Case: l:16-cv-05673 Document#: 8 Filed: 05/31/18 Page 1of 1PagelD #:223
`
`AO 120 (Rev. 08/10)
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`InCompliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`Northern District Of Illinois
`filed in the U.S. District Court
`on the following
`H'Patents.
`ÿ Trademarks or
`( ÿ the patent action involves 35 U.S.C. § 292.):
`
`DATE FILED
`5/27/2016
`
`U.S. DISTRICT COURT
`Northern District of Illinois
`
`DEFENDANT
`
`Health Media Network, LLC
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1/16/2007
`
`T-Rex Property AB
`
`6/3/2008
`
`4/6/2002
`
`T-Rex Property AB
`
`World Theatre, Inc.
`
`DOCKET NO.
`1:16-CV-05673
`PLAINTIFF
`
`T-Rex Property AB
`
`PATENT OR
`TRADEMARK NO.
`1 US RE39.470
`
`2 US 7,382,334 B1
`
`3 US 6,430,603
`
`4 5
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`O Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`O Answer
`
`O Cross Bill
`
`O Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 2 3 4 5
`
`Inthe above—entitled case, the following decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`CLERK
`Thomas G. Bruton
`
`(BY) DEPUTY CLERK
`L. Fairley
`
`DATE
`
`5/31/2016
`
`Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
`
` IPR2016-01869 Ex. 1005
`Broadsign International, LLC Petitioner
` 1
`
`

`
`Case 4:16-cv-00344-ALM Document 3 Filed 05/23/16 Page 1of 1PagelD #: 225
`
`AO 120 (Rev. 08/10)
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`InCompliance with 3.5 U.S.C, § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`Eastern District of Texas Sherman Division
`filed in the U.S. District Court
`on the following
`2f Patents.
`O Trademarks or
`( LJ the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO,
`4:16-cv-344
`PLAINTIFF
`
`T-Rex Property AB
`
`DATE FILED
`b/23/2016
`
`U.S. DISTRICT COURT
`Eastern District of Texas Sherman Division
`DEFENDANT
`
`Carmike Cinemas, Inc.
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1/16/2007
`
`T-Rex Property AB
`
`8/6/2002
`
`6/3/2008
`
`T-Rex Property AB
`
`T-Rex Property AB
`
`i US RE 39,470
`
`2 US 6,430,603
`
`3 US 7,382,334
`
`4 5
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`PATENT OR
`TRADEMARK NO.
`
`INCLUDED BY
`
`|_| Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`[J Answer
`
`O Cross Bill
`
`0 Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`i 2 3 4 5
`
`In the above—entitled case, the following decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`CLERK
`
`(BY) DEPUTY CLERK
`
`DATE
`
`Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—-Upon filing document adding patent(s), nsai! this copy to Director Copy 4—Case file copy
`
` 2
`
`

`
`AO 120 (Rev. 08/10)
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`Southern District of Texas, Houston Division
`on the following
`filed inthe U.S. District Court
`SJPatents.
`( ÿ the patent action involves 35 U.S.C. § 292.):
`ÿ Trademarks or
`DATE FILED
`10/28/2015
`
`U.S. DISTRICT COURT
`Southern District of Texas, Houston Division
`DEFENDANT
`Zipcast, LLC
`
`DOCKET NO.
`4:15cv3170
`PLAINTIFF
`T-Rex Property AB
`
`PATENT OR
`TRADEMARK NO.
`1 RE39.470
`
`2 7,382,334
`
`DATE OF PATENT
`OR TRADEMARK
`
`1/16/2007
`
`6/3/2008
`
`HOLDER OF PATENT OR TRADEMARK
`
`T-Rex Property AB
`
`T-Rex Property AB
`
`3 4 5
`
`Inthe above—entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`ÿ Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`ÿ Answer
`
`ÿ Cross Bill
`
`ÿ Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 2 3 4 5
`
`Inthe above—entitled case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`CLERK
`David J. Bradley
`
`(BY) DEPUTY CLERK
`
`/ (1oxjli1 *-
`Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
`
`DATE
`
`10/29/2015
`
` 3
`
`

`
`(E£Effl5:HIEekmf
`
`AO 120 (Rev. 08/10)_ UiMiH
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`InCompliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`Northern District of Illinois
`on the following
`fded inthe U.S. District Court
`[jZf Patents.
`( Q the patent action involves 35 U.S.C. § 292.):
`ÿ Trademarks or
`
`DOCKET NO.
`1:15-cv-08197
`PLAINTIFF
`T-Rex Property AB
`
`DATE FILED
`9/18/2015
`
`U.S. DISTRICT COURT
`Northern District of Illinois
`
`DEFENDANT
`
`Total Outdoor Corp.
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`I US RE 39,470
`
`2 US 7,382,334
`
`1/16/2007
`
`6/3/2008
`
`T-Rex Property AB
`
`T-Rex Property AB
`
`3 4 5
`
`DATE INCLUDED
`
`PATENT OR
`TRADEMARK NO.
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`ÿ Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`ÿ Answer
`
`G Cross Bill
`
`ÿ Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 2 0 4 5
`
`In the above—entitled case, the following decision has been rendered orjudgement issued:
`DECISION/JUDGEMENT
`
`CLERK
`Thomas G. Bruton
`
`(BY) DEPUTY CLERK
`Julie S. Leopold
`
`DATE
`09/21/2015
`
`Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Upon fding document adding patent(s), mail this copy to Director Copy 4—Case file copy
`
` 4
`
`

`
`AO 120 (Rev. 08/10)
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`InCompliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`Northern District Of Illinois Eastern Div
`filed in the U.S. District Court
`on the following
`H'Patents.
`ÿ Trademarks or
`( ÿ the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`16cv06915
`PLAINTIFF
`
`T-Rex Property
`
`DATE FILED
`7/1/2016
`
`U.S. DISTRICT COURT
`Northern District of Illinois Eastern Div
`DEFENDANT
`
`Admirable
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 RE39470
`
`2 6005534
`
`3 4 5
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`O Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`O Answer
`
`O Cross Bill
`
`O Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 2 3 4 5
`
`Inthe above—entitled case, the following decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`CLERK
`
`(BY) DEPUTY CLERK
`
`DATE
`
`Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
`
` 5
`
`

`
`AO 120 (Rev. 08/10)
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`InCompliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`for th6 District Of Minnesota
`filed in the U.S. District Court
`on the following
`H'Patents.
`ÿ Trademarks or
`( ÿ the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`16-2018 DWF/BRT
`PLAINTIFF
`
`T-Rex Property AB
`
`PATENT OR
`TRADEMARK NO.
`1 RE39.470
`
`2 6,005,534
`
`3 7,382,334
`
`4 6,430,603
`
`5
`
`DATE FILED
`6/20/2016
`
`U.S. DISTRICT COURT
`for the District of Minnesota
`
`DEFENDANT
`
`Cedar Fair, L.P.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1/16/2007
`
`T-Rex Property AB
`
`7/2/1996
`
`6/3/2008
`
`8/6/2002
`
`T-Rex Property AB
`
`T-Rex Property AB
`
`T-Rex Property AB
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`O Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`O Answer
`
`O Cross Bill
`
`O Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 2 3 4 5
`
`Inthe above—entitled case, the following decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`Complaint filed 6/20/2016
`
`CLERK
`RICHARD D. SLETTEN
`
`(BY) DEPUTY CLERK
`A. Linner
`
`DATE
`
`7/6/2016
`
`Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
`
` 6
`
`

`
`AO 120 (Rev. 08/10)__
`REPORT ON THE
`Mail Stop 8
`FILING OR DETERMINATION OF AN
`Director of the U.S. Patent and Trademark Office
`ACTION REGARDING A PATENT OR
`P.O. Box 1450
`Alexandria, VA 22313-1450
`TRADEMARK
`
`InCompliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`Northern District of Texas
`filed inthe U.S. District Court
`on the following
`Ef Patents.
`ÿ Trademarks or
`( ÿ the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`3:16-cv-01005-N
`PLAINTIFF
`
`T-Rex Property AB
`
`DATE FILED
`4/13/2016
`
`U.S. DISTRICT COURT
`Northern District of Texas
`
`DEFENDANT
`
`Intersection Media Holdings, Inc. et al
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`See Attached
`
`1
`
`2 3 4 5
`
`Inthe above—entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`ÿ Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`ÿ Answer
`
`ÿ Cross Bill
`
`ÿ Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 2 3 4 5
`
`Inthe above—entitled case, the following decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`CLERK
`Karen Mitchell
`
`(BY) DEPUTY CLERK
`s/ N. Taylor
`
`DATE
`
`4/13/2016
`
`Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
`
` 7
`
`

`
`Case 3:16-cv-01005-N Document 1 Filed 04/13/16 Page 9 of 21 PagelD 9
`
`intermediaries), that comprise a computerized control center that has a plurality of
`
`communication interfaces for receiving control instructions from at least one external
`
`information mediator, the computerized control center includes a means for generating and
`
`dynamically updating an exposure list from the control instructions, the exposure list specifying
`
`three or more of the following items: i) what information content is to be displayed; ii) at which
`
`of the plurality of locations the information content is to be displayed; iii) when the information
`
`content is to be displayed for each location at which content is to be displayed; and iv) how long
`
`the information content is to be displayed for each location at which content is to be displayed, a
`
`computerized device situated at each one of the plurality of locations and electronically coupled
`
`to the computerized control center, and a means for displaying images in accordance with the
`
`exposure list associated with each one of the computerized devices as claimed in at least claim
`
`26 of the '470 Patent, without the authority of T-Rex.
`
`32.
`
`More specifically, the infringing devices and systems include Defendants' digital
`
`advertising network.
`
`33.
`
`Upon information and belief, Defendants have directly infringed and continue to
`
`directly infringe one or more claims of the '470 Patent, including at least claims 25 and 26, by
`
`operating their digital advertising network in Texas and elsewhere in the United States.
`
`34.
`
`In 1994, the traditional Out-of-Home advertising industry was in need of a
`
`change, an evolutionary improvement. See Declaration of Mats Hylin ("Hylin Deck") at ÿ 8
`
`(attached as Exhibit D, and hereby incorporated, in its entirety, by reference herein at paragraph
`
`34). Mats Hylin, the first named inventor of the '470 and the '334 Patents, recognized that the
`
`"demands from advertisers" were not being met; what advertisers wanted was "more flexibility
`
`and speed" and "the possibility of changing the message" instead of "having the same
`
`advertisement [displayed] during the whole period." Id. This may be because advertisers wish to
`
`avoid a stagnant message, or because advertisers desire campaign evaluation feedback —"the
`
`results of a first campaign are fundamental in order to create the next campaign." Id. at cj[ 15. Mr.
`
`Hylin also recognized that in order "to increase the revenue from" the "most attractiv[ely
`
`9
`
` 8
`
`

`
`Case 3:16-cv-01005-N Document 1-6 Filed 04/13/16 Page 30 of 150 PagelD 99
`
`existed, it was only the administrator, but not the external information mediators,
`
`who had access to such control and coordination.
`
`44. Moreover, prior to the inventions disclosed in claim 26 of the '470 Patent, for
`
`example, the computer controls of prior art systems were complicated. As a result,
`
`control and coordination of content display often had to be carried out by experts;
`
`content display had to be planned and coordinated carefully beforehand; mediators
`
`had very little chance of influencing the display. Despite the need for doing so,
`
`updating and changing content display quickly was not feasible.
`
`45. Claim 26 of the '470 Patent solves these problems, and, in doing so, claim 26
`
`embodies and improved the operation of digital signage that existed in 1996.
`
`Elements of claim 26 were not previously employed in the prior art. Infact,
`
`elements of claim 26, individually and in combination, have practical significance,
`
`and these elements represented new and useful innovation and improvement to
`
`digital signage over the prior art. Claim 26 incorporates non-conventional, non-
`
`generic hardware and software to achieve this technological innovation.
`
`46. The combination of the elements of claim 26 of the '470 Patent imposes meaningful
`
`limitations to improve existing digital signage technology by, for example, allowing
`
`external information mediator(s) to dynamically control and coordinate display
`
`devices located in different places, extending the usefulness of the digital signage
`
`29 of 91
`
` 9
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`

`
`Case 3:16-cv-01005-N Document 1-6 Filed 04/13/16 Page 31 of 150 PagelD 100
`
`technology. The combination of the elements of claim 26 together is distinct and
`
`different from other technologies.
`
`47. To solve the above and other problems and to achieve this technological innovation,
`
`claim 26 of the '470 Patent incorporates unique, innovative, non-conventional, non-
`
`generic elements, including, for instance: computerized control center with
`
`communication interfaces for receiving control instructions from external
`
`information mediator(s); means (within the computerized control center) for
`
`generating and dynamically updating an exposure list (based on the control
`
`instructions) to specify what, where, when, and how long to display; computerized
`
`devices (situated at locations) electronically coupled to the computerized control
`
`center; and means (associated with each one of the computerized devices) for
`
`displaying images in accordance with the exposure list.
`
`48. The functions, application, and implementations of these elements inherently and
`
`necessarily are rooted in and require computer technology, communication
`
`technology, and digital display technology in order to overcome specific problems
`
`arising in the realm of digital signage in 1996. Claim 26 discloses inventive,
`
`concrete, and tangible hardware as well as functions requiring intricate computer
`
`programming—functions that must be performed through computers. But the claim
`
`goes beyond the mere concept of simply using a computer to perform distributed
`
`signage. This is because computers, communication interfaces, and digital display
`
`30 of 91
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` 10
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`

`
`Case 3:16-cv-01005-N Document 1-6 Filed 04/13/16 Page 32 of 150 PagelD 101
`
`devices are not ancillary or incidental additions but germane and integral parts of the
`
`inventions disclosed by claim 26 of the '470 Patent.
`
`49.
`
`Inparticular, the claimed inventions of claim 26 of the '470 Patent relate to both the
`
`hardware and software technology for digital signage, as well as to the functioning
`
`of hardware and software technology for digital signage. The claim addresses a
`
`technical challenge (controlling and coordinating displays) that is particular to
`
`digital signage. Inparticular, the claimed inventions are directed towards
`
`dynamically controlling and coordinating display devices located in different places
`
`through control instructions and exposure lists by external information mediators.
`
`The claim discloses a computerized control center with communication interfaces
`
`for receiving control instructions from external information mediator(s); means
`
`(within the computerized control center) for generating (from the control
`
`instructions) and dynamically updating an exposure list specifying what, where,
`
`when, and how long to display; computerized devices (situated at locations) coupled
`
`to the computerized control center; and means (associated with the computerized
`
`devices) for displaying images in accordance with the exposure list. The claimed
`
`elements are inextricably tied to digital signage computer technology,
`
`communication technology, and digital display technology. In addition, when taken
`
`as a whole, the claimed inventions require specific hardware components.
`
`31 of 91
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`
`Case 3:16-cv-01005-N Document 1-6 Filed 04/13/16 Page 33 of 150 PagelD 102
`
`50. For example, excerpts from the '470 Patent, as identified inparagraph 31, above,
`
`exemplify some of the specific problems that claim 26 solves over other 1996 era
`
`technologies.
`
`51. Furthermore, the prosecution history of the '470 Patent, excerpts below, exemplify
`
`some of the specific problems that claim 26 solves over other technologies and the
`
`prior art.
`
`a. On March 29, 2002, applicant clarified the differences between claim 26 and
`
`the prior art:
`
`"Mehovic does not teach or suggest a system or method for selectively
`displaying digital information at one or more of a plurality of locations as
`recited by independent claims 25 and 26. Mehovic pertains to propagating
`airline reservation data to a relational database management system so that
`the data can be retrieved by an end user and is not concerned with
`displaying information inpublicly assessable places. The end user in
`Mehovic requests information from the reservation system , 12 through a
`VAX front-end 106 (see column 5, lines 27-30). Incontradiction, the end
`users in the present invention (i.e., the public) are passive viewers of
`displayed images.
`
`Mehovic fails to disclose the claimed exposure list that specifies display
`content, display location, display timing and display duration. The
`Examiner argues that the Passenger Name Record ("PNR") of Mehovic is
`equivalent to the exposure list. However, the PNR is a mix of textual and
`parametric data related to airline reservations such as airlines, departure
`cities, arrival cities, passenger data and the like. There is no information
`relating to display content, display location, display timing and display
`duration as requiredby claims 25 and 26.
`
`In addition, there is no teaching that the PNR is generated from control
`instructions received from an information mediator, as is required for the
`exposure list of claims 25 and 26.
`
`32 of 91
`
` 12
`
`

`
`Case 3:16-cv-01005-N Document 1-6 Filed 04/13/16 Page 34 of 150 PagelD 103
`
`Furthermore, Mehovic fails to show the claimed element of displaying
`images at one or more locations. Even if one argues that Mehovic displays
`data on the PC client 26 or output means 100, there is no suggestion that the
`system displays images in accordance with an exposure list, as required by
`claims 25 and 26. Instead, each PC client 26 presumably operates
`independently, displaying particular data as requested by the individual end
`users." (The File History of the '470 Patent, Amendment of March 29, 2002
`at 3-4.)
`
`b. On May 14, 2003, applicant clarified the differences between claim 26 and
`
`U.S. Patent 6,006,159 (Schmier), one of the prior art references cited during
`
`prosecution:
`
`"Schmier et al fails to anticipate either one of independent claims 25 and
`26. While Schmier et al generally relates to a method and system for
`displaying digital information, this reference does not disclose all of the
`recitations of claims 25 and 26. Inparticular, claim 25 recites the step of
`generating an exposure list that specifies display content, display location,
`display timing and display duration. The Examiner alleges that the transit
`data table computed by the central processor 22 of Schmier et al
`corresponds to the claimed exposure list. However, the transit data table
`contains predicted vehicle time intervals, arrival times and passenger load
`levels. This information is broadcast by the central processor 22 to the
`display modules 30 for display thereon. As such, the transit data table
`merely specifies display content and does not specify display location,
`display timing and display duration as required by claim 25. For example,
`Schmier at al contemplates displaying all or some of the information in the
`data transfer table (see column 5, lines 12-15). Schmier at al also describes
`continually updating the information in near real time (column 10, lines 3-
`6). Because the information is updated, and thus changed, as soon as it is
`received by the central processor 22, the duration of a given display is
`controlled by the frequency of the updates, not by anything in the transit
`data table. Also, while Schmier et al mentions displaying other types of
`information (such as news and advertising) at selective displays, there is no
`indication in Schmier at al that the specific location and timing of such
`displays would be controlled by the transit data table." ('470 File History,
`Amendment of May 14, 2003 at 3-4.)
`
`"Claim 26 recites a computerized control center having a plurality of
`communication interfaces for receiving control Instructions from at least
`
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`one information mediator. The examiner contends that the central processor
`22 of Schmier et al corresponds to the information mediator and refers to
`column 10, lines 5-10 of Schmier at al as disclosing a computerized control
`center having a plurality of communication interfaces for receiving control
`instructions from the information mediator. However, if the central
`processor 22 corresponds to the claimed information mediator, it is not
`clear what element of Schmier et al corresponds to the claimed
`computerized control center. The referenced passage at column 10, lines 5-
`10 of Schmier at al merely recites that the display modules can be "small
`computers" capable of receiving the entire transit data table or a subset
`thereof and other messages. This does not disclose a "computerized control
`center." Furthermore, there is no disclosure that each of these "small
`computers" has a plurality of communication interfaces for receiving
`control instructions as requiredby claim 26.
`
`Claim 26 also recites that the computerized control center includes means
`for generating and dynamically updating an exposure list from the control
`instructions, the exposure list specifying display content, display location,
`display timing and display duration. For the reasons set forth above,
`Schmier et al does not disclose generating an exposure list specifying
`display location, display timing and display duration." (Id. at 3-5.)
`
`c. On February 2, 2004, applicant amended claim 26 and further clarified the
`
`differences between claim 26 and the prior art of record:
`
`"Like claim 25, claim 26 has been amended to recite that the information
`mediator is an external information mediator and the exposure list specifies
`three or more of the following items:" ('470 File History, Amendment of
`February 2, 2004 at 9.)
`
`"Schmier et al does not disclose a computerized control center having a
`plurality of communication interfaces for receiving control instructions
`from at least one external information mediator." (Id.)
`
`"Schmier et al also does not disclose a computerized control center that
`generates an exposure list which specifies three or more of the claimed
`items." (Id.)
`
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`
`Claim 26: Terms and Limitations
`
`52. External Information Mediator
`
`Claim 26 references "external information mediator" in the first claim element
`
`(emphasis added):
`
`"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:"
`
`Excerpts from the '470 Patent specification, which provide context for this term, as
`
`well as examples of the use of this term from germane references of the 1996 time
`
`frame, are available in paragraph 33, above.
`
`Therefore, in my opinion, in 1996, one of ordinary skill in the art, after having
`
`read the specification, would understand external information mediator to mean
`
`substantially the same as was explained inparagraph 33, above.
`
`53. Location(s)
`
`Claim 26 references "locations" (and "location") in the preamble and in the first
`
`and second elements (emphasis added):
`
`"26. A system for selectively displaying digital information at one or more
`of a plurality of locations, said system comprising:"
`
`"ii) at which of said plurality of locations said information content is to be
`displayed;"
`
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`"iii) when said information content is to be displayed for each location at
`which content is to be displayed;"
`
`"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;"
`
`Excerpts from the '470 Patent specification, which provide context for this term, as
`
`well as examples of the use of this term from germane references of the 1996 time
`
`frame, are available in paragraph 34, above.
`
`Therefore, in my opinion, in 1996, one of ordinary skill in the art, after having
`
`read the specification, would understand location(s) to mean substantially the
`
`same as was explained in paragraph 34, above.
`
`54. Communication Interfaces
`
`Claim 26 references "communication interfaces" in the first element (emphasis
`
`added):
`
`"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:"
`
`The following excerpts from the '470 Patent specification provide context for the
`
`term "communication interfaces."
`
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`"Information display subscribers are connected to a computerized control
`centre via computer and telecommunication interfaces for all-day-round
`transmission of information, wherein the control centre has a
`communication interface against with computerized devices situated in
`connection with said places for projector coordination and control." (The
`'470 Patent at 2:64-3:3.)
`
`"In the main, the system is comprised of a control centre 12 having a
`communication interface 14 which connects an unlimited number of
`computerized devices 16, 18, 20 which are placed at desired distances from
`one another for the control of projectors 22 whose projector images or
`pictures are displayed in the aforesaid public places." {Id. at 4:42-48.)
`
`"Those external information mediators which connect to the control centre
`12 via modems are, in one embodiment of the invention, connected to the
`control centre via specially designed interfaces (drive routine means) for
`data and telecommunication. Inthis way, only external mediators 24 having
`the correct interface are able to connect transparently to the control centre
`12 for delivering control instructions in the projectors 22," {Id. at 5:36-43.)
`
`"In accordance with the invention, the control centre 12has a
`communication interface 14 against with the computerized devices 16, 18,
`20 situated on shifting positions or places for projector coordination and
`control." {Id. at 5:55-58.)
`
`"The drawing shows specifically a radio link which forms an interface
`between the control centre 12 and the computerized devices 16, 18, 20, this
`interface being a preferred interface, although not necessarily the sole
`possible interface. Other interfaces for transmitting information between the
`control centre 12 and the computerized devices 16, 18, 20 may consist of a
`cable-carried ISDN solution (Integrated Services Digital Network) or other
`fixed lines that have the same capacity." {Id. at 5:59-67.)
`
`"According to one embodiment, the computerized devices 16, 18, 20 may
`include redundancy by virtue of all databases 36 of hard disks on the
`stations 16, 18, 20 including the same projector control information or
`instructions for monitoring the system in a subway station 16, 18, 20. Thus,
`all information is copied between the station computers 34 and their
`databases 36 via the communications interface 14 from the central
`computer 28. This means that a computerized device for displaying
`
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`
`information in a subway station via projectors 22 will not be disabled
`should one or two of the stations shown in the drawing suffer a computer or
`hard disk power down in a station computer 34. Inthe event of a power
`down in a station computer 34, the communications interface 14 can be
`coupled to a switch which automatically bypasses the station computer and
`connect projectors 22 connected to the power down computer 34 to one of
`the station computers 34 that is still in function (the switch is not shown in
`the drawing)." (Id. at 6:42-59.)
`
`"The exposures are received on respective stations by a station computer 34
`(station server), wherein each projector 22 has an individual projector
`computer 38 which controls and feeds pictures in the projector or projectors
`22. Projector computer 38 are controlled by the station computer 34. Th