Trials@uspto.gov
`571-272-7822
`
`
` Paper 7
`
`
`Entered: March 13, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BARCO, INC.,
`Petitioner,
`
`v.
`
`T-REX PROPERTY AB,
`Patent Owner.
`____________
`
`Case IPR2017-01911
`Patent 7,382,334 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
` Paper 7
`
`
`Entered: March 13, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BARCO, INC.,
`Petitioner,
`
`v.
`
`T-REX PROPERTY AB,
`Patent Owner.
`____________
`
`Case IPR2017-01911
`Patent 7,382,334 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-01911
`Patent 7,382,334 B1
`
`
`I. INTRODUCTION
`Barco, Inc. and Barco, N.V. (“Petitioner”) filed a Petition for inter
`partes review of claims 22, 32, and 33 of U.S. Patent No. 7,382,334 B1
`(Ex. 1001, “the ’334 patent”). Paper 1 (“Pet.”). Patent Owner T-Rex
`Property AB 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 shows there is a reasonable likelihood
`that Petitioner would prevail in establishing the unpatentability of challenged
`claim 22. Accordingly, for the reasons that follow, we grant institution of an
`inter partes review of that claim. We further conclude that Petitioner has
`failed to show a reasonable likelihood of prevailing in its challenge to claims
`32 and 33. We therefore deny the petition as to those claims.
`
`A. Related Matters
`Claims 1–42 of the ’334 patent were challenged previously in
`IPR2016-0006 (“IPR0006”). Pet. 63; Paper 3, 6. The petitioner there was
`Broadsign International, LLC. On April 13, 2017, the Board entered a
`decision denying institution of the requested review. IPR0006, Paper 7.
`In addition, 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, including numerous pending and
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`dismissed district court actions involving the ’334 patent. Pet. 63–69; Paper
`3, 2–6 (Patent Owner’s Mandatory Notices).
`
`B. The ’334 Patent
`The ’334 patent is titled “Digital Information System.” The invention
`relates to a method and to an arrangement for controlling and coordinating
`television sets with peripheral equipment, or cameras with peripheral
`equipment, in a digital information system for displaying information on at
`least one display device. Ex. 1001, 1:13–17. The information is displayed
`in places such as cinemas, private homes, onboard air-craft, onboard trains,
`onboard ships, main railway stations, subway stations, airport waiting
`lounges, etc., and generally everywhere advertisements, films, movies, and
`other information is displayed. Id. at 1:19–24.
`The ’334 patent identifies a need 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 1:53–56
`(emphasis added). The ’334 patent describes the term “external mediators”
`as referring to advertising agencies and others who wish to display
`information for commercial reasons or to the general public.1 Id. at 6:46–51.
`The ’334 patent contrasts the disclosed invention with conventional
`“static” display systems in which “the display subscriber has very little
`chance of influencing the display, especially in real time.” Id. at 2:15–19.
`
`
`
`
`1 External mediators are also referred to by the ’334 patent as “external
`information mediators” or “information mediators.” See Ex. 1001, 6:35–36,
`6:39.
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`The ’334 patent’s one figure (Fig. 1) is reproduced below:
`
`
`
`Figure 1 of the ’334 Patent
`The figure illustrates a “system 10 for coordinating and controlling
`television sets or cameras in a digital information system for displaying
`information on display devices.” Id. at 5:51–54. Control center 12 has
`communication interface 14 (shown as a radio link 14) that connects
`computerized devices 16, 18, 20. Id. at 5:59–61. Computerized devices 16,
`18, 20 are placed at desired distances from one another for the control of
`television sets 40 or cameras 22. Id. at 5:61–63. Working stations 32 are
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`used by personnel serving control center 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 set or cameras 22, each on its own
`initiative and communication-wise transparent via modems 26.” Id. at 6:23–
`26; 6:35–41.
`The patent describes server 3 in the central computer as an exposure
`handler. The exposure handler organizes the information received from the
`external mediators into an exposure list. Ex. 1001, 8:43–51. When the
`information mediator is an advertising agency and the advertisements to be
`displayed are in picture form, the advertising subscriber is able to buy a
`number of spots that are shown in the exposure list. Id. at 10:15–18.
`According to the patent, in this way the system “enables quick changes to be
`made with regard to what shall be exposed on the exposure means, where it
`shall be exposed and when.” Id. at 10:25–28.
`Computer-produced pictures or exposures are delivered by external
`advertising agencies, newspaper agencies. etc., for exposure, or showing in a
`particular location, for example, in subways. The pictures are received by
`control center 12, which “also decides what shall be exposed and in which
`order, and distributes the information material to the cinema 16, 18, 20.” Id.
`at 10:29–35.
`
`C. Claims 22 and 32
`Two independent claims are challenged: claims 22 and 32. Both are
`
`reproduced below.2
`
`2 In reproducing these claims, we have reformatted them slightly.
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`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, 18:5–24.
`
`32. An arrangement for coordinating and 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 and controlling
`electronic displays;
`
`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
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`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. Challenged claim 33 depends from claim 32.
`
`D. Asserted Ground of Unpatentability
`Petitioner contends that claims 22, 32, and 33 of the ’334 patent are
`
`unpatentable because the claims would have been obvious over Nakamura
`(Ex. 1003) 3 and Cho (Ex. 1004)4. Pet. 10. In support of its challenge,
`Petitioner relies on a Declaration by Travis N. Blalock, Ph.D. (Ex. 1002,
`“Blalock Decl.”). Dr. Blalock states he has been retained by Petitioner as a
`technical expert. Blalock Decl. ¶ 1.
`
`II. DISCUSSION
`A. Preliminary Issue
`Patent Owner contends that the Board should “reject the present
`petition” under 35 U.S.C. § 325(d). Prelim. Resp. 17–18. That statute
`permits the Board to take into account whether, and reject the petition or
`request “because, the same or substantially the same prior art or arguments
`previously were presented to the Office.” Referring to IPR0006, Patent
`Owner contends that “[i]n the present case, Petitioner presents the same
`
`
`3 Japanese Patent Publication No. H07-168544, published July 4, 1995. An
`English translation appears at pages 10–18 of the Exhibit.
`4 US Patent No. 5,566,353.
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`prior art in Nakamura, and substantially the same arguments, as were
`presented by the Broadsign petitioner.” Id. at 18.
`We disagree with Patent Owner that the “same prior art” is presented
`here as in the petition in IPR0006. In that proceeding, the challenge to
`claims 22, 32, and 33 was based on anticipation by Nakamura. IPR0006,
`Paper 7, 9. In this proceeding, the challenge is based on obviousness over
`Nakamura and Cho. Moreover, this proceeding involves a different
`petitioner and expert. Under the circumstances we are not persuaded to
`exercise our discretion to deny the Petition here under § 325(d).
`
`B. Claim Construction
`In IPR0006, we determined that the ’334 patent has expired.
`IPR0006, Paper 7, 10. Neither party disputes this determination. See
`Pet. 27. 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 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.
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`
`Petitioner proposes constructions for several terms in the challenged
`claims. Pet. 28–41. Patent Owner responds to each of these proposed
`constructions. Prelim. Resp. 5–11. We discuss them in order.
`
`1. “Mediators” 5 (Claims 22 and 32)
`The specification of the ’334 patent states that “[t]he term information
`mediator (24) used in the following shall be interpreted in its widest
`meaning, i.e. as not only referring to advertising agencies but to all
`companies and private persons who wish to utilize the system 10 for
`commercial reasons or for the display of information that concerns a general
`public.” Ex. 1001, 6:46–51. Petitioner contends the term “mediators”
`should be construed as “any companies or private persons who are external
`to the control center.” Pet. 29. Patent Owner, on the other hand, proposes
`that the term should mean “suppliers of information for display.” Prelim.
`Resp. 6.
`We consider the specification language quoted supra as providing an
`express definition of the term “mediators.” Consistent with the
`specification, therefore, we construe the term as advertising agencies and
`others who wish to display information for commercial reasons or to the
`general public. Ex. 1001, 6:46–51.
`
`2. “Dynamic Booking” (Claims 22 and 32)
`Claim 22 recites “dynamic booking of information in time for
`exposure from mediators.” Claim 32 recites “exposure handler means . . . to
`
`
`5 “Mediators” in the ’334 patent are also referred to as “external information
`mediators,” “external mediators,” or just “information mediators.” See
`Ex. 1001, 5:8–10, 5:18; 6:51–55.
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`create and update an exposure list having control instruction fields, via
`dynamic booking of display information from mediators.”
`The parties dispute the meaning of “dynamic booking.” Patent Owner
`contends updating an exposure list via dynamic booking should be construed
`as “updating an exposure list when and as needed.” Prelim. Resp. 9.
`Petitioner contends the proper construction is “‘booking when and as
`needed,’ but [it] is not interpreted to encompass automatically updating the
`exposure list with the associated control instructions received from an
`information mediator in all cases.” Pet. 31. Patent Owner criticizes
`Petitioner’s construction for adding negative limitations not clearly
`disclaimed in the specification or prosecution history or indicated by the
`express language of the claims. Prelim. Resp. 7–8.
`In IPR0006, the Board construed “updating an exposure list via
`dynamic booking” as “updating the exposure list when and as needed.”
`IPR0007 Paper 7, 13. The Board relied in part on a definition of “dynamic”
`from the Microsoft Computer Dictionary provided by Patent Owner. Id. at
`14. In this proceeding, both Petitioner and Patent Owner cite this same
`definition. Pet. 31 (citing Ex. 1005); Prelim. Resp. 7 (citing Ex. 2003).
`For the reasons discussed in IPR0006, we construe updating an
`exposure list via dynamic booking as “updating an exposure list when and as
`needed.” We do not accept Petitioner’s negative limitations as they are
`contrary to the express claim language and specification for the reasons set
`forth by Patent Owner. Prelim. Resp. 7–8.
`
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`3. Creating and Updating an Exposure List in Real Time
`(Claims 22 and 32)
`Both independent claims 22 and 32 require creating and updating an
`exposure list “in real time.” In construing “real time” Petitioner again relies
`on a Microsoft Computer Dictionary definition: “[r]eal-time operations are
`those in which the machine’s activities match the human perception of time
`or those in which computer operations proceed at the same rate as a physical
`or external process.” Pet. 32 (quoting Ex. 1005, 375). Patent Owner
`responds by citing the ’334 patent specification, which includes a discussion
`of displaying information in real time. Prelim. Resp. 9 (citing Ex. 1001,
`6:55–62). According to the specification, “[w]ith 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.”
`Ex. 1001, 6:55–59.
`In IPR0006, the Board relied on the specification description cited by
`Patent Owner here. There, the Board concluded that claims 22 and 32
`require updating in real time, as well as updating via dynamic booking.
`IPR0006, Paper 7, 17. Our conclusion is the same here. Furthermore, we
`adopt the description of “real time” set forth in the ’334 patent specification.
`
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`4. “Computerized Control Center Means” and “Exposure Handler Means”
`(Claim 32)
`Petitioner must propose a construction under 35 U.S.C. § 112, ¶ 6,6
`for any means-plus-function limitation, “identify[ing] the specific portions
`of the specification that describe the structure, material, or acts
`corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). Claim
`32 recites several means-plus-function limitations. One such limitation is
`“computerized control center means, wherein the control center has
`communication interfaces against.” Another is “exposure handler means
`whereby the control center functions . . . to create and update an exposure
`list.” The parties agree that, because these limitations recite “means for”
`with an associated function, they are governed by 35 U.S.C. § 112, ¶ 6.
`Pet. 36; Prelim. Resp. 14.
`Petitioner argues that these two separate claim limitations are
`“intertwined.” Pet. 36. For the computer control center means, the function
`is “to create and update an exposure list having control instruction fields, via
`dynamic booking of display information from mediators.” Id. The exposure
`handler means perform this function, at least according to Petitioner. Id.
`Petitioner contends that the corresponding structure for each function,
`therefore, includes software executing on a general purpose computer. Id.
`Thus, according to Petitioner, “a ‘computerized control center means’ with
`‘exposure handler means’ is construed to cover a special purpose server
`computer programmed to collect, create or allocate information relating to
`
`6 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f).
`Because the ’334 patent has a filing date before September 16, 2012
`(effective date of AIA), we use the pre-AIA citation “§ 112, ¶ 6.”
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`display control instructions and then sort or file the display control
`instructions in the exposure list, when and as needed, with creation and
`updating occurring at the time the mediator sends the information to the
`control center.” Id. at 39–40.
`Patent Owner responds by first setting forth an alternative function for
`the control center means and then by identifying the corresponding structure
`as control center 12 containing the central computer. Prelim. Resp. 11–12.
`Patent Owner further responds, however, that the function of the exposure
`handler means is to “create and update when and as needed an exposure
`list.” Id. at 12–13. Thus, both Petitioner and Patent Owner are in agreement
`that in construing these “means,” the function of creating and updating the
`exposure list is included.
`For the exposure handler means, Patent Owner identifies as
`corresponding structure a central computer 28 and associated exposure
`handler “configured to allocate information relating to projector control
`instructions.” Id. at 13. As the “algorithm” for performing the claimed
`function for the exposure handler, Patent Owner identifies the following:
`(1) mediator information is sorted into the exposure list in
`accordance with the wishes of the mediator or its instructions
`when available space is found in the exposure list or in
`alternative places in the exposure list given by the mediator; (2)
`if the exposure list is completely filled with instructions, the
`mediator instructions sent to the control centre remain in the
`queue list in the server in readiness for later inclusion in the
`exposure list; and equivalents thereof.
` Id. (citing Ex. 1001, 8:59–9:2).
`Patent Owner criticizes Petitioner’s construction for the exposure
`handler means. According to Patent Owner, Petitioner “fails to identify any
`algorithm for performing the recited function.” Id. at 13–14 (citing
`
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`Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333
`(Fed. Cir. 2008)).
`We agree with the parties’ contentions that the both the control center
`means and the exposure handler means recited in claim 32 should be
`construed according to 35 U.S.C. § 112, ¶ 6. See Williamson v. Citrix
`Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc) (“[T]he use of
`the word ‘means’ in a claim element creates a rebuttable presumption that
`§ 112, para. 6 applies.”). We further agree that a computer programmed to
`perform the recited functions (including both creating and updating the
`exposure list) is part of the corresponding structure for those “means,” and,
`as a consequence, the corresponding structure in the patent must also include
`software (i.e., an algorithm) for performing this function. As Patent Owner
`recognizes, it is well established that “the corresponding structure for a
`§ 112 ¶ 6 claim for a computer-implemented function is the algorithm
`disclosed in the specification.” Aristocrat Techs. Austl. Pty Ltd, 521 F.3d at
`1333 (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir.
`2005)). The Federal Circuit has defined algorithm as “a step-by-step
`procedure for accomplishing a given result.” Triton Tech of Texas, LLC v.
`Nintendo of Am., Inc., 753 F.3d 1375, 1379 (Fed. Cir. 2014)(quoting Ergo
`Licensing LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir.
`2012)).
`We disagree with Patent Owner, however, that such an algorithm is
`disclosed in the ’334 patent. Prelim. Resp. 13. Claim 32 recites two
`functions: (1) generating the exposure list, and (2) updating the exposure list.
`“Any algorithm must, therefore, address both aspects of this functional
`language.” Noah Sys., Inc. v. Intuit, Inc., 675 F.3d 1302, 1314 (Fed. Cir.
`
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`2012)(citation omitted). Moreover, the identified structure must “be clearly
`linked with the claimed function in order to qualify as corresponding
`structure.” Med. Inst. & Diag. Corp. v. Elekta AB, 344 F.3d 1205, 1211
`(Fed. Cir. 2003).
`The steps in the “algorithm” identified by Patent Owner do little more
`than state a result, without explaining how that result is to be accomplished.
`They do not constitute “a step-by-step procedure—for performing the
`claimed function.” Triton Tech, 753 F.3d at 1379. Thus, they do not
`provide enough detail to be considered an algorithm under Aristocrat. See
`Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1383 (Fed. Cir.
`2009) (“The ACM is essentially a black box that performs a recited function.
`But how it does so is left undisclosed.”).
`There is, in addition, nothing in the ’334 patent specification that
`clearly links the “algorithm” identified by Patent Owner with the recited
`function of updating the exposure list. Med. Inst. & Diag. Corp., 344 F.3d
`at 1211 (“In this case, even the district court acknowledged that the link
`between software and the converting function was not completely clear.”).
`The “algorithm” identified by Patent Owner refers only to the creation of the
`exposure list by the central computer and exposure handler. This is clear
`from the sentence preceding the description cited by Patent Owner:
`ln one embodiment of the invention, a queue, or line, is created
`from the information material received by the server 1, in
`accordance with some known line or queuing method, . . .
`wherein the server 3 or exposure handler 3 has set-up or created
`an exposure list which covers a twenty-four hour period for
`information exposure or display via television set or cameras 22.
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`Ex, 1001, 8:52–59 (emphasis added). The alleged “algorithm” does not
`mention updating the exposure list, let alone provide sufficient instructions
`for performing that function.
`In sum, the corresponding structures for the control center means and
`exposure handler means necessarily include software with no sufficiently
`described algorithm for the software. Both parties’ proposed structure
`includes software, but “[s]imply reciting ‘software’ without providing some
`detail about the means to accomplish the function is not enough.” Finisar
`Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340–41 (Fed. Cir. 2008); see
`also Blackboard, 574 F.3d at 1382 (Fed. Cir. 2009) (holding disclosed
`“access control manager” insufficient structure to perform “means for
`assigning access to and control of the data”). Neither party directs us to any
`description, whether in prose, flow chart, or any other manner, that provides
`sufficient structure “to create and update an exposure list” as claimed. See
`Finisar, 523 F.3d at 1340. Nor is it enough that a hypothetical person of
`ordinary skill in the art would know how to design software for creating and
`updating such a list as claimed. See Blackboard, 574 F.3d at 1385–86.
`Some type of algorithm would be required to complete the functions of
`generating and updating an exposure list, but neither party has identified
`such an algorithm in the specification of the ’334 patent.
`Thus, we are unable to construe claim 32 for purposes of this
`Decision. See In re Aoyama, 656 F.3d 1293, 1298 (Fed. Cir. 2011); see also
`BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036, slip
`op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing In re Steele, 305 F.2d
`859, 862–63 (CCPA 1962), for the proposition that “the prior art grounds of
`unpatentability must fall, pro forma, because they are based on speculative
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`assumption[s] as to the meaning of the claims”). The result is the same for
`dependent claim 33, which contains the same limitations as claim 32.
`Because we are unable to construe claim 32 (or its dependent claim 33), we
`determine that there is not a reasonable likelihood that Petitioner would
`prevail in establishing the unpatentability of those claims, and, therefore,
`deny institution with respect to claims 32 and 33.
`
`5. “Computerized Means for Coordinating and Controlling Electronic
`Displays” (Claim 32)
`Claim 32 recites: “computerized means for coordinating and
`controlling electronic displays.” Petitioner and Patent Owner agree that this
`means plus function term should be construed under pre-AIA § 112 ¶ 6. Pet.
`40; Prelim. Resp. 14. Patent Owner also agrees with Petitioner’s
`identification of the function (“coordinating and controlling electronic
`displays”) and that display devices 16, 18, and 20 are part of the
`corresponding structure. Prelim. Resp. 15. However, Patent Owner
`contends that Petitioner’s construction is “insufficient” for failure to identify
`an algorithm performed by these devices to implement the recited function.
`Id. Patent Owner, however, identifies the following “algorithm:”
`1) generating an exposure list comprising control instructions
`for coordinating and controlling television sets 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; and
`2) creating and updating said exposure list in real time with
`control instruction fields via dynamic booking of information in
`time for exposure from mediators, wherein the exposure list
`enables each television set to be controlled, independently of
`other television sets, to receive the same or different
`information in accordance with the exposure list for exposure of
`respective television set through the computerized devices.
`
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`Id. at 15–16. For the same reasons that we are unable to construe other
`means-plus-function limitations in claim 32 discussed supra, we find that
`neither party has directed us to any description, whether in prose, flow chart,
`or any other manner, that provides sufficient structure to coordinate and
`control the electronic displays as claimed. Instead of identifying an
`algorithm, all Patent Owner has done is provide a listing of desired results,
`namely, generating, creating and displaying an exposure list. As discussed
`in the previous section, the “algorithms” identified by the parties do not
`sufficiently describe how to perform creating and updating an exposure list.
`Accordingly, for this additional reason we determine that there is not a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of claim 32 or its dependent claim 33.
`
`C. Principles of Law
`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 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).
`
`D. 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
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`IPR2017-01911
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`
`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 a system including master station 2,
`slave stations 1, and terminals 3. Id. ¶ [0013]. 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. ¶ [0015]. A registered user uses the terminal to access
`content creation software that allows for uploading and processing media
`content to display. Id. ¶ [0016]. 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.
`
`E. Summary of Cho
`Cho discloses a distribution network for transmitting real-time motion
`video, usually in the form of promotional advertisements, from a distribution
`center to a multitude of receiving sites, typically retail stores, dispersed over
`a wide geographic area. Ex. 1004, 4:54–58. Video segments (clips) for
`programs are transmitted from the distribution center and received at the
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`receiving sites. Id., 4:58–60. Television monitors located at selected points
`in the receiving sites display programs to an audience, which usually will
`include shoppers in the store. Id., 4:60–63.
`After the clips have been received and stored in the receiving sites, the
`system’s software scheme performs the on-line program formation
`automatically in order to form playlists. Id., 5:4–7. Users enter the desired
`playlists for each receiving site into the system from a technical operation
`center. Id., 5:7–9.
`Cho discloses the capability of updating the playlists, including last
`minute modifications:
`Changes in the playlist after clips have been delivered to the
`stores is possible. . . . In the preferred embodiment, modifications
`to the playlist (this includes “last minute” modifications) are
`made through a phone line which is connected to the store's local
`PC system via a commercially available modem.
`Id., 9:67–10:9.
`
`F. Analysis of Claim 22
`Petitioner’s analysis of claim 22 in relation to Nakamura and Cho
`appears at pages 42–55 of the Petition. Petitioner identifies each element of
`claim 22 in the disclosures of Nakamura and Cho. For example, Petitioner
`identifies Nakamura’s reservation record as the “exposure list” in the claim.
`Pet. 43–44. Petitioner identifies Nakamura’s end users (“a remotely loc
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