Trials@uspto.gov
`571-272-7822
`
`
` Paper 7
`
`
`Entered: March 13, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BARCO, INC.,
`Petitioner,
`
`v.
`
`T-REX PROPERTY AB,
`Patent Owner.
`____________
`
`Case IPR2017-01909
`Patent RE39,470 E
`____________
`
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
` Paper 7
`
`
`Entered: March 13, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BARCO, INC.,
`Petitioner,
`
`v.
`
`T-REX PROPERTY AB,
`Patent Owner.
`____________
`
`Case IPR2017-01909
`Patent RE39,470 E
`____________
`
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-01909
`Patent RE39,470 E
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`I. INTRODUCTION
`Barco, Inc. and Barco, N.V. (“Petitioner”) filed a Petition for inter
`partes review of claims 25 and 26 of U.S. Patent No. RE39,470 E (Ex. 1001,
`“the ’470 patent”). Paper 1 (“Pet.”). Patent Owner T-Rex Property AB filed
`a Preliminary Response. Paper 6 (“Prelim. Resp.”). Institution of an inter
`partes review is authorized by statute when “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108.
`Upon consideration of the Petition and the Preliminary Response, we
`conclude the information presented shows there is a reasonable likelihood
`that Petitioner would prevail in establishing the unpatentability of challenged
`claim 25. Accordingly, for the reasons that follow, we grant institution of an
`inter partes review of that claim. We further conclude that Petitioner has
`failed to show a reasonable likelihood of prevailing in its challenge to claim
`26. We therefore deny the petition as to that claim.
`
`A. Related Matters
`Claims 1–3, 5–9, 12–14, 17–21, and 24–26 of the ’470 patent were
`challenged previously in IPR2016-01869 (“IPR1869”). Pet. 62; Paper 3, 6.
`The petitioner there was Broadsign International, LLC. On April 4, 2017,
`the Board entered a decision denying institution of the requested review.
`IPR1869, Paper 9.
`In addition, as required by 37 C.F.R. § 42.8(b)(2), each party
`identifies various judicial or administrative matters that would affect or be
`affected by a decision in this proceeding, including numerous pending and
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`dismissed district court actions involving the ’470 patent. Pet. 62–68; Paper
`3, 2–6 (Patent Owner’s Mandatory Notices).
`
`B. The ’470 Patent
`The ’470 patent is titled “Digital Information System.” The ’470
`patent is a reissue of U.S. Patent No. 6,005,534. The invention relates to a
`method and apparatus for controlling and coordinating projectors in a digital
`information system for displaying information on at least one display device
`through the medium of at least one projector for each said device. Ex. 1001,
`1:15–19. The information is displayed in places that are accessible to and
`frequented by a general public. Id. at 1:19–21. The ’470 patent indicates the
`disclosed system may be used to display information at subway or railway
`stations or airports. Id. at 1:21–27.
`The ’470 patent identifies a need to “enable information to be updated
`dynamically for display in real time” and to “enable external mediators to
`update information for display in a central control system” to control and
`coordinate projectors for displaying information. Id. at 1:53–60 (emphasis
`added). The ’470 patent describes the term “external mediators” as referring
`to advertising agencies and others who wish to display information for
`commercial reasons or to the general public.1 Id. at 5:18–23.
`The ’470 patent contrasts the disclosed invention with conventional
`“static” display systems in which “the display subscriber has very little
`chance of influencing the display, especially in real time.” Id. at 2:15–19.
`
`
`1 External mediators are also referred to by the ’470 patent as “external
`information mediators” or “information mediators.” See Ex. 1001, 5:8–10,
`5:18.
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`The ’470 patent’s one figure (Fig. 1) is reproduced below:
`
`
`
`Figure 1 of the ’470 Patent
`The figure illustrates “system 10 for coordinating and controlling
`projectors . . . for displaying information” at a subway station. Id. at 4:25,
`4:34–37. Control center 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 4:45–48. Working stations 32 are
`used by personnel serving control center 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
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`via the projectors 22, each on its own initiative and communication-wise
`transparent via modems 26.” Id. at 4:63–66, 5:8–13.
`The patent describes server 3 in the central computer as an exposure
`handler. The exposure handler organizes the information received from the
`external mediators into an exposure list. Ex. 1001, 7:10–18. When the
`information mediator is an advertising agency and the advertisements to be
`displayed are in picture form, the advertising subscriber is able to buy a
`number of spots that are shown in the exposure list. Id. at 9:14–18.
`According to the patent, in this way the system “enables quick changes to be
`made with regard to what shall be exposed on the exposure means, where it
`shall be exposed and when.” Id. at 9:25–28.
`Computer-produced pictures or exposures are delivered by external
`advertising agencies, newspaper agencies. etc., for exposure, or showing in a
`particular location, for example, in subways. The pictures are received by
`control center 12, which “also decides what shall be exposed and in which
`order, and distributes the information material to the subway station.” Id. at
`9:29–35.
`
`C. Claims 25 and 26
`Two independent claims are challenged: claims 25 and 26. Both were
`
`added during reissue and are reproduced below.2
`25. A method of selectively displaying digital
`information at one or more of a plurality of locations, said
`method comprising:
`
`2 In reproducing these claims, we have reformatted them and removed the
`italics indicating they were added in the reissue proceeding.
`
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`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:
`what information content is to be displayed;
`i)
`at which of said plurality of locations said
`ii)
`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.
`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;
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`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 assocaited [sic] with each one of said
`computerized devices.
`Ex. 1001, 17:26–18:26.
`D. Asserted Ground of Unpatentability
`Petitioner contends that claims 25 and 26 of the ’470 patent are
`
`unpatentable because the claims would have been obvious over Nakamura
`(Ex. 1003) 3 and Cho (Ex. 1004)4. Pet. 10. In support of its challenge,
`Petitioner relies on a declaration by Travis N. Blalock, Ph.D. (Ex. 1002,
`“Blalock Decl.”). Dr. Blalock states he has been retained by Petitioner as a
`technical expert. Blalock Decl. ¶ 1.
`
`II. DISCUSSION
`A. Preliminary Issue
`Patent Owner contends that the Board should “reject the present
`petition” under 35 U.S.C. § 325(d). Prelim. Resp. 12. That statute permits
`the Board to take into account whether, and reject the petition or request
`“because, the same or substantially the same prior art or arguments
`previously were presented to the Office.” Referring to IPR1869, Patent
`Owner contends that “[i]n the present case, Petitioner presents the same
`prior art in Nakamura, and substantially the same arguments, as were
`presented by the Broadsign petitioner.” Id.
`
`3 Japanese Patent Publication No. H07-168544, published July 4, 1995. An
`English translation appears at pages 10–18 of the Exhibit.
`4 US Patent No. 5,566,353.
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`We disagree with Patent Owner that the “same prior art” is presented
`here as in the petition in IPR1869. In that proceeding, the challenge was
`based on anticipation by Nakamura. In this proceeding, the challenge is
`based on obviousness over Nakamura and Cho. Moreover, this proceeding
`involves a different petitioner and expert. Under the circumstances we are
`not persuaded to exercise our discretion to deny the Petition here under
`§ 325(d).
`
`B. Claim Construction
`The ’470 patent has expired. See Pet. 10 (asserting the challenged
`patent “expired at least as of May 14, 2016”); Ex. 1001, 1:9–11 (claiming
`benefit of a provisional application filed on May 14, 1996). For claims of an
`expired patent, the Board’s claim construction analysis is similar to that of a
`district court. See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In
`this context, claim terms “are generally given their ordinary and customary
`meaning” as understood by a person of ordinary skill in the art in question at
`the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
`(Fed. Cir. 2005) (en banc). “In determining the meaning of the disputed
`claim limitation, we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17). Extrinsic evidence is “less significant than the
`intrinsic record in determining the legally operative meaning of claim
`language.” Phillips, 415 F.3d at 1317.
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`Petitioner proposes constructions for several terms in the challenged
`claims. Pet. 30–42. Patent Owner responds to each of these proposed
`constructions. Prelim. Resp. 5–11. We discuss them in order.
`1. “External Information Mediator” 5 (Claims 25 and 26)
`The specification of the ’470 patent states that “[t]he term information
`mediator (24) used in the following shall be interpreted in its widest
`meaning, i.e. as not only referring to advertising agencies but to all
`companies and private persons who wish to utilize the system 10 for
`commercial reasons or for the display of information that concerns a general
`public.” Ex. 1001, 5:18-23. Petitioner contends the term “external
`mediators” should be construed as “any companies or private persons who
`are external to the control center.” Pet. 32. Patent Owner, on the other
`hand, proposes that the term should mean “third-party suppliers of
`information for display.” Prelim. Resp. 6.
`We consider the specification language quoted supra as providing an
`express definition of the term “external mediators.” Consistent with the
`specification, therefore, we construe the term as advertising agencies and
`others who wish to display information for commercial reasons or to the
`general public. Ex. 1001, 5:18–23.
`2. “Permitting Said Exposure List to Be
`Dynamically Updated” (Claim 25)
`Claim 25 recites “permitting said exposure list to be dynamically
`updated.” The parties do not dispute the meaning of “exposure list.” “The
`
`
`5 External information mediators are also referred to in the ’470 patent as
`“external mediators,” or just “information mediators.” See Ex. 1001, 5:8–
`10, 5:18.
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`exposure list includes a series of instructions as to what shall be shown,
`where it shall be shown, when it shall be shown and for how long, etc.” Id.
`at 9:58–61. An exposure list contains projector control instructions based on
`booking information provided by external mediators. Id. at 14:33–38
`(“dynamically updating an exposure list . . . also containing projector control
`instructions based on said booking information”).
`The parties do dispute the proper construction of the phrase
`“permitted . . . to be dynamically updated.” Patent Owner contends it should
`be construed as “providing the functionality to update the exposure list when
`and as needed.” Prelim. Resp. 8. Petitioner contends the proper
`construction is “’permitting said updates to said exposure list to be updated
`when and as needed,’ but [it] is not interpreted to encompass automatically
`updating the exposure list with the associated control instructions received
`from the information mediator in all cases.” Pet. 34. Patent Owner
`criticizes Petitioner’s construction for adding negative limitations not clearly
`indicated by in the specification or prosecution history or the express
`language of the claims. Prelim. Resp. 7–8.
`In IPR1869, the Board construed “permitting said exposure list to be
`dynamically updated” as “allowing the exposure list to be updated when and
`as needed.” IPR1869 Paper 9, 16. The Board relied in part on a definition
`of “dynamic” from the Microsoft Computer Dictionary provided by Patent
`Owner. Id. at 13. In this proceeding, both Petitioner and Patent Owner cite
`this same definition. Pet. 34 (citing Ex. 1005); Prelim. Resp. 7 (citing Ex.
`2003).
`For the reasons discussed in IPR1869, we construe “permitting said
`exposure list to be dynamically updated” as “allowing the exposure list to be
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`updated when and as needed.” We do not accept Petitioner’s negative
`limitations as they are contrary to the express claim language and
`specification for the reasons set forth by Patent Owner. Prelim. Resp. 7–8.
`3. “Means for Generating and Dynamically Updating an Exposure List”
`(Claim 26)
`Petitioner must propose a construction under 35 U.S.C. § 112, ¶ 6,6
`for any means-plus-function limitation, “identify[ing] the specific portions
`of the specification that describe the structure, material, or acts
`corresponding to each claimed function.” 37 C.F.R. § 104(b)(3). Claim 26
`recites “means for generating and dynamically updating an exposure list
`from said control instructions.” The parties agree that, because the
`limitation recites “means for” with an associated function, this limitation is
`governed by 35 U.S.C. § 112, ¶ 6. Pet. 34; Prelim. Resp. 9.
`Petitioner argues that there are two functions for this recited “means,”
`which are (1) “generating an exposure list from the control instructions” and
`(2) “dynamically updating the exposure list from the control instructions.”
`Pet. 35. Petitioner contends that the corresponding structure for each
`function includes a computer. The structure for the first functional phrase is
`“a special purpose server computer programmed to create an exposure list
`from control instructions, in which the exposure list covers a set time period
`for information exposure or display.” Id. at 38. For the second functional
`phrase, Petitioner identifies “a special purpose server computer programmed
`to collect, create or allocate information relating to display control
`
`6 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f).
`Because the ’470 patent has a filing date before September 16, 2012
`(effective date of AIA), we use the pre-AIA citation “§ 112, ¶ 6.”
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`instructions and then sort or file the display control instructions in the
`exposure list, when and as needed,” “but is not interpreted to encompass
`automatically updating the exposure list with control instructions received
`from the information mediator in all cases.” Id. at 39.
`Notwithstanding its identification of corresponding structure,
`Petitioner further asserts that the ’470 patent “fails to provide additional
`details regarding an algorithm for performing the functions.” Id. at 40.
`Petitioner points to the lack of mathematical formulas, flow charts, or other
`description of software:
`The ’470 patent does not provide any mathematical formulas or
`flow charts, and even goes so far as to state that “[f]or achieving
`a purposeful digital information system according to the present
`invention, there is used to this end specifically developed
`software, which will not be described in more detail here.” Ex.
`1001, 13:8-11 (emphasis added). The Federal Circuit has stated
`that with respect to the requirements under 35 U.S.C. § 112 ¶6,
`“[s]imply reciting ‘software’ without providing some detail
`about the means to accomplish the function is not enough.”
`Id. (citation omitted). Thus, according to Petitioner,
`should the Board determine that the above-cited prose in the
`specification of the ’470 patent fails to sufficiently disclose a
`specific algorithm that transforms an otherwise general purpose
`server computer into a special purpose server computer
`programmed to perform the recited functions of “generating and
`updating an exposure list,” it necessarily follows that the ’470
`patent fails to disclose sufficient structure for performing the
`recited function of “generating and dynamically updating an
`exposure list.”
`Id. at 40–41 (citations omitted).
`Patent Owner responds by identifying the claimed function as
`“generating and updating when and as needed an exposure list from control
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`instructions.” Prelim. Resp. 9. Patent Owner further responds that the
`corresponding structure in the ’470 patent is the central computer and
`associated exposure handler “configured to allocate information relating to
`projector control instructions.” Id. As the “algorithm” for performing the
`claimed function, Patent Owner identifies the following:
`(1) mediator information is sorted into the exposure list in
`accordance with the wishes of the mediator or its instructions
`when available space is found in the exposure list or in
`alternative places in the exposure list given by the mediator; (2)
`if the exposure list is completely filled with instructions, the
`mediator instructions sent to the control centre remain in the
`queue list in the server in readiness for later inclusion in the
`exposure list; and equivalents thereof.
`Id. (citing Ex. 1001, 7:25–35). Patent Owner argues, “[t]he corresponding
`structure of this algorithm tracks the very language of the specification of
`the ’470 Patent itself.” Id.
`We agree with the parties’ contentions that the “means for generating
`and dynamically updating an exposure list” recited in claim 25 should be
`construed according to 35 U.S.C. § 112, ¶ 6. See Williamson v. Citrix
`Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc) (“[T]he use of
`the word ‘means’ in a claim element creates a rebuttable presumption that
`§ 112, para. 6 applies.”). We further agree that a computer programmed to
`perform the recited functions (creating and dynamically updating the
`exposure list) is part of the corresponding structure for the “means,” and, as
`a consequence, the corresponding structure must also include software (i.e.,
`an algorithm). It is well established that “the corresponding structure for a
`§ 112 ¶ 6 claim for a computer-implemented function is the algorithm
`disclosed in the specification.” Aristocrat Techs. Austl. Pty Ltd. vs. Int’l
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`Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v.
`Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005)). The Federal Circuit
`has defined algorithm as “a step-by-step procedure for accomplishing a
`given result.” Triton Tech of Texas, LLC v. Nintendo of Am., Inc., 753 F.3d
`1375, 1379 (Fed. Cir. 2014)(quoting Ergo Licensing LLC v. CareFusion
`303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012)).
`We disagree with Patent Owner that such an algorithm is disclosed in
`the ’470 patent. Prelim. Resp. 9. As Petitioner points out, two separate
`functions are recited: (1) generating the exposure list, and (2) updating the
`exposure list. “Any algorithm must, therefore, address both aspects of this
`functional language.” Noah Sys., Inc. v. Intuit, Inc., 675 F.3d 1302, 1314
`(Fed. Cir. 2012)(citation omitted). Moreover, the identified structure must
`“be clearly linked with the claimed function in order to qualify as
`corresponding structure.” Med. Inst. & Diag. Corp. v. Elekta AB, 344 F.3d
`1205, 1211 (Fed. Cir. 2003).
`The steps in the “algorithm” identified by Patent Owner do little more
`than state a result, without explaining how that result is to be accomplished.
`They do not constitute “a step-by-step procedure—for performing the
`claimed function.” Triton Tech, 753 F.3d at 1379. Thus, they do not
`provide enough detail to be considered an algorithm under Aristocrat. See
`Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1383 (Fed. Cir.
`2009)(“The ACM is essentially a black box that performs a recited function.
`But how it does so is left undisclosed.”).
`There is, in addition, nothing in the ’470 patent specification that
`clearly links the “algorithm” identified by Patent Owner with the recited
`function of updating the exposure list. Med. Inst. & Diag. Corp., 344 F.3d
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`at 1211 (“In this case, even the district court acknowledged that the link
`between software and the converting function was not completely clear.”).
`The “algorithm” identified by Patent Owner refers only to the creation of the
`exposure list by the central computer and exposure handler. This is clear
`from the sentence preceding the description cited by Patent Owner:
`ln one embodiment of the invention, a queue, or line, is created
`from the information material received by the server 1, in
`accordance with some known line or queuing method, . . .
`wherein the server 3 or exposure handler 3 has set-up or created
`an exposure list which covers a twenty-four hour period for
`information exposure or display via projectors 22.
`Ex, 1001, 7:19–26 (emphasis added). The alleged “algorithm” does not
`mention updating the exposure list, let alone provide sufficient instructions
`for performing that function.
`In sum, the corresponding structure for the “means for generating and
`updating” necessarily includes software with no sufficiently described
`algorithm for the software. Both parties’ proposed structure includes
`software, but “[s]imply reciting ‘software’ without providing some detail
`about the means to accomplish the function is not enough.” Finisar Corp. v.
`DirecTV Grp., Inc., 523 F.3d 1323, 1340–41 (Fed. Cir. 2008); see also
`Blackboard, 574 F.3d at 1382 (Fed. Cir. 2009) (holding disclosed “access
`control manager” insufficient structure to perform “means for assigning
`access to and control of the data”). Neither party directs us to any
`description, whether in prose, flow chart, or any other manner, that provides
`sufficient structure for “generating and updating an exposure list from the
`control instructions” as claimed. See Finisar, 523 F.3d at 1340. Nor is it
`enough that a hypothetical person of ordinary skill in the art would know
`how to design software for creating and updating such a list as claimed. See
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`Blackboard, 574 F.3d at 1385–86. Some type of algorithm would be
`required to complete the functions of generating and updating an exposure
`list, but neither party has identified such an algorithm in the specification of
`the ’470 patent.
`Thus, we are unable to construe claim 26 for purposes of this
`Decision. See In re Aoyama, 656 F.3d 1293, 1298 (Fed. Cir. 2011); see also
`BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036, slip
`op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing In re Steele, 305 F.2d
`859, 862–63 (CCPA 1962), for the proposition that “the prior art grounds of
`unpatentability must fall, pro forma, because they are based on speculative
`assumption[s] as to the meaning of the claims”). Because we are unable to
`construe claim 26, we determine that there is not a reasonable likelihood that
`Petitioner would prevail in establishing the unpatentability of that claim,
`and, therefore, deny institution with respect to claim 26.
`4. “Means for Displaying Images” (Claim 26)
`Claim 26 further recites: “a means for displaying images in
`accordance with said exposure list associated with each one of said
`computerized devices.” Petitioner contends that this means plus function
`term should be construed under pre-AIA § 112 ¶ 6. Pet. 10.
`In view of our conclusion that we are unable to construe another
`limitation in claim 26, we need not address this construction. Only terms
`that are in controversy need to be construed, and only to the extent necessary
`to resolve the controversy. See Wellman, Inc. v. Eastman Chem. Co., 642
`F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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`C. Principles of Law
` A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`D. Summary of Nakamura
`Nakamura is a Japanese patent publication directed to an advertising
`display control system that allows a registered user to input information to
`display on selected display devices. Ex. 1003, Abstract. Figure 1(A) of
`Nakamura is set forth below.
`
`
`Id. at Fig. 1(A). Figure 1(A) depicts a system including master station 2,
`slave stations 1, and terminals 3. Id. ¶ [0013]. Slave stations 1 have
`multiple display devices 1a–1d that are capable of being controlled by
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`master station 2. Id. Slave station 1 is connected to terminal device 3 via
`master station 2. Id. ¶ [0015]. A registered user uses the terminal to access
`content creation software that allows for uploading and processing media
`content to display. Id. ¶ [0016]. The registered user also uses posting
`software “to confirm and reserve the locations and time for the display,”
`including “the budget, the locations of the slave stations 1a, display time,
`duration, and the method of display.” Id.
`
`E. Summary of Cho
`Cho discloses a distribution network for transmitting real-time motion
`video, usually in the form of promotional advertisements, from a distribution
`center to a multitude of receiving sites, typically retail stores, dispersed over
`a wide geographic area. Ex. 1004, 4:54–58. Video segments (clips) for
`programs are transmitted from the distribution center and received at the
`receiving sites. Id., 4:58–60. Television monitors located at selected points
`in the receiving sites display programs to an audience, which usually will
`include shoppers in the store. Id., 4:60–63.
`After the clips have been received and stored in the receiving sites, the
`system’s software scheme performs the on-line program formation
`automatically in order to form playlists. Id., 5:4–7. Users enter the desired
`playlists for each receiving site into the system from a technical operation
`center. Id., 5:7–9.
`Cho discloses the capability of updating the playlists, including last
`minute modifications:
`Changes in the playlist after clips have been delivered to the
`stores is possible. . . . In the preferred embodiment, modifications
`to the playlist (this includes “last minute” modifications) are
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`made through a phone line which is connected to the store's local
`PC system via a commercially available modem.
`Id., 9:67–10:9.
`
`F. Analysis of Claim 25
`Petitioner’s analysis of claim 25 in relation to Nakamura and Cho
`appears at pages 43–54 of the Petition. Petitioner identifies each element of
`claim 25 in the disclosures of Nakamura and Cho. For example, Petitioner
`identifies Nakamura’s end users as the “external information mediator” in
`the claim. Pet. 43–44. Petitioner identifies Nakamura’s reservation record
`as the “exposure list” in the claim. Id. at 44. Petitioner identifies the slave
`stations and display devices in Nakamura as performing the step of
`displaying the images at plural locations. Id. at 45. Patent Owner does not
`challenge these contentions.
`For meeting the claim limitation “permitting said exposure list to be
`dynamically updated,” Petitioner provides alternatives. First, Petitioner
`asserts: “Nakamura discloses that the exposure list (e.g., ‘display
`reservations’ or ‘display reservation data’) can be updated when and as
`needed.” Pet 45. Petitioner explains:
`Nakamura discloses a system in which a remotely located
`individual can access a control center (master station) and
`directly, and instantaneously, make complete reservations on
`the control center (master station) without any additional
`processing.
`Id. at 46 (citing Ex. 1003, ¶¶ [0022]–[0024]; Blalock Decl. ¶ 55).
`Petitioner relies, alternatively, on Cho to meet this limitation. Pet.
`48–53. Petitioner explains that “Cho teaches that the playlists can be
`updated when and as needed, noting that ‘[c]hanges in the playlist after clips
`have been delivered to the stores is possible.’” Id. at 48–49 (citing Ex. 1004,
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`9:67–10:1). Petitioner further explains: “Such updates can include last
`minute modifications to the playlist: ‘modifications to the playlist (this
`includes last minute modifications) are made through a phone line which is
`connected to the store’s local PC system via a commercially available
`modem.’” Id. at 49 (citing Ex. 1004, 10:5–9)(internal quotes omitted).
`Petitioner provides a persuasive rationale for combining Nakamura
`and Cho. Pet. 50–54. Specifically, Petitioner points to similarities between
`Nakamura and Cho, as well as the ’470 patent: “[I]n all three, video for
`advertising is sent from a central location to geographically remote
`locations, where it is stored and played back according to a schedule
`(playlist) that is, or can be, unique to each remote location.” Id. at 50.
`Petitioner explains:
`A person of ordinary skill in the art would also understand
`that Cho, by teaching that playlists can be u
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