UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________
`
`
`
`
`
`Broadsign International, LLC,
`
`Petitioner
`
`v.
`
`T-Rex Property AB,
`
`Patent Owner
`
`________________________
`
`U.S. Patent Number 7,382,334
`Issue Date: June 3, 2008
`Title: DIGITAL INFORMATION SYSTEM
`
`
`
`Case Number: IPR2017-00006
`
`__________________________________________________________________
`
`DECLARATION OF JAIME G. CARBONELL, PH.D.
`
`__________________________________________________________________
`
`
`IPR2017-00006 – Ex. 1009
`Broadsign International, LLC, Petitioner
`1
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`

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`
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`
`
`Table of Contents
`
`Page No(s).
`
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS ............................................... 5
`
`A.
`
`B.
`
`Summary of My Opinions ..................................................................... 5
`
`Qualificiations and Experience ............................................................. 6
`
`II. MATERIALS CONSIDERED ........................................................................ 9
`
`III.
`
`IV.
`
`PERSON OF ORDINARY SKILL IN THE ART ........................................ 10
`
`INVALIDITY CONSIDERATIONS ............................................................ 11
`
`A.
`
`B.
`
`Standards for Anticipation and Obviousness ...................................... 11
`
`Scope and Content of the Prior Art ..................................................... 13
`
`V.
`
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) .................. 14
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`“Computerized Means” ....................................................................... 15
`
`Drive Routine Means .......................................................................... 16
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`Smart Card Which Can Be Read By Computerized Means ............... 18
`
`Computerized Control Center Means .................................................. 18
`
`Exposure Handler Means .................................................................... 19
`
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 19
`
`A.
`
`Brief Summary of the Challenged Patent ............................................ 20
`
`1.
`
`2.
`
`Background of the ’334 Patent ................................................. 20
`
`Prosecution History of the ’334 Patent ..................................... 21
`
`B.
`
`Brief Summary of the Prior Art........................................................... 22
`
`1.
`
`Brief Overview of Nakamura.................................................... 22
`
`
`
`2
`
`

`
`
`
`
`
`2.
`
`3.
`
`4.
`
`5.
`
`Brief Overview of Reilly .......................................................... 24
`
`Brief Overview of Ohran .......................................................... 24
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`Brief Overview of Rakavy ........................................................ 25
`
`Brief Overview of Holtey ......................................................... 26
`
`C.
`
`Claims 1, 2, 3, 8, 11, 12, 13, 14, 19, 22, 23, 24, 29, 32, 33, 34,
`35 are anticipated under 35 U.S.C. § 102(a) over Nakamura. ............ 26
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Independent Claim 1 ................................................................. 26
`
`Independent Claim 11 ............................................................... 37
`
`Independent Claim 22 ............................................................... 43
`
`Independent Claim 32 ............................................................... 45
`
`Dependent Claim 2.................................................................... 48
`
`Dependent Claim 3.................................................................... 51
`
`Dependent Claim 8.................................................................... 52
`
`Dependent Claims 12, 13, 14, 19, 23, 24, 29, 33, 34, 35
`8.
`and 40 .................................................................................................. 52
`
`D. Dependent Claims 4, 5, 6, 15, 16, 17, 25, 26, 27, 36, 37, and 38
`are Unpatentable under 35 U.S.C. § 103(a) as Obvious under
`Nakamura in view of Reilly. ............................................................... 55
`
`1.
`
`2.
`
`3.
`
`4.
`
`Dependent Claim 4.................................................................... 55
`
`Dependent Claim 5.................................................................... 60
`
`Dependent Claim 6.................................................................... 61
`
`Dependent Claims 15, 16, 17, 25, 26, 27, 36, 37, and 38 ......... 64
`
`E.
`
`Dependent Claims 7, 18, 28, and 39 are Unpatentable under 35
`U.S.C. § 103(a) as Obvious under Nakamura and Reilly, and
`Further in View of Ohran. ................................................................... 65
`
`1.
`
`Dependent Claim 7.................................................................... 65
`3
`
`

`
`2.
`
`Dependent Claims 18, 28, 39 .................................................... 68
`
`F.
`
`Dependent Claims 9, 20, 30, and 41 are Unpatentable under 35
`U.S.C. § 103(a) as Obvious under Nakamura in View of
`Ravaky. ................................................................................................ 69
`
`1.
`
`2.
`
`Dependent Claim 9.................................................................... 69
`
`Dependent Claims 20, 30, 41 .................................................... 71
`
`G. Dependent Claims 10, 21, 31 and 42 are unpatentable under 35
`U.S.C. § 103(a) as obvious under Nakamura in view of Holtey. ....... 71
`
`1.
`
`2.
`
`Dependent Claim 10 ................................................................. 71
`
`Dependent Claims 21, 31, 42 .................................................... 73
`
`H.
`
`Exemplary Claim Charts ..................................................................... 74
`
`4
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`

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`
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`I, Jaime G. Carbonell, Ph.D., hereby declare and state as follows:
`I.
`
`Introduction and Qualifications
`A.
`
`Summary of My Opinions
`
`(1) U.S. Pat. No. 7,382,334 (hereinafter, the “’334 Patent”) purports to describe
`
`a system for selectively displaying digital information at one or more of a plurality
`
`of locations. The ’334 Patent contains Claims 1–42 (hereinafter, the Challenged
`
`Claims), each of which I address below. As I explain further, the Challenged
`
`Claims do not recite any feature that would have been regarded as novel or
`
`nonobvious to a person of ordinary skill in the art.
`
`(2) Around April of 1996, the alleged foreign priority date of the ’334 Patent,
`
`display information systems described by the ’334 Patent were well-known. One
`
`particular reference, Japanese Patent Application Heisei 07-168544 to Nakamura
`
`(hereinafter “Nakamura”) was filed on December 15, 1993 and published on July
`
`4, 1995, well before the ’334 Patent. Nakamura discloses a display control system
`
`that allows registered users (e.g. advertisers) to input display information to
`
`selectively show an advertisement on one or more displays, also located remotely.
`
`Nakamura discloses or suggests all of the supposedly inventive features of the ’334
`
`Patent. As I will explain below, all of the Challenged Claims would have been
`
`anticipated or obvious based on the prior art.
`
`
`
`5
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`

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`
`
`B. Qualifications and Experience
`
`(3)
`
`I received Bachelor of Science degrees in both Physics and Mathematics in
`
`1975 from the Massachusetts Institute of Technology. I received M.S., M.Phil.,
`
`and Ph.D. degrees in Computer Science from Yale University in 1976, 1977, and
`
`1979, respectively.
`
`(4)
`
`I have held the position of Allen Newell Professor of Computer Science at
`
`Carnegie Mellon University from 1995 to the present. I currently also hold the title
`
`of Director of the Language Technologies Institute at Carnegie Mellon University.
`
`I first joined Carnegie Mellon as an Assistant Professor of Computer Science in
`
`1979. In 1987, I was appointed as a Professor of Computer Science at Carnegie
`
`Mellon.
`
`(5)
`
`Since 1979, I have taught a wide variety of graduate and undergraduate
`
`courses at Carnegie Mellon that fall within the general field of Computer Science,
`
`including courses in software engineering, data mining, natural language
`
`processing, electronic commerce, and artificial intelligence. I have been involved
`
`in a number of different professional organizations and activities, including
`
`memberships in the Association of Computing Machinery (“ACM”), the
`
`Association for the Advancement of Artificial Intelligence (“AAAI”), and the
`
`Cognitive Science Society. I have also held leadership positions within
`
`professional organizations. From 1983 to 1985, I served as Chair of the ACM’s
`
`
`
`6
`
`

`
`
`
`Special Interest Group on Artificial Intelligence (“SIGART”). From 1988 to the
`
`present, I have been a Fellow of the AAAI. From 1990 to 1992, I served on the
`
`AAAI executive committee. I have also served on a number of different
`
`government committees,
`
`including
`
`the Computer, Information Science &
`
`Engineering Advisory Committee of the National Science Foundation (2010 to
`
`2014); the Human Genome Scientific Advisory Committee to the National Institute
`
`of Health, also known, colloquially, as the “Watson Committee” (from 1988
`
`through 1992); and the Scientific Advisory Committee of the Information Access
`
`Division of the National Institute of Standards and Technology (from 1997 through
`
`2001).
`
`(6)
`
`I am an author or co-author on more than 330 technical papers published as
`
`invited contributions and/or in peer-reviewed journals or conferences. These
`
`papers present the results of my research, which is generally directed at computer
`
`implemented algorithms and methods that relate to machine learning, including
`
`such applications as mapping protein sequences to three-dimensional shapes,
`
`predicting protein folds, detecting financial fraud, and also related to natural
`
`language processing, including performing inter-lingual machine translation,
`
`parsing natural language (a.k.a., “content analysis”), search engines, and text
`
`mining. I have served as an editor and peer-reviewer for a number of different
`
`technical journals in my field, including the Machine Learning Journal (from 1984
`
`
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`7
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`

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`
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`through 2000), the Machine Translation Journal (the 1980’s), and the Artificial
`
`Intelligence Journal (1984 through 2008). I was also a Co-editor of the book series
`
`Lecture Notes in Artificial Intelligence, which was published by Springer from
`
`1996 through 2008.
`
`(7)
`
`I received a “recognition of service” award from the Association for
`
`Computing Machinery for my role as chair of the ACM’s special interest group in
`
`Artificial Intelligence (SIGART) between 1983 and 1985. In 1986, I received the
`
`Sperry Fellowship for excellence in artificial intelligence research. In 1987, I
`
`received the Carnegie Mellon University Computer Science Department’s teaching
`
`award.
`
`(8)
`
`I have also worked as a technical consultant on Computer Science
`
`applications for a variety of industrial clients. This includes consulting on data
`
`mining applications for Industrial Scientific Corporation (data mining to improve
`
`workplace safety); Carnegie Group Inc. (artificial intelligence and natural language
`
`processing); Citicorp (financial data mining, natural
`
`language); Wisdom
`
`Technologies
`
`(financial optimization); Dynamix Technologies
`
`(large-scale
`
`algorithms with applications to Homeland Security), and Meaningful Machines in
`
`natural language processing and machine translation. I have experience in many
`
`aspects of computing technology, including electronic commerce, where I
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`regularly teach two classes every year, in databases, in telecommunications
`
`
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`8
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`
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`methods, in network-based systems, such as master-slave control devices, whether
`
`for displaying or capturing information, and in applications areas ranging from
`
`finance and advertisement models to display-based communications and customer-
`
`contact methods and algorithms.
`
`(9)
`
`I am a named inventor on a number of issued U.S. Patents, including: U.S.
`
`Patent No. 5,677,835 (“Integrated authoring and translation system”); U.S. Patent
`
`No. 5,995,920 (“Computer-based method and system for monolingual document
`
`development”); U.S. Patent No. 6,139,201 (“Integrated authoring and translation
`
`system”); U.S. Patent No. 6,163,785 (“Integrated authoring and translation
`
`system”); and U.S. Patent No. 7,406,443 (“Method and system for multi-
`
`dimensional trading”).
`
`II. Materials Considered
`(10) My analysis in this Declaration is based on the following: (1) my education
`
`and experience in the field of display systems, computer systems and control
`
`instructions; (2) the ’334 Patent and its prosecution history (respectively, Ex. 1001,
`
`1008); and (3) documents that I have considered, including those listed in the chart
`
`below.
`
`Exhibit Number
`
`Description of the Exhibit
`
`1001
`
`U.S. Patent Number 7,382,334
`
`
`
`9
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`

`
`
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1010
`
`
`
`Complaint, Broadsign v. T-Rex Civil Action No. 1:16-
`cv-04586-LTS, Document 1
`
`Japanese Patent Application Heisei 07-168544 by
`Nakamura
`
`U.S. Patent Number 5,740,549 to Reilly
`
`U.S. Patent Number 5,978,565 to Ohran
`
`U.S. Patent Number 5,913,040 to Ravaky
`
`U.S. Patent Number 5,442,704 to Holtey
`
`File History, U.S. Pat. App. 09/135,549
`
`Excerpts from Macmillan Encyclopedia of Computers
`(Gary G. Bitter ed., Macmillan Publ. Co. 1992)
`
`(11) I reviewed various prior art documents describing the state of the art at and
`
`around the time of the alleged invention of the ’334 Patent. The prior art
`
`documents relied upon in the Petition are shown in the chart above.
`
`III. Person of Ordinary Skill In The Art
`(12)
`
`I understand that my assessment of the ’334 Patent claims should be viewed
`
`from the perspective of a person of ordinary skill in the art (POSITA) as of the
`
`earliest claimed priority date, which I understand is around April 1996. I
`
`understand that a POSITA is a hypothetical person who is presumed to have
`
`known the relevant art at the time of the invention. I understand that the following
`
`factors may be considered in determining the level of ordinary skill in the art:
`
`
`
`10
`
`

`
`
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`(A) “type of problems encountered in the art;” (B) “prior art solutions to those
`
`problems;” (C) “rapidity with which innovations are made;” (D) “sophistication of
`
`the technology;” and (E) “educational level of active workers in the field.” I also
`
`understand that there is no predominating factor.
`
`(13) In my opinion concerning this matter, a person of ordinary skill in the art as
`
`of April 1996 would possess at least a bachelor’s degree in electrical engineering
`
`or computer science (or equivalent degree or experience) with practical experience
`
`or coursework in the design or development of systems for display control in a
`
`networked environment.
`
`(14) I understand that my qualifications and experience exceed those of a
`
`POSITA. Nevertheless, my analysis and opinions about the ’334 Patent are based
`
`on the perspective of POSITA as of April 1996.
`
`IV.
`
`Invalidity Considerations
`A.
`
`Standards for Anticipation and Obviousness
`
`(15)
`
`In my opinion, the claims 1–42 of the ’334 Patent are all invalid as either
`
`anticipated by or obvious over the prior art.
`
`(16) Counsel has informed me about invalidity by anticipation. I understand that
`
`a patent claim is anticipated when a single piece of prior art describes every
`
`element of the claimed invention, either expressly or inherently, and is arranged in
`
`the same way as in the claim. For inherent anticipation to be found, it is required
`
`
`
`11
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`

`
`
`
`that the missing descriptive material is necessarily present in the prior art. I
`
`understand that, for the purpose of an IPR, prior art that anticipates a claim can
`
`include both patents and printed publications from anywhere in the world.
`
`(17) I understand that a patent claim is unpatentable and invalid if the subject
`
`matter of the claim as a whole would have been obvious to a POSITA of the
`
`claimed subject matter as of the time of the invention at issue. I understand that
`
`the following factors must be evaluated to determine whether the claimed subject
`
`matter is obvious: (1) the scope and content of the prior art; (2) the difference or
`
`differences, if any, between each claim of the patent and the prior art; and (3) the
`
`level of ordinary skill in the art at the time the patent was filed.
`
`(18) I understand that obviousness may be shown by considering more than one
`
`item of prior art. I have been informed and I understand that so-called objective
`
`indicia of non-obviousness, also known as “secondary considerations,” like the
`
`following are also to be considered when assessing obviousness: (1) commercial
`
`success; (2) long felt but unresolved needs; (3) copying of the invention by others
`
`in the field; (4) initial expressions of disbelief by experts in the field; (5) failure of
`
`others to solve the problem that the inventor solved; and (6) unexpected results. I
`
`also understand that evidence of objective indicia of non-obviousness must be
`
`commensurate in scope with the claimed subject matter.
`
`
`
`12
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`

`
`
`
`B.
`
`Scope and Content of the Prior Art
`
`(19) The scope and content of the prior art as of April 1996 would have broadly
`
`included digital information systems for controlling output. In my opinion, one of
`
`ordinary skill in the art as of April 1996 would have considered Nakamura, Reilly,
`
`Ohran, Ravaky, and Holtey to be within the same technical field as the subject
`
`matter set forth in the ’334 Patent. Further, all of these references would be
`
`considered highly relevant prior art to the claims of the ’334 Patent.
`
`(20) Regarding the ’334 Patent’s background section, it is my opinion that the
`
`allegations regarding the prior art were neither accurate nor complete. Rather, it is
`
`my opinion certain prior-art systems relied on, and remain in reliance on, system
`
`administrators to control the instructions and processes recited from content
`
`creation to display execution. However, it is also my opinion that some prior-art
`
`systems already allowed users, such as advertisers or businesses, to create and edit
`
`content and schedule content to display on devices independent of system-
`
`administrator terminals. It is my opinion that the prior art universe included
`
`remote booking and scheduling by users, remote editing and update of creative
`
`content and scheduling information, selecting one or more display devices for
`
`content display, coordination of content among the selected displays, and dynamic
`
`scheduling. It is my opinion that the relevant aspects of the problems discussed in
`
`the ’334 Patent’s background section had already been addressed and overcome by
`
`
`
`13
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`

`
`
`
`the prior art by April 1996. Consequentially, it is my opinion that the alleged
`
`inventions of the ’334 Patent were already available in the prior art and that the
`
`claims 1–42 are invalid for at least the reasons I discuss herein.
`
`V. Claim Construction Under 37 C.F.R. § 42.104(B)(3)
`
`(21) Counsel has informed me that invalidity involves a two-step analysis. First,
`
`the scope and meaning of a claim is determined by construing the terms of the
`
`claim. Second, the construed claim is compared to the prior art. To satisfy the first
`
`step, I provide claim constructions for certain claim terms.
`
`(22) Counsel has informed me that unexpired patents and expired patents are
`
`construed according to different standards, though the outcome may be
`
`substantially similar. Counsel has informed me that unexpired patents receive the
`
`“broadest reasonable construction in light of the specification of the patent in
`
`which it appears.”
`
`(23) Counsel has informed me that the ’334 Patent has expired and that claims in
`
`expired patents are construed under the Phillips standard. According to counsel,
`
`the words of the claim are generally given their ordinary and customary meaning,
`
`i.e. plain meaning, which is the meaning that the term would have to a POSITA at
`
`the time of the alleged invention. Counsel has informed me that to ascertain the
`
`meaning of a term, I should look to publicly-available sources that show what a
`
`POSITA would have understood the claimed term to mean, including: words of the
`
`
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`14
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`

`
`
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`claims themselves, the patent specification, the prosecution history, and extrinsic
`
`evidence.
`
`(24) Counsel has informed me that a patentee may express a claim limitation as a
`
`“means-plus-function” limitation in which a means (or step) for performing a
`
`specified function is recited without the recital of structure, material, or acts in
`
`support. I understand that a claim element that does not recite the term “means”
`
`will invoke 35 U.S.C. 112, sixth paragraph, if the claim element fails to recite
`
`sufficiently definite structure or else recites function without reciting structure for
`
`performing that function. I understand that a claim limitation is presumed to be a
`
`means-plus-function limitation when it uses the term “means” or “step” and
`
`includes functional language. I understand that this presumption is overcome
`
`when the limitation itself further includes the structure necessary to perform the
`
`recited function. I have been informed by counsel that when a method claim lacks
`
`“step for” language, the method claim does not invoke 35 U.S.C. 112, sixth
`
`paragraph.
`
`A.
`
`“Computerized Means”
`
`(25) The term “computerized means” appears in method claim 11. Claim 11
`
`recites a “computerized means for coordinating and controlling television sets or
`
`cameras.” I have been asked to assume, for purposes of this Petition, that
`
`“computerized means” invokes § 112, sixth paragraph. The specification of the
`
`
`
`15
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`

`
`
`
`’334 patent discloses “coordinating and controlling television sets or cameras” as
`
`performed by an “exposure list comprising control instructions” (Ex. 1001 at 3:22-
`
`24; 4:63-65); a “control center” (Ex. 1001 at 3:27-28); and “computerized devices”
`
`(Ex. 1001 at 3:41-45; 4:54-55; 7:18-20). I also note that claim 11 includes the
`
`following wherein clause: “wherein said exposure list, containing control
`
`instructions, coordinates and controls
`
`the
`
`television sets or cameras
`
`in
`
`question . . .”
`
`(26) Accordingly, for the purpose of this Petition, I agree that the structure of the
`
`“computerized means” term should be construed as “an exposure list comprising
`
`control instructions” because the exposure list of control instructions is the only
`
`structure disclosed by the specification and claims that is linked to the function of
`
`“coordinating and controlling television sets or cameras.”
`
`B. Drive Routine Means
`
`(27) Claim 2 recites a “drive routine means.” I have been asked to assume, for
`
`purposes of this Petition, that this limitation does not invoke 35 U.S.C. 112, sixth
`
`paragraph, because Claim 2 is a method claim that does not use the “Step for”
`
`language. I note that the specification sets forth the meaning of “drive routine
`
`means” as “interface.” I also note that, outside the context of the ’334 patent,
`
`“drive routine means” does not have any meaning to one of ordinary skill in the
`
`
`
`16
`
`

`
`
`
`art. Therefore, I agree that the term “drive routine means” in Claim 2 should be
`
`construed as an “interface.” The specification of the ’334 Patent states:
`
`Those external information mediators which connect to the control
`
`center 12 via modems are, in one embodiment of the invention,
`
`connected to the control center via specially designed interfaces (drive
`
`routine means) for data and telecommunication.
`
`Ex. 1001 at 6:64-7:1. I also note that the specification of the ’334 Patent further
`
`states that the control center 12 has “a communication interface 14 [against] which
`
`connects an unlimited number of computerized devices 16, 18, 20 which are placed
`
`at desired distances from one another for the control of television sets 40 or
`
`cameras 22.” Id. at 5:59-63. The specification gives an example of the interface
`
`as “a radio link which forms an interface between the control center 12 and the
`
`computerized devices 16, 18, 20, this interface being a preferred interface,
`
`although not necessarily the sole possible interface.” Id. at 7:21-24. The
`
`specification also describes “other interfaces” as “a cable-carried ISDN solution
`
`(Integrated Services Digital Network) or other fixed lines that have the same
`
`capacity.” Id. at 7:25-29.
`
`(28) Thus, based on the assumptions provided to me, and based on the
`
`specification of the ’334 Patent, I agree that “drive routine means” should be
`
`construed as “interface.”
`
`
`
`17
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`

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`
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`(29) Claims 13, 23, and 34 similarly recite a “drive routine means.” Although
`
`this limitation uses the word “means,” the specification sets forth the meaning of
`
`“drive routine means” as an “interface.” I agree that the term “drive routine
`
`means” should be construed consistently as “interface.”
`
`C.
`
`Smart Card Which Can Be Read By Computerized Means
`
`(30) Claim 10 is a method claim that recites a “smart card which can be read by
`
`computerized means.” I have been asked to assume, for purposes of this Petition,
`
`that this term does not invoke 35 U.S.C. 112, paragraph 6, because it is a method
`
`claim. Moreover, I note that the “computerized means” limitation is a limitation
`
`on the “smart card.” Accordingly, I agree that the phrase should be construed as a
`
`“smart card which can be read by a computer.”
`
`(31) Claim 21 also claims an arrangement that that includes the limitation “a
`
`smart card which can be read by computerized means.” Because this claim
`
`limitation is similarly a limitation on the smart card, I agree that it should be
`
`construed consistently with Claim 10 as a “smart card which can be read by a
`
`computer.”
`
`D. Computerized Control Center Means
`
`(32) Claims 11 and 32 recite a “computerized control center means.” I have been
`
`asked to assume, for purposes of this Petition, that this term does not invoke 35
`
`
`
`18
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`U.S.C. 112 paragraph 6. Accordingly, I agree that the claim should be construed
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`as a “computerized control center.”
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`E.
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`Exposure Handler Means
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`(33) Claims 11 and 32 recite an “exposure handler means.” I have been asked to
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`assume, for purposes of this Petition, that this term does not invoke 35 U.S.C. 112,
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`paragraph 6. Accordingly, I agree that the claim should be construed as “an
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`exposure handler.”
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`VI. The Challenged Claims Are Unpatentable
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`(34) In my opinion, the ’334 Patent Claims 1–42 are invalid for at least the
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`reasons presented below.
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`(35) Independent Claims 1, 11, 22 and 32 are anticipated by Nakamura.
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`(36) Claims 1, 2, 3, 8, 11, 12, 13, 14, 19, 22, 23, 24, 29, 32, 33, 34, 35 are
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`anticipated by Nakamura.
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`(37) Claims 4, 5, 6, 15, 16, 17, 25, 26, 27, 36, 37, and 38 are unpatentable as
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`obvious under Nakamura in view of Reilly.
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`(38) Claims 7, 18, 28, and 39 are unpatentable under 35 U.S.C. § 103(a) as
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`obvious under Nakamura and Reilly, and further in view of Ohran.
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`(39)
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` 9, 20, 30, and 41 are unpatentable under 35 U.S.C. § 103(a) as obvious
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`under Nakamura in view of Ravaky.
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`19
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`(40) Claims 10, 21, 31 and 42 are unpatentable under 35 U.S.C. § 103(a) as
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`obvious under Nakamura in view of Holtey.
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`A. Brief Summary of the Challenged Patent
`1.
`Background of the ’334 Patent
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`(41) The following bibliographic data pertains to the ’334 Patent. The patentee
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`filed application number 09/135,549 (“the 549 application”) on July 18, 1998 as
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`continuation-in-part of application number 08/676,517 (filed July 2, 1996). The
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`’334 Patent claims the benefit of all of the following: U.S. Provisional Application
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`Number 60/017,403 (filed May 14, 1996); Swedish application number 9601603
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`(filed April 26, 1996); Swedish application number 9722250.5 (filed January 29,
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`1997); and Swedish application number 9741546 (filed April 23, 1997).
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`(42) The ’334 Patent relates to the abstract concept of displaying information,
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`e.g. advertisements, on display devices. (Ex. 1001, 1:13–24.) The ’334 Patent
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`alleges to overcome the disadvantages of prior art systems by speeding up human-
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`performed tasks via the use of conventional computers. For example, the prior art
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`is replete with systems where administrators update display information and
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`determine when, where, and how information is displayed. Id., 1:55–60.
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`(43) To address alleged problems in the art, the ’334 Patent seeks to provide
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`“external information mediators” with capabilities to coordinate and control,
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`dynamically and in real time, the display of information by allowing the mediators
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`20
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`(e.g. advertisers) to transmit control instructions to the system. Id., 2:39–45. The
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`arrangement claimed by the ’334 Patent includes a “control center,” which receives
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`instructions from a mediator via a modem, and which communicates these
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`instructions to devices controlling projectors thus displaying the information.
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`Id., 4:43–51.
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`(44) However, as described below, the prior art teaches or discloses this exact
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`“control center” configuration and the Challenged Claims are invalid.
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`2.
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`Prosecution History of the ’334 Patent
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`(45) The ’549 application never received a prior art rejection. Instead, this
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`application received a single non-final rejection by the PTO, rejecting all claims as
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`unpatentable under obviousness-type double patenting over applicant’s own
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`disclosure in U.S. Pat. No. 6,005,534 (now reissued as U.S. Pat. No. RE39,470).
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`(Ex. 1008 at 220.) The PTO promptly mailed a Notice of Allowance on February
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`22, 2007 after receiving applicant’s terminal disclaimer to overcome the double-
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`patenting rejection.
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`(46) Despite no rejection on record, the PTO stated the following reasons for
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`allowance in its notice: “the features of claims 1 and 11 directed towards allowable
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`subject matter are the exposure list comprising control instructions for coordinating
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`and controlling televisions sets in combination with updating said exposure list in
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`real time with control instructions fields via dynamic booking of information in
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`21
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`
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`time for exposure from said mediators.” (Ex. 1008 at 165.) The examiner also
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`noted that the not-previously-applied Schmier reference “generally teaches of a
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`dynamically updated information system but is lacking the mediator structure and
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`information flow as claimed.” (Ex. 1008 at 165.)
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`(47) However, these sets of features were known in the prior art, and the
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`combinations recited below teach or disclose each of the limitations of the
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`Challenged Claims. Accordingly, the Challenged Claims must be canceled.
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`B.
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`Brief Summary of the Prior Art
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`1.
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`Brief Overview of Nakamura
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`(48) Nakamura discloses a display control system that allows registered users
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`(e.g. advertisers) to access a centralized computer to input information from remote
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`locations and to display that information as advertisements on one or more display
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`devices, also located remotely. (Ex. 1003 at 0001, 0009.) An exemplary system of
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`Nakamura is depicted in Figure 1A:
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`22
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`
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`(Ex. 1003 at Fig. 1A.) The system comprises a master station (2), multiple slave
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`stations (1) with corresponding display devices (7), and multiple terminals (3) for
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`user input, creation software, posting software, and transmission/receptions means
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`for communication among the aforementioned devices. Id. at 0013–0014.
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`(49) In operation, a registered user (e.g. mediator) accesses the terminal and
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`inputs information to the content creation software and the posting software
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`through the terminal. Id. at 0009, 0015. The creation software allows for
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`uploading and processing media content assets so that the display content is
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`displayable on a certain display device. (Ex. 1003 at 0009, 0016.) The posting
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`software allows a user to make a display reservation by specifying certain
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`parameters: the display content, the time, the location, the duration, the budget, and
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`when and what manner to display the content. Id. at 0009, 0016.
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`(50) The display time information or reservation information is registered and/or
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`updated with the master station, i.e. the system, on a successive, rolling basis as the
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`reservations are completed by the advertiser. Id. at 0017. To display the content,
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`the master station transmits the content to the slave station(s), where it is stored in
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`temporary memory, for execution on the selected display device(s