IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`John Christopher Harvey, et al.
`In re Patent of:
`7,856,649
`
` Attorney Docket No.: 39843-0031IP1
`USP:
`December 21, 2010
`Control No. IPR2017-00292
`Issue Date:
`Appl. Serial No.: 08/449,523
`
`Filing Date:
`May 24, 1995
`
`Title:
`SIGNAL PROCESSING APPARATUS AND METHODS
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 7,856,649 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`

`
`Attorney Docket No. 39843-0031IP1
`IPR of U.S. Patent No. 7,856,649
`
`
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`III. 
`
`IV. 
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8 ....................................... 1 
`A.  Real Party-In-Interest ....................................................................................... 1 
`B.  Related Matters ................................................................................................. 1 
`C.  Counsel ............................................................................................................... 1 
`D.  Service Information .......................................................................................... 2 
`FEE PAYMENT ...................................................................................................... 2 
`IPR REQUIREMENTS ........................................................................................... 2 
`A.  Grounds for Standing ....................................................................................... 2 
`B.  Challenge/Relief Requested ............................................................................ 2 
`INTRODUCTION ................................................................................................... 3 
`A.  The 6’649 Patent Overview ............................................................................ 3 
`LEVEL OF ORDINARY SKILL .......................................................................... 5 
`V. 
`VI.  CLAIM CONSTRUCTION ................................................................................... 6 
`A.  Construction of the Term “discrete signals” ................................................ 6 
`VII.  APPLICATION OF PRIOR ART TO CHALLENGED CLAIMS .................. 9 
`A.  Campbell ............................................................................................................ 9 
`B.  Ciciora .............................................................................................................. 18 
`C.  Takezawa ......................................................................................................... 19 
`D.  Heuer ................................................................................................................ 21 
`E.  GROUND-1A: Claims 9 and 10 Are Obvious Over Campbell-1A ........ 23 
`F.  GROUND-1B: Claims 9 and 10 Are Obvious Over Campbell-1B,
`Alone, or in View of Ciciora ........................................................................ 51 
`G.  GROUND-2: Claims 9 and 10 Are Obvious Over Takezawa in View of
`Heuer ................................................................................................................ 53 
`VIII.  CONCLUSION ...................................................................................................... 75 
`
`i
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`Attorney Docket No. 39843-0031IP1
`IPR of U.S. Patent No. 7,856,649
`
`
`EXHIBITS
`
`SAMSUNG-1001 USP 7,856,649 to Harvey, et al. (“6’649 Patent”)
`
`SAMSUNG-1002 Excerpts from the Prosecution History of the 6’649 Patent
`(“Prosecution History”)
`
`SAMSUNG-1003 Declaration of John Villasenor
`
`SAMSUNG-1004 Curriculum Vitae of John Villasenor
`
`SAMSUNG-1005 PCT Publication No. WO 81/02961 (“Campbell”)
`
`SAMSUNG-1006 USP 3,914,535 (“Takezawa”)
`
`SAMSUNG-1007 USP 4,318,130 (“Heuer”)
`
`SAMSUNG-1008 “Terminology in Digital Signal Processing,” Lawrence R.
`Rabiner et al., IEEE (1972)
`
`SAMSUNG-1009 “Frequency and Time in Communications,” Warren L. Smith,
`IEEE (1972)
`
`SAMSUNG-1010 USP 4,734,764 to Pocock et al.
`
`SAMSUNG-1011 “An Introduction to Teletext and Viewdata with Comments On
`Compatibility,” Walter Ciciora et al., IEEE (1979)
`
`SAMSUNG-1012 USP 4,075,429 to Takahata et al.
`
`SAMSUNG-1013 “An Evolutionary Approach to the Development of Two-Way
`Cable Technology Communication,” James B. Wright et al.,
`IEEE (1977)
`
`SAMSUNG-1014 USP 3,522,381 to Feder
`
`SAMSUNG-1015 Reserved
`
`ii
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`Attorney Docket No. 39843-0031IP1
`IPR of U.S. Patent No. 7,856,649
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`SAMSUNG-1016 “Scrambling and Cable-Ready TV Receivers,” Elliott S. Kohn,
`IEEE (1982)
`
`SAMSUNG-1017 USP 4,593,374 to Gurumurthy
`
`SAMSUNG-1018 USP 3,696,302 to Gossard
`
`SAMSUNG-1019 USP 3,555,431 to Wilcox
`
`SAMSUNG-1020 User’s Manual, MCS-48TM Family of Single Chip
`Microcomputers, Intel (1978)
`
`SAMSUNG-1021 USP 2,874,213 to Beers
`
`and
`Informational
`SAMSUNG-1022 “Still-Picture Broadcasting–A New
`Instructional Broadcasting System,” Heiichiro Ando et al., IEEE
`(1973)
`
`SAMSUNG-1023 USP 4,426,661 to Okada et al.
`
`SAMSUNG-1024 USP 3,818,352 to Moran
`
`SAMSUNG-1025 USP 4,187,469 to Tanaka
`
`SAMSUNG-1026 USP 4,009,330 to Cutler et al.
`
`SAMSUNG-1027 Reserved
`
`SAMSUNG-1028 “Microprocessor Based, Software Defined Television
`Controller,” Colin Clifford, IEEE (1978)
`
`SAMSUNG-1029 USP 4,368,541 to Evans
`
`SAMSUNG-1030 USP 4,162,513 to Beyers, Jr. et al.
`
`SAMSUNG-1031 Datasheet, 3870 Singe Chip Micro Family, MOSTEK (1982)
`
`iii
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`Attorney Docket No. 39843-0031IP1
`IPR of U.S. Patent No. 7,856,649
`
`Personalized Media
`from
`Service
`of
`SAMSUNG-1032 Certificate
`Communications, LLC v. Samsung Electronics America, Inc.
`and Samsung Electronics Co., Ltd., Case No. 2:15-cv-01754-
`JRG-RSP
`
`SAMSUNG-1033 USP 4,233,628 to Ciciora (“Ciciora”)
`
`SAMSUNG-1034 Reserved
`
`SAMSUNG-1035 Memorandum and Order, Personalized Media Communications,
`LLC v. Samsung Electronics America, Inc. et al., Civil Action
`No. 2:15-cv-01754-JRG-RSP (E.D. Texas Oct. 25, 2016)
`
`SAMSUNG-1036 Plaintiff’s Opening Claim Construction Brief, Personalized
`Media Communications, LLC v. Samsung Electronics America,
`Inc. et al., Civil Action No. 2:15-cv-01754-JRG-RSP (E.D.
`Texas July 16, 2016)
`
`SAMSUNG-1037 Plaintiff’s Disclosure of Asserted Claims and Infringement
`Contentions Exhibit D, Personalized Media Communications,
`LLC v. Samsung Electronics America, Inc. et al., Civil Action
`No. 2:15-cv-01754-JRG-RSP (E.D. Texas Feb. 8, 2016)
`
`SAMSUNG-1038 USP 4,536,791 (“Campbell-1B”)
`
`SAMSUNG-1039 USP Appl. No. 06/135,987 (“Campbell-1C”)
`
`
`
`iv
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`
`Attorney Docket No. 39843-0031IP1
`IPR of U.S. Patent No. 7,856,649
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(collectively “Petitioner”) petition for inter partes review (“IPR”) of claims 9 and
`
`10 (“the Challenged Claims”) of U.S. 7,856,649 (“6’649 Patent”). IPR should be
`
`instituted, as a reasonable likelihood exists that Petitioner will prevail in proving the
`
`Challenged Claims unpatentable.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8
`A. Real Party-In-Interest
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. are the
`
`real parties-in-interest.
`
`B. Related Matters
`Patent Owner filed a complaint alleging infringement of the 6’649 patent in a
`
`lawsuit against Petitioner in the Eastern District of Texas (Personalized Media
`
`Communications, LLC. v. Samsung Electronics America, Inc., et al., Civil Action
`
`No. 2:15-cv-01754). Petitioner is concurrently filing petitions for IPR of related
`
`patents in IPR control nos. IPR2017-00288, IPR2017-00289, IPR2017-00290,
`
`IPR2017-00291, IPR2017-00293, IPR2017-00294, and IPR2017-00295.
`
`C. Counsel
`Petitioner provides the following designation of counsel.
`Lead Counsel
`Backup Counsel
`W. Karl Renner, Reg. No. 41,265
`Thomas Rozylowicz, Reg. No. 50,620
`3200 RBC Plaza
`Andrew B. Patrick, Reg. No. 63,471
`60 South Sixth Street
`
`
`1
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`

`
`Attorney Docket No. 39843-0031IP1
`IPR of U.S. Patent No. 7,856,649
`
`
`Minneapolis, MN 55402
`Email: IPR39843-0031IP1@fr.com
`D.
`Service Information
`Please address all correspondence/service to the address listed above.
`
`Petitioner consents to electronic service by email at IPR39843-0031IP1@fr.com.
`
`II.
`FEE PAYMENT
`Petitioner authorizes charge of necessary fees to Deposit Acct. 06-1050.
`
`III.
`
`IPR REQUIREMENTS
`
`A. Grounds for Standing
`Petitioner certifies that the 6’649 Patent is available for IPR. More
`
`specifically, this Petition is being filed within one year of service of a complaint on
`
`November 18, 2015. See SAMSUNG-1032, p.1. As such, Petitioner is not barred or
`
`estopped from requesting review of the Challenged Claims.
`
`B. Challenge/Relief Requested
`Petitioner requests IPR of the Challenged Claims on the grounds in the
`
`following table, as explained below, and in the Declaration of John Villasenor,
`
`SAMSUNG-1003.
`
`
`
`
`
`2
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`

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`Attorney Docket No. 39843-0031IP1
`IPR of U.S. Patent No. 7,856,649
`
`
`Claims
`
`Claims 9, 10
`
`Rejection
`Ground-1A: § 103:Campbell-1A alone
`Ground-1B: § 103:Campbell-1B alone, or with
`Ciciora
`Claims 9, 10 Ground-2: § 103:Takezawa with Heuer
`
`Ground
`Campbell
`Grounds-
`1A&1B
`Takezawa
`Ground-2
`
`As shown below, each reference pre-dates the 6’649 Patent’s earliest
`
`proclaimed priority date of November 3, 1981, and therefore qualifies as prior art.
`
`Reference
`Campbell-1A
`Campbell-1B
`Ciciora
`Takezawa
`Heuer
`
`Date
`10/15/1981(published)
`3/31/1980(filed)
`11/11/1980(published)
`10/21/75(published)
`8/9/1978(filed)
`
`Section
`102(a)
`102(e)
`102(a)
`102(b)
`102(e)
`
`
`IV.
`
`INTRODUCTION
`A. The 6’649 Patent Overview
`The 6’649 Patent describes “an integrated system of programming
`
`communication” portrayed as leveraging “the fields of computer processing,
`
`computer communications, television, radio, and other electronic communications”
`
`to provide “mass media,” “combined medium” programming. SAMSUNG-1001,
`
`1:24-27, 6:30-35, 7:22-27. In particular, the 6’649 Patent purports to “unlock” the
`
`“great potential
`
`[that] exists
`
`for combining
`
`the capacity of broadcast
`
`communications media to convey ideas with the capacity of computers to process
`
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`and output user specific information.” Id., 1:57-60, 2:49-52. For instance, the 6’649
`
`Patent describes a system for “combining [] relevant user specific information and
`
`conventional broadcast [or cablecast] programming simultaneously[.]” Id., 6:64-66.
`
`In more specific terms, the 6’649 Patent describes the crux of the alleged “invention”
`
`as providing “capacity for transmitting [embedded] data and control instructions in
`
`the same information stream[.]” SAMSUNG-1001, 6:40-47.
`
`As one example of
`
`this
`
`concept, the 6’649 Patent describes
`
`the
`
`combination of
`
`a video
`
`broadcast graphically
`
`illustrating
`
`financial market performance (in
`
`black) with graphical data specific
`
`to the financial portfolio of an
`
`individual subscriber (in red). See
`
`SAMSUNG-1001, 12:25-15:14 and
`
`Figures 1B and 1C (right).
`
`The 6’649 Patent concedes
`
`that graphical and textual overlays
`
`were generally well known in the
`
`field of television programming at
`
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`the relevant time period. See SAMSUNG-1001, 10:65-11:6, 3:18-30. Still, the
`
`inventors of the 6’649 Patent purport to have improved upon traditional teletext
`
`systems by (1) incorporating user-specific data in on-demand textual/graphical
`
`overlays; and (2) embedding control data with varying formats in the television
`
`signal to inhibit unauthorized viewing of the textually/graphically enhanced
`
`programming. See id., 3:31-39, 2:40-42.
`
`Importantly, the Challenged Claims are not limited to the above-described
`
`concepts. Instead, these claims broadly recite a generic method that involves
`
`receiving “one or more instruct signals” and “a plurality of discrete signals,” and
`
`then processing the “discrete signals” according to a “signal processing scheme”
`
`implemented by the “instruct signals” to “demodulate or demultiplex” television
`
`programming. Because their broad scope is not commensurate with the purported
`
`improvements over the prior art, the Challenged Claims ensnare contemporaneous
`
`teletext systems, as described by Campbell, and time-division multiplex systems, as
`
`described by Takezawa.
`
`V. LEVEL OF ORDINARY SKILL
`A person of ordinary skill in the art (“APOSITA”) as of November 3, 1981
`
`would have had at least an undergraduate degree in computer science, electrical
`
`engineering, or a related field, and two years of experience in communications
`
`devices and systems. SAMSUNG-1003, ¶14. Alternatively, a person of ordinary
`
`5
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`skill with less than the amount of educational training noted above could have had a
`
`correspondingly greater amount of experience in the relevant technologies. See id.
`
`VI. CLAIM CONSTRUCTION
`The broadest reasonable interpretation (“BRI”) is applied herein.
`
`A. Construction of the Term “discrete signals”
`Claim 9 recites: “receiving a plurality of discrete signals identified
`
`according to a particular format of said variable formats, said plurality of discrete
`
`signals delivering at least a portion of television programming.” As discussed in
`
`detail below, this feature is clearly disclosed and/or rendered obvious by Campbell
`
`(see Grounds-1A&1B) and Takezawa (see Ground-2) under the BRI standard of
`
`claim construction. In fact, the teachings of Campbell are sufficient to meet the
`
`above-recited claim feature even under the narrowest possible interpretation. Still,
`
`the evidence most relevant to construction–e.g., expert testimony concerning plain
`
`meaning, recitations in the specification, prosecution record, and other third-party
`
`documents–plainly leads to a BRI of the claim term “discrete signals” that includes
`
`multiplexed analog television signals (e.g., frequency and/or time-division
`
`multiplexing), as described by Takezawa, in addition to digital data encoded and
`
`embedded in analog signals, as described by Campbell.
`
`Regarding the latter form of “discrete signals, Dr. Villasenor explains that it
`
`would have been well known to APOSITA that “digital data” is “discrete” by its
`
`6
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`Attorney Docket No. 39843-0031IP1
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`very nature. See SAMSUNG-1003, ¶41 (referencing SAMSUNG-1008, p. 322).
`
`Accordingly, this aspect of the term “discrete signals” is described in the
`
`Specification of the 6’649 Patent in terms of “discrete [signal] words” including
`
`“digital data bits.” See SAMSUNG-1003, ¶42 (referencing SAMSUNG-1001, 8:15-
`
`18, 8:28-30). Such portions of the supporting disclosure confirm that “discrete
`
`signals” are appropriately interpreted as at least including forms of encoded “digital
`
`data” embedded for transmission in analog signals, particularly under BRI. See id.
`
`Further still, the application of basic cannons of claim construction compels
`
`the same conclusion that “discrete signals” at least includes “digital data.” In this
`
`case, for example, dependent claim 10 of the 6’649 Patent narrows the scope of
`
`independent claim 9 by reciting the additional step of “assembling at least one data
`
`message . . . based on said received plurality of discrete signals.” (w/emphasis).
`
`Digital text data embedded in an analog television signal (e.g., teletext) certainly
`
`constitutes a “data message” assembled based on “discrete signals.” See
`
`SAMSUNG-1003, ¶¶43-45 (referencing SAMSUNG-1011, p. 235). Under the
`
`bedrock principle of claim differentiation, the scope of independent claim 9 is
`
`broader than dependent claim 10 with respect to the narrowed claim term “discrete
`
`signals.” Thus, the BRI of “discrete signals” in independent claim 9 should be read
`
`to include digital text data, at least because claim 10 reads on this concept.
`
`7
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`Attorney Docket No. 39843-0031IP1
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`While the term “discrete signals” implicates encoded and transmitted digital
`
`data for at least the reasons set forth above, the term is not so limited under the BRI
`
`standard of claim construction. Indeed, the Specification of the 6’649 Patent
`
`describes “discrete signals” not only in terms of digital signal words (as discussed
`
`above), but also in terms of discrete (digital or analog) television signal frequencies
`
`accessed by an automatic tuner. See SAMSUNG-1003, ¶¶46-47 (referencing
`
`SAUMSUNG-1001, 15:53-65, 156:23-40, 157-8-18, 161:19-26). Thus, the intrinsic
`
`record uses the term “discrete” to read on analog television signals transmitted on
`
`separate frequency slots or “channels”–i.e., frequency-division multiplexed signals.
`
`See id., ¶48 (referencing SAMSUNG-1009, p.590, SAMSUNG-1010, 1:15-25).
`
`Time-division multiplexed television transmissions, which were equally well known
`
`at the time, also include “discrete signals,” that are transmitted on the same
`
`frequency band, but in separate time slots. See id. (referencing SAMSUNG-1009,
`
`p.590, SAMSUNG-1012, 1:16-25, SAMSUNG-1013, p.54, SAMSUNG-1014,
`
`1:30-45).
`
`The claims themselves further buttress this interpretation of “discrete signals”
`
`as extending beyond the purely digital realm. See SAMSUNG-1003, ¶49-50. Indeed,
`
`the term “digital signals” and “analog television signal” are used throughout the
`
`claim language, which demonstrates that Patent Owner intended for the different
`
`term “discrete signals” to have different scope. See, e.g., claim 9 (“a detector . . . for
`
`8
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`detecting digital signals” (w/emphasis)), claim 10 (“processing a digital television
`
`signal” (w/emphasis)), claims 3 and 6 (“receiving digital data included in a standard
`
`analog television signal” (emphasized added)); see also Bd. of Regents of the Univ.
`
`of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008) (“Different
`
`claim terms are presumed to have different meanings.” (citation omitted)).
`
`The prosecution record even further compels this construction of “discrete
`
`signals” under BRI. See SAMSUNG-1003, ¶51. For example, Patent Owner
`
`effectively broadened this aspect of claim 9 (pending claim 16) during prosecution
`
`by changing the original claim term “signal words” to “discrete signals.” See
`
`SAMSUNG-1002, p.640, p.887. Notably, and as discussed above, the narrower term
`
`“signal words” is specifically addressed by the 6’649 Patent’s Specification in a way
`
`that at least implies digital bits/bytes of data, while the broader term “discrete
`
`signals” is referred to in the context of both digital and analog schemes.
`
`VII. APPLICATION OF PRIOR ART TO CHALLENGED CLAIMS
`As detailed below, this Petition shows a reasonable likelihood that the
`
`Petitioner will prevail with respect to the Challenged Claims of the 6’649 Patent.
`
`A. Campbell
`International Publication No. WO 81/02961 (“Campbell-1A”, SAMSUNG-
`
`1005) published on October 15, 1981 and issued as USP 4,536,791 (“Campbell-1B”,
`
`SAMSUNG-1038) on August 20, 1985. Thus, each of Campbell-1A and Campbell-
`
`9
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`

`
`1B separately qualifies as prior art under 35 U.S.C. § 102(b).
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`Attorney Docket No. 39843-0031IP1
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`Moreover, while Campbell-1B was issued in 1985, it is entitled to priority of
`
`March 31, 1980. Campbell-1B was filed June 4, 1984, with claims that are fully
`
`supported based on subject matter that appeared within Campbell-1C, filed March
`
`31, 1980. Campbell-1B is a continuation of U.S. Application No. 06/348,937 (“’937
`
`Application”), which was filed on November 27, 1981 as a CIP of Application No.
`
`06/135,987 (“Campbell-1C”, SAMSUNG-1039), filed on March 31, 1980. Co-
`
`pendency existed at each mentioned filing. The validity of the Campbell-1B priority
`
`claim to the Campbell-1C Application is illustrated through citations that appear
`
`below relative to claim 1 of Campbell-1B. Dynamic Drinkware, LLC v. Nat'l
`
`Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015).
`
`Campbell-1B Claim 1
`
`Campbell-1C Priority
`Application Support
`Claim 1; see also 1:24-2:2,
`3:10-14, 5:1-27, FIGS. 1, 2,
`6.
`
` 1. In a television communications system
`having a central station for transmitting a plurality
`of television signals at different frequency
`channels to a plurality of user stations remote from
`said central stations, each having a tuner for
`selecting one of said television signals, a method
`of utilizing said central station to limit access of
`said user stations to only certain ones of said
`television signals, comprising:
` transmitting each of said category codes from
`the central station to its respective user station to
`precondition each user station by authorization
`from the central station to selectively access said
`predetermined categories of television signals;
` generating a plurality of program codes at said Claim 1; see also FIG. 11,
`
`Claim 1; see also 6:18-26,
`7:20-25, 8:1-2, 8:30-37,
`16:20-28, 17:21-33, FIG.
`11.
`
`10
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`Attorney Docket No. 39843-0031IP1
`IPR of U.S. Patent No. 7,856,649
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`
`1:24-2:2, 3:10-14, 6:18-26,
`17:1-20.
`
`Claim 1; see also FIG. 11,
`6:18-26, 17:1-20.
`
`Claim 1; see also 3:22-25,
`21:1-22:18, FIG. 12.
`
`central station to limit user access to said
`predetermined categories of television signals, one
`of said program codes being generated for each
`television signal, each of said program codes
`including predetermined control data for enabling
`access to one of said television signals;
` transmitting one of said program codes with
`each of said television signals to each of said user
`stations being tuned to receive one of said
`television signals;
` comparing the control data of said program
`code to the enabling data of the category code
`provided by the central station to each user station;
`and
` enabling only each user station which has a
`category code with enabling data corresponding to
`the control data of said program code, whereby
`said enabled user station can receive and process
`any said tuned television signal within a
`predetermined category of said television signals
`corresponding to said category code.
`
`Campbell-1A qualifies as prior art under 35 U.S.C. § 102(a) as of October 15,
`
`Claim 1; see also 15:13-22,
`21:1-22:18, FIG. 12.
`
`1981. Campbell-1B qualifies as prior art under 35 U.S.C. § 102(e) as of March 31,
`
`1980 with respect to the same subject matter disclosed in Campbell-1C, the earliest
`
`priority document. String citations throughout this Petition indicate the overlapping
`
`disclosures of Campbell-1A/1B/1C (collectively “Campbell”). Campbell-1A and
`
`Campbell-1B are asserted in separate, contingent grounds of this Petition–Grounds-
`
`1A&1B–to account for any chance that Patent Owner may attempt to avoid full
`
`vetting of the Challenged Claims by swearing behind the prior art date of Campbell-
`
`11
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`Attorney Docket No. 39843-0031IP1
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`1A, which precedes the 6’649 Patent’s earliest claimed priority date by less than one
`
`month.
`
`Campbell-1A and Campbell-1B are cited on the face of the 6’649 Patent. Both
`
`versions of Campbell were discussed during prosecution of the 6’649 Patent. In fact,
`
`the Challenged Claims were repeatedly rejected over Campbell-1A and Campbell-
`
`1B until Patent Owner successfully argued that these documents did not qualify as
`
`prior art in view of the alleged 1981 priority date. See SAMSUNG-1002, pp.1060-
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`1062. Thus, Patent Owner was able to overcome the standing Campbell rejections
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`by arguing form over substance, while even acknowledging the substantive
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`applicability advanced by the Examiner. See id. (Applicants respectfully submit that,
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`notwithstanding the accuracy of the Examiner’s characterization . . . the Office
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`Action fails to state a prima facie case of obviousness.” (w/emphasis)). As set forth
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`above, however, Campbell-1A and Campbell-1B are each qualifying prior art
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`references applicable against the Challenged Claims.
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`Thus, while the patentability of the Challenged Claims has been considered
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`by the Office in view of Campbell, the teachings of this reference have never been
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`substantively distinguished by Patent Owner. Moreover, the positions presented in
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`this Petition enhance, and otherwise deviate from, those set forth by the Examiner
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`during prosecution. For at least these reasons, review of the Challenged Claims in
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`view of Campbell is appropriate and compelling.
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`12
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`

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`Attorney Docket No. 39843-0031IP1
`IPR of U.S. Patent No. 7,856,649
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`As to the substance, Campbell is directed to “an addressable cable television
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`control system,” within which a head end station is designed to enable “data
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`transmission in video format during the vertical interval of the video field or during
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`substantially the entire video field” of an analog television signal. See SAMSUNG-
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`1005, 1:7-3:26; SAMSUNG-1038, 1:15-2:50; SAMSUNG-1039, 1:2-3:8. Campbell
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`further describes an addressable converter designed to receive/extract/process the
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`embedded vertical-interval data. See SAMSUNG-1005, 3:28-4:35; SAMSUNG-
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`1038, 2:53-3:39; SAMSUNG-1039, 3:10-4:5. Campbell provides its addressable
`
`converter with this desirable functionality to eliminate the need for “special data
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`transmission equipment” imposing “substantial cost and complexity.” SAMSUNG-
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`1005, 3:16-26; SAMSUNG-1038, 2:37-50; SAMSUNG-1039, 2:20-28, 3:10-18,
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`9:19-20.
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`Campbell’s Figure 1 (below) illustrates an example cable television system
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`10 including an upstream head end station 11 (blue) providing cable television
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`programming (green) to a downstream subscriber station (red) featuring an
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`addressable converter 40 and a user TV 36. See SAMSUNG-1005, 6:10-35;
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`SAMSUNG-1038, 4:24-55, SAMSUNG-1039, 5:2-27. As shown, head end station
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`11 features a television program processor 16 that receives (1) television
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`programming data including video signals from one or more programming sources,
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`and (2) control data and text data formatted by a central data control system 12. See
`
`13
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`

`
`Attorney Docket No. 39843-0031IP1
`IPR of U.S. Patent No. 7,856,649
`
`id. Television program processor 16 incorporates the formatted data into the vertical
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`blanking intervals of the video signals, and produces the data-loaded video signals
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`(purple) to head end signal combiner 20. See id. Head end signal combiner 20
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`aggregates the data-loaded video signals with other television programming signals
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`and outputs the combined signals to remote subscribers. See id.
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`
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`Campbell’s Figure 6 (below) illustrates addressable converter 40 of Figure 1
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`in greater detail. As shown, converter 40 includes a central converter control logic
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`unit 104 that issues commands and instructions for coordinating and processing the
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`received data-loaded cable television signals (in green). See SAMSUNG-1005,
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`12:32-14:28; SAMSUNG-1038, 8:46-9:61; SAMSUNG-1039, 11:1-12:27. In one
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`aspect of its operations, control logic 104 issues logic commands 117 (blue) to a data
`
`14
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`

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`Attorney Docket No. 39843-0031IP1
`IPR of U.S. Patent No. 7,856,649
`
`extractor 114. See SAMSUNG-1005, 13:16-26; SAMSUNG-1038, 9:3-14;
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`SAMSUNG-1039, 11:21-27. Upon receipt of logic commands 117, data extractor
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`114 extracts control and text data (red) embedded in the vertical interval (“VI”
`
`herein) of the particular video signal being tuned by converter 40. Data extractor 114
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`provides extracted data 115 to control logic 104, which initiates further downstream
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`signal processing to render unscrambled video signals or full pages of teletext
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`(purple). See id.; SAMSUNG-1005, 22:16-24:11, 28:3-34:26; SAMSUNG-1038,
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`14:67-16-24, 18:50-22:55; SAMSUNG-1039, 8:1-9:25, 20:18-22:18.
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`As indicated by string citations, Campbell-1A/1B/1C have overlapping
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`disclosures with respect to the general system architecture. See SAMSUNG-1003,
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`
`
`15
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`

`
`Attorney Docket No. 39843-0031IP1
`IPR of U.S. Patent No. 7,856,649
`
`¶92. Further, all versions of Campbell teach that television programming delivered
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`to the receiver may have one of two formats–namely, a video format and a text
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`format. The “video format” is characterized by digital data (text and/or control
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`words) inserted only between the 10th and 17th lines of the VI. See SAMSUNG-1005,
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`8:18-10:26; SAMSUNG-1038, 5:52-7:15; SAMSUNG-1039, 8:1-9:25. The “text
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`format” is characterized by digital text data inserted substantially throughout the
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`entire video signal. See id. The of purpose offering one or more channels in the text
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`format, in addition to traditional channels in the video format, is to provide an
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`increased data transmission rate. See SAMSUNG-1003, ¶¶94-95.
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`The disclosure of Campbell-1C diverges from Campbell-1A/1B with respect
`
`to the different schemes implemented by converter control logic 104 to selectively
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`identify/extract/process the video and text formatted signals. See SAMSUNG-1003,
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`¶¶93-94. For example, while Campbell-1A/1B provide additional figures (e.g.,
`
`Figure 17) and written description directed to techniques for distinguishing between
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`video and text signals, and then operating on those differently formatted signals
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`according to different processing schemes, Campbell-1C is absent such disclosure.
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`See id. Campbell-1C merely discloses the processing of signals in the video format,
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`not the text format. See id.
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`As Dr. Villasenor explains in detail, however, the remedy to this deficiency
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`in the disclosure of Campbell-1B, insofar as it is supported by Campbell 1C
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`16
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`

`
`Attorney Docket No. 39843-0031IP1
`IPR of U.S. Patent No. 7,856,649
`
`(“Campbell-1B/1C”), would have been exceedingly recognizable and obvious to
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`APOSITA. See id., ¶¶94-97, 100. More specifically, Dr. Villasenor explains how
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`APOSITA would have been motivated by the teachings within Campbell-1B/1C
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`itself to modify the converter control logic 104 to include signal processing schemes
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`for identifying/extracting/processing channels in the text format. See id. For
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`example, APOSITA would have considered the increased transmission rate afforded
`
`by full text channels to be highly desirable, and therefore been led to this
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`modification as a result. See id. Moreover, the modification would have been
`
`considered routine from a technical perspective, and the result predictable, because
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`it involves no more than the application a well-known concept that is fundamental
`
`in the fields of computer science and electrical engineering–i.e., identifying the
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`format of a received signal, and then implementing an appropriate signal processing
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`scheme based on the identified format. See id. Further still, APOSITA would have
`
`recognized that the disclosure of Campbell-1B/1C provides the very vehicle for
`
`informing control logic 104 of the particular signal format (i.e., video or text). See
`
`id. That vehicle is embedded control data. See id. The concept of embedded control
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`data, “which allows the system operator to control subscription television services
`
`on a per channel . . . basis,” is discussed throughout Campbell-1B/1C. See
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`SAMSUNG-1038, 2:64-3:7, 5:25-35, 6:29-31, 13:1-24; see also SAMSUNG-1039,
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`3:19-27, 6:18-26, 8:33-35, 17:1-20. In particular, Campbell-1B/1C describes a
`
`17
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`

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`Attorney Docket No. 39843-0031IP1
`IPR of U.S. Patent No. 7,856,649
`
`channel control word 200 that is extracted by data extractor 114 and provided to
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`control logic 104. See SAMSUNG-1038, 14:67-15:15; see also SAMSUNG-1039,
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`20:18-31. Control word 200 “define[s] the codes required for access to each
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`television program being transmitted.” See SAMSUNG-1038, 14:67-15:15; see also
`
`SAMSUNG-1039, 17:1-3. Control word 200 includes a control identifier 201,
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`which, while shown in the drawings of Campbell-1C, is not discussed in the written
`
`description. See SAMSUNG-1003, ¶100 Still, embedded format identifiers like
`
`control identifier 201 were not only well known, but routinely employed by skilled
`
`artisans at the time. See id. (referencing SAMSUNG-1011, p.237). See KSR, 550
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`U.S. at 416-17; MPEP § 2143 I(A)-I(G).
`
`These and other teachings from Campbell-1A/1B/1C are applied to the
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`Challenged Claims in Grounds-1A&1B.
`
`B. Ciciora
`Ciciora (USP 4,233,628, SAMSUNG-1033) issued on November 11, 1980,
`
`prior to the earliest date of priority claimed by the 6’649 Patent (November 3, 1981).
`
`Therefore, Ciciora qualifies as prior art at least under 35 U.S.C. § 102(a). Ciciora is
`
`cited on the face