IPR2017-01909
`U.S. Patent No. RE39,470
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`BARCO, INC.,
`Petitioner
`
`v.
`
`T-REX PROPERTY AB,
`Patent Owner
`
`U.S. Patent No. RE39,470
`Issue Date: January 16, 2007
`Title: DIGITAL INFORMATION SYSTEM
`
`
`
`
`Inter Partes Review Case No. 2017-01909
`
`
`T-REX PROPERTY AB PATENT OWNER’S
`PRELIMINARY RESPONSE PURSUANT TO 37 CFR § 42.107(a)
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`IPR2017-01909
`U.S. Patent No. RE39,470
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`TABLE OF CONTENTS
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`C. 
`
`1. 
`
`INTRODUCTION ........................................................................................... 1 
`I. 
`TECHNOLOGY BACKGROUND ................................................................. 1 
`II. 
`III.  CLAIM CONSTRUCTION ............................................................................ 4 
`A. 
`“External Information Mediator” (Independent Claims 25 and 26) ....... 5 
`B. 
`“Permitting said Exposure List to be Dynamically Updated”
`(Independent Claim 25) ........................................................................... 6 
`“Means for Generating and Dynamically Updating an Exposure
`List From Said Control Instructions” (Independent Claim 26) ............... 9 
`“Means for Displaying Images” (Independent Claim 26) .................... 10 
`D. 
`IV.  PETITIONER FAILS TO PROVIDE IDENTIFICATION OF HOW
`THE CHALLENGED CLAIMS ARE UNPATENTABLE - 37 C.F.R.
`§§ 42.104(B)(1), (2), (4), AND (5) ............................................................... 11 
`A.  Petitioner Fails to Demonstrate that Claims 25 and 26 of the ’470
`Patent are Obvious over Nakamura and Cho Pursuant to 35 U.S.C.
`§ 103(a). ................................................................................................. 11 
`Petitioner Fails to Demonstrate that Nakamura Discloses the
`Limitations “Permitting Said Exposure List to be Dynamically
`Updated” (Claim 25) or “Dynamically Updating an Exposure List
`from Said Control Instructions” (Claim 26). ......................................... 11 
`2.  The Petition Fails to Demonstrate That the Combination of
`Nakamura and Cho Cures the Deficiencies of Nakamura. ................... 17 
`3.  The Petition Fails to Demonstrate that Nakamura and Cho
`Disclose the Limitation “Means for Generating and
`Dynamically Updating an Exposure List from Said Control
`Instructions” Because the Petition Does Not Identify How
`Nakamura and Cho Disclose the Corresponding Structure or
`Equivalents for This Element (Claim 26). .................................... 24 
`CONCLUSION .............................................................................................. 26
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`V. 
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`IPR2017-01909
`U.S. Patent No. RE39,470
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`
`EXHIBIT LIST
`
`Description
`Declaration of Zaydoon Jawadi submitted with Patent
`Owner’s Preliminary response in Broadsign
`International, LLC v. T-Rex Property AB, Case No.
`IPR2016-01869
`Curriculum Vitae of Zaydoon Jawadi
`Excerpts from Microsoft Computer Dictionary Fourth
`Edition (1999)
`Declaration of Zaydoon Jawadi submitted with
`Plaintiff’s Opening Claim Construction Brief, filed in
`T-Rex Property AB v. Regal Entertainment Group, et
`al., Case No. 6:16-cv-00927-RWS, Dkt. No. 87 (E.D.
`Tex.)
`
`
`
`Exhibit No.
`
`2001
`
`2002
`2003
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`2004
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`
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`ii
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`IPR2017-01909
`U.S. Patent No. RE39,470
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`
`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech,
`521 F.3d 1328 (Fed. Cir. 2008) .......................................................................... 25
`Broadsign International, LLC v. T-Rex Property AB,
`Case No. IPR2016-01869 (filed Oct. 6, 2016) ............................................passim
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`582 F.3d 1288 (Fed. Cir. 2009) .......................................................................... 25
`Linear Tech. Corp. v. ITC,
`566 F.3d 1049 (Fed. Cir. 2009) ............................................................................ 8
`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) ............................................................................ 8
`Statutes
`35 U.S.C. § 103(a) ................................................................................................... 11
`35 U.S.C. § 112 .............................................................................................. 9, 10, 24
`35 U.S.C. §325(d) .................................................................................................... 12
`Other Authorities
`32 C.F.R. §42.107(a) .................................................................................................. 4
`37 C.F.R. §§ 42.104(B)(1), (2), (4), AND (5) ......................................................... 11
`
`iii
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`INTRODUCTION
`The Board should deny the request for inter partes review of U.S. Patent No.
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`IPR2017-01909
`U.S. Patent No. RE39,470
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`I.
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`RE39,470 because the Petition is based on prior art that fails to disclose each claim
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`element, alone or in combination.
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`For these reasons, as expressed more fully below, the Petitioner has failed to
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`demonstrate that there is a reasonable likelihood of prevailing with respect to at
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`least one of the challenged claims. Accordingly, the Board should deny the
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`Petition.
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`II. TECHNOLOGY BACKGROUND
`At the time of the invention, there were significant problems with digital
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`control systems for digital signage. A primary concern of the patent is the problem
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`of how to provide a flexible system in which external information mediators are
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`able to dynamically control the transmission of display instructions to a larger
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`public in different places situated at any chosen distance apart through displays.
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`Ex. 1001 at 2:40-45. For instance, the patent describes that, at the time of the
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`invention, “information media is not coordinated, but is in the form of individual
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`items which are controlled and updated separately, often manually.” Ex. 1001 at
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`1:34-36. The patent further explains that “[a]lthough the administration of
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`information is often processed manually with the aid of modern computer
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`technology, the available display time will nevertheless contain ‘dead time,’
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`IPR2017-01909
`U.S. Patent No. RE39,470
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`among other things due to back-logging caused by the manual infeed process.” Ex.
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`1001 at 1:48-53. The patent further explains that “present-day systems do not
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`enable information to be updated dynamically for display in real time. Neither do
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`present-day systems enable external mediators to update information for display in
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`a central control system, nor yet the administrator who makes the display of
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`information available, but it is the administrator who determines when, where and
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`how the information shall be displayed.” Ex. 1001 at 54-57.
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`Another primary concern of the ’470 Patent is “to enable a picture, image or
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`other information to be changed in practice as often as is desired, in real time,
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`therewith providing direct and immediate communication.” Ex. 1001 at 2:49-53.
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`The patent also explains that “it should be possible to update and change the
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`information quickly.” Ex. 1001 at 2:26-27. The patent further explains that “the
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`digital information system is able to insert a change at short notice or to operate a
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`completely new spot.” Ex. 1001 at 9:23-25. The patent explains that this means
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`that “[t]he system is thus highly flexible and enables quick changes to be made
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`with regard to what shall be exposed on the exposure means, where it shall be
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`exposed and when.” Ex. 1001 at 9:25-28.
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`The ’470 Patent was previously the subject of a prior Inter Partes Review
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`Petition, Broadsign International, LLC v. T-Rex Property AB, Case No. IPR2016-
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`01869 (filed Oct. 6, 2016). In that proceeding, the petitioner challenged claims 1-
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`2
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`3, 5-9, 12-14, 17-21, and 24-26. The petitioner in that proceeding challenged the
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`IPR2017-01909
`U.S. Patent No. RE39,470
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`claims asserting multiple references, primarily based upon the same Nakamura
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`reference involved in the present petition. This Board denied institution, finding
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`that there was not a reasonable likelihood that the petitioner in that proceeding
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`would prevail in establishing the unpatentability of at least one of the challenged
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`claims. IPR2016-01869, Paper No. 9 (hereinafter, “Order”).
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`Petitioner in this proceeding has challenged Claims 25 and 26 as
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`unpatentable. Claims 25 and 26 are both independent claims. Claim 25 reads:
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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;
`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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`U.S. Patent No. RE39,470
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`Ex. 1001 at 17:6-24. Claim 26 reads:
`26. A system for selectively displaying digital information at one or
`more of a plurality of locations, said system comprising:
`a computerized control center having a plurality of communication
`interfaces for receiving control instructions from at least one external
`information mediator, said computerized control center including
`means for generating and dynamically updating an exposure list from
`said control instructions, said exposure list specifying three or more of
`the following items:
`i) what information content is to be displayed;
`ii) at which of said plurality of locations said information
`content is to be displayed;
`iii) when said information content is to be displayed for each
`location at which content is to be displayed; and
`iv) how long said information content is to be displayed for
`each location at which content is to be displayed;
`a computerized device situated at each one of said plurality of
`locations, each computerized device being electronically coupled to
`said computerized control center; and
`a means for displaying images in accordance with said exposure list
`associated with each one of said computerized devices.
`Ex. 1001 at 17:26-18:26.
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`III. CLAIM CONSTRUCTION
`Because this preliminary response “is limited to setting forth the reasons
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`why no inter partes review should be instituted,” 32 C.F.R. §42.107(a), Patent
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`Owner does not at this time propose a construction for each term. Patent Owner
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`reserves the right to assert any construction of any term in any subsequent filing.
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`U.S. Patent No. RE39,470
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`A.
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`“External Information Mediator” (Independent Claims 25
`and 26)
`The ’470 Patent describes “mediators” using expansive language that makes
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`clear that a mediator is a supplier of information. For example, the ’470 Patent
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`states that the term should be given its widest meaning, stating, “The term
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`information mediator (24) used in the following shall be interpreted in its widest
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`meaning, i.e. as not only referring to advertising agencies but to all companies and
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`private persons who wish to utilize the system 10 for commercial reasons or for
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`the display of information that concerns a general public.” Ex. 1001 at 5:18-23.
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`See also Ex. 1001 at 8:27-31 (“external information mediators 24 that have access
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`to the exposure program are able to deliver complete picture series/films which can
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`be processed automatically and inserted into the exposure list”). Further, the
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`Board previously stated in its order denying institution of the Broadsign petition
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`that “[t]he ’470 Patent explains that it uses the term “external mediators” to refer to
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`advertising agencies and others who wish to display information for commercial
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`reasons or to the general public.” Order at 3.
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`However, Petitioner erroneously seeks a construction of the term that does
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`not recognize that the external mediators supply information for display. Pet at 30-
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`32. As such, Petitioner’s proposed construction of “any companies or private
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`persons who are external to the control center” is divorced from the teachings of
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`the specification that the mediators provide information for display. Furthermore,
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`Petitioner ignores that the relevant term is “external information mediators” and
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`provides a construction that provides no meaning for the “information” aspect of
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`the term. The Board should construe this term as “third-party suppliers of
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`information for display” consistent with the teachings of the ’470 Patent.
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`B.
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`“Permitting said Exposure List to be Dynamically Updated”
`(Independent Claim 25)
`The term “permitting said exposure list to be dynamically updated” should
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`be construed as “providing the functionality to update the exposure list when and
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`as needed.”
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`The specification of the ’470 Patent, in describing the problems in the prior
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`art, teaches that “it should be possible to update and change the information
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`quickly.” Ex. 1001 at 2:26-27. The ’470 Patent also explains that one object of the
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`invention is “to enable a picture, image or other information to be changed in
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`practice as often as is desired.” Ex. 1001 at 2:49-53.
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`The ’470 Patent further explains that “an external information mediator 24 is
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`able to put through information to the system 12 twenty-four hours a day,
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`whereupon the information can be included instantaneously in the exposure list.”
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`Ex. 1001 at 5:30-35. The ’470 Patent also explains that “the digital information
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`system is able to insert a change at short notice or to operate a completely new
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`spot. The system is thus highly flexible and enables quick changes to be made
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`IPR2017-01909
`U.S. Patent No. RE39,470
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`with regard to what shall be exposed on the exposure means, where it shall be
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`exposed and when.” Ex. 1001 at 9:23-28. The specification also provides an
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`alternative to the dynamic updating of the exposure list where “[p]ersonnel at the
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`working stations 32 are thus able to interrupt any queue lists in the server 1 to
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`update the exposure list,” as opposed to updating the exposure list in response to
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`user actions. Ex. 1001 at 8:10-34.
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`The Patent Owner’s expert, Mr. Jawadi, opines the evidence demonstrates
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`that the Patent Owner’s construction captures the plain and ordinary meaning of
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`the term “dynamically update” as one of ordinary skill in the art would understand
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`it. Ex. 2001 at ¶¶ 30-31. For example, the fourth edition of the Microsoft
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`Computer Dictionary (1999) defines “dynamic” as “describ[ing] some action or
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`event that occurs when and as needed.” Ex. 2003 at 158 (definition of “dynamic”).
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`Indeed, the Board, in prior IPR proceedings, adopted the Patent Owner’s
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`construction. Order at 16; see also id. at 15, 17. Specifically, the Board construed
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`the term “permitting said exposure list to be dynamically updated” as “allowing the
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`exposure list to be updated when and as needed.” Id. at 16.
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`Petitioner purports to apply the same construction but attempts to add a
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`negative limitation that it “is not interpreted to encompass automatically updating
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`the exposure list with the associated control instructions received from an
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`information mediator in all cases.” Pet. at 31. A negative limitation should not be
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`added through claim construction without clear language disclaiming such
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`coverage in either the specification or the prosecution history. See Omega Eng'g,
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`Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (refusing application of
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`a negative limitation absent an “express disclaimer or independent lexicography in
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`the written description that would justify adding that negative limitation”); see also
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`Linear Tech. Corp. v. ITC, 566 F.3d 1049, 1060 (Fed. Cir. 2009) (reversing claim
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`construction including negative limitations). Petitioner fails to identify any express
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`disclaimer or lexicographical definition.
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`Furthermore, Petitioner’s negative limitation ignores the express language of
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`the claim itself. The language of the claim itself makes clear that only the
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`capability of permitting dynamic updating is required under the claim. Claim 25
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`recites that the method comprises “permitting said exposure list to be dynamically
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`updated.” Ex. 1001 at 17:25. The claim is expressly directed to allowing the
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`capability of updating exposure lists dynamically but does not require that every
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`update be dynamic. The Board should therefore construe “permitting said
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`exposure list to be dynamically updated” as “providing the functionality to update
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`the exposure list when and as needed.”
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`IPR2017-01909
`U.S. Patent No. RE39,470
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`C.
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`“Means for Generating and Dynamically Updating an Exposure
`List From Said Control Instructions” (Independent Claim 26)
`The phrase “means for generating and dynamically updating an exposure list
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`from said control instructions” should be construed as a means-plus-function term
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`governed by pre-AIA 35 U.S.C. § 112, ¶ 6.
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`The function, using the language of Claim 26 itself consistent with the
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`construction of “dynamically updating” as discussed above, is “generating and
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`updating when and as needed an exposure list from control instructions.” Ex. 1001
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`at 18:4-6. The corresponding structure is a “central computer” (Ex. 1001, Fig. 1,
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`depicting central computer 28) and an associated exposure handler (Ex. 1001, Fig.
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`1, depicting exposure handler 3) configured to allocate information relating to
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`projector control instructions according to the following algorithm:
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`(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. Ex. 1001 at 7:25-35. The corresponding structure of this
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`algorithm tracks the very language of the specification of the ’470 Patent itself.
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`Petitioner’s proposed construction is incorrect for the same reasons as
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`explained above with respect to the “permitting said exposure list to be
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`U.S. Patent No. RE39,470
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`dynamically updated” limitation. Importantly, Petitioner seeks to include the same
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`improper negative limitation discussed above. For the same reasons, the Board
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`should not adopt Petitioner’s construction having the same negative limitation here
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`and should instead follow Patent Owner’s proposed construction, which follows
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`the teachings of the specification.
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`D.
`“Means for Displaying Images” (Independent Claim 26)
`The full phrase for this element is “a means for displaying images in
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`accordance with said exposure list associated with each one of said computerized
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`devices.” The term should be construed as a means-plus-function term governed
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`by pre-AIA § 112, ¶ 6.
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`The function is “displaying images based on exposure list.” Ex. 1001 at
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`Claim 26. The corresponding structure is “display devices, such as free standing
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`picture screens, wall-mounted screens, walls, and overhead screens or other means
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`suitable for reproducing or exposing picture information in the form of text, stills,
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`movable pictures, images, etc.” and equivalents thereof. Ex. 1001 at 4:32-42.
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`Patent Owner’s proposed corresponding structure tracks the language of the
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`specification of the ’470 patent itself. Petitioner’s corresponding structure ignores
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`the breadth of the display devices corresponding to this function.
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`Petitioner contends that “associated with each one of said computerized
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`devices” is part of the function. Pet. at 41. Patent Owner contends it merely is a
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`further, separate limitation on the means element. Petitioner seeks to improperly
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`import a structural limitation into the function of this term. The patent
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`contemplates that the computerized devices are structurally associated with, e.g.
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`connected to, the displays. See Ex. 1001 at 4:43-48, 6:1-41. Accordingly,
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`Petitioner’s attempt to read “associated with each one of said computerized
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`devices” into the function is improper and should be rejected.
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`IV. PETITIONER FAILS TO PROVIDE IDENTIFICATION OF HOW
`THE CHALLENGED CLAIMS ARE UNPATENTABLE - 37 C.F.R.
`§§ 42.104(B)(1), (2), (4), AND (5)
`A.
`Petitioner Fails to Demonstrate that Claims 25 and 26 of the ’470
`Patent are Obvious over Nakamura and Cho Pursuant to 35
`U.S.C. § 103(a).
`As explained in detail below, Nakamura and Cho each fail to disclose all
`
`claim limitations and therefore, do not anticipate or render obvious Claims 25 and
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`26 of the ’470 Patent.
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`1.
`
`Petitioner Fails to Demonstrate that Nakamura Discloses
`the Limitations “Permitting Said Exposure List to be
`Dynamically Updated” (Claim 25) or “Dynamically
`Updating an Exposure List from Said Control Instructions”
`(Claim 26).
`Petitioner claims that Nakamura discloses “a remotely located individual can
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`access a control center (master station) and directly, and instantaneously, make
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`complete reservations on the control center (master station) without any additional
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`processing.” Pet. at 46. Petitioner identifies the “reservation record” of Nakamura
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`for the claim term of the ’470 Patent of “permitting said exposure list to be
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`dynamically updated.” Pet. at 45. However, Nakamura does not teach updating
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`the reservation information stored in the master station when and as needed, nor
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`does Nakamura teach updating reservation information stored in the master station
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`based on “control instructions from at least one external information mediator” as
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`required by Claim 26. See Ex. 2001 at ¶¶ 29-37.
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`The Board previously considered arguments by a prior petitioner, Broadsign,
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`that Nakamura disclosed “dynamically updating” the exposure list. Order at 22-24.
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`Broadsign primarily relied upon paragraph ten of Nakamura. Nakamura does not
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`disclose dynamically updating; instead Nakamura modifies the reservation
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`information supplied at the terminal devices to adjust for overlapping reservations
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`and idle time before registering the display reservation status with the master
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`station, but it fails to disclose dynamically updating the exposure list. Order at 23.
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`As an initial matter, 35 U.S.C. §325(d) provides that a petition or request
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`may be rejected “because, the same or substantially the same prior art or arguments
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`previously were presented to the Office.” In the present case, Petitioner presents
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`the same prior art in Nakamura, and substantially the same arguments, as were
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`presented by the Broadsign petitioner. The Board should therefore reject the
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`present petition on this basis.
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`In any event, Petitioner fails to overcome the deficiencies of the Broadsign
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`IPR2017-01909
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`petition because the additional paragraphs of Nakamura relied upon by Petitioner
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`relate to receiving and storing new reservations; they do not teach updating stored
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`reservations via dynamic booking. Petitioner contends that “Nakamura discloses
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`that the exposure list (e.g., “display reservations” or “display reservation data”) can
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`be updated when and as needed.” Pet. at 45. Petitioner relies on paragraphs 22
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`and 24 of Nakamura for this disclosure. However, these paragraphs do not
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`disclose dynamic updating. Paragraph 22 explains:
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`. . . the operator makes the system to display the so-called available
`time information in the posting reservation time frame T for the
`specific slave stations during the operator’s scheduled posting period,
`and decides the posting reservation time frame T to be reserved as
`well as selecting the display duration t by referring to the idle time t2
`mixed in the posting reservation time frame T displayed. Then, the
`system 10 totals the display fees or costs c in accordance with the
`posting conditions selected for each priority status, compares it
`against the budget proposal for executing display contents, and asks
`the operator to make a firm display reservation. Once the
`financial confirmation (3) is completed, the system 10 displays the
`surrounding or adjacent reservation situation based on the content
`records which had been previously reserved, including the posting
`time before and after the reserved posting is to take place, for
`example, whether or not someone else in the same industry had made
`a reservation, and asks for reconfirmation of the display reservation
`under the surrounding conditions (4) followed by withdrawing the
`usage fees for the preparation software 4 from the deposit.
`Ex. 1003 at 0022 (emphasis added). However, this disclosure relates to the
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`creation and confirmation of a reservation. Ex. 2001 at ¶ 32; see also Ex. 1003 at
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`0010. Accordingly, this disclosure does not teach updating an exposure list via
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`dynamic booking. Id.
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`Likewise, Paragraph 24 relates to certain processing activity performed
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`automatically by the system, but fails to show any dynamic updating of an
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`exposure list as required by the claims:
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`The display reservation information m confirmed and reserved by the
`procedures described above are stored and saved on the operator’s
`storage medium n, and automatically stored in the system 10 when
`listed in the reservation record. All display reservation steps
`relative to the specific slave stations 1 are completed when the
`data is stored in the system. The system 10 puts together the display
`reservations made by the master station 2 at the terminal device 3 of
`the master station 2 during a set period and the display reservations
`from the outside, performs automatic or semiautomatic checking
`and editing, and transmits the data to each of the reserved specific
`slave stations 1 by batch processing. The specific slave stations 1
`receive the transmitted contents 8 from the master station 2 using the
`transceivers 7a, temporarily store them in the storage means 7, and
`sequentially execute display on the display devices 1a of the reserved
`display contents retrieved from the storage means 7 in accordance
`with the time set in the display reservation data within the transmitted
`contents. The specific slave stations 1 transmit to the master station 2
`via the transceivers 7a the execution records 9 listing all or a portion
`of the information including operators’ registration numbers,
`displaying slave station numbers, located regions, region types,
`posting time, display format, durations, number of repeated displays,
`exclusive use period, and the like, and the master station 2 transmits
`the transmitted contents 8 to the registered addresses 3a as specified at
`the time of receiving the reservations. This completes the
`processing procedure for the system 10.
`Ex. 1003 at 0024 (emphasis added). Rather than teaching dynamic updating, this
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`disclosure merely explains that the system can be set up to perform automatic or
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`semiautomatic checking and editing used in the process of creating the list of
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`U.S. Patent No. RE39,470
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`reservations, but not when and as needed after the reservation has been completed.
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`See Ex. 2001 ¶ 32; see also Ex. 1003 at 0024. The ’470 Patent distinguishes
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`between creating and updating the exposure list via dynamic booking. See 1001 at
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`17:6-25 (claiming “using said control instruction to generate an exposure list . . .
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`displaying images at one or more of said locations in accordance with said
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`exposure list; and permitting said exposure list to be dynamically updated.”). This
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`disclosure does not teach dynamically updating an exposure list because it does not
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`teach updating the exposure list when and as needed. Ex. 2001 ¶ 37.
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`Importantly, regarding paragraph 24, the Board previously observed that the
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`prior petitioner in Broadsign did not explain how “putting together reservations on
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`which it relies are said to be made during a set time period.” Order at 26
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`(emphasis original). The Board previously observed that Nakamura described
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`“data transmitted to slave stations by batch processing.” Order at 26 (emphasis
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`original). The Board stated that the Broadsign petitioner failed to “acknowledge or
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`explain Nakamura’s statements regarding data transmitted to slave stations by
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`batch processing.” Order at 26. The Board stated that these teachings undermined
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`the prior petitioner’s contention that “reservations are dynamically updated—when
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`and as needed.” Order at 26. Despite the clear statements of the prior order
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`requiring explanation of how putting together reservations during a set time period
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`15
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`and transmission by batch processing did not undermine Petitioner’s argument,
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`U.S. Patent No. RE39,470
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`Petitioner cites paragraph 24 of Nakamura, but fails to address the Board’s
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`concerns raised in the prior petition. Pet. at 46-48. Because Petitioner provides no
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`explanation, the Board should reject Petitioner’s arguments regarding Nakamura
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`for the same reasons as in the prior petition.
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`Petitioner further alleges that Nakamura teaches that content stored on the
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`master station can be processed after the reservation is made but prior to sending to
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`slave stations to comply with decency standards. Pet. at 47-48 (citing Ex. 1003 at
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`0018). However, paragraph 0018 does not disclose updating the exposure list via
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`dynamic booking. Ex. 2001 ¶ 34. Paragraph 0018 does not teach this either. Id.
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`Paragraph 0018 of Nakamura explains that
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`The reserved display contents are stored by the system 10, including
`the master station 2, and the system 10 executes the display after
`allocating the posting time and performing a prescribed editing so as
`not to compromise public order and standards of decency.
`Ex. 1007 at 0018 (emphasis added); see Pet. at 47-48. This disclosure explains that
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`the system can be set up by the administrator to perform certain edits, such as
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`conforming to decency standards, when allocating the posting time, but such edits
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`are not dynamic and do not occur in real time (when and as needed). Ex. 2001
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`¶ 34; see also Ex. 1003 at 0018.
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`16
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`Accordingly, Petitioner fails to demonstrate that Nakamura teaches dynamic
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`updating of an exposure list.
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`2.
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`The Petition Fails to Demonstrate That the Combination of
`Nakamura and Cho Cures the Deficiencies of Nakamura.
`Petitioner attempts to overcome the deficiencies of Nakamura through Cho.
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`However, the addition of Cho does not cure the foregoing deficiency of Nakamura
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`because, like Nakamura, Cho does not teach dynamic updating of an exposure list.
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`In Cho, “[a] playlist is created for each store on a periodic basis (e.g., daily).” Ex.
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`1004 at 9:59-60. Cho further explains:
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`Playlists are refreshed or replaced weekly such that different clip
`combinations can be used for different times on different days during
`particular weeks, or in any other planned time frame. A clip can
`contain various combinations of news, facts, commercial information,
`product information, etc. The digital storage in each receiving site
`includes a local clip library which has all of the clips required to make
`up the combinations for the playlists in each store. Each individual
`program is a clip and clip numbers are assigned at the local receiving
`site (store). Each significant combination of clips are considered a
`program, and programs are numbered and identifiable on a global
`basis.
`Ex. 1004 at 10:31-42 (emphasis added). Cho further emphasizes that it
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`contemplates slow and infrequent changes to the playlists and to the clips
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`comprising the playlists, stating, “information sent weekly from the uplink to the
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`receiving site could b