IN THE 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- _____
`U.S. Patent No. RE39,470
`__________________
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`
`CLAIMS 25 AND 26 OF
`
`U.S. PATENT NO. RE39,470
`
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`

`

`IPR2017 - _______
`Petition for Inter Partes Review of U.S. Patent RE39,470
`
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`II.
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` Page
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`OVERVIEW OF PETITION ........................................................................... 1
`
`REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 9
`
`A. Grounds for Standing - 37 C.F.R. § 42.104(a) ...................................... 9
`
`B.
`
`Overview of Challenge and Relief Requested ...................................... 9
`
`
`
` Prior Art Patents and Printed Publications ............................................ 9 1.
`
`
`
` Statutory Grounds of Challenge – 37 C.F.R. § 42.104(b)(2) ..............10 2.
`
`III. BACKGROUND ........................................................................................... 10
`
`A.
`
`The ’470 Patent ...................................................................................10
`
`
`
` The Written Description ......................................................................10 1.
`
`
`
` Challenged Claims ..............................................................................18 2.
`
`B.
`
`Prior Art ...............................................................................................20
`
`
`
` Nakamura ............................................................................................20 1.
`
`
`
` Cho ......................................................................................................28 2.
`
`IV. CLAIM CONSTRUCTION - 37 C.F.R. § 42.104(b)(3) ............................... 29
`
`A.
`
`B.
`
`C.
`
`“External Information Mediator” (Independent Claims 25
`and 26) .................................................................................................30
`
`“Permitting said Exposure List to be Dynamically
`Updated” (Independent Claim 25) ......................................................32
`
`“Means for Generating and Dynamically Updating an
`Exposure List From Said Control Instructions”
`(Independent Claim 26) .......................................................................34
`
`D.
`
`“Means for Displaying Images” (Independent Claim 26) ..................41
`
`
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`i
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`IPR2017 - _______
`Petition for Inter Partes Review of U.S. Patent RE39,470
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 42
`
`VI.
`
`IDENTIFICATION OF HOW THE CHALLENGED CLAIMS
`ARE UNPATENTABLE - 37 C.F.R. §§ 42.104(B)(1), (2), (4),
`AND (5) ......................................................................................................... 42
`
`A.
`
`Claims 25 and 26 of the ’470 patent are obvious over
`Nakamura and Cho pursuant to 35 U.S.C. § 103(a). ..........................43
`
`
`
` Claim 25. .............................................................................................43 1.
`
`
`
` Claim 26. .............................................................................................54 2.
`
`VII. MANDATORY NOTICES PURSUANT TO 37 C.F.R. §
`42.8(A)(1) ...................................................................................................... 62
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-in-Interest - 37 C.F.R. § 42.8(b)(1) ...................................62
`
`Related Matters - 37 C.F.R. § 42.8(b)(2) ............................................62
`
`Lead and Backup Counsel - 37 C.F.R. § 42.8(b)(3) ...........................68
`
`Service Information - 37 C.F.R. § 42.8(b)(4) .....................................68
`
`VIII. CONCLUSION .............................................................................................. 69
`
`
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`ii
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`IPR2017 - _______
`Petition for Inter Partes Review of U.S. Patent RE39,470
`
`
`Exhibit
`No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`EXHBIT LIST
`
`Description of the Exhibit
`U.S. Patent Number RE39,470 to Hylin et al. (“the ’470 patent”)
`Declaration by Travis N. Blalock, Ph.D.
`Japanese Patent Application Heisei 07-168544 (“Nakamura”),
`Certified English Translation, and Affidavit
`U.S. Patent Number 5,566,353 to Cho et al. (“Cho”)
`Excerpts from Microsoft Computer Dictionary Fourth Edition (1999)
`Prosecution History of the ’470 patent (Serial No. 09/821,969)
`CV of Travis N. Blalock, Ph.D.
`
`
`
`
`iii
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`

`

`IPR2017-_______
`Petition for Inter Partes Review of U.S. Patent RE39,470
`
`I.
`
`OVERVIEW OF PETITION
`
`Barco, Inc. and Barco, N.V. (collectively, “Barco” or “Petitioners”) request
`
`inter partes review of claims 25 and 26 of U.S. Patent No. RE39,470 (“the ’470
`
`patent,” Ex. 1001) under 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq. The
`
`instant Petition demonstrates that there is a reasonable likelihood that Petitioners
`
`would prevail with respect to the challenged claims should the Board institute inter
`
`partes review.
`
`The ’470 patent discloses a digital information system that includes a
`
`computerized control center and display devices that are located at a plurality of
`
`locations. Ex. 1001, 4:42-27. The digital information system permits any
`
`authorized company or person to send control instructions for the display devices
`
`to the computerized control center by email. Ex. 1001, 5:8-13, 5:18-23, 7:61-64,
`
`8:41-42; Ex. 1002, ¶ 15. The ’470 patent refers to these external, authorized
`
`companies or persons as “information mediators” or “external information
`
`mediators.” See Ex.1001, 5:8–10, 5:18. The computerized control center uses the
`
`control instructions to create an exposure list. Ex. 1001, 7:7-17. The 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. Ex. 1001, 9:58-61. The exposure list is
`
`then sent from the computerized control center to station computers that control the
`
`display devices according to the exposure list. Ex. 1001, 9:55-62.
`
`
`
`1
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`

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`IPR2017-_______
`Petition for Inter Partes Review of U.S. Patent RE39,470
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`
`The ’470 patent explains that there are two different types of external
`
`information mediators: (i) those that are capable of creating and delivering finished
`
`picture sequences/films that do not require additional processing via work stations
`
`in the control center before their associated control instructions are introduced into
`
`the exposure list, and (ii) those that need to have their picture material or exposure
`
`material processed by personnel at work stations at the computerized control center
`
`before the associated control instructions can be introduced into the exposure list.
`
`Ex. 1001, 7:26-36; 8:4-42; 11:19-28; Ex. 1002, ¶ 16. The ’470 patent explains that
`
`the first group of external information mediators have access to their own versions
`
`of the software that the computerized control center uses to create exposure lists.
`
`Ex. 1001, 7:26-36; 8:4-9, 8:27-34, 11:23-28; Ex. 1002, ¶ 27. The ’470 patent
`
`refers to this technique as “dynamic updating of the exposure list.” Ex. 1001, 8:4-
`
`12; Ex. 1002, ¶ 31.
`
`Importantly, the distinction the ’470 patent makes between whether an
`
`external information mediator is capable of “dynamic updating of the exposure
`
`list” or not relates to whether that external information mediator is capable of
`
`delivering content and control instructions that do not need additional processing
`
`before the control instructions are introduced in an exposure list, but does not
`
`relate to whether or not the control instructions are actually incorporated into the
`
`exposure list – that determination is dependent on whether there is space available
`
`
`
`2
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`

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`IPR2017-_______
`Petition for Inter Partes Review of U.S. Patent RE39,470
`
`in the exposure list. Ex. 1001, 7:25-35, 8:4-42, 11:19-28; Ex. 1002, ¶ 32.
`
`Specifically, although the ’470 patent states “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, as
`
`illustrated in more detail below,” the “more detail below” includes the caveat to
`
`information being “included instantaneously” that “[i]f the exposure list is
`
`completely filled with instructions, the mediator instructions to the control centre
`
`remain in the queue list in the servo [sic] 1 in readiness for later inclusion in the
`
`exposure list, in accordance with a preferred embodiment.” Ex. 1001, 5:31-35,
`
`7:31-35. At best, such “dynamic updating” entails the possibility of automatically
`
`updating an exposure list, but only if that exposure list has space available. Ex.
`
`1002, ¶ 28.
`
`Claim 25 of the ’470 patent recites a method of selectively displaying digital
`
`information at one or more of a plurality of locations that includes “permitting said
`
`exposure list to be dynamically updated.” Ex. 1001, 17:6-25 (emphasis added).
`
`Claim 26 of the ’470 patent recites a system for selectively displaying digital
`
`information at one or more of a plurality of locations that includes “means for
`
`generating and dynamically updating an exposure list from said control
`
`instructions.” Ex. 1001, 17: 25-18:26 (emphasis added). Thus, claims 25 and 26
`
`of the ’470 patent are respectively directed to a method and system in which the
`
`
`
`3
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`IPR2017-_______
`Petition for Inter Partes Review of U.S. Patent RE39,470
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`external information mediators are capable of creating and delivering finished
`
`picture sequences/films that do not require additional processing via work stations
`
`in the control center before their associated control instructions are introduced into
`
`the exposure list (if there is available space in the exposure list). Ex. 1002, ¶ 32
`
`A petition for inter partes review of claims 1-3, 5-9, 12-14, 17-21, and 24-26
`
`of the ’470 patent was previously filed in IPR2016-01869 (“the First IPR”) by
`
`Broadsign International, LLC (“Broadsign”), a party other than Petitioners who
`
`was also sued by the Patent Owner. In the First IPR, Broadsign argued that claims
`
`25 and 26 of the ’470 patent are unpatentable as anticipated by Japanese Patent
`
`Application Heisei 07-168544 (“Nakamura,” Ex. 1003) under 35 U.S.C. §102(a).
`
`IPR2016-01869, Pet. 55-63.
`
`Nakamura discloses an advertising display control system that is strikingly
`
`similar to the digital information system disclosed in the ’470 patent. Ex. 1002, ¶
`
`52. Like the ’470 patent, Nakamura discloses a computerized control center (a
`
`master station) and display devices that are located at a plurality of locations. Ex.
`
`1003, Figs. 1(A)-1(D), ¶¶ [0009], [0012]; Ex. 1002, ¶ 52. Like the ’470 patent,
`
`Nakamura discloses that any authorized company or person can send control
`
`instructions for the display devices to the computerized control. Ex. 1003, ¶¶
`
`[0015], [0016], and [0018]; Ex. 1002, ¶ 53. With respect to the “dynamic
`
`updating” aspect of the ’470 patent, Nakamura discloses providing these external
`
`
`
`4
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`IPR2017-_______
`Petition for Inter Partes Review of U.S. Patent RE39,470
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`persons or companies with access to two pieces of advertising support software
`
`that allow the external persons or companies to remotely create and schedule the
`
`display of content without requiring any additional processing via work stations in
`
`a control center (the master station). Ex. 1003, ¶¶ [0012], [0015], [0016], and
`
`[0018]; Ex. 1002, ¶ 56.
`
`However, Broadsign’s petition for inter partes review was found to be
`
`deficient in several respects, and the Board declined to institute inter partes review
`
`of any claim of the ’470 patent. See generally, IPR2016-01869, (PTAB April 4,
`
`2017) (Paper 9). There are three deficiencies in Broadsign’s petition for inter
`
`partes review that are most relevant to the instant Petition: (i) Broadsign did not
`
`include a claim construction that in any meaningful way addressed the term
`
`“dynamically updating” as it appears in Claims 25 and 26, (ii) Broadsign did not
`
`include any mention of how the ’470 patent defines “dynamic updating” as a
`
`particular technique in which external information mediators are capable of
`
`creating and delivering finished picture sequences/films to the computerized
`
`control center that do not require additional processing via work stations in the
`
`control center before their associated control instructions are introduced into the
`
`exposure list (if there is available space in the exposure list), and (iii) Broadsign
`
`did not point out with specificity or provide adequate reasoning for how Nakamura
`
`
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`5
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`IPR2017-_______
`Petition for Inter Partes Review of U.S. Patent RE39,470
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`discloses “dynamically updating” in the same way as recited in claims 25 and 26 of
`
`the ’470 patent.
`
`The Patent Owner filed a Preliminary Response in the First IPR that
`
`provided claim constructions for the term “dynamically updating.” See generally
`
`IPR2016-01869, Prelim. Resp. 3-6 (claim construction section). Based on two
`
`technical dictionary definitions and the written description of the ’470 patent, the
`
`Patent Owner argued that “dynamically updating an exposure list” should be
`
`construed as “updating the exposure list in response to user actions when and as
`
`needed.” Id. The Patent Owner argued that Nakamura fails to disclose this
`
`feature. See generally IPR2016-01869, Prelim. Resp. 15-16.
`
`Notably, the Patent Owner failed to point out that the distinction the ’470
`
`patent makes between whether an external information mediator is capable of
`
`“dynamic updating of the exposure list” or not relates to whether that external
`
`information mediator is capable of delivering content that does not need additional
`
`processing before the associated control instruction are introduced in an exposure
`
`list, but does not relate to whether or not the control instructions are actually
`
`incorporated into the exposure list – that determination is dependent on whether
`
`there is space available in the exposure list. Ex. 1001, 7:25-35, 8:4-42, 11:19-28;
`
`Ex. 1002, ¶ 28.
`
`
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`6
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`IPR2017-_______
`Petition for Inter Partes Review of U.S. Patent RE39,470
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`
`The Board agreed with the Patent Owner’s proposed claim constructions, in
`
`part. The Board construed the term “permitting said exposure list to be
`
`dynamically updated” in claim 25 as “allowing the exposure list to be updated
`
`when and as needed.” IPR2016-01869, slip op. at 15-16 (PTAB April 4, 2017)
`
`(Paper 9). The Board construed the construed the term “means for generating and
`
`dynamically updating an exposure list from said control instructions” in claim 26
`
`as “an exposure handler allowing the exposure list to be updated when and as
`
`needed.” IPR2016-01869, slip op. at 16-17 (PTAB April 4, 2017) (Paper 9). The
`
`Board then noted that both Broadsign and Broadsign’s expert, Dr. Carbonell, failed
`
`to point out with specificity and provide adequate reasoning for how Nakamura
`
`discloses “dynamically updating” in the same way as recited in claims 25 and 26 of
`
`the ’470 patent:
`
`Notably lacking from Petitioner’s contentions, however, is an
`explanation as to how Nakamura’s description of updating discloses
`dynamically updating the exposure list, which is required by the
`claim. Nakamura’s description of updating, by itself without further
`explanation or reasoning, does not describe dynamic updating—
`updating when and as needed. Neither Petitioner nor Dr. Carbonell
`provides an explanation as to how Nakamura’s description of
`updating discloses, expressly or inherently as required to show
`anticipation of claim25, the requisite dynamic updating. Although
`Petitioner asserts these descriptions disclose “dynamically updat[ing]
`
`
`
`7
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`

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`IPR2017-_______
`Petition for Inter Partes Review of U.S. Patent RE39,470
`
`
`the reservations by successively registering reservation information
`and updating the applicable items” (Pet. 32), Petitioner does not
`provide sufficient reasoning or analysis to support its conclusion.
`
`IPR2016-01869, slip op. at 23-24 (PTAB April 4, 2017) (Paper 9) (emphasis
`
`in original).
`
`The instant Petition cures the deficiencies in the First IPR. To the extent that
`
`Nakamura does not disclose the feature of dynamically updating an exposure list –
`
`updating the exposure list when and as needed, it would have been obvious to
`
`modify the advertising display control system of Nakamura to include this feature
`
`in view of prior art that is cited for the first time in the instant Petition. U.S. Patent
`
`Number 5,566,353 to Cho et al. (“Cho,” Ex. 1004) discloses a point of purchase
`
`video distribution system that explicitly allows users to make quick modifications
`
`to playlists, including “last minute” modifications, when and as needed. Ex. 1004,
`
`9:67-10:9. It would have been obvious to modify the advertising display control
`
`system of Nakamura to include this feature to further increase flexibility for users,
`
`a goal that is explicitly stated in both Nakamura and Cho. See 1003, ¶ [0024] and
`
`Ex. 1004, 10:56-58; Ex. 1002, ¶ 66. Accordingly, Section VI of the instant petition
`
`provides a detailed explanation of how claims 25 and 26 of the ’470 patent are
`
`obvious over Nakamura and Cho pursuant to 35 U.S.C. § 103(a).
`
`
`
`8
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`

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`IPR2017-_______
`Petition for Inter Partes Review of U.S. Patent RE39,470
`
`
`The instant Petition presents new grounds of unpatentability, based on new
`
`combinations of prior art, that are not redundant of any grounds presented in
`
`IPR2016-01869 and that demonstrate that there is a reasonable likelihood that
`
`Petitioners would prevail with respect to claims 25 and 26 of the ’470 patent.
`
`Therefore, inter partes review of claims 25 and 26 of the ’470 patent should be
`
`instituted.
`
`II.
`
`REQUIREMENTS FOR INTER PARTES REVIEW
`
`A. Grounds for Standing - 37 C.F.R. § 42.104(a)
`
`Petitioners certify that the patent for which review is sought is available for
`
`inter partes review and that Petitioners are not barred or estopped from requesting
`
`inter partes review challenging the patent claims on the grounds identified in this
`
`Petition. Specifically, this Petition is submitted within one year of service
`
`(8/04/2016) of a complaint against Petitioners.
`
`B. Overview of Challenge and Relief Requested
`
`Petitioners request inter partes review of claims 25 and 26 of the ’470
`
`patent, and the cancellation of these claims as unpatentable, as set forth below in
`
`Section VI.
`
` Prior Art Patents and Printed Publications 1.
`
`The earliest claim of priority listed on the face of the ’470 Patent is April 26,
`
`1996 to Swedish application No. 9601603-5. Petitioners rely upon the following
`
`
`
`9
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`IPR2017-_______
`Petition for Inter Partes Review of U.S. Patent RE39,470
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`patents and printed publications as prior art:
`
`Exhibit 1003 –
`
`Japanese Patent Application Heisei 07-168544
`
`(“Nakamura”), filed on December 13, 1993 and published on July 4, 1995.
`
`Nakamura is available as prior art at least under 35 U.S.C. §§ 102 (a) and 103(a).
`
`Exhibit 1004 – U.S. Patent Number 5,566,353 to Cho et al. (“Cho”), filed
`
`on September 6, 1994 and issued on October 15, 1996. Cho is available as prior
`
`art at least under 35 U.S.C. §§ 102(e) and 103(a).
`
` Statutory Grounds of Challenge – 37 C.F.R. § 42.104(b)(2) 2.
`
`Petitioners request cancellation of the challenged claims under the following
`
`statutory ground:
`
`Ground 1 – Claims 25 and 26 of the ’470 patent are obvious over the
`
`combination of Nakamura (Ex. 1003) and Cho (Ex. 1004) under 35 U.S.C. §
`
`103(a).
`
`III.
`
`BACKGROUND
`
`A. 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.
`
` The Written Description 1.
`
`The ‘470 patent identifies several problems with conventional forms of
`
`
`
`10
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`IPR2017-_______
`Petition for Inter Partes Review of U.S. Patent RE39,470
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`distributed advertising, noting that “[s]ystems that are used to show information in
`
`the form of advertisements, timetable messages or arrival and departure times in
`
`present-day public service infrastructures with regard to buses, trains, subway
`
`traffic, etc., are of a static nature. Such information is given on notice boards,
`
`posters, charts, tables, verbally through loudspeakers, and on digital displays, etc.
`
`A characteristic feature of such information media is that the information media is
`
`not coordinated, but is in the form of individual items which are controlled and
`
`updated separately, often manually.” Ex. 1001, 1:27-36.
`
`With respect to conventional systems that utilize projectors to display
`
`pictures, images, and sound, the ’470 patent notes that “[t]he display must be
`
`planned carefully beforehand, this planning often being carried out by experts
`
`within the technical field in question, so as to obtain a finished display product.
`
`For instance, when a company wishes to change its display and introduce a new
`
`picture series combined with sound, the process again becomes static by virtue of
`
`the need to employ experts to program and arrange the new display.” Ex. 1001,
`
`2:7-14.
`
`The ’470 patent identifies a need to allow for updates to occur
`
`“dynamically” and to grant external persons the ability to update information for
`
`display in a central control system without additional assistance:
`
`Thus, present-day systems do not enable information to be
`
`
`
`11
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`

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`IPR2017-_______
`Petition for Inter Partes Review of U.S. Patent RE39,470
`
`
`updated dynamically for display in real time. Neither do
`present-day systems enable external mediators to update
`information for display in a central control system, nor yet the
`administrator who makes the display of information available,
`but it is the administrator who determines when, where and how
`the information shall be displayed.
`
`Ex. 1001, 1:54-60.
`
`The ’470 patent identifies that one object of the invention is to “provide a
`
`flexible system in which external information mediators are able to dynamically
`
`control in real time the transmission of display instructions to a larger public in
`
`different places situated at any chosen distance apart through projectors which
`
`project information onto displays intended therefor.” Ex. 1001, 1:54-60.
`
`
`
`12
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`

`IPR2017-_______
`Petition for Inter Partes Review of U.S. Patent RE39,470
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`
`The sole figure of the ’470 patent is reproduced below:
`
`
`
`A system 10 includes a control centre 12 having a communication interface
`
`14 which connects 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 public places. Ex. 1001, 4:32-48. The projector 22 can
`
`be replaced with an electronic display (not shown), such as a large picture screen in
`
`LCD technology, light-emitting diode technology (LED technology) or the like.
`
`Ex. 1001, 6:25-29.
`
`The control centre 12 includes working stations 32, which are used by
`
`personnel serving the control centre 12, in monitoring, checking, maintaining and
`
`
`
`13
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`IPR2017-_______
`Petition for Inter Partes Review of U.S. Patent RE39,470
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`updating functions in the central computer with its databases. Ex. 1001, 4:60-66.
`
`In addition, “external information mediators 24 are able to give control instructions
`
`to the 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.” Ex. 1001, 5:8-13.
`
`The ’470 patent explains that the “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. 5:18-23. The ’470 patent further discloses that the
`
`external information mediators connect with the control centre 12 using specially
`
`designed interfaces for data and telecommunication, which may include code keys
`
`or other codes sent between the control centre 12 and the computer 24 of the
`
`external mediator, to avoid “unauthorized access to the display of such information
`
`and misuse of the system.” Ex. 1001, 5:36-54, 7:65-8:3. The external information
`
`mediators send information material to the control centre 12 by email. Ex. 1001,
`
`7:61-64, 8:41-42.
`
`The control centre 12 includes a central computer 28 that is divided into
`
`three servers 1, 2, 3. Ex. 1001, 6:65-66. Server 1 receives material from external
`
`information mediators 24 via modems 26, server 2 sends information material to
`
`
`
`14
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`

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`IPR2017-_______
`Petition for Inter Partes Review of U.S. Patent RE39,470
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`the station computers 34 that control the projectors 22, and the server 3 processes
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`information and control instructions received from the information mediator 24.
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`Ex. 1001, 6:66-7:9, 10:51-64.
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`In particular, “the exposure material or picture material (and other
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`information), the exposure list, etc., are prepared in the exposure handler which is
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`included in the server 3...” Ex. 1001, 10:61-64. The exposure handler 3 “carries
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`out the important object of the invention with regard to the possibility of an
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`external mediator 24 to organize the information delivered to the station 16, 18, 20
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`via an exposure list, this organizing of information being effected in real time via
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`the modem 26 and the server 1 that receives projector control information from the
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`external mediator.” Ex. 1001, 7:10-17.
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`If an external information mediator has their own version of the software
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`used by the exposure handler 3, they can prepare finished picture sequences/films
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`to be introduced transparently into the exposure list without additional processing
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`via the working stations 32 in the control centre 12, if there is space available on
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`the exposure list. Ex. 1001, 7:26-36; 8:4-9, 8:27-34, 11:23-28; Ex. 1002, ¶ 28.
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`The ’470 patent defines this as “dynamic updating of the exposure list.” Ex. 1001,
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`8:4-12. In the alternative, external information mediators 24 which do not have
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`access to software in the exposure handler can have their picture material or
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`exposure material processed and added to an exposure list by personnel serving the
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`IPR2017-_______
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`working stations 32. Ex. 1001, 8:9-26, 8:35-42, 11:19-23; Ex. 1002, ¶ 31.
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`The disclosure of “dynamic updating” in the ’470 patent is limited to the
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`ability for external information mediators to create content remotely that will not
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`require additional processing on a workstation 32 in the control center 28 before
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`the associated control instructions are ready to be inserted into an exposure list, but
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`it does not encompass whether the control instructions will actually be
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`incorporated into the exposure list – that determination depends on whether there is
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`space available on the exposure list. Ex. 1002, ¶ 28, 53. Specifically, “dynamic
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`updating of the exposure list” as disclosed in the ’470 patent would entail the
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`following steps: (i) an external information mediator uses their “own versions of
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`the software that the exposure handler 3 uses” to create complete/finished picture
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`sequences/films (Ex. 1001, 8:4-9; 11:23-29; Ex. 1002, ¶ 27), (ii)
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`this
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`finished/completed content and the associated control instructions are sent to the
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`server 1 in the central computer 28 by e-mail (Ex. 1001, 6:65-67, 7:61-64; 8:40-41;
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`Ex. 1002, ¶ 24), (iii) “a queue, or line, is created from the information material
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`received by the server 1, in accordance with some known line or queuing method,
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`such as FIFO (First In First Out), LIFO (Last In First Out) or Round Robin, etc.,”
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`(Ex. 1001, 7:18-22; Ex. 1002, ¶ 45) (iv), “[t]he exposure handler 3 collects and
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`processes, i.e. allocates, information relating to projector control instructions,
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`wherein mediator information is sorted into the exposure list in accordance with
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`IPR2017-_______
`Petition for Inter Partes Review of U.S. Patent RE39,470
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`the wishes of the mediator 24 or its instructions, when available space is found in
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`the exposure list or in alternative places in the exposure list given by the mediator.
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`If the exposure list is completely filled with instructions, the mediator
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`instructions to the control centre remain in the queue list in the servo [sic] 1 in
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`readiness for later inclusion in the exposure list, in accordance with a
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`preferred embodiment.” (Ex. 1001, 7:25-35 (emphasis added); Ex. 1002, ¶ 40).
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`As is clear from the above step (iv), regardless of whether an information
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`mediator engages in “dynamic updating” by creating content with their “own
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`versions of the software that the exposure handler 3 uses,” the inclusion of the
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`associated control instructions into the exposure list depends on whether or not the
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`exposure list is already full. Ex. 1002, ¶ 40. Thus, “dynamic updating” in the
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`context of the ’470 patent does not necessarily result in automatic and immediate
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`inclusion of control instructions in the exposure list – only the possibility of
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`automatic inclusion if there happens to be space available. Ex. 1002, ¶ 41. This
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`result is the logical outcome of the system disclosed by the ’470 patent – external
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`information mediators are given an increased capability to create and deliver
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`content and associated control instructions that can be readily incorporated into an
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`exposure list, but the ’470 patent does not disclose that external information
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`mediators have remote access to the most current versions of exposure lists. Ex.
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`1002, ¶ 30. As such, any conflicts in scheduling that result from content received
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`IPR2017-_______
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`from multiple, different external information mediators would need to be addressed
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`by the exposure handler or an administrator in the control center 28. Ex. 1002, ¶
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`28.
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`The ’470 patent further discloses that control routines are used to screen
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`content provided by eternal information mediators: “The control centre 12 is also
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`able to refrain from displaying information which conflicts with ‘good order’ or
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`accepted morale and of a disturbing nature to the large majority of the public,
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`possibly through the medium of working stations 32 and via control routines.” Ex.
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`1001, 9:36-40; Ex. 1002, ¶ 33.
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` Challenged Claims 2.
`Challenged claims 25 and 26 are independent claims. These claims are
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`reproduced below. As both of these claims were newly added during prosecution
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`of the reissue application, the entirety of the text is italicized.
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`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;
`ii) at which of said plurality of locations said information
`content is to be displayed;
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`IPR2017-_______
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`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.
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`Ex. 1001, 17:6-25 (formatting changes).
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`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