate the
`“instruction signal,” and then later, at the user’s receiver,
`[s]aid [instruction] signal is identified by decoder, 203;
`transferred
`to microcomputer 205, and executed by
`microcomputer, 205, at the system level as the statement,
`“GRAPHICS ON.” Said [instruction or instruction derived]
`signal instructs microcomputer, 205, at the PC-MicroKey 1300
`to overlay the graphics information in its graphics card onto the
`received composite video information and transmit the combined
`information to TV monitor 202M.
`Id. at 14:24–33.
`In these passages as quoted above, the ’243 patent Specification does
`not describe explicitly what “transmitting . . . a signal” entails, which claim
`13 recites. The passages quoted above imply, for that specific example, that
`the programming transmission may itself constitute, or include, the claimed
`“signal,” and that the transmission also includes the claimed “instruct signal”
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`as an “embedded” signal (i.e., perhaps via some modulation type within the
`television broadcast). For example, after the host says its triggering phrase
`about “your portfolio,” “[a]t this point, [somehow] an instruction signal is
`generated at said program origination studio, embedded in the programming
`transmission.” Id. at 14:23–33. Later in the processing of the transmitted
`“instruction signal,” it becomes a “GRAPHICS ON” statement “at the
`system level,” such that (apparently) it is effective to coordinate an “overlay
`[of] the [stored] graphics information in its graphics card onto the received
`composite video information and transmit the combined information to TV
`monitor 202M.” Ex. 1003, 14:24–33.
`Therefore, based on these passages describing the “Wall Street Week”
`embodiment, the “programming transmission” appears to correspond to, or
`include, the claimed “signal [of claim 13] which controls said receiver
`station to select and process an instruct signal,” wherein the “instruction
`signal” also is embedded in, or included with, the “programming
`transmission” or “signal” of claim 13. See id. at 14:24–33. Patent Owner’s
`description of the claimed invention relies on the same “Wall Street Week”
`example, but Patent Owner does not explain what constitutes the claimed
`signal clearly, if at all. For example, Patent Owner ambiguously states that
`“[t]he same receiver station could be controlled by an instruct signal
`received from another source (e.g., a programming source) to select and
`process an instruct signal that is effective at the receiver station to provide
`the ‘Wall Street Week’ coordinated presentation.” PO Resp. 8 (citing Ex.
`1002, 19:5–20:11) (emphasis added). That description agrees somewhat
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`with the above analysis that shows that an “instruct signal” may have
`various forms depending on the stage of processing, but it conflates one
`“instruct signal” with another and fails to address the “signal” of claim 13.
`In another description, Patent Owner states that “[i]n response to another
`transmitted instruction, the microcomputer of the receiver station
`automatically overlays” a user’s stock portfolio graph with “content
`common to all viewers on the show,” and transmits the combined graph and
`content to a monitor. PO Resp. 6. Patent Owner does not mention the
`“signal” in this latter description or explain how it relates to the “instruction
`signal.”
`Based on the foregoing discussion, and in light of the claim language,
`a signal may or may not include part of a program transmission, and the
`instruct signal may or may not be part of the same program transmission. In
`addition, claim 13 does not specify that the instruct signal must come from a
`second remote source.
`
`3. Remote
`Petitioner contends that the broadest reasonable interpretation of
`“remote” encompasses the “remote” controls disclosed in the art. Pet. Reply
`5 (citing Ex. 1036 ¶ 28). In addition to relying on the ’243 patent
`Specification, Petitioner cites, for analogous support, Brookhill-Wilk 1, LLC
`v. Intuitive Surg., Inc., 334 F.3d 1294, 1297, 1302 (Fed. Cir. 2003)
`(construing “remote location” to encompass locations in the same room, and
`concluding that lower court erred by construing “remote location” as “a
`location outside the operating room where the patient undergoing surgery is
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`located”). The Brookhill-Wilk court did not apply the broadest reasonable
`construction, which applies here, but nonetheless, construed “remote”
`consistent with the manner that Petitioner advances: i.e., a remote control
`can be local.
`Petitioner also argues as follows:
`Indeed, the ’243 patent twice refers to a “remote keyboard.”
`(Ex. 1003 at 4:12; 4:28.) Although the ’243 patent refers to
`“remote geographic stations” (7:44), it does not requ
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