Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: April 4, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`BROADSIGN INTERNATIONAL, LLC,
`Petitioner,
`
`v.
`
`T-REX PROPERTY AB,
`Patent Owner.
`____________
`
`Case IPR2016-01869
`Patent RE39,470 E
`____________
`
`
`
`
`
`
`
`
`Before BRIAN J. McNAMARA, BARBARA A. BENOIT, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`
`BENOIT, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`
`I. INTRODUCTION
`
`Broadsign International, LLC filed a Petition for inter partes review
`
`of claims 1–3, 5–9, 12–14, 17–21, and 24–26 of U.S. Patent No.
`
`RE39,470 E (Ex. 1001, “the ’470 patent” or “the challenged patent”).
`
`Paper 2 (“Pet.”). Patent Owner filed a Preliminary Response. Paper 8
`
`(“Prelim. Resp.”). Institution of an inter partes review is authorized by
`
`statute when “the information presented in the petition . . . and any
`
`response . . . shows that there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108.
`
`Upon consideration of the Petition and the Preliminary Response, we
`
`conclude the information presented does not show there is a reasonable
`
`likelihood that Petitioner would prevail in establishing the unpatentability of
`
`at least one of the challenged claims. Accordingly, for the reasons that
`
`follow, we deny institution of an inter partes review.
`
`A. Related Matters
`
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies various
`
`judicial or administrative matters that would affect or be affected by a
`
`decision in this proceeding. Pet. 1–7; Paper 6, 2–6 (Patent Owner’s
`
`Mandatory Notices).
`
`B. The ’470 Patent
`
`The ’470 patent is a reissue of U.S. Patent No. 6,005,534. Ex. 1001,
`
`[64]. The challenged patent is titled “Digital Information System” and
`
`describes ways to control and coordinate projectors for displaying
`
`information. Id. at [54], 1:14–18.
`
`2
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`
`1. The Written Description
`
`The patent identifies needs to “enable information to be updated
`
`dynamically for display in real time” and to “enable external mediators to
`
`update information for display in a central control system” to control and
`
`coordinate projectors for displaying information.” Id. at 1:53–60. The
`
`’470 patent explains that it uses the term “external mediators”1 to refer to
`
`advertising agencies and others who wish to display information for
`
`commercial reasons or to the general public. Id. at 5:18–23. The patent
`
`indicates the disclosed system may be used to display information at subway
`
`or railway stations, or airports. Id. at 2:21–27.
`
`In addition, the patent contrasts conventional display systems on
`
`which the displayed information becomes static to its system that enables
`
`updating and changing the display information quickly. Id. at 2:24–36.
`
`According to the patent, static displays of conventional systems are disliked
`
`by travelers, “who often wait for long periods in waiting halls or stand[ing]
`
`on platforms.” Id. at 2:30–33. In addition, conventional displays under
`
`“utilize expensive information display equipment to the highest possible
`
`degree compatible with good economy.” Id. at 2:34–36.
`
`The figure of the challenged patent is set forth below:
`
`
`
`1 External mediators are also referred to by the patent as external
`information mediators or information mediators. See Ex. 1001, 5:8–10, 5:18
`(referring to information mediators 24 depicted in the patent figure as
`“external information mediators 24,” “external mediators 24,” and
`“information mediator (24)”).
`
`3
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`
`
`
`
`
`The figure illustrates “system 10 for coordinating and controlling
`
`projectors . . . for displaying information” at a subway station. Id. at 4:34–
`
`37, 4:25. Control centre 12 has communication interface 14 (shown as a
`
`radio link 14) that connects computerized devices 16, 18, 20. Id. at 4:42–45.
`
`Computerized device 16 controls one or more projectors 22 that display
`
`images or pictures in public places. Id. at 4:28–31, 4:45–48. Working
`
`stations 32 are used by personnel serving the control centre 12, whereas
`
`external information mediators 24 provide control instructions to
`
`projectors 22 “with regard to the information that the external mediators 24
`
`desire the system 10 to display via the projectors 22, each on its own
`
`initiative and communication-wise transparent via modems 26.” Id. at 4:63–
`
`66, 5:8–13.
`
`4
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`
`The patent describes that the system enables an external information
`
`mediator to control and coordinate the display of information in a time-
`
`sensitive manner. In contrast to conventional systems in which an external
`
`information mediator “is normally forced to wait about two weeks, perhaps
`
`longer, before his order can be implemented and the information publicly
`
`displayed,”
`
`the inventive digital information system 10 can . . . display[]
`principly [sic] in real time, i.e. at the time of making the order,
`possibly with a short delay due to processing, fully-booked
`exposure lists and other quickly passing causes. Furthermore,
`an external information mediator 24 is able to put through
`information to the system 12 twenty-four hours a day,
`whereupon the information can be included instantaneously
`in an exposure list.
`
`Id. at 5:23–35.
`
`2. Illustrative Claims
`
`
`
`Of the challenged claims, claims 1, 13, 25, and 26 are independent
`
`and illustrate the claimed subject matter. These claims are reproduced
`
`below, with italicized text indicating language that was added to the claims
`
`during prosecution of the reissue application, and text within brackets
`
`indicating language that was removed.
`
`1. A method of dynamically coordinating and controlling
`projectors
`in a digital
`information
`system
`to display
`[information] material in public places on at least one display
`device,
`
`said digital information system including a computerized
`control center having a plurality of communication interfaces, a
`plurality of computerized devices situated in proximity to said
`public places and being connected to said control center wherein
`each of said computerized devices controls at least one projector,
`and communications drive routine means for permitting at least
`
`5
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`
`one [subscribing] external
`[having
`information mediator
`communications drive routine means for] to selectively and
`transparently [connecting] connect to said control center, said
`method comprising:
`
`receiving, by said control center, display information
`transmitted by said external mediators at any time, said display
`information including booking information, specified by said at
`least one external mediator, for reserving and controlling a time-
`period to display said display [information] material;
`
`generating, organizing, and dynamically updating an
`exposure list in real time, by an exposure handler included in said
`control center, in accordance with said display information, said
`exposure list also containing projector control instructions based
`on said [reservation] booking information;
`
`coordinating and controlling select ones of said projectors
`by said computer devices, in response to said projector control
`[instruction] instructions contained in said exposure list, in order
`to display said display [information] material on said display
`device in real time, wherein said display information in said
`exposure list specifies a content of display, a location of display,
`a timing of display, and a duration of display [such that said
`content, said location, said timing, and said duration are capable
`of being independently selected], and said exposure list enables
`each of said select projectors
`to
`independently and
`instantaneously receive said display information through said
`computerized devices.
`
`Ex. 1001, 14:12–51 (formatting changes).
`
` A system for dynamically coordinating and
`13.
`controlling projectors to display digital [information] material on
`at least one display device in public places, said system
`comprising:
`
`a computerized control center for processing [said] display
`information and having a plurality of communications interfaces
`to support data transmissions, said control center including an
`exposure handler for generating, organizing, and dynamically
`updating an exposure list in real time in accordance with said
`
`6
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`
`display information, said exposure list also containing projector
`control instructions based on said display information;
`
`wherein at least one external information mediator [for
`transmitting said display information to said control center at any
`time, each of said mediators being] can electronically [coupled]
`couple to said computerized control center via one of said
`communication interfaces and selectively and transparently
`[connecting] connect
`to said control center
`through a
`communications drive routine means to transmit said display
`information to said control center at any time, said display
`information including booking information, specified by each of
`said external mediators, for reserving and controlling a time-
`period to display said display [information] material;
`
`a plurality of computerized devices, situated in proximity
`to said public places, for coordinating and controlling select ones
`of a plurality of projectors in response to said projector control
`instructions, each of said computerized devices being
`electronically coupled to said computerized control center via
`one of said communication interfaces; and
`
`wherein said display information in said exposure list
`specifies a content of display, a location of display, a timing of
`display, and a duration of display [such that said content, said
`location, said timing, and said duration are capable of being
`independently selected], and said exposure list enables each of
`said select projectors to independently and instantaneously
`receive information through said computerized devices.
`
`Ex. 1001, 15:42–16:15 (formatting changes).
`
`25. A method of selectively displaying digital information
`at one or more of a plurality of locations, said method
`comprising:
`
`receiving control instructions from at least one external
`information mediator; using said control instructions to generate
`an exposure list, said exposure list specifying three or more of
`the following items:
`
`i) what information content is to be displayed;
`
`7
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`
`ii) at which of said plurality of locations said
`information content is to be displayed;
`
`iii) when said information content is to be displayed
`for each location at which content is to be displayed; and
`
`iv) how long said information content is to be
`displayed for each location at which content is to be
`displayed;
`
`displaying images at one or more of said locations in
`accordance with said exposure list; and
`
`permitting said exposure list to be dynamically updated.
`
`Ex. 1001, 17:6–25 (formatting changes).
`
`26. A system for selectively displaying digital information
`at one or more of a plurality of locations, said system
`comprising:
`
`a computerized control center having a plurality of
`communication interfaces for receiving control instructions from
`at least one external information mediator, said computerized
`control center including means for generating and dynamically
`updating an exposure list from said control instructions, said
`exposure list specifying three or more of the following items:
`
`i) what information content is to be displayed;
`
`ii) at which of said plurality of locations said
`information content is to be displayed;
`
`iii) when said information content is to be displayed
`for each location at which content is to be displayed; and
`
`iv) how long said information content is to be
`displayed for each location at which content is to be
`displayed;
`
`a computerized device situated at each one of said
`plurality of
`locations, each computerized device being
`electronically coupled to said computerized control center; and
`
`a means for displaying images in accordance with said
`exposure list associated [sic] with each one of said computerized
`devices.
`
`8
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`Ex. 1001, 17:26–18:26 (formatting changes).
`
`C. Asserted Grounds of Unpatentability
`
`
`
`Petitioner contends that claims 1–3, 5–9, 12–14, 17–21, and 24–26 of
`
`the ’470 patent are unpatentable based on the following specific grounds.
`
`Reference[s]
`
`Basis2
`
`Challenged Claims
`
`Nakamura3 and Loban4
`
`Nakamura, Loban, and Reilly5
`
`Nakamura
`
`Pet. 9–64.
`
`§ 103(a)
`
`1–3, 5–9, 12–14, 17–21,
`and 24
`§ 103(a) 7, 9, 19, and 21
`
`§ 102(a) 25 and 26
`
`II. DISCUSSION
`
`Each independent claim recites “dynamically updating,” for which
`
`Petitioner relies on Nakamura. Id. at 31–33 (claim 1); id. at 48 (claim 13);
`
`id. at 53, 59–60 (claim 25); id. at 54, 61–62 (claim 26). Petitioner’s
`
`declarant, Jaime G. Carbonell, Ph.D., supports Petitioner’s contentions but
`
`does not add substantial additional reasoning, explanation, or factual support
`
`beyond that found in the Petition. Compare Pet. 31–33, with Ex. 1006
`
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. §§ 102, 103, 112, effective
`March 16, 2013. Because the challenged patent claims the benefit of a filing
`date before March 16, 2013, we refer to the pre-AIA version of sections 102,
`103, 112. Ex. 1001, [60] (claiming May 14, 1996).
`3 Japanese Patent Publication No. H07-168544, published July 4, 1995
`(Ex. 1007; English translation, Ex. 1007, 10–18 “Nakamura”).
`4 U.S. Patent No. 5,612,741, issued Mar. 18, 1997 (Ex. 1008, “Loban”).
`5 U.S. Patent No. 5,740,549, issued Apr. 14, 1998 (Ex. 1010, “Reilly”).
`
`9
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`¶¶ 65–66. Patent Owner opposes, with support of declaration testimony of
`
`Zaydoon Jawadi (Ex. 2001).
`
`Our determination whether to institute inter partes review based on
`
`the Petition is resolved by a determination whether the information in the
`
`Petition shows there is a reasonable likelihood that Petitioner would prevail
`
`in establishing Nakamura discloses, expressly or inherently, or would have
`
`conveyed to one of ordinary skill in the art the requisite “dynamically
`
`updating an exposure list.” For the reasons that follow, we determine the
`
`information in the Petition does not show the necessary reasonable
`
`likelihood.
`
`A. Claim Construction
`
`The ’470 patent has expired. See Pet. 10 (asserting the challenged
`
`patent “expired at least as of May 14, 2016”); Ex. 1001, [60] (claiming
`
`priority to a provisional application filed on May 14, 1996). Patent Owner
`
`does not dispute that the ’470 patent is expired. See generally Prelim. Resp.
`
`For claims of an expired patent, the Board’s claim construction
`
`analysis is similar to that of a district court. See In re Rambus, Inc., 694
`
`F.3d 42, 46 (Fed. Cir. 2012). In this context, claim terms “are generally
`
`given their ordinary and customary meaning” as understood 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
`
`10
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`“less significant than the intrinsic record in determining the legally operative
`
`meaning of claim language.” Phillips, 415 F.3d at 1317.
`
`Petitioner proposes constructions for several terms that recite
`
`“means.” Pet. 12–14; see 37 C.F.R. § 42.104(b)(3) (A petition must set forth
`
`“[h]ow the challenged claim is to be construed. Where the claim to be
`
`construed contains a means-plus-function or step-plus-function limitation as
`
`permitted under 35 U.S.C. 112(f), the construction of the claim must identify
`
`the specific portions of the specification that describe the structure, material,
`
`or acts corresponding to each claimed function.”).
`
`Patent Owner does not address directly Petitioner’s proposed
`
`constructions. See generally Prelim. Resp. 3–6 (claim construction section).
`
`Patent Owner, however, proffers a proposed construction for the term
`
`“dynamically updating.” Id.
`
`1. “Dynamically Updating an Exposure List”
`(Independent Claims 1 and 13)
`
`Each independent claim requires dynamically updating an exposure
`
`list. Specifically, independent claim 1 recites “generating, organizing, and
`
`dynamically updating an exposure list in real time, by an exposure handler
`
`included in said control center.” Independent claim 13 similarly recites
`
`“dynamically updating an exposure list in real time in accordance with said
`
`display information.” Similarly, independent claim 25 recites “permitting
`
`said exposure list to be dynamically updated,” and independent claim 26
`
`recites “means for generating and dynamically updating an exposure list
`
`from said control instructions.”
`
`The parties do not dispute the meaning of “exposure list.” To provide
`
`context for the following discussion, we note that “exposure list” is the
`
`object of the dynamic updating in each independent claim. The plain
`
`11
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`language of claim 1, for example, makes clear that an exposure list contains
`
`projector control instructions based on booking information provided by
`
`external mediators. Compare Ex. 1001, 14:33–38 (“dynamically updating
`
`an exposure list . . . also containing projector control instructions based on
`
`said booking information”), with id. at 14:26–28 (receiving, by said control
`
`center, display information transmitted by said external mediators at any
`
`time, said display information including booking information specified by
`
`said at least one external mediator, for reserving and controlling a
`
`time-period to display said display material”).
`
`Petitioner does not assert an express construction of “dynamically
`
`updating an exposure list,” as recited in independent claims 1 and 13.
`
`Pet. 12–14. Based on two technical dictionary definitions and the disclosure
`
`of the written description of the challenged patent, Patent Owner contends
`
`“dynamically updating an exposure list”6 should be construed as “updating
`
`the exposure list in response to user actions when and as needed” and
`
`“means to update the exposure list when and as needed based on input from
`
`the user (i.e. external information mediator).” Prelim. Resp. 3, 5.
`
`Patent Owner contends that “the plain and ordinary meaning of
`
`‘dynamically updating’ is ‘updating in response to user actions when and as
`
`
`
`6 Specifically, Patent Owner contends “dynamically updating” in
`independent claims 1 and 13 should be construed as “updating the exposure
`list in response to user actions when and as needed”; “permitting said
`exposure list to be dynamically updated” in independent claim 25 should be
`construed as “allowing the exposure list to be updated in response to user
`actions when and as needed”; and “means for . . . dynamically updating an
`exposure list” in independent claim 26 should be construed as “an exposure
`handler allowing the exposure list to be updated in response to user actions
`when and as needed.” Prelim. Resp. 3.
`
`12
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`needed.’” Id. at 3. For support of its contention, Patent Owner relies on the
`
`Microsoft Computer Dictionary definition of “dynamic” as “describ[ing]
`
`some action or event that occurs when and as needed” and its definition of
`
`“dynamic HTML” as a “technology designed to add richness, interactivity,
`
`and graphical interest to Web pages by providing those pages with the
`
`ability to change and update themselves dynamically, that is, in
`
`response to user actions, without the need for repeated downloads from a
`
`server.” Id. at 3–4 (citing Ex. 2003, 158–59) (alternation in original).
`
`Regarding its proffered definition of “dynamic HTML,” Patent Owner
`
`does not explain sufficiently how “dynamic HTML” relates to the
`
`challenged patent. Patent Owner’s declarant explains that dynamic HTML
`
`is “a well-known umbrella term for a collection of technologies that use
`
`scripting languages to change variables used in a web page to affect the look
`
`and function of an HTML page while a user views the page.” Ex. 2001 ¶ 23;
`
`see Prelim. Resp. 4 (citing Ex. 2003, 158–59; Ex. 2001 ¶ 23). Neither Patent
`
`Owner nor Mr. Jawadi relates dynamic HTML to claim language or
`
`technology described in the written description. Prelim. Resp. 4 (citing
`
`Ex. 2003, 158–59; Ex. 2001 ¶ 23). We are unaware of any reference in the
`
`patent to dynamic HTML, or even a web page. Thus, we do not accord
`
`much weight to the technical dictionary definition of “dynamic HTML” that
`
`Patent Owner proffers to support its position that “dynamic updating”
`
`involves updating in response to user actions.
`
`Moreover, we determine the claim language further undermines
`
`Patent Owner’s proposed constructions. Including “in response to user
`
`actions” in the claim construction of “dynamically updating an exposure
`
`list” is superfluous. This is because the plain language of the claim requires
`
`13
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`the exposure list be dynamically updated “in accordance with said display
`
`information,” which the claim requires be transmitted by an external
`
`mediator.
`
`We agree with Patent Owner, however, that the language of claim 1
`
`explicitly distinguishes “dynamically updating an exposure list” from
`
`“generating or organizing an exposure list.” Prelim. Resp. 5; Ex. 1001,
`
`14:32–33 (“generating, organizing, and dynamically updating an exposure
`
`list in real time”).
`
`For these reasons, we agree with Patent Owner that “dynamically
`
`updating an exposure list” means “updating the exposure list when and as
`
`needed.”
`
`We also agree with Patent Owner that the written description contrasts
`
`dynamically updating the exposure list with an alternative manner of
`
`updating the exposure list. Prelim. Resp. 5; Ex. 1001, 8:4–12. The patent
`
`describes dynamically updating by external mediators using software to
`
`transparently introduce pictures or films into the exposure list.” Ex. 1001,
`
`8:4–12. According to the patent, in contrast to dynamically updating,
`
`personnel may use work stations 32 in the control centre 12 to process the
`
`picture or exposure material that external information mediator wishes to
`
`project when “the external information mediators 24 . . . do not have access
`
`to software in the exposure handler.” Id. at 8:10–26; see Prelim. Resp. 5.
`
`The patent reiterates this distinction between (i) personnel using work
`
`stations in the control center to update “the exposure or picture material” and
`
`(ii) dynamically filling in the exposure list by external mediators. Ex. 1001,
`
`11:18–29.
`
`14
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`
`We also note that the ’470 patent contrasts the inventive system with a
`
`conventional process that requires an external information mediator to wait
`
`about two weeks before the order to display new information can be
`
`implemented. Id. at 5:23–27 (“At present a mediator which wishes to
`
`display information in public places is normally forced to wait about two
`
`weeks, perhaps longer, before his order can be implemented and the
`
`information publicly displayed.”). This further supports the construction of
`
`“dynamically updating an exposure list” as “updating the exposure list when
`
`and as needed.”
`
`The same reasoning applies to independent claim 13, which recites
`
`“dynamically updating an exposure list in real time in accordance with said
`
`display information.” For example, claim 13 requires an external mediator
`
`to provide display information to the control center. Id. at 15:55–65
`
`(reciting “one external information mediator can electronically couple to
`
`said computerized control center . . . to transmit said display information to
`
`said control center at any time, said display information including booking
`
`information, specified by each of said external mediators”).
`
`In sum, we conclude, in the context of the ’470 patent, that
`
`“dynamically updating an exposure list,” as recited in independent
`
`claims 1 and 13, means “updating an exposure list when and as needed.”
`
`2. “Permitting Said Exposure List to Be Dynamically Updated”
`(Independent Claim 25)
`
`Independent claim 25 recites “permitting said exposure list to be
`
`dynamically updated,” which Patent Owner contends should be construed as
`
`“allowing the exposure list to be updated in response to user actions when
`
`and as needed.” Prelim. Resp. 3. For reasons similar to those discussed
`
`previously with respect to independent claims 1 and 13, we disagree that the
`
`15
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`construction should include “in response to user actions.” For example,
`
`independent claim 25 recites a particular manner (i.e., using control
`
`instructions received from an external mediator) in generating an exposure
`
`list but does not expressly require the same for dynamically updating.
`
`Compare Ex. 1001, 17:9–12 (reciting “receiving control instructions from at
`
`least one external information mediator; using said control instructions to
`
`generate an exposure list”), with id. at 17:25 (reciting “permitting said
`
`exposure list to be dynamically updated”).
`
`For these reasons, we construe “permitting said exposure list to be
`
`dynamically updated” as “allowing the exposure list to be updated when and
`
`as needed.”
`
`3. “Means for . . . Dynamically Updating an Exposure List”
`(Independent Claim 26)
`
`Independent claim 26 recites “means for generating and dynamically
`
`updating an exposure list from said control instructions.” Petitioner
`
`contends that, because the limitation recites “means for” with an associated
`
`function, this limitation is governed by 35 U.S.C. § 112 ¶ 6. Pet. 13.
`
`Petitioner proposes that the corresponding structure is “an exposure
`
`handler.” Id. (citing Ex. 1001, 11:18–29).
`
`Patent Owner contends the limitation should be construed as “an
`
`exposure handler allowing the exposure list to be updated in response to user
`
`actions when and as needed.” Prelim. Resp. 3. Patent Owner does not
`
`address directly Petitioner’s contention that this limitation governed by
`
`35 U.S.C. § 112 ¶ 6 or Petitioner’s identification of the exposure handler as
`
`the corresponding structure. See generally id. at 3–6 (claim construction
`
`section). Patent Owner and Petitioner, however, identify the same structure
`
`(i.e., an exposure handler) as being responsible for the recited function of
`
`16
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`dynamically updating an exposure list from said control instructions as that
`
`identified by Petitioner.
`
`We determine that the limitation “means for . . . dynamically updating
`
`an exposure list” is governed by section 112, paragraph 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 also agree with the parties that an
`
`exposure handler is the structure described by the patent as performing the
`
`recited function. See Ex. 1001, 11:18–29 (describing the exposure or picture
`
`material “can be filled dynamically in the exposure list by the exposure
`
`handler”).
`
`Similar to reasons discussed previously, we do not agree with Patent
`
`Owner that dynamically updating the exposure list requires updating “in
`
`response to user actions.” Claim 26 expressly requires “means for
`
`generating and dynamically updating an exposure list from said control
`
`instructions.” The plain language of claim 26 also requires the control
`
`instructions to be received “from at least one external information mediator.”
`
`Thus, we conclude requiring “means for . . . dynamically updating an
`
`exposure list” to be performed “in response to user actions,” as Patent
`
`Owner proposes, is unnecessary in view of the express language “means for
`
`. . . dynamically updating an exposure list from said control instructions”
`
`wherein the control instructions are received from an external information
`
`mediator.
`
`Accordingly, we construe “means for . . . dynamically updating an
`
`exposure list” as “an exposure handler allowing the exposure list to be
`
`updated when and as needed.”
`
`17
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`
`B. Principles of Law Concerning Demonstrating Unpatentability
`
` “In an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
`petitions to identify “with particularity . . . the evidence that supports the
`
`grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b)(4)
`
`(requiring a petition to include a statement of the precise relief requested for
`
`each claim challenged, including “where each element of the claim is found
`
`in the prior art patents or printed publications relied upon.”). This burden
`
`never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l
`
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing
`
`Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008))
`
`(discussing the burden of proof in inter partes review). Furthermore,
`
`Petitioner cannot satisfy its burden of proving obviousness by employing
`
`“mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`
`1364, 1380 (Fed. Cir. 2016).
`
`A claim is unpatentable under 35 U.S.C. § 102 “if each and every
`
`claim limitation is found either expressly or inherently in a single prior art
`
`reference.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd,
`
`No. 2016-1900, 2017 WL 977034, at *2 (Fed. Cir. March 14, 2017). It is
`
`not sufficient that one of ordinary skill in the art “reading the reference
`
`would ‘at once envisage’ the claimed arrangement.” Id. Furthermore, to
`
`anticipate, a prior art reference must disclose more than “multiple, distinct
`
`teachings that the artisan might somehow combine to achieve the claimed
`
`invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed.
`
`18
`
`

`

`IPR2016-01869
`Patent RE39,470 E
`
`Cir. 2008); see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“The
`
`[prior art] reference must clearly and unequivocally disclose the claimed
`
`[invention] or direct those skilled in the art to the [invention] without any
`
`need for picking, choosing, and combining various disclosures not directly
`
`related to each other by the teachings of the cited reference.”). Although the
`
`elements must be arranged or combined in the same way as in the claim,
`
`“the reference need not satisfy an ipsissimis verbis test,” i.e., identity of
`
`terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
`
`2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter and the prior art are such that the subject
`
`matter, as a whole, would have been obvious at 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 nonobvio