IPR2017-00006
`U.S. Patent No. 7,382,334
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
`
`BROADSIGN INTERNATIONAL, LLC
`Petitioners
`
`v.
`
`T-REX PROPERTY AB,
`Patent Owner
`
`U.S. Patent No. 7,382,334
`Issue Date: June 3, 2008
`Title: DIGITAL INFORMATION SYSTEM
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`
`
`Inter Partes Review Case No. 2017-00006
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`
`
`T-REX PROPERTY AB’S PATENT OWNER
`PRELIMINARY RESPONSE PURSUANT TO 37 CFR §42.107(a)
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`

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`IPR2017-00006
`U.S. Patent No. 7,382,334
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`
`TABLE OF CONTENTS
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`I. INTRODUCTION .................................................................................................. 1 
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`II. TECHNOLOGY BACKGROUND ...................................................................... 1 
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`III. CLAIM CONSTRUCTION ................................................................................. 2 
`
`A. 
`
`“update said exposure list in real time with control instruction
`fields via dynamic booking of information in time for exposure
`from mediators” (claim 1, 22) / “update an exposure list having
`control instruction fields, via dynamic booking of display
`information from mediators” (claim 11, 32) ........................................... 3 
`
`IV. THERE IS NO REASONABLE LIKELIHOOD OF PETITIONERS
`PREVAILING AS TO A CHALLENGED CLAIM OF THE ’334
`PATENT. ......................................................................................................... 6 
`
`A.  Ground 1: Petitioners Failed To Demonstrate That Nakamura
`Anticipates Claims 1-3, 8, 11-14, 19, 22-24, 29, 32-35, or 40. .............. 6 
`
`1. 
`
`Petitioners fail to demonstrate that the Nakamura discloses the
`limitations “update said exposure list in real time with control
`instruction fields via dynamic booking of information in time
`for exposure from mediators” (claims 1-3, 8, 22-24, 29) or
`“update an exposure list having control instruction fields, via
`dynamic booking of display information from mediators”
`(claims 11-14, 19, 32-35, 40) . ........................................................ 6 
`
`B.  Ground 2: Petitioners Failed to Demonstrate That Nakamura In
`View Of Reilly Renders Obvious Claims 4-6, 15-17, 25-27, or 36-
`38. .......................................................................................................... 12 
`
`1.  Reilly does not cure the deficiencies in Nakamura. ...................... 12 
`
`C.  Ground 3: Petitioners Failed to Demonstrate That Nakamura In
`View Of Reilly and Further In View Of Ohran Renders Obvious
`Claims 7, 8, 28, or 39. ........................................................................... 13 
`
`1.  Ohran does not cure the deficiencies in Nakamura-Reilly. .......... 13 
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`D.  Ground 4: Petitioners Failed to Demonstrate That Nakamura In
`View Of Ravaky Renders Obvious Claims 9, 20, 30, or 41. ................ 14 
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`IPR2017-00006
`U.S. Patent No. 7,382,334
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`1.  Ravaky does not cure the deficiencies in Nakamura. ................... 14 
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`E.  Ground 5: Petitioners Fail to Demonstrate That Nakamura In
`View Of Holtey Renders Obvious Claims 10, 21, 31, or 42. ................ 16 
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`1.  Holtey does not cure the deficiencies in Nakamura. .................... 16 
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`V. CONCLUSION ................................................................................................... 17 
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`ii
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`IPR2017-00006
`U.S. Patent No. 7,382,334
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`
`EXHIBIT LIST
`
`Description
`Declaration of Zaydoon Jawadi
`Curriculum Vitae of Zaydoon Jawadi
`Excerpts from Microsoft Computer Dictionary Fourth
`Edition (1999)
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`Exhibit No.
`2001
`2002
`2003
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`IPR2017-00006
`U.S. Patent No. 7,382,334
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`
`TABLE OF AUTHORITIES
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` Page(s)
`
`Cases
`Stumbo v. Eastman Outdoors, Inc.,
`508 F.3d 1358 (Fed. Cir. 2007) ............................................................................ 6
`
`Other Authorities
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`32 C.F.R. §42.107(a) .................................................................................................. 2
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`Microsoft Computer Dictionary, 4th Edition .......................................................... 3, 4
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`iv
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`I. INTRODUCTION
`The Board should deny the request for inter partes review of U.S. Patent No.
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`IPR2017-00006
`U.S. Patent No. 7,382,334
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`7,382,334 because the Petition is based on prior art that fails to disclose each claim
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`element, alone or in combination.
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`For these reasons, as expressed more fully below, the Petitioners have failed
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`to demonstrate that there is a reasonable likelihood of prevailing with respect to at
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`least one of the challenged claims. Accordingly, the Board should deny the
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`Petition.
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`II. TECHNOLOGY BACKGROUND
`At the time of the invention, there were significant problems with digital
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`control systems for digital signage. A primary concern of the patent is the problem
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`of how to provide a flexible system in which external information mediators are
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`able to dynamically control the transmission of display instructions to a larger
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`public in different places situated at any chosen distance apart through displays.
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`Ex. 1001 at 2:56-61. For instance, the patent describes that, at the time of the
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`invention, “information media is not coordinated, but is in the form of individual
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`items which are controlled and updated separately, often manually.” Ex. 1001 at
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`1:34-36. The patent further explains that “[a]lthough the administration of
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`information is often processed manually with the aid of modern computer
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`technology, the available display time will nevertheless contain ‘dead time,’
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`IPR2017-00006
`U.S. Patent No. 7,382,334
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`among other things due to back-logging caused by the manual infeed process.” Ex.
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`1001 at 1:48-53. The patent further explains that “present-day systems do not
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`enable information to be updated dynamically for display in real time. Neither do
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`present-day systems enable external mediators to update information for display in
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`a central control system, nor yet the administrator who makes the display of
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`information available, but it is the administrator who determines when, where and
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`how the information shall be displayed.” Ex. 1001 at 1:55-59.
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`Another primary concern of the ’470 Patent is “to enable a picture, image or
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`other information to be changed in practice as often as is desired, in real time,
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`therewith providing direct and immediate communication.” Ex. 1001 at 3:5-8.
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`The patent also explains that “it should be possible to update and change the
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`information quickly.” Ex. 1001 at 2:27-28. The patent further explains that “the
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`digital information system is able to insert a change at short notice or to operate a
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`completely new spot.” Ex. 1001 at 10:24-25. The patent explains that this means
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`that “[t]he system is thus highly flexible and enables quick changes to be made
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`with regard to what shall be exposed on the exposure means, where it shall be
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`exposed and when.” Ex. 1001 at 10:25-28.
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`III. CLAIM CONSTRUCTION
`Because this preliminary response “is limited to setting forth the reasons
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`why no inter partes review should be instituted,” 32 C.F.R. §42.107(a), T-Rex
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`2
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`IPR2017-00006
`U.S. Patent No. 7,382,334
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`does not at this time propose a construction for each term. T-Rex reserves the right
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`to assert any construction of any term in any subsequent filing.
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`A.
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`“update said exposure list in real time with control instruction fields via
`dynamic booking of information in time for exposure from mediators”
`(claim 1, 22) / “update an exposure list having control instruction fields,
`via dynamic booking of display information from mediators” (claim 11,
`32)
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`The phrase “update said exposure list in real time with control instruction
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`fields via dynamic booking of information in time for exposure from mediators”
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`should be construed as “update information in the exposure list containing control
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`instruction fields when and as needed for exposure in response to information
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`submissions from a user.” Similarly, the phrase “update an exposure list having
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`control instruction fields, via dynamic booking of display information from
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`mediators” should be construed as “update information in an exposure list
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`containing control instruction fields when and as needed in response to information
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`submissions from a user.”
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`The evidence makes clear that the plain and ordinary meaning of “update
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`said exposure list in real time with control instruction fields via dynamic booking
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`of information in time for exposure from mediators” is “update information in the
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`exposure list containing control instruction fields when and as needed for exposure
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`in response to information submissions from a user.” Ex. 2001 ¶¶ 21-28. For
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`example, the fourth edition of the Microsoft Computer Dictionary defines
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`“dynamic” as “describ[ing] some action or event that occurs when and as
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`U.S. Patent No. 7,382,334
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`needed.” Ex. 2003 at 158 (emphasis added); Ex. 2001 ¶ 24. The fourth edition of
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`the Microsoft Computer Dictionary also defines “dynamic HTML” as “A
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`technology designed to add richness, interactivity, and graphical interest to Web
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`pages by providing those pages with the ability to change and update themselves
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`dynamically, that is, in response to user actions, without the need for repeated
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`downloads from a server.” Ex. 2003 at 158-59 (emphasis added); Ex. 2001 ¶ 23.
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`The specification provides further support for this construction in its
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`description of the prior art and the goals of the invention. In describing the
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`problems of the prior art, the ’334 Patent teaches that “it should be possible to
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`update and change the information quickly.” Ex. 2001 ¶ 25; Ex. 1001 at 2:27-
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`28 (emphasis added). The specification describes the ramifications of not updating
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`via dynamic booking, stating that “the displays on which information is presented
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`will often become static, for instance show the time of the next display or show a
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`pause picture, i.e. dead time. This becomes nerve-wracking to travelers, who often
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`wait for long periods in waiting halls or stand on platforms.” Ex. 2001 ¶ 25; Ex.
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`1001 at 2:29-34. The ’334 Patent also explains that one object of the invention is
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`“to enable a picture, image or other information to be changed in practice as often
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`as is desired, in real time, therewith providing direct and immediate
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`communication.” Ex. 2001 ¶ 25; Ex. 1001 at 3:5-8. The ’334 Patent elaborates
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`that “an external information mediator 24 is able to put through information to the
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`U.S. Patent No. 7,382,334
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`system 12 twenty-four hours a day, whereupon the information can be included
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`instantaneously in the exposure list.” Ex. 2001 ¶ 25; Ex. 1001 at 6:59-62. The
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`’334 Patent also explains that “the digital information system is able to insert a
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`change at short notice or to operate a completely new spot. The system is thus
`
`highly flexible and enables quick changes to be made with regard to what shall
`
`be exposed on the exposure means, where it shall be exposed and when.” Ex. 2001
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`¶ 25; Ex. 1001 at 10:24-28 (emphasis added). The specification also provides an
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`alternative to updating of the exposure list via dynamic booking where
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`“[p]ersonnel at the working stations 32 are thus able to interrupt any queue lists in
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`the server 1 to update the exposure list,” as opposed to updating the exposure list in
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`response to user actions. Ex. 2001 ¶ 26; Ex. 1001 at 9:56-58. Based on these
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`teachings, a person of skill in the art at the time of the invention would understand
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`that updating an exposure list via dynamic booking means to update the exposure
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`list when and as needed based on input from the user (i.e., mediator). Ex. 2001 ¶¶
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`25-26.
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`Additionally, the language of claim 1 explicitly distinguishes updating an
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`exposure list via dynamic booking from generating an exposure list. Ex. 2001 ¶
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`27; Ex. 1001 at cl. 1. Claim 1 of the ’334 Patent explicitly requires “wherein the
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`control center is able to create and update said exposure list . . . via dynamic
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`booking.” Ex. 2001 ¶¶ 27-28; Ex. 1001 at cl. 1 (emphasis added); see also Stumbo
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`IPR2017-00006
`U.S. Patent No. 7,382,334
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`v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (preferring a
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`construction of a term that would not render other limitations superfluous).
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`IV. THERE IS NO REASONABLE LIKELIHOOD
`OF PETITIONERS PREVAILING AS TO A CHALLENGED
`CLAIM OF THE ’334 PATENT.
`A. Ground 1: Petitioners Failed To Demonstrate That Nakamura
`Anticipates Claims 1-3, 8, 11-14, 19, 22-24, 29, 32-35, or 40.
`1.
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`Petitioners fail to demonstrate that the Nakamura discloses the
`limitations “update said exposure list in real time with control
`instruction fields via dynamic booking of information in time for
`exposure from mediators” (claims 1-3, 8, 22-24, 29) or “update an
`exposure list having control instruction fields, via dynamic
`booking of display information from mediators” (claims 11-14, 19,
`32-35, 40) .
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`Petitioners claim that Nakamura discloses “that users of the system, i.e. the
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`‘external mediators,’ can create and update the exposure lists in real time with
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`control instruction fields via dynamic booking of information in time for
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`exposure.” Pet. at 31. To the contrary, Nakamura does not teach updating the
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`reservation information stored in the master station when and as needed, nor does
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`Nakamura teach updating reservation information stored in the master station
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`based on dynamic booking, which is required by independent claims 1, 11, 22, and
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`32, and all other claims-at-issue through dependency. See Ex. 2001 ¶¶ 31-41.
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`Petitioners contend that “Nakamura discloses ‘updating said exposure list’
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`by updating the display time information in the display reservation by adjusting the
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`period, distributing idle time, and setting the display duration.” Pet. at 31.
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`IPR2017-00006
`U.S. Patent No. 7,382,334
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`Petitioners rely on paragraph 10 of Nakamura for this disclosure, which explains:
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`. . . the present invention is characterized by updating the display
`information of the display content posting support software by
`dividing the display reservation cut off period for the selected specific
`slave stations into several periods, sequentially distributing and
`editing the display reservations to be displayed in the same posting
`reservation time frame received during each of the 1st to the Nth
`reservation periods, while distributing the idle time remaining in the
`posting reservation time frame before and after each of the reserved
`display runtime during the reservation period to adjust for overlapping
`display reservations, setting the display duration for each of the
`display reservations by adding the idle time to the display runtime
`at the end of the final reservation period, and successively
`registering the display reservation status with the master station.
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`Ex. 1003 at 0010 (emphasis added). However, this disclosure merely teaches that
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`the system of Nakamura modifies the reservation information supplied at the
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`terminal devices to adjust for overlapping reservations and idle time before
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`registering the display reservation status with the master station, without any
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`indication that such modification takes place in response to user action. Ex. 2001 ¶
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`34; see also Ex. 1003 at 0010. Accordingly, this disclosure does not teach
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`updating an exposure list via dynamic booking, as the modifications are not
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`applied when and as needed in response to user action. Id.
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`Petitioners further argue that “the process disclosed by Nakamura [in
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`paragraph 0010] satisfied the ‘via dynamic booking of information in time for
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`exposure’ limitation because the information in Nakamura is updated and
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`successively registered with the master station and all of the information is done in
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`U.S. Patent No. 7,382,334
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`preparation for the display reservation.” Id. at 32. Petitioners’ explanation,
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`however, fails to identify how the editing and adjusting of the reservation periods
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`to distribute idle time and avoid overlapping reservations is performed in response
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`to user action. Ex. 2001 ¶ 34. Accordingly, Petitioners fail to explain how this
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`disclosure teaches updating an exposure list via dynamic booking, as the
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`modifications are not applied when and as needed in response to user action. Id.
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`Petitioners, relying on paragraph 0017 of Nakamura, also allege that “the
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`display content field itself is updated by adding display contents separately
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`prepared by the system.” Pet. at 32. This disclosure, however, fails to teach
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`updating an exposure list via dynamic booking, teaching instead the addition of
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`system prepared display contents, which are not applied in response to user action.
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`See Ex. 2001 ¶ 35. In paragraph 0017, Nakamura teaches:
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`When display reservations are received from an operator, the
`reservation periods created from the first to several orders are
`sequentially filled, and reservations are cut off when posting time is
`no longer available. If any time were to remain available, the display
`time 6 for individual reservations are arranged so that the posting
`reservation time frame T is filled with all the reservations that came in
`before the final reservation cut-off time, i.e., the Nth order cut-off
`time, without excess or deficiency, while occasionally adding the
`display contents separately prepared by the system 10 (FIG. 3(A)).
`The specific reservation information described above is successively
`registered with the master station 2 and the applicable items updated
`so as not to allow any double booking to occur.
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`8
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`Ex. 1003 at 0017. Rather than teaching updating an exposure list via dynamic
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`booking, this disclosure teaches the processing of the reservations by applying
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`system prescribed house-cleaning rules to arrange the reservations to avoid
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`overlapping reservations and to fill idle time. Ex. 2001 ¶ 35; see Ex. 1003 at 0017.
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`Such an application of prescribed rules does not constitute updating an exposure
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`list via dynamic booking, as the rules are not applied when and as needed in
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`response to user action. Id.
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`Petitioners also allege that Nakamura further describes dynamic booking
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`because “the master station can receive reservations from operators, and receive
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`subsequent updates where fields may be changed and added.” Pet. at 32.
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`Petitioners again rely on paragraph 0017 of Nakamura for this proposition. See id.
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`However, paragraph 0017 of Nakamura does not teach changing fields based on
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`dynamic booking. Ex. 2001 ¶ 36. Rather, it teaches cutting off reservations when
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`posting times are filled, rearranging and adding contents separately prepared by the
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`system, and adjusting reservations to avoid overlapping reservations, none of
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`which is via dynamic booking. Id. In other words, the system of Nakamura
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`modifies the reservation information supplied at the terminal devices to adjust for
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`overlapping reservations and idle time before registering the display reservation
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`status with the master station, and not when and as needed in response to user
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`action. Id.; see also Ex. 1003 at 0010, 0017. This disclosure teaches processing
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`the reservations by applying system prescribed house-cleaning rules to arrange the
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`IPR2017-00006
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`reservations to avoid overlapping reservations and to fill idle time, and that the
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`application of such prescribed rules does not constitute updating an exposure list
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`via dynamic booking, as they are not applied when and as needed in response to
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`user action. Ex. 2001 ¶ 36.
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`Petitioners further allege that Nakamura teaches that the master station
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`“dynamically updates the reservations by successively registering reservation
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`information and updating the applicable items,” explaining that the master system
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`“updates the time information also by distributing reservations and idle time,
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`editing reservations, setting durations, adding idle times to the display runtime, and
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`successively registering reservation status with the master station.” Pet. at 41-42
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`(citing Ex. 1003 at 0010, 0017, 0018, 0025). However, as discussed above, the
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`disclosures in paragraphs 0010 and 0017 do not disclose updating the exposure list
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`via dynamic booking. Ex. 2001 ¶ 35-37. Paragraph 0018 does not teach this
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`either. Id. Paragraph 0018 of Nakamura explains that
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`The reserved display contents are stored by the system 10, including
`the master station 2, and the system 10 executes the display after
`allocating the posting time and performing a prescribed editing so as
`not to compromise public order and standards of decency.”
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`Ex. 1007 at 0018 (emphasis added); see Pet. at 41. This disclosure explains that
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`the system can be set up by the administrator to perform certain edits, such as
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`conforming to decency standards, when allocating the posting time, and that such
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`edits are not the result of user action. Ex. 2001 ¶ 37; see also Ex. 1003 at 0018.
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`This disclosure does not teach updating an exposure list via dynamic booking
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`because the edits are not performed when and as needed in response to user action.
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`Ex. 2001 ¶ 37.
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`Paragraph 0025 of Nakamura also fails to teach updating an exposure list via
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`dynamic booking. Id. Paragraph 0025 of Nakamura explains:
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`[T]he decision would be made to edit the reservations a to d to
`rearrange the firm reservation order as shown at the bottom of the
`figure, and the display order executed. At this point, the display
`runtime t is set by distributing the idle time t2 remaining in the
`posting reservation frame T so that it is most beneficial for the order
`of the reservations, for example in the order of a, b, and c, which were
`committed in the earlier reservation periods.
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`Ex. 1003 at 0025 (emphasis added); see Pet. at 41. Rather than teaching updating
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`an exposure list via dynamic booking, this disclosure explains that the system can
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`be set up to rearrange the display order and distribute idle time, which essentially is
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`the application of house-keeping rules similar to those discussed above, used in the
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`process of creating the list of reservations, and not when and as needed in response
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`to user action. See Ex. 2001 ¶ 37; see also Ex. 1003 at 0025. The ’334 Patent
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`distinguishes between creating and updating the exposure list via dynamic
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`booking. See 1001 at cl. 11 (claiming “to create and update an exposure list”).
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`This disclosure does not teach updating an exposure list via dynamic booking
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`because it does not teach updating the exposure list when and as needed in
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`IPR2017-00006
`U.S. Patent No. 7,382,334
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`response to user action. Ex. 2001 ¶ 37.
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`Accordingly, as Petitioners fail to demonstrate that Nakamura teaches
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`updating an exposure list via dynamic booking, Petitioners have failed to show that
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`Nakamura anticipates claims 1-3, 8, 11-14, 19, 22-24, 29, 32-35, or 40.
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`B. Ground 2: Petitioners Failed to Demonstrate That Nakamura In View
`Of Reilly Renders Obvious Claims 4-6, 15-17, 25-27, or 36-38.
`1.
`Claims 4-6 are dependent upon claim 1; claims 15-17 are dependent on
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`Reilly does not cure the deficiencies in Nakamura.
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`claim 11; claims 25-27 are dependent upon claim 22; and claims 36-37 are
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`dependent upon claim 32; and thus all of the claims petitioners seek to invalidate
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`through ground 2 require either the limitation “update said exposure list in real
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`time with control instruction fields via dynamic booking of information in time for
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`exposure from mediators” or the limitation “update an exposure list having control
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`instruction fields, via dynamic booking of display information from mediators.”
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`See Ex. 1001 cls. 1, 4-6, 11, 15-17, 22, 25-27, 32, and 36-38. The addition of
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`Reilly does not cure the foregoing deficiency of Nakamura. See section IV.A
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`supra. Petitioners rely on Reilly for the disclosure of a database for storage,
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`organization, and retrieval of display information and the disclosure that
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`advertisements and display scripts may be placed into queues after being organized
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`into categories. Pet. at 52-60. However, Petitioners fail to demonstrate how Reilly
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`discloses updating an exposure list via dynamic booking. See id. Moreover, rather
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`than using an exposure list, Reilly uses display scripts that control the information
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`and advertisements displayed. Ex. 2001 ¶¶ 43-44; Ex. 1004 at 5:24-28.
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`Consequently, petitioners have failed to demonstrate that Nakamura in view of
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`Reilly renders obvious claims 1, 11, 22, or 32, from which claims 4-6, 15-17, 25-
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`27, and 36-38 depend. Ex. 2001 ¶¶ 42-45. Accordingly, petitioners have also
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`failed to demonstrate that Nakamura in view of Reilly renders obvious claims 4-6,
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`15-17, 25-27, or 36-38.
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`C. Ground 3: Petitioners Failed to Demonstrate That Nakamura In View
`Of Reilly and Further In View Of Ohran Renders Obvious Claims 7, 8,
`28, or 39.
`1. Ohran does not cure the deficiencies in Nakamura-Reilly.
`Claims 7-8 are dependent upon claim 1; claim 28 is dependent on claim 22;
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`and claim 39 is dependent upon claim 32; and thus all of the claims petitioners
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`seek to invalidate through ground 3 require either the limitation “update said
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`exposure list in real time with control instruction fields via dynamic booking of
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`information in time for exposure from mediators” or the limitation “update an
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`exposure list having control instruction fields, via dynamic booking of display
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`information from mediators.” See Ex. 1001 cls. 1, 7-8, 22, 28, 32, and 39. The
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`addition of Reilly does not cure the foregoing deficiency of the combination of
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`Nakamura in view of Reilly. See section IV.B supra. Petitioners rely on Ohran for
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`the disclosure of a networked server environment for detecting a server failure and
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`operating co-standby servers. Pet. at 60-63. However, Petitioners fail to
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`demonstrate how Ohran discloses updating an exposure list via dynamic booking.
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`See id. Moreover, Ohran, which discloses a method for providing rapid recovery
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`from a network file server failure through the use of a backup computer system,
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`does not appear to use an exposure list. Ex. 2001 ¶¶ 47-48; Ex. 1005 at Abstract.
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`Consequently, petitioners have failed to demonstrate that Nakamura in view of
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`Reilly in further view of Ohran renders obvious claims 1, 22, or 32, from which
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`claims 7, 8, 28, and 39 depend. Ex. 2001 ¶¶ 46-49. Accordingly, petitioners have
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`also failed to demonstrate that Nakamura in view of Reilly renders obvious claims
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`7, 8, 28, or 39.
`
`D. Ground 4: Petitioners Failed to Demonstrate That Nakamura In View
`Of Ravaky Renders Obvious Claims 9, 20, 30, or 41.
`1.
`Claim 9 is dependent upon claim 1; claim 20 is dependent on claim 11;
`
`Ravaky does not cure the deficiencies in Nakamura.
`
`claim 30 is dependent upon claim 22; and claim 41 is dependent upon claim 32;
`
`and thus all of the claims petitioners seek to invalidate through ground 3 require
`
`either the limitation “update said exposure list in real time with control instruction
`
`fields via dynamic booking of information in time for exposure from mediators” or
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`the limitation “update an exposure list having control instruction fields, via
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`IPR2017-00006
`U.S. Patent No. 7,382,334
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`dynamic booking of display information from mediators.” See Ex. 1001 cls. 1, 9,
`
`11, 20, 22, 30, 32, and 40. The addition of Ravaky does not cure the foregoing
`
`deficiency of Nakamura. See section IV.A supra. Petitioners rely on Ravaky for
`
`the disclosure of transmitting information from a remote network to a local
`
`computer with a display using the TCP/IP protocol. Pet. at 64-66. However,
`
`Petitioners fail to demonstrate how Ravaky discloses updating an exposure list via
`
`dynamic booking. See id. Moreover, rather than using an exposure list, Ravaky
`
`discloses “[m]ethods and apparatus … for selecting advertisements and other
`
`information from a computer network database based on user defined preferences
`
`and transmitting the selected advertisement in background mode over a
`
`communications link between compute network and a local computer with
`
`minimal interference.” Ex. 2001 ¶¶ 51-52; Ex. 1006 at Abstract (emphasis added).
`
`Consequently, petitioners have failed to demonstrate that Nakamura in view of
`
`Ravaky renders obvious claims 1, 11, 22, or 32, from which claims 9, 20, 30, and
`
`41 depend. Ex. 2001 ¶¶ 50-53. Accordingly, petitioners have also failed to
`
`demonstrate that Nakamura in view of Reilly renders obvious claims 9, 20, 30,
`
`or 41.
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`E. Ground 5: Petitioners Fail to Demonstrate That Nakamura In View Of
`Holtey Renders Obvious Claims 10, 21, 31, or 42.
`1. Holtey does not cure the deficiencies in Nakamura.
`Claim 10 is dependent upon claim 1; claim 21 is dependent on claim 11;
`
`claim 31 is dependent upon claim 22; and claim 42 is dependent upon claim 32;
`
`and thus all of the claims petitioners seek to invalidate through ground 3 require
`
`either the limitation “update said exposure list in real time with control instruction
`
`fields via dynamic booking of information in time for exposure from mediators” or
`
`the limitation “update an exposure list having control instruction fields, via
`
`dynamic booking of display information from mediators.” See Ex. 1001 cls. 1, 10,
`
`11, 21, 22, 31, 32, and 42. The addition of Holtey does not cure the foregoing
`
`deficiency of Nakamura. See section IV.A supra. Petitioners rely on Holtey for
`
`the disclosure of the use of a memory card for storing addresses. Pet. at 66-68.
`
`However, Petitioners fail to demonstrate how Holtey discloses updating an
`
`exposure list via dynamic booking. See id. Moreover, Holtey, which discloses a
`
`secure memory card, teaches nether the use of an exposure list, nor updating an
`
`exposure list via dynamic booking. Ex. 2001 ¶¶ 55-56; Ex. 1007 at Abstract.
`
`Consequently, petitioners have failed to demonstrate that Nakamura in view of
`
`Holtey renders obvious claims 1, 11, 22, or 32, from which claims 10, 21, 31, and
`
`42 depend. Ex. 2001 ¶¶ 54-57. Accordingly, petitioners have also failed to
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`demonstrate that Nakamura in view of Reilly renders obvious claims 10, 21, 31,
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`U.S. Patent No. 7,382,334
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`or 42.
`
`V. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`deny institution of the Petition in its entirety.
`
`Date: January 20, 2017
`
`Respectfully submitted,
`
`
`
`/ Steven R. Daniels/
`Steven R. Daniels, Reg. No. 45,345
`FARNEY DANIELS PC
`800 S. Austin Avenue, Suite 200
`Georgetown, Texas 78626
`Phone: 512-582-2828
`E-mail: sdaniels@farneydaniels.com
`
`
`
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`CERTIFICATE OF WORD COUNT
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`IPR2017-00006
`U.S. Patent No. 7,382,334
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`Pursuant to 37 C.F.R. §42.24, the undersigned certifies that the foregoing
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`Patent Owner’s Preliminary Response contains 4,037 words excluding a table of
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`contents, a table of authorities, mandatory notices under § 42.8, a certificate of
`
`service or word count, or appendix of exhibits or claim listing. Patent Owner has
`
`relied on the word count feature of the word processing system used to create this
`
`paper in making this certification.
`
`Dated: January 20, 2017
`
`
`
`
`
`/ Steven R. Daniels/
`Steven R. Daniels, Reg. No. 45,345
`
`
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`IPR2017-00006
`U.S. Patent No. 7,382,334
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`CERTIFICATE OF SERVICE
`
`Under 37 C.F.R. §§42.6(e), this is to certify that I served a copy of the
`
`foregoing T-REX PROPERTY AB’S PATENT OWNER PRELIMINARY
`
`RESPONSE PURSUANT TO 37 C.F.R. §42.107(A) along with the accompanying
`
`exhibits via email on January 20, 2017 to Petitioners’ counsel of record at the
`
`following email addresses:
`
`Vincent J. Rubino, III, Reg. No. 68,504
`Alfred R. Fabricant, Reg. No.
`Peter Lambrianakos, Reg. No. 58,279
`Enrique W. Iturralde, Reg. No. 72,883
`Brown Rudnick, LLP
`7 Times Square
`New York, NY 10036
`Phone: 212-209-4800
`Fax: 212-209-4801
`E-mail: vrubino@brownrudnick.com
`afabricant@brownrudnick.com
`plambrianakoes@brownrudnick.com
`eiturralde@brownrudnick.com
`
`Dated: January 20, 2017
`
`/ Steven R. Daniels/
`Steven R. Daniels, Reg. No. 45,345
`
`
`
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