IPR2017-01915
`U.S. Patent No. 6,430,603
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BARCO, INC.,
`Petitioner
`
`v.
`
`T-REX PROPERTY AB,
`Patent Owner
`
`U.S. Patent No. 6,430,603
`Issue Date: August 6, 2002
`Title: SYSTEM FOR DIRECT PLACEMENT OF
`COMMERCIAL ADVERTISING, PUBLIC SERVICE
`ANNOUNCEMENTS AND OTHER CONTENT
`ON ELECTRONIC BILLBOARD DISPLAYS
`
`
`
`Inter Partes Review Case No. 2017-01915
`
`
`T-REX PROPERTY AB PATENT OWNER’S
`PRELIMINARY RESPONSE PURSUANT TO 37 CFR §42.107
`
`
`
`
`
`
`

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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`TABLE OF CONTENTS
`
`2. 
`
`INTRODUCTION ........................................................................................... 1 
`I. 
`BACKGROUND ............................................................................................. 1 
`II. 
`III.  CLAIM CONSTRUCTION ............................................................................ 4 
`1. 
`“means for scheduling the presentation of video or still-image
`content at selected time slots on selected electronic displays of
`said network and receiving said video or still-image content
`from a content provider” (claim 13 and dependents) ..................... 5 
`“means for enabling split screen images to be displayed at the
`electronic display” (claim 42 and dependents) ............................. 10 
`“time slot” (claims 13, 48 and dependents) .................................. 12 
`3. 
`IV.  THERE IS NO REASONABLE LIKELIHOOD OF PETITIONER
`PREVAILING AS TO A CHALLENGED CLAIM OF THE ’603
`PATENT ........................................................................................................ 14 
`A.  Petitioner Fails to Demonstrate That the Prior Art Discloses
`“means for scheduling the presentation of video or still-image
`content at selected time slots on selected electronic displays of
`said network and receiving said video or still-image content from
`a content provider” (claims 13-16, 23, 42-43) ...................................... 14 
`1.  Nakamura does not disclose or render obvious “means for
`scheduling the presentation of video or still-image content at
`selected time slots on selected electronic displays of said
`network and receiving said video or still-image content from a
`content provider” (Grounds 1 and 2) ............................................ 15 
`2.  Hylin does not disclose or render obvious “means for
`scheduling the presentation of video or still-image content at
`selected time slots on selected electronic displays of said
`network and receiving said video or still-image content from a
`content provider” (Grounds 3-5) ................................................... 18 
`B.  Petitioner Fails to Demonstrate That the Prior Art Discloses
`
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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`“means for enabling split screen images to be displayed at the
`electronic display” (claims 42-43) ........................................................ 20 
`1.  Nakamura does not disclose or render obvious “means for
`enabling split screen images to be displayed at the electronic
`display” (Grounds 1, 2, 5) ............................................................. 21 
`C.  Petitioner Fails to Demonstrate That the Prior Art Discloses
`“enabling a content provider to schedule presentation of video or
`still-image content at selected time slots” (claim 48) ........................... 23 
`1.  Nakamura does not disclose or render obvious “enabling a
`content provider to schedule presentation of video or still-
`image content at selected time slots” (Ground 1) ......................... 23 
`2.  Hylin does not disclose or render obvious “enabling a content
`provider to schedule presentation of video or still-image
`content at selected time slots” (Ground 3) .................................... 26 
`CONCLUSION .............................................................................................. 28 
`
`
`
`ii
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`V. 
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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`EXHIBIT LIST
`
`Description
`Joint Claim Construction and Prehearing Statement
`Pursuant To Local Patent Rule 4-3, filed in T-Rex
`Property AB v. Regal Entertainment Group, et al., Case
`No. 6:16-cv-00927-RWS, Dkt. No. 84 (E.D. Tex.)
`Entry in Oxford English Dictionary Online for “time”
`and related terms, including “time slot,” available at
`http://www.oed.com/viewdictionaryentry/Entry/202100
`(last accessed December 20, 2017)
`
`Exhibit No.
`
`2001
`
`2002
`
`
`
`
`
`
`
`iii
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`

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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Blackboard, Inc. v. Desire2Learn, Inc.,
`574 F.3d 1371 (Fed. Cir. 2009) ................................................................ 6, 11, 21
`Broadsign International, LLC v. T-Rex Property AB,
`Case No. CBM2017-00008 (filed Oct. 28, 2016) ................................................. 2
`In re Donaldson Co.,
`16 F.3d 1189 (Fed. Cir. 1994) .............................................................................. 5
`IPCom GmbH & Co. v. HTC Corp.,
`861 F.3d 1362 (Fed. Cir. 2017) .................................................................. 5, 7, 21
`Med. Instrumentation & Diagnostics Corp. v. Elekta AB,
`344 F.3d 1205 (Fed. Cir. 2003) .......................................................................... 11
`Noah Sys. Inc. v. Intuit Inc.,
`675 F.3d 1302 (Fed. Cir. Apr. 9, 2012) ................................................................ 9
`TecSec, Inc. v. Int’l Bus. Machs.,
`731 F.3d 1336 (Fed. Cir. 2013) ............................................................................ 8
`Typhoon Touch Techs., Inc. v. Dell, Inc.,
`659 F.3d 1376 (Fed. Cir. 2011) ............................................................................ 8
`WMS Gaming Inc. v. International Game Tech.,
`184 F.3d 1339 (Fed. Cir. 1999) ............................................................................ 7
`Other Authorities
`32 C.F.R. § 42.107(a) ................................................................................................. 4
`37 C.F.R. § 42.104(b)(3) ............................................................................................ 6
`CBM2017-00008, Paper No. 7 .................................................................................. 3
`Oxford English Dictionary ....................................................................................... 13
`
`iv
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`

`

`INTRODUCTION
`The Board should deny the request for inter partes review of U.S. Patent No.
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`IPR2017-01915
`U.S. Patent No. 6,430,603
`
`
`I.
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`6,430,603 because Petitioner advances erroneous constructions of the claims, and
`
`because the Petition is based on prior art that fails to disclose each claim element,
`
`as properly construed.
`
`For these reasons, as expressed more fully below, the Petitioner has failed to
`
`demonstrate that there is a reasonable likelihood of prevailing with respect to at
`
`least one of the challenged claims. Accordingly, the Board should deny the
`
`Petition.
`
`II. BACKGROUND
`The ’603 Patent, issued on August 6, 2002, generally claims an improved
`
`system for access to and scheduling content for a network of digital signage. Ex.
`
`1001 at 1:7-18. One contemplated use case involves the advertisers providing
`
`digital advertisements to electronic billboards. See id. The ’603 Patent also
`
`contemplates use of the invention for distribution of public service announcements.
`
`See id. at 2:50-54 (“for direct placement of commercial advertisements, public
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`service announcements and other content on electronic displays.”) (emphasis
`
`added); see also id. at Title (“System For Direct Placement Of Commercial
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`Advertising, Public Service Announcements And Other Content On Electronic
`
`Billboard Displays”) (emphasis added).
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`1
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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`At the time of the invention, outdoor billboards traditionally took the form of
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`“single-message displays formed of printed sheets or painted surfaces . . . adhered
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`to flat backing.” Ex. 1001 at 1:28-32. The ’603 Patent seeks to solve the problem
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`of “[t]he high cost of printing, transporting, and mounting a message on a
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`conventional billboard,” that prevents a conventional billboard from being readily
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`changed. See Ex. 1001 at 1:34-40.
`
`At the time of the invention, digital signage was a recent development, but
`
`no network existed to provide access for content providers to schedule updates at
`
`selected times on selected electronic displays on an as-needed basis. See Ex. 1001
`
`at 1:54-63 (providing an example of U.S. Patent No. 5,612,741 as describing a
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`single electronic display and describing the lack of a cohesive network of
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`electronic displays with dynamic access for content providers).
`
`The ’603 Patent was previously the subject of a Covered Business Method
`
`Petition, Broadsign International, LLC v. T-Rex Property AB, Case No. CBM2017-
`
`00008 (filed Oct. 28, 2016). In that proceeding, the petitioner challenged claims 1,
`
`11-13, 42, 43, and 48-74. Thereafter, Patent Owner filed a statutory disclaimer of
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`claims 1-12, 17, 19-20, 22, 28-33, 45-47, 49, 51-55, and 58-74. This Board
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`thereafter denied institution, finding that the remaining challenged claims (claims
`
`13, 42, 43, 48, 50, 56, and 57), did not claim a financial product or service, and
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`2
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`

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`therefore the ’603 patent was not eligible for covered business method patent
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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`review. CBM2017-00008, Paper No. 7 at 8-10.
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`Of the remaining claims of the ’603 Patent, Petitioner in this proceeding has
`
`challenged claims 13-16, 23, 42-43, and 48 as unpatentable. Among those are two
`
`independent claims: Claims 13 and 48. Claim 13 reads:
`
`13. A system for presenting video or still-image content at selected
`times and locations on a networked connection of multiple electronic
`displays, said system comprising:
`a network interconnecting a plurality of electronic displays provided
`at various geographic locations;
`means for scheduling the presentation of video or still-image content
`at selected time slots on selected electronic displays of said network
`and receiving said video or still-image content form a content
`provider;
`transmission means in communication with said receiving means for
`communicating scheduled content to respective server devices
`associated with corresponding selected electronic displays of said
`network, each said associated device initiating display of said video or
`still-image content at selected times on a corresponding selected
`electronic display of said network.
`Ex. 1001 at 8:47-63. Claim 48 reads:
`
`48. A method for presenting video or still-image content at selected
`times and locations on a networked connection of multiple electronic
`displays, said method comprising:
`a) providing a network interconnecting a plurality of electronic
`displays at various geographic locations;
`b) enabling a content provider to schedule presentation of video or
`still-image content at selected time slots on selected electronic
`
`3
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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`displays of said network and receiving said video or still-image
`content from a content provider;
`c) providing a plurality of server devices, each server device
`associated with a corresponding electronic display;
`d) communicating received video or still-image content to the
`associated server devices of corresponding selected electronic
`displays of said network; and,
`e) said server device initiating display of said video or still-image
`content at selected times on an associated electronic display of said
`network.
`Ex. 1001 at 11:34-53.
`
`As described by the claims, the claimed system comprising networks of
`
`electronic displays must be configured to enable a content provider to schedule
`
`content at selected time slots on selected electronic displays. Ex. 1001 at 8:53-56.
`
`In other words, the claimed system comprising networks of electronic displays is
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`not just any network, but a novel, non-obvious system created by the inventor of
`
`the ’603 Patent over 17 years ago.
`
`III. CLAIM CONSTRUCTION
`Because this preliminary response “is limited to setting forth the reasons
`
`why no inter partes review should be instituted,” 32 C.F.R. § 42.107(a), T-Rex
`
`does not at this time propose a construction for each term. T-Rex reserves the right
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`to assert any construction of any term in any subsequent filing.
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`4
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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`1.
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`“means for scheduling the presentation of video or still-
`image content at selected time slots on selected electronic
`displays of said network and receiving said video or still-
`image content from a content provider” (claim 13 and
`dependents)
`Petitioner acknowledges that this limitation “is a means-plus-function
`
`element” and that under Federal Circuit precedent, for a “computer-implemented
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`invention in which the inventor has invoked means-plus-function claiming,” “the
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`disclosed structure is not the general purpose computer, but rather the special
`
`purpose computer programmed to perform the disclosed algorithm.” Pet. at 11-12.
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`Indeed, it is well established that, even under the broadest reasonable interpretation
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`standard applied in the Patent Office, the Board must identify the corresponding
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`structure for a means-plus-function limitation, including an algorithm for a
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`computer-implemented invention. See, e.g., In re Donaldson Co., 16 F.3d 1189
`
`(Fed. Cir. 1994); IPCom GmbH & Co. v. HTC Corp., 861 F.3d 1362, 1371 (Fed.
`
`Cir. 2017) (“The Board’s analysis was erroneous because it never specified what it
`
`believed was the actual algorithm disclosed in the '830 patent for performing the
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`‘arrangement for reactivating the link’ function”).
`
`However, Petitioner’s proposed construction for this means limitation fails
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`to identify any actual algorithms and instead merely recites a computer
`
`programmed in a functional manner. For the “scheduling the presentation of video
`
`or still-image content at selected time slots on selected electronic displays of said
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`5
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`

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`network,” Petitioner identifies the “structure” as “a special purpose server
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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`computer programmed to enable scheduling at a desired time slot.” Pet. at 12. But
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`this is not an algorithm, and instead, the “programm[ing]” merely rephrases the
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`claimed function (“scheduling the presentation of video or still-image content at
`
`selected time slots”). As the Federal Circuit has repeatedly held, the corresponding
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`algorithm cannot simply “describe[] an outcome,” (i.e., “enable scheduling at a
`
`desired time slot”) but rather must describe “a means for achieving that outcome.”
`
`Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009).
`
`Petitioner’s identification of “is a special purpose server computer programmed to
`
`receive content on-line through the Internet, a direct phone line or a high speed
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`connection” as the corresponding structure for “receiving said video or still-image
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`content from a content provider” is similarly defective. Pet. at 13. Indeed, all it
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`adds to the claimed function is the language “through the Internet, a direct phone
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`line or a high speed connection,” but that also is not an algorithm; i.e., it does not
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`describe how the computer performs the function of “receiving,” but merely what
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`communications devices may be attached to the computer.
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`Because the Petitioner’s proposed construction of this claim term plainly
`
`invites legal error by proposing merely functional language, the Board should deny
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`this petition for failing to comply with 37 C.F.R. § 42.104(b)(3), which requires
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`that the Petition set forth “the structure, material, or acts corresponding to each
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`6
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`claimed function.” See IPCom, 861 F.3d at 1371 (“the Board here impermissibly
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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`treated the means-plus-function limitation in its patentability analysis as if it were a
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`purely functional limitation”).
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`Moreover, Patent Owner has previously presented claim construction
`
`arguments for this term which comply with the applicable case law by identifying a
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`particular algorithm. In particular, the Federal Circuit has repeatedly identified
`
`algorithms as acceptable corresponding structures when they propose a series of
`
`steps to be performed in a particular sequence on the computer. See, e.g., WMS
`
`Gaming Inc. v. International Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999)
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`(identifying four-step algorithm as corresponding structure for “means for
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`assigning” algorithm). Here, Patent Owner proposes that the corresponding
`
`structure for this limitation be identified as:
`
`“central information processing station with network interface”
`(’603 Pat. Fig. 1; 2:66-3:17) and associated Customer Interface Web
`Server 20 (’603 Fig. 1, 3:2-6), configured according to the following
`algorithm:
`
`1) a customer of the system is permitted to access the
`central information processing station of the system via the
`Internet;
`2) the customer is permitted to obtain and enter security
`code information;
`3) the customer is permitted to review available
`time/locations;
`4) the customer is permitted to schedule a desired time
`
`slot;
`
`5) content is received from the customer through the
`Internet.
`
`7
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`

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`(‘603 Pat. at 2:66-3:17), and equivalents thereof.
`See Ex. 2001 at 20 [Claim Construction Statement, T-Rex Property AB v. Regal et
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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`al.].
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`This structure should be adopted as the corresponding structure for this
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`means limitation in this proceeding. Firstly, unlike Petitioner’s proposed
`
`construction, this corresponding structure does recite an algorithm. In particular,
`
`the passage in column 2, line 66 through column 3, line 17 recites a sequence of
`
`steps performed on a computer using language clearly indicating a logical ordering
`
`of operations (i.e., an algorithm). ’603 Pat. at 3:8 (“Following access, . . .”), at
`
`3:13 (“Next, . . .”). This easily satisfies the Federal Circuit’s requirements for
`
`disclosing an algorithm in the specification. See Typhoon Touch Techs., Inc. v.
`
`Dell, Inc., 659 F.3d 1376, 1386 (Fed. Cir. 2011) (“it suffices if the specification
`
`recites in prose the algorithm to be implemented by the programmer."); TecSec,
`
`Inc. v. Int'l Bus. Machs., 731 F.3d 1336, 1348 (Fed. Cir. 2013) (“We allow a
`
`patentee to express an algorithm ‘in any understandable terms including as a
`
`mathematical formula, in prose, or as a flow chart, or in any other manner that
`
`provides sufficient structure.’”).
`
`Moreover, the specification of the ’603 patent clearly links the functions of
`
`“receiving” “video or still-image content from a content provider” and
`
`“scheduling” it for display with this algorithm. In particular, the algorithm
`
`8
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`described in column 2, line 66 through column 3, line 17 of the ’603 patent is the
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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`sole description in the specification for how content is received from content
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`providers (“customer”). E.g., ’603 Pat. at 3:13-17 (“Next, the customer transmits
`
`the advertising content on-line through the Internet, a direct phone line or a high
`
`speed connection (for example, ISDN or DSL) for receipt by the system’s Video &
`
`Still Image Review and Input module 70.”). Additionally, this passage also
`
`describes the same means (i.e., the central information processing station with
`
`network interface, Customer Interface Web Server, and associated algorithm) also
`
`performing the function of “scheduling the presentation of video or still-image
`
`content at selected time slots on selected electronic displays of said network.”
`
`’603 Pat. at 3:8-13 (“Following access, the customer reviews available advertising
`
`time/locations through a Review Schedule and Purchase Time module 60 that
`
`permits the customer to see what time is available on any display throughout the
`
`world and thereafter schedule and purchase the desired advertising time slot.”).
`
`Furthermore, the corresponding structure proposed by Patent Owner satisfies the
`
`claim requirement for a single “means” that performs both functions. ’603 Pat. cl.
`
`13 (“means for scheduling . . . and receiving”); Noah Sys. Inc. v. Intuit Inc., 675
`
`F.3d 1302, 1314 (Fed. Cir. Apr. 9, 2012) (“there are really two functions recited. .
`
`. . Any algorithm must, therefore, address both aspects of this functional
`
`language.”).
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`9
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`Thus, the Board should reject Petitioner’s proposed construction for “means
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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`for scheduling the presentation of video or still-image content at selected time slots
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`on selected electronic displays of said network and receiving said video or still-
`
`image content from a content provider” and instead adopt Patent Owner’s proposed
`
`construction.
`
`2.
`
`“means for enabling split screen images to be displayed at the
`electronic display” (claim 42 and dependents)
`Petitioner’s construction of “means for enabling split screen . . .” suffers
`
`from the same types of deficiencies as stated above with respect to the “means for
`
`scheduling . . . and receiving” limitation. Like that limitation, Petitioner
`
`acknowledges that “means for enabling split screen . . .” is a means-plus-function
`
`element. Pet. at 14. However, once again Petitioner’s proposed construction fails
`
`to identify any actual algorithms as the corresponding structure and it instead
`
`merely recites a computer programmed in a functional manner. In particular,
`
`Petitioner identifies the corresponding structure as a “special purpose server
`
`computer programmed to enable split screen images to be displayed on an
`
`electronic display using any number of known programs for dividing a display area
`
`into two or more sections.” Pet. at 15. This construction is based on their expert’s
`
`assertion that “Split screen technology was well known in the late 1990s, and could
`
`be achieved by any number of known programs for dividing a display area into two
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`10
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`or more sections.” Ex. 1002 ¶¶ 36-37. However, this is not an algorithm at all.
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`U.S. Patent No. 6,430,603
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`Rather, Petitioner’s reference to various unstated techniques in the prior art plainly
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`fails to accord with the applicable precedent for construing means-plus-function
`
`limitations. Indeed, the very same argument—construing the structure based on
`
`the disclosures of the prior art, rather than that of the specification—has been
`
`repeatedly rejected by the Federal Circuit. Med. Instrumentation & Diagnostics
`
`Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed. Cir. 2003) (“The correct inquiry is
`
`to look at the disclosure of the patent and determine if one of skill in the art would
`
`have understood that disclosure to encompass software for [performing the claimed
`
`function] and been able to implement such a program, not simply whether one of
`
`skill in the art would have been able to write such a software program.”);
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`Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009)
`
`(“The question before us is whether the specification contains a sufficiently precise
`
`description of the ‘corresponding structure’ to satisfy section 112, paragraph 6, not
`
`whether a person of skill in the art could devise some means to carry out the
`
`recited function.”).
`
`Rather, as Patent Owner has explained in litigation relating to the ’603
`
`Patent, the corresponding structure for the “means for enabling split screen images
`
`to be displayed at the electronic display” should be construed as:
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`11
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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`The corresponding structure is “high speed servers 100” (’603
`Pat. Fig. 1, 6:58), configured according to the following algorithm:
`1) qualify the customer of the system;
`2) provide direct access to the customer;
`3) perform high speed transfer of still image or video
`transfer from the customer facilitated by compression
`techniques such as JPEG or MPEG II;
`4) present portion of screen as still frame provided by
`customer, and remainder of screen as real time (or near real
`time) video or still frame provided by the customer.
`(’603 Pat. 6:46-62) and equivalents thereof.
`Ex. 2001 at 22 [Claim Construction Statement, T-Rex Property AB v. Regal et al.].
`
`Once again, unlike Petitioner’s proposed construction, Patent Owner’s
`
`proposed construction complies with the applicable case law because it is an
`
`algorithm—a series of operations to be performed by computers—and the
`
`specification clearly links the disclosure to the function of “enabling split screen
`
`images to be displayed at the electronic display.” Indeed, the cited section of the
`
`specification expressly begins by explaining that it “It will be appreciated that split
`
`screen images may be displayed at the displays.” ’603 Pat. at 6:46-47.
`
`Thus, the Board should reject Petitioner’s proposed construction for “means
`
`for enabling split screen images to be displayed at the electronic display” and
`
`instead adopt Patent Owner’s proposed construction.
`
`3.
`“time slot” (claims 13, 48 and dependents)
`Petitioner does not propose a particular construction of time slot and instead
`
`proposes that it be construed according to its ordinary meaning. However, in this
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`12
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`case, construction of the term “time slot” is appropriate because Petitioner is
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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`inappropriately applying the “time slot” limitation in a manner inconsistent with its
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`ordinary meaning. In particular, as demonstrated by its definition in the Oxford
`
`English Dictionary, a “time slot” is “a portion of time allocated to a particular
`
`purpose or person, esp. to an individual broadcast programme.” Ex. 2002 at 139.1
`
`This definition is consistent with the disclosures in the ’603 Patent.
`
`For example, the ’603 patent discloses that, “Following access [through a
`
`Customer Interface Web Server], the customer reviews available advertising
`
`time/locations through a Review Schedule and Purchase Time module 60 that
`
`permits the customer to see what time is available on any display throughout the
`
`world and thereafter schedule and purchase the desired advertising time slot.”
`
`’603 Pat. at 3:8-14 (emphasis added). Similarly, the ’603 Patent elsewhere
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`describes this as “customers directly purchase time from available slots” and
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`contrasts it with unclaimed “alternative modes” such as “the system operator . . .
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`select[s] the time slots for display of the customer's advertisements at ‘best
`
`available rate’ pricing, taking advantage of last minute availability of time slots
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`and other time slot placement techniques.” ’603 Pat. at 7:8-12. Thus, consistent
`
`with the definition in the OED, the term “time slot” is used in the ’603 patent to
`
`1 Because the OED entry identifies usages of the term “time slot” consistent with
`this definition both before and after the filing date of the ’603 Patent, it is pertinent
`evidence of the meaning of the term at the time of invention.
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`13
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`refer to a “a portion of time allocated to a particular” customer’s content, and not
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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`to a general time frame where any number of customers’ content may appear.
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`IV. THERE IS NO REASONABLE LIKELIHOOD OF PETITIONER
`PREVAILING AS TO A CHALLENGED CLAIM OF THE ’603
`PATENT
`A.
`Petitioner Fails to Demonstrate That the Prior Art Discloses
`“means for scheduling the presentation of video or still-image
`content at selected time slots on selected electronic displays of said
`network and receiving said video or still-image content from a
`content provider” (claims 13-16, 23, 42-43)
`The term “means for scheduling the presentation of video or still-image
`
`content at selected time slots on selected electronic displays of said network and
`
`receiving said video or still-image content from a content provider” is recited by
`
`claim 13. It is also a limitation of claims 14-16, 23, and 42-43, which depend
`
`directly or indirectly on claim 13. The only challenged claim which does not recite
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`this limitation is claim 48. As set forth in the Petition, Petitioner only identifies
`
`this claim limitation as being met by the Nakamura reference (grounds 1 and 2)
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`and the Hylin reference (grounds 3-5). Pet. at 18-21, 45-48. As discussed above,
`
`the appropriate construction of this limitation requires a particular algorithm which
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`is disclosed in the specification of the ’603 Patent at column 2, line 66 through
`
`column 3, line 17. Because Petitioner and their expert applied a claim construction
`
`that only recited functional language, and did not recite any particular algorithm,
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`Petitioner has failed to present evidence sufficient to show that either Nakamura or
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`14
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`IPR2017-01915
`U.S. Patent No. 6,430,603
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`Hylin discloses or renders obvious “means for scheduling the presentation of video
`
`or still-image content at selected time slots on selected electronic displays of said
`
`network and receiving said video or still-image content from a content provider.”
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`The Petition should therefore be denied. Moreover, as set forth in further detail
`
`below, these references plainly fail to disclose numerous portions of the algorithms
`
`of Patent Owner’s proposed construction, or any apparent equivalent thereof.
`
`1.
`
`Nakamura does not disclose or render obvious “means for
`scheduling the presentation of video or still-image content
`at selected time slots on selected electronic displays of said
`network and receiving said video or still-image content
`from a content provider” (Grounds 1 and 2)
`Petitioner identifies the “The master station of Nakamura” and Nakamura’s
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`“display content posting support software” as satisfying this limitation. Ex. 1002,
`
`¶ 59; Pet. at 18-19. However, the analysis of Petitioner and its expert merely
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`purports to show that Nakamura performs the claimed functions. Pet. at 18
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`(“Nakamura’s master station 2 . . . accepts inputs directly from third-party users of
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`the system . . . and schedules the content presentation.”); Pet. at 18 (citing Ex. 1002
`
`¶ 57) (“The posting software of Nakamura performs the function . . .”); Pet. at 19
`
`(citing Ex. 1002 ¶ 59) (“The master station 2, via the display content posting
`
`support software, also schedules the content ‘at selected time slots on selected
`
`electronic displays.’”). Petitioner and its expert, however, wholly fail to show that
`
`Nakamura performs the claimed functions using the same or equivalent structure as
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`the ’603 patent, i.e., by performing the steps of an algorithm disclosed by the ’603
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`IPR2017-01915
`U.S. Patent No. 6,430,603
`
`
`patent.
`
`Applying the steps of the algorithm identified above in Patent Owner’s
`
`proposed construction, it is clear that Nakamura fails to satisfy this claim
`
`limitation. For example, one of the steps of that algorithm is that the user “the
`
`customer is permitted to obtain and enter security code information.” ’603 Pat. at
`
`3:3-6 (“The customer interface web server has a commerce engine and permits the
`
`customer to obtain and enter security code . . .”). Nakamura does not disclose such
`
`a step in any algorithm, or any equivalent. Indeed, Nakamura does not mention
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`“secure,” “security” or “security code,” “password,” “authentication,” “PIN” or
`
`similar terms. In short, Nakamura has no disclosure of a step of an algorithm
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`relating to user providing a security code or equivalent.
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`Additionally, the algorithm that constitutes the corresponding structure for
`
`“means for scheduling . . .” also includes the steps of the customer being
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`“permitted to review available time/locations” and “permitted to schedule a desired
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`time slot.” As discussed in further detail below with respect to claim 48, the
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`Nakamura reference does not disclose that users can select the specific time slot in
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`which their content is displayed (which Petitioner correctly identifies as “display
`
`runtime”, Ex. 1002 ¶ 60 (citing Ex. 1003, Fig. 3(B)). However, contrary to
`
`Petitioner’s arguments, the user of the system of Nakamura cannot actually select
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`16
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`the desired “display runtime” for their content (i.e. they are not permitted to
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`IPR2017-01915
`U.S. Patent No. 6,430,603
`
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`schedule a desired time slot.”). Rather, users can only select a “posting time frame
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`T” and a “display duration T.” Ex. 1003, Fig. 2, ¶ 8 (“allows the end user himself
`
`to directly decide the major specifica