Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 7
`
`
`Entered: April 13, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`BROADSIGN INTERNATIONAL, LLC,
`Petitioner,
`
`v.
`
`T-REX PROPERTY AB,
`Patent Owner.
`____________
`
`Case IPR2017-00006
`Patent 7,382,334 B1
`____________
`
`
`
`
`
`
`Before BRIAN J. McNAMARA, BARBARA A. BENOIT, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`571-272-7822
`
`
`
` Paper 7
`
`
`Entered: April 13, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`BROADSIGN INTERNATIONAL, LLC,
`Petitioner,
`
`v.
`
`T-REX PROPERTY AB,
`Patent Owner.
`____________
`
`Case IPR2017-00006
`Patent 7,382,334 B1
`____________
`
`
`
`
`
`
`Before BRIAN J. McNAMARA, BARBARA A. BENOIT, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2017-00006
`Patent 7,382,334 B1
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`
`I. INTRODUCTION
`Broadsign International, LLC filed a Petition for inter partes
`review of claims 1–42 of U.S. Patent No. 7,382,334 B1 (Ex. 1001, “the
`’334 patent” or “the challenged patent”). Paper 2 (“Pet.”). Patent
`Owner filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows
`that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.”
`35 U.S.C. § 314(a); see 37 C.F.R. § 42.108.
`Upon consideration of the Petition and the Preliminary
`Response, we conclude the information presented does not show there
`is a reasonable likelihood that Petitioner would prevail in establishing
`the unpatentability of at least one of the challenged claims.
`Accordingly, for the reasons that follow, we deny institution of an inter
`partes review.
`
`A. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies
`various judicial or administrative matters that would affect or be
`affected by a decision in this proceeding. Pet. 1–7; Paper 5, 2–6
`(Patent Owner’s Mandatory Notices).
`
`B. The ’334 Patent
`The ’334 patent is titled “Digital Information System” and
`describes ways to control and coordinate television sets and cameras
`for displaying information. Ex. 1001 [54], 1:13–24.
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`1. The Written Description
`The patent identifies needs to “enable information to be updated
`dynamically for display in real time” and to “enable external mediators
`to update information for display in a central control system.” Id. at
`1:52–59. The ’334 patent explains that it uses the term “external
`mediators”1 to refer to advertising agencies and others who wish to
`display information for commercial reasons or to the general public.
`Id. at 6:46–51. The patent indicates the disclosed system may be used
`to display information at private homes, cinema locations, railway
`stations, subway stations, and airports, among other types of locations.
`Id. at 5:51–54, 5:34–45.
`In addition, the patent contrasts conventional display systems on
`which the displayed information becomes static to its system that
`enables updating and changing the display information quickly. Id. at
`2:24–36. According to the patent, static displays of conventional
`systems are disliked by travelers, “who often wait for long periods in
`waiting halls or stand[ing] on platforms.” Id. at 2:28–34. In addition,
`conventional displays under “utilize expensive information display
`equipment to the highest possible degree compatible with good
`economy.” Id. at 2:34–36.
`The figure of the challenged patent is set forth below:
`
`
`1 External mediators are also referred to by the patent as external
`information mediators or information mediators. See Ex. 1001, 6:35–
`41, 6:46 (referring to information mediators 24 depicted in the patent
`figure as “external information mediators 24,” “external mediators 24,”
`and “information mediator (24)”).
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`The figure illustrates “system 10 for coordinating and
`controlling television sets or cameras . . . for displaying information” at
`private homes, cinema locations, railway stations, subway stations, and
`airports, among other types of locations. Id. at 5:51–54, 5:34–45.
`Control centre 12 has communication interface 14 (shown as a radio
`link 14) that connects computerized devices 16, 18, 20. Id. at 5:59–61.
`Computerized device 16 controls one or more television sets or
`cameras 22 that display images or pictures in public places. Id. at
`5:36–45, 5:59–63. Working stations 32 are used by personnel serving
`the control centre 12, whereas external information mediators 24
`provide control instructions to television sets or cameras 22 “with
`regard to the information that the external mediators 24 desire the
`system 10 to display via the television sets or cameras 22, each on its
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`own initiative and communication-wise transparent via modems 26.”
`Id. at 6:23–26, 6:36–42.
`The patent describes that the system enables an external
`information mediator to control and coordinate the display of
`information in a time-sensitive manner. In contrast to conventional
`systems in which an external information mediator “is normally forced
`to wait about two weeks, perhaps longer, before his order can be
`implemented and the information publicly displayed,”
`the inventive digital information system 10 can . . .
`display[] principally in real time, i.e. at the time of
`making the order, possibly with a short delay due to
`processing, fully-booked exposure lists and other
`quickly passing causes. Furthermore, an external
`information mediator 24 is able to put through
`information to the system 12 twenty-four hours a day,
`whereupon
`the
`information
`can be
`included
`instantaneously in an exposure list.
`Id. at 6:51–63.
`
`2. Illustrative Claims
`Of the challenged claims, claims 1, 11, 22, and 32 are
`
`independent and illustrate the claimed subject matter.
`1. A method of coordinating and controlling
`television sets or cameras in a digital information system
`for exposing information on at least one display device
`through the medium of at least one television set or camera,
`characterized in that it comprises the following steps:
`generating an exposure list comprising control
`instructions for coordinating and controlling television sets
`or cameras with regard to what shall be exposed, when it
`shall be exposed, where it shall be exposed and for how
`long it shall be exposed;
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`using a control center for coordinating and
`controlling television sets or cameras, wherein the control
`center is able to create and update said exposure list in real
`time with control instruction fields via dynamic booking of
`information in time for exposure from mediators; and
`wherein the exposure list enables each television set
`or camera to be controlled, independently of other
`television sets or cameras, to receive the same or different
`information in accordance with the exposure list for
`exposure of respective television set or camera through the
`computerized devices.
`Ex. 1001, 16:11–31.
`for coordinating and
`11. An arrangement
`controlling
`television sets or cameras
`in a digital
`information system for displaying information on at least
`one display device through the medium of at least one
`television set or camera, said information being supplied by
`mediators of
`information, for exposure or display,
`characterized in that it comprises:
`computerized control center means, wherein the
`control center has communication interfaces against;
`computerized means
`for
`coordinating
`controlling television sets or cameras;
`exposure handler means whereby the control center
`functions, in real time and through the medium of said
`exposure handler, to create and update an exposure list
`having control instruction fields, via dynamic booking of
`display information from mediators; and
`wherein said exposure list, containing control
`instructions, coordinates and controls the television sets or
`cameras in question with respect to what shall be exposed,
`where it shall be exposed, when it shall be exposed, and for
`how long it shall be exposed, and enables each television
`set or camera, independently of other television sets or
`cameras, to receive the same or different information
`according to the exposure list for exposure or display by
`
`and
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`through
`
`the
`
`set or camera
`
`television
`respective
`computerized devices.
`Ex. 1001, 17:1–26.
`22. A method of coordinating and controlling
`electronic displays in a digital information system for
`exposing information on at least one display device through
`the medium of at least one electronic display, characterized
`in that it comprises the following steps:
`generating an exposure list comprising control
`instructions for coordinating and controlling electronic
`displays with regard to what shall be exposed, when it shall
`be exposed, where it shall be exposed and for how long it
`shall be exposed;
`using a control center for coordinating and
`controlling electronic displays, wherein the control center
`is able to create and update said exposure list in real time
`with control instruction fields via dynamic booking of
`information in time for exposure from mediators; and
`wherein the exposure list enables each electronic
`display to be controlled, independently of other electronic
`displays, to receive the same or different information in
`accordance with the exposure list for exposure of
`respective electronic display.
`Ex. 1001, 18:5–25.
`for coordinating and
`32. An arrangement
`controlling electronic displays in a digital information
`system for displaying information on at least one display
`device through the medium of at least one electronic
`display, said information being supplied by mediators of
`information, for exposure or display, characterized in that
`it comprises:
`computerized control center means, wherein the
`control center has communication interfaces against;
`computerized means
`for
`coordinating
`controlling electronic displays;
`
`and
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`exposure handler means whereby the control center
`functions, in real time and through the medium of said
`exposure handler, to create and update an exposure list
`having control instruction fields, via dynamic booking of
`display information from mediators; and
`wherein said exposure list, containing control
`instructions, coordinates and controls
`the electronic
`displays in question with respect to what shall be exposed,
`where it shall be exposed, when it shall be exposed, and for
`how long it shall be exposed, and enables each electronic
`display independently of other electronic displays, to
`receive the same or different information according to the
`exposure list for exposure or display by respective
`electronic display.
`Ex. 1001, 18:62–19:18.
`
`C. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–42 of the ’334 patent are
`
`unpatentable based on the following specific grounds.
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`Reference[s]
`
`Challenged Claims
`Basis2
`§ 102(a) 1, 2, 3, 8, 11–14, 19, 22–
`24, 29, 32–35, and 40
`§ 103(a) 4–6, 15–17, 25–27, and
`Nakamura and Reilly4
`36–38
`Nakamura, Reilly, and Ohran5 § 103(a) 7, 18, 28, and 39
`Nakamura and Ravaky6
`§ 103(a) 9, 20, 30, and 41
`Nakamura and Holtey7
`§ 103(a) 10, 21, 31, and 42
`Pet. 25–68.
`
`Nakamura3
`
`II. DISCUSSION
`
`Independent claims 1 and 22 each recites “wherein the control
`center is able to create and update said exposure list in real time with
`control instruction fields via dynamic booking of information in time
`for exposure from mediators.” Ex. 1001, 16:21–24 (claim 1); id. at
`18:16–19 (claim 22). Independent claims 11 and 32 each requires an
`“exposure handler means whereby the control center functions, in real
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284, 287–88 (2011), revised 35 U.S.C. §§ 102, 103, 112,
`effective March 16, 2013. Because the challenged patent claims the
`benefit of a filing date before March 16, 2013, we refer to the pre-AIA
`version of sections 102, 103, 112. Ex. 1001, [60] (claiming May 14,
`1996).
`3 Japanese Patent Publication No. H07-168544, published July 4, 1995
`(Ex. 1003; English translation, Ex. 1003, 10–18 “Nakamura”).
`4 U.S. Patent No. 5,740,549, issued Apr. 14, 1998 (Ex. 1004, “Reilly”).
`5 U.S. Patent No. 5,978,565, issued Nov. 2, 1999 (Ex. 1005, “Ohran”).
`6 U.S. Patent No. 5,913,040, issued June 15, 1999 (Ex. 1006,
`“Ravaky”).
`7 U.S. Patent No. 5,442,704, issued Aug. 15, 1995 (Ex. 1007,
`“Holtey”).
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`time and through the medium of said exposure handler, to create and
`update an exposure list having control instruction fields, via dynamic
`booking of display information from mediators.” Id. at 17:12–16
`(claim 11); id. at 19:5–9 (claim 32). For these limitations in claims 1,
`11, 22, and 32, Petitioner relies on Nakamura. Pet. 11 (asserting
`independent claims 1, 11, 22, and 32 are anticipated by Nakamura); id.
`at 29–33 (claim 1); id. at 37 (claim 11); id. at 43 (claim 22); id. at 45
`(claim 32).
`Our determination whether to institute inter partes review based
`on the Petition is resolved by a determination whether the information
`in the Petition shows there is a reasonable likelihood that Petitioner
`would prevail in establishing Nakamura discloses, expressly or
`inherently, or would have conveyed to one of ordinary skill in the art
`the requisite updating an exposure list. For the reasons that follow, we
`determine the information in the Petition does not show the necessary
`reasonable likelihood.
`
`A. Claim Construction
`The ’334 patent has expired. See Pet. 12 (asserting the
`challenged patent “expired at least as of May 14, 2016”); Ex. 1001,
`[60] (claiming priority to a provisional application filed on May 14,
`1996). Patent Owner does not dispute that the ’334 patent is expired.
`See generally Prelim. Resp.
`For claims of an expired patent, the Board’s claim construction
`analysis is similar to that of a district court. See In re Rambus, Inc.,
`694 F.3d 42, 46 (Fed. Cir. 2012). In this context, claim terms “are
`generally given their ordinary and customary meaning” as understood
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`by a person of ordinary skill in the art in question at the time of the
`invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
`2005) (en banc). “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing
`Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant
`than the intrinsic record in determining the legally operative meaning
`of claim language.” Phillips, 415 F.3d at 1317.
`Petitioner proposes constructions for several terms that recite
`“means.” Pet. 14–17; see 37 C.F.R. § 42.104(b)(3) (A petition must
`set forth “[h]ow the challenged claim is to be construed. Where the
`claim to be construed contains a means-plus-function or step-plus-
`function limitation as permitted under 35 U.S.C. 112(f), the
`construction of the claim must identify the specific portions of the
`specification that describe the structure, material, or acts corresponding
`to each claimed function.”).
`Patent Owner does not address directly Petitioner’s proposed
`constructions. See generally Prelim. Resp. 2–6 (claim construction
`section). Patent Owner, however, proffers constructions for updating
`an exposure list as required by each independent claim. Id.
`
`1. Updating an Exposure List via Dynamic Booking
`(Independent Claims 1, 11, 22, and 32)
`
`Each independent claim requires updating an exposure list via
`dynamic booking of information from mediators. Specifically,
`
`11
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`independent claims 1 and 22 each recites “update said exposure list in
`real time with control instruction fields via dynamic booking of
`information in time for exposure from mediators.” Ex. 1001, 16:21–
`24, 18:16–19. Similarly, independent claims 11 and 32 each recites
`“update an exposure list having control instruction fields, via dynamic
`booking of display information from mediators.” Id. at 17:12–16,
`19:5–9.
`To provide context for the following discussion, we note that
`“exposure list” is the object of the requisite updating via dynamic
`booking in each independent claim. The plain language of each
`independent claim also makes clear that an exposure list includes
`control instruction fields8 and is updated via dynamic booking of
`information9 from mediators. The parties do not dispute the meaning
`of “exposure list.”
`Petitioner does not proffer an express construction for updating
`an exposure list via dynamic booking of information from mediators or
`doing so in real time. Pet. 14–17. Patent Owner contends “update said
`exposure list in real time with control instruction fields via dynamic
`booking of information in time for exposure from mediators” (recited
`in independent claims 1 and 22) should be construed as “update
`information in the exposure list containing control instruction fields
`when and as needed for exposure in response to information
`
`
`8 Claims 1 and 22 each recites “exposure list . . . with control
`instruction fields,” whereas claims 11 and 32 each recites “exposure
`list . . . having control instruction fields.”
`9 Claims 11 and 22 further recite “display information.”
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`submissions from a user.” Prelim. Resp. 3. Similarly, Patent Owner
`contends “update an exposure list having control instruction fields, via
`dynamic booking of display information from mediators” (recited in
`independent claims 11 and 32) should be construed as “update
`information in an exposure list containing control instruction fields
`when and as needed in response to information submissions from a
`user.” Id.
`For support of its contention, Patent Owner relies on the
`Microsoft Computer Dictionary definition of “dynamic” as
`“describ[ing] some action or event that occurs when and as needed”
`and its definition of “dynamic HTML” as a “technology designed to
`add richness, interactivity, and graphical interest to Web pages by
`providing those pages with the ability to change and update
`themselves dynamically, that is, in response to user actions, without
`the need for repeated downloads from a server.” Id. at 3–4 (citing
`Ex. 2003, 158–59) (alternation in original).
`Central to Patent Owner’s proffered constructions is that
`“dynamic” means, in the context of the challenged patent, “when and
`as needed.” Thus, according to Patent Owner, the recited updating the
`exposure list via dynamic booking requires doing so “when and as
`needed.” See Prelim. Resp. 3 (arguing claims 1 and 22 require
`“updating . . . the exposure list . . . when and as needed”); id. (arguing
`claims 11 and 32 require “update . . . an exposure list . . . when and as
`needed”).
`We agree with Patent Owner that “dynamically updating an
`exposure list” means “updating the exposure list when and as needed.”
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`First, the technical dictionary definition of “dynamic” supports this
`construction. Ex. 2003, 158 (Microsoft Computer Dictionary defining
`“dynamic” as “occurring immediately and concurrently. The term is
`used in describing both hardware and software; in both cases it
`describes some action or event that occurs when and as needed. In
`dynamic memory management, a program is able to negotiate with the
`operating system when it needs more memory.” (emphasis added)).
`We also agree with Patent Owner that the written description
`contrasts “dynamically updating the exposure list” with an alternative
`manner of updating the exposure list. Prelim. Resp. 5; Ex. 1001, 9:45–
`52. The patent describes dynamically updating by mediators using
`software to transparently introduce pictures or films into the exposure
`list” and doing so “without processing via the working stations 32 in
`the control centre 12.” Ex. 1001, 9:39–47. According to the patent, in
`contrast to dynamically updating, personnel may use work stations 32
`in the control centre 12 to process the picture or exposure material that
`external information mediator wishes to project when “the external
`information mediators 24 . . . do not have access to software in the
`exposure handler.” Id. at 9:45–61; see Prelim. Resp. 5. The patent
`reiterates this distinction between (i) personnel using work stations in
`the control center to update the “exposure or picture material” and
`(ii) dynamically filling in the exposure list by external mediators.
`Ex. 1001, 12:12–22.
`We also note that the ’334 patent contrasts the inventive system
`with a conventional process that requires an external information
`mediator to wait about two weeks before the order to display new
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`information can be implemented. Id. at 6:51–55 (“At present a
`mediator which wishes to display information in public places is
`normally forced to wait about two weeks, perhaps longer, before his
`order can be implemented and the information publicly displayed.”).
`This further supports the construction of “updating an exposure list via
`dynamic booking” as “updating an exposure list when and as needed.”
`We further note that claims 1 and 22 each recite “update said
`exposure list in real time . . . via dynamic booking of information in
`time for exposure.” Id. at 16:22–24 (claim 1), 18:17–19 (claim 22)
`(emphasis added). The term “in time for exposure” requires the update
`via dynamic booking must be done by a certain time—“in time for
`exposure.” This temporal requirement further supports the
`construction of “updating an exposure list via dynamic booking” as
`“updating an exposure list when and as needed.”
`Regarding its proffered definition of “dynamic HTML,”
`however, Patent Owner does not explain sufficiently how “dynamic
`HTML” relates to the challenged patent. See Prelim. Resp. 3–4 (citing
`Ex. 2003 at 158–59). Patent Owner’s declarant explains that dynamic
`HTML is “a well-known umbrella term for a collection of technologies
`that use scripting languages to change variables used in a web page to
`affect the look and function of an HTML page while a user views the
`page.” Ex. 2001 ¶ 23; see Prelim. Resp. 4 (citing Ex. 2003, 158–59;
`Ex. 2001 ¶ 23). Neither Patent Owner nor its declarant,
`Mr. Zaydoon Jawadi, relates dynamic HTML to claim language or
`technology described in the written description. Prelim. Resp. 4 (citing
`Ex. 2003, 158–59; Ex. 2001 ¶ 23); see also Ex. 2001 ¶ 24 (“Further
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`support is found in the fourth edition of the Microsoft Computer
`Dictionary’s definition of ‘dynamic’: “describ[ing] some action or
`event that occurs when and as needed.” (emphasis in original)). We
`are unaware of any reference in the patent to dynamic HTML, or even
`a web page. Thus, we do not accord much weight to the technical
`dictionary definition of “dynamic HTML” that Patent Owner proffers
`to support its position.
`In sum, we conclude, in the context of the ’334 patent, that
`“updating an exposure list via dynamic booking” means “updating an
`exposure list when and as needed.”
`
`2. Updating Exposure List in Real Time
`(Independent Claims 1, 11, 22, and 32)
`
`In addition, each independent claim requires updating the
`exposure list in real time. Each of claims 1 and 22 recites “update said
`exposure list in real time.” Claims 11 and 32 express a real-time
`requirement in reciting a limitation that the control center functions in
`real time to update an exposure list via dynamic booking. Id. at 17:12–
`16, 19:5–9.
`Neither Petitioner nor Patent Owner proffers an express
`construction for “in real time.” Patent Owner subsumes “in real time”
`in its discussion of “updating an exposure list . . . via dynamic
`booking” and does not discuss “in real time.” Prelim. Resp. 3–6. Yet
`the challenged patent in its claims and written description distinguishes
`“dynamic” and “in real time.” First, each of the independent claims
`(claims 1, 11, 22, and 32) recites both “dynamic” and “in real time.”
`Second, the written description uses both “dynamic” and “in real
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`time.” Compare Ex. 1001, 9:45–56, 12:20–21) (“dynamic” or
`“dynamically”), with id. at 3:5–11, 6:55–59, 8:43–51 (“in real time”).
`Thus, we conclude that independent claims 1, 11, 22, and 32
`require more than updating via “dynamic booking”—each also requires
`doing so “in real time.” The challenged patent describes “in real
`time”:
`With the inventive digital information system 10, the
`information can be displayed principally in real time,
`i.e. at the time of making the order, possibly with a short
`delay due to processing, fully-booked exposure lists and
`other quickly passing causes.
`Id. at 6:55–59.
`
`B. Principles of Law Concerning Demonstrating Unpatentability
`“In an [inter partes review], the petitioner has the burden from
`the onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes
`review petitions to identify “with particularity . . . the evidence that
`supports the grounds for the challenge to each claim”)); see also
`37 C.F.R. § 42.104(b)(4) (requiring a petition to include a statement of
`the precise relief requested for each claim challenged, including
`“where each element of the claim is found in the prior art patents or
`printed publications relied upon.”). This burden never shifts to Patent
`Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v.
`Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing
`the burden of proof in inter partes review). Furthermore, Petitioner
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`cannot satisfy its burden of proving obviousness by employing “mere
`conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016).
`A claim is unpatentable under 35 U.S.C. § 102 “if each and
`every claim limitation is found either expressly or inherently in a
`single prior art reference.” Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co. Ltd, No. 2016-1900, 2017 WL 977034, at *2 (Fed.
`Cir. March 14, 2017). It is not sufficient that one of ordinary skill in
`the art “reading the reference would ‘at once envisage’ the claimed
`arrangement.” Id. at *3. Furthermore, to anticipate, a prior art
`reference must disclose more than “multiple, distinct teachings that the
`artisan might somehow combine to achieve the claimed invention.”
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
`2008); see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“The
`[prior art] reference must clearly and unequivocally disclose the
`claimed [invention] or direct those skilled in the art to the [invention]
`without any need for picking, choosing, and combining various
`disclosures not directly related to each other by the teachings of the
`cited reference.”). Although the elements must be arranged or
`combined in the same way as in the claim, “the reference need not
`satisfy an ipsissimis verbis test,” i.e., identity of terminology is not
`required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re
`Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are
`such that the subject matter, as a whole, would have been obvious at
`
`18
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`IPR2017-00006
`Patent 7,382,334 B1
`
`the time of the invention to a person having ordinary skill in the art.
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question
`of obviousness is resolved on the basis of underlying factual
`determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior
`art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. Summary of Nakamura
`Nakamura is a Japanese patent publication directed to an
`advertising display control system that allows a registered user to input
`information to display on selected display devices. Ex. 1003, Abstract.
`Figure 1(A) of Nakamura is set forth below.
`
`
`Id. at Fig. 1(A). Figure 1(A) depicts system 10 including master
`station 2, slave stations 1, and terminals 3. Id. ¶ 13. Slave stations 1
`have multiple display devices 1a–1d that are capable of being
`controlled by master station 2. Id. Slave station 1 is connected to
`terminal device 3 via master station 2. Id. ¶ 15. A registered user uses
`
`19
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`IPR2017-00006
`Patent 7,382,334 B1
`
`the terminal to access content creation software that allows for
`uploading and processing media content to display. Id. ¶ 16. The
`registered user also uses posting software “to confirm and reserve the
`locations and time for the display,” including “the budget, the locations
`of the slave stations 1a, display time, duration, and the method of
`display.” Id.
`
`D. Asserted Ground of Anticipation
`Petitioner contends that the challenged independent claims
`(claims 1, 11, 22, and 32) and some dependent claims (claims 2, 3, 8,
`12–14, 19, 23, 24, 29, 33–35, and 40) are anticipated by Nakamura
`under 35 U.S.C. § 102(a). Pet. 25–52. Petitioner’s declarant, Jaime G.
`Carbonell, Ph.D., supports Petitioner’s contentions but does not add
`substantial additional reasoning, explanation, or factual support beyond
`that found in the Petition. Compare Pet. 30–33, with Ex. 1009 ¶¶ 63–
`67 (regarding “wherein the control center is able to create and update
`said exposure list in real time with control instruction fields via
`dynamic booking of information in time for exposure from mediators,”
`as recited in claim 1).
`Patent Owner opposes Petitioner’s contentions, with support of
`declaration testimony of Mr. Jawadi (Ex. 2001). Prelim. Resp. 6–12.
`Specifically, in its Preliminary Response, Patent Owner contends that
`Petitioner fails to demonstrate that 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” (recited in independent claims 1 and 22) or “update an
`exposure list having control instruction fields, via dynamic booking of
`
`20
`
`
`
`IPR2017-00006
`Patent 7,382,334 B1
`
`display information from mediators” (recited in independent claims 11
`and 32). Prelim. Resp. 6 (citing Pet. 31). According to Patent Owner,
`“Nakamura does not teach updating the reservation information stored
`in the master station when and as needed, nor does Nakamura teach
`updating reservation information stored in the master station based on
`dynamic booking, which is required by independent claims 1, 11, 22,
`and 32, and all other claims-at-issue through dependency.” Id. (citing
`Ex. 2001 ¶¶ 31–41; Ex. 1003 ¶¶ 10, 17, 18, 25).
`As noted previously, a central issue is whether Nakamura
`discloses, inherently or expressly, updating an exposure list via
`dynamic booking of information as required by independent claims 1,
`11, 22, and 32.
`
`1. Independent Claim 1
`Petitioner contends “wherein the control center is able to create
`and update said exposure list in real time with control instruction fields
`via dynamic booking of information in time for exposure from
`mediators” is disclosed by operators of Nakamura’s system (i.e.,
`recited mediators) who “directly decide the major specifications for
`providing the information . . . display contents, posting time frame,
`display durations, and display facilities.” Pet. 30 (citing Ex. 1003 ¶ 8).
`According to Petitioner, Nakamura discloses the recited creating an
`exposure list “by, for example, preparing display reservation
`information.”10 Id. at 31 (citing Ex. 1003 ¶ 9). Petitioner further
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