Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 9
`
` Filed: July 28, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK CORPORATION and DISH NETWORK L.L.C.,
`Petitioner,
`
`v.
`
`CUSTOMEDIA TECHNOLOGIES, L.L.C.,
`Patent Owner.
`____________
`
`Case IPR2017-00717
`Patent 9,053,494 B2
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, KALYAN K. DESHPANDE, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`DISH Network Corporation and DISH Network L.L.C. (collectively,
`“Petitioner”) filed a Petition requesting inter partes review of claims 1–7,
`16–19, 23–25, 27, and 28 of U.S. Patent No. 9,053,494 B2 (Ex. 1003,
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 9
`
` Filed: July 28, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK CORPORATION and DISH NETWORK L.L.C.,
`Petitioner,
`
`v.
`
`CUSTOMEDIA TECHNOLOGIES, L.L.C.,
`Patent Owner.
`____________
`
`Case IPR2017-00717
`Patent 9,053,494 B2
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, KALYAN K. DESHPANDE, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`DISH Network Corporation and DISH Network L.L.C. (collectively,
`“Petitioner”) filed a Petition requesting inter partes review of claims 1–7,
`16–19, 23–25, 27, and 28 of U.S. Patent No. 9,053,494 B2 (Ex. 1003,
`
`
`
`
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`“’494 patent”). Paper 1 (“Pet.”). Customedia Technologies, L.L.C. (“Patent
`Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).1
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`instituted unless “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” For the reasons given below, we determine that Petitioner has
`demonstrated a reasonable likelihood that it would prevail with respect to
`claims 1–7, 19, 23–25, 27, and 28, but not claims 16–18. Accordingly, we
`institute an inter partes review of claims 1–7, 19, 23–25, 27, and 28.
`I. BACKGROUND
`A. RELATED MATTERS
`Petitioner represents that Patent Owner has asserted the ’494 patent
`
`against Petitioner in an ongoing action before the U.S. District Court for the
`Eastern District of Texas (“District Court”), Case No. 2:16-cv-00129
`(“District Court Case”). Pet. 1; see Paper 4, 2. In addition, before the
`Office, the ’494 patent is the subject of IPR2017-00724 and CBM2017-
`00032, which were also filed by Petitioner. Paper 4, 2; see Pet. 1–2.
`B. THE ’494 PATENT
`1. Disclosure
`The ’494 patent discloses a digital data management system, one
`
`object of which is to “[r]ent/lease storage space in [a] user[’]s Data Box to
`personalize and target advertising to the individual preferences of the user.”
`
`1 The Preliminary Response contains numerous passages reproduced from
`other documents as what appears to be images, with a variety of fonts and
`spacing. E.g., Prelim. Resp. 6, 9–12, 24. The parties are cautioned that all
`filings must comply with 37 C.F.R. § 42.6(a)(2)(ii)–(iii) and strict attention
`should be given to the word count certification of 37 C.F.R. § 42.24(a), (d).
`2
`
`
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`Ex. 1003, 4:5–10; see id. at 3:30–4:12. The disclosed system has a local
`host Data Management System and Audio/Video Processor Recorder-player
`(“VPR/DMS”) unit, which allows for program reception, recording,
`processing, download, and playback, as well as a remote Account-
`Transaction Server (“ATS”), which stores and provides programming
`information for use with the VPR/DMS unit. Id. at 4:13–20, 21:42–44.
`
`The ’494 patent discusses advertising operations of the system in
`which broadcaster content provider 41 transmits advertising data to
`VPR/DMS 30, and the advertising data is recorded on built-in, non-movable
`storage device 14. Id. at 30:50–31:15. Figure 16 is reproduced below.
`
`
`Figure 16 “illustrates the communication pathways between advertisers 71, a
`broadcaster content provider 41, and . . . VPR/DMS 30.” Id. at 30:60–63.
`The ’494 patent explains that programmable “[a]dvertising ‘sections’
`or ‘spaces’ or ‘data boxes’” within VPR/DMS 30 “may be reserved, rented,
`leased or purchased from [an] end user, content providers, broadcasters,
`cable/satellite distributor, or other data communications companies
`administering the data products and services.” Id. at 31:44–64. For
`example, a cable distributor may provide a customer with a set-top box
`3
`
`
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`containing VPR/DMS 30 with built-in non-movable storage device 14,
`which has “certain areas that are reserved and controlled by the cable
`company” and that can be sold or leased to advertisers. Id. at 31:64–32:6.
`Advertisements that are customer specific, based on customer
`selection or activity history monitoring, can be delivered to the advertising
`sections of VPR/DMS 30 and selectively recorded onto the “designated
`advertising ‘sections.’” Id. at 32:7–15; see id. at 31:49–60. According to
`the ’494 patent, this provides benefits for both the advertiser and customer,
`including “maximizing content, establishing customer qualifications, and
`ultimately producing more cost efficient advertising.” Id. at 32:17–21.
`2. Priority
`The ’494 patent claims priority as a continuation of Application
`No. 10/848,238 (now U.S. Patent No. 8,719,090 (“’090 patent”)), which was
`filed on May 18, 2004 as a continuation of Application No. 09/383,994
`(“’994 application”), filed on August 26, 1999. Ex. 1003, [63]. The
`’994 application, in turn, claims priority as a continuation-in-part of
`Application No. 08/873,584 (“’584 application”), filed on June 12, 1997. Id.
`
`Petitioner asserts that the challenged claims of the ’494 patent are not
`entitled to priority to the ’584 application, because it does not provide
`sufficient support for the advertising-related elements of the challenged
`claims. Pet. 8–10; see 35 U.S.C. § 120. Petitioner argues that “[e]ach and
`every disclosure of ‘advertising’ and any variation thereof was added in [the
`’994 application].” Pet. 9. Thus, according to Petitioner, the challenged
`claims of the ’494 patent are entitled to a priority date no earlier than the
`filing date of the ’994 application, August 26, 1999. Id. at 10. In the
`Preliminary Response, Patent Owner does not dispute Petitioner’s assertion.
`
`
`
`4
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`On this record, we agree with Petitioner that the challenged claims of
`the ’494 patent are not entitled to priority to the ’584 application and,
`therefore, have an effective filing date no earlier than August 26, 1999. We
`note that the asserted prior art references would remain prior art even if the
`’494 patent were entitled to priority to the ’584 application. See Ex. 1009,
`[22], [45]; Ex. 1010, [45]; Pet. 3; 35 U.S.C. § 102(a), (b), (e).
`C. ILLUSTRATIVE CLAIM
`Of the challenged claims of the ’494 patent, claims 1 and 19 are
`independent. Claim 1, reproduced below, is illustrative:
`1. A system for providing targeted advertising to a multimedia
`content end user, comprising:
`at least one storage device, wherein at least one of said at least
`one storage device comprises at least one addressable and
`reserved storage space for storing digital advertising data;
`at least one processor; and
`software implemented by said at least one processor wherein
`said software comprises a program to reserve said at least
`one addressable storage space and wherein said software
`further comprises a program to select particular advertising
`data suitable for targeting to at least one end user based
`upon predefined criteria data, wherein particular
`advertising data is stored in said at least one addressable
`and reserved storage space and is accessible to the at least
`one end user.
`
`D. EVIDENCE OF RECORD
`The Petition relies upon the following asserted prior art references:
`U.S. Patent No. 5,774,170 (filed Dec. 13, 1994) (issued June 30, 1998)
`(Ex. 1009, “Hite”); and
`U.S. Patent No. 4,607,346 (issued Aug. 19, 1986) (Ex. 1010, “Hill”).
`Petitioner supports its contentions with the Declaration of Kevin Negus,
`Ph.D. (Ex. 1008). Patent Owner relies on the Declaration of Jay P. Kesan,
`Ph.D. (Ex. 2001).
`
`
`
`5
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`E. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability. Pet. 3.
`Challenged Claims
`Basis Reference(s)
`1–7, 16–19, 23–25, 27, and 28 § 1022 Hite
`4, 16, and 18
`§ 103 Hite
`1–7, 16–19, 23–25, 27, and 28 § 103 Hite and Hill
`
`II. ANALYSIS
`A. CLAIM CONSTRUCTION
`The Board interprets claim terms of an unexpired patent using the
`“broadest reasonable construction in light of the specification of the patent.”
`37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2144–46 (2016). We presume a claim term carries its “ordinary and
`customary meaning,” which is the meaning “the term would have to a person
`of ordinary skill in the art” at the time of the invention. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (citation omitted).
`A claim term will be interpreted more narrowly than its ordinary and
`customary meaning when: (1) the patentee “acts as [its] own lexicographer”
`or (2) the “patentee disavows the full scope of [the] term either in the
`specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc.,
`675 F.3d 1324, 1330 (Fed. Cir. 2012). To act as lexicographer, the patentee
`“must clearly set forth a definition” of the term “other than its plain and
`ordinary meaning.” Id. (citations and quotations omitted). Similarly, to
`disavow claim scope, “the specification or prosecution history [must] make
`clear that the invention does not include a particular feature.” GE Lighting
`
`
`2 The ’494 patent has an effective filing date before the effective date of the
`sections of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–
`29 (2011), that revised 35 U.S.C. §§ 102 and 103. See supra § I.B.2. Thus,
`we refer to the pre-AIA versions of §§ 102 and 103 throughout this decision.
`6
`
`
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (citation,
`quotation, and alterations omitted).
`1. “addressable and reserved storage space for storing [digital / the
`particular] advertising data” (Claims 1 and 19)
`Independent claim 1 of the ’494 patent recites an “addressable and
`reserved storage space for storing digital advertising data.” Ex. 1003,
`46:16–18. Independent claim 19 features a nearly identical limitation, the
`only difference being that claim 19 replaces “digital advertising data” with
`“the particular advertising data.” Id. at 46:16–18, 48:28–29.
`Petitioner proposes that the broadest reasonable construction of these
`limitations is an “individually controlled data storage section set apart just
`for storing advertising data.” Pet. 14. According to Petitioner, its proposed
`construction is consistent with and supported by the specification of the
`’494 patent as well as statements made by the applicant and the examiner
`during prosecution of the ’090 patent, of which the ’494 patent is a
`continuation. Id. at 14–16; see Ex. 1003, [63]; Ex. 1008 ¶¶ 144–146.
`Patent Owner, however, proposes that the broadest reasonable
`construction is an “individually controlled advertising data storage section
`for the particular advertising data set apart from other data storage sections
`that are on the same data storage and that store data other than the particular
`advertising data.” Prelim. Resp. 5–6 (emphasis omitted). According to
`Patent Owner, Petitioner’s proposal differs from Patent Owner’s proposal in
`that it does not (1) “describe what an[ ]individually controlled data storage
`section is set apart from” and (2) “specify that what the advertising section is
`set apart from is part of the same data storage.” Id. at 13.
`Patent Owner argues that Petitioner’s proposed construction is
`unreasonably broad in light of the specification of the ’494 patent and the
`
`
`
`7
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`prosecution history of the related ’090 patent. Id. at 5–17. Patent Owner
`contends that its proposed construction is the only reasonable interpretation
`“[i]n light of the description of the[] terms in the specification,” given that
`the specification describes, and depicts in Figure 16, partitioning the same
`data storage device into multiple sections that are reserved for advertising
`data and non-advertising data. Id. at 8–10, 14–15. Patent Owner also argues
`that statements the examiner made during prosecution of the ’090 patent
`support its proffered construction. Id. at 11–13, 15–17.
`After the Petition was filed, the District Court issued an order in the
`District Court Case, which adopted the following constructions for the
`instant limitations of claims 1 and 19 under the claim construction standard
`articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005): “data
`storage section set aside just for storing digital advertising data” (claim 1)
`and “data storage section set aside just for storing the particular advertising
`data” (claim 19). Ex. 1027, 19; see id. at 6, 9–18; Power Integrations, Inc.
`v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (explaining that the Board
`should consider and address a “district court’s previous interpretation” of a
`claim term). The District Court’s constructions are similar to the
`construction that Petitioner offers in this proceeding.
`For the reasons given below, we are persuaded that Petitioner’s
`proposed construction, with minor exceptions discussed in our analysis
`below that are reflected in the District Court’s constructions, is the broadest
`reasonable construction in light of the specification of the ’494 patent.
`Beginning with the claims, the plain language of claims 1 and 19
`supports and is consistent with Petitioner’s proposal that the claimed storage
`space is “set apart just for storing advertising data.” The limitations of
`
`
`
`8
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`claims 1 and 19 specifically require that the storage space is “reserved” and
`“for storing . . . advertising data.” Ex. 1003, 46:16–18, 48:28–29.
`The language of claims 1 and 19, however, diverges from Petitioner’s
`proposed construction in two respects—each of which is reflected in the
`District Court’s adopted constructions. First, Petitioner proposes that the
`storage space in each claim be “set apart just for storing advertising data.”
`Pet. 14 (emphasis added). Yet the plain language of claim 1 requires that the
`advertising data be “digital advertising data.” Ex. 1003, 46:16–18 (emphasis
`added). Claim 19 likewise specifies that the advertising data be “the
`particular advertising data.” Id. at 48:28–29 (emphasis added).
`Accordingly, our interpretations of claims 1 and 19 differ to incorporate
`these particular requirements and distinctions in the claim language.
`Second, Petitioner’s proposed construction, like Patent Owner’s
`proposal, features the language “individually controlled.” Pet. 14; Prelim.
`Resp. 5. The claims do not include this or corresponding language. Neither
`party provides adequate explanation or evidence, whether intrinsic or
`extrinsic to the ’494 patent, to support including “individually controlled” in
`the interpretation of the instant limitations. In contrast, independent
`claims 1, 81, and 97 of the related ’090 patent feature similar limitations that
`include “individually controlled” (e.g., “individually controlled and reserved
`advertising data storage section adapted specifically for storing the
`specifically identified advertising data”)—which counsels against including
`this language in the interpretation of the instant limitations. Ex. 1001,
`46:24–26 (emphasis added), 52:67–53:2, 55:10–14; Clare v. Chrysler Group
`LLC, 819 F.3d 1323, 1330 (Fed. Cir. 2016) (explaining that claim
`differentiation applies across related patents but “is not as strong” as within
`the same patent); Curtiss-Wright Flow Control v. Velan, Inc., 438 F.3d
`9
`
`
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`1374, 1381 (Fed. Cir. 2006) (“[C]laim differentiation takes on relevance in
`the context of a claim construction that would render additional, or different,
`language in another independent claim superfluous . . . .”).
`In addition, the claim language does not support Patent Owner’s
`proposed construction. The plain language of claims 1 and 19 does not
`require, or even imply, that the “addressable and reserved storage space” be
`set apart from other data storage sections that are on the same data storage
`and that store data other than the particular advertising data, as Patent
`Owner’s proposed construction requires. Rather, claims 1 and 19 are silent
`as to whether the recited “addressable and reserved storage space” is a
`separate device or is a portion of a storage device that stores other data.
`Adding Patent Owner’s proffered requirements that the recited
`“storage space” be set apart from other storage sections that are on the same
`data storage and that store non-advertising data would improperly import
`extraneous limitations and read limitations from the specification into the
`claims. “It is improper for a court to add extraneous limitations to a claim,
`that is, limitations added wholly apart from any need to interpret what the
`patentee meant by particular words or phrases in the claim.” Hoganas AB v.
`Dresser Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993) (citations and
`quotations omitted). Likewise, “[i]t is improper to read limitations from a
`preferred embodiment described in the specification . . . into the claims
`absent a clear indication in the intrinsic record that the patentee intended the
`claims to be so limited.” GE Lighting, 750 F.3d at 1309 (citation omitted).
`Although, as Patent Owner points out, Figure 16 depicts and the
`corresponding discussion of an embodiment in the specification discloses
`“advertising ‘sections’” as part of the same non-movable storage device 14,
`
`
`
`10
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`we see nothing in the specification that supports limiting the claimed
`invention to these particular features. See Ex. 1003, 31:44–32:15, Fig. 16.
`The written description, however, does provide additional support for
`Petitioner’s proposed construction, given that several passages support the
`“addressable and reserved storage space” being specifically designated and
`set aside for storing certain advertising data. The specification discusses
`“[p]rogrammable designation of advertising ‘sections’” and the “designated
`advertising ‘sections’” being “reserved, rented, leased or purchased.” Id.
`at 31:44–52, 31:60–32:15. The specification further discloses an example in
`which storage areas are “reserved and controlled by the cable company,” and
`“are available for commercial sales or leasing to others.” Id. at 31:64–32:6.
`In addition, the specification refers to delivering “customer specific”
`advertisements to, and recording them on, the advertising sections. Id.
`at 31:49–52, 32:7–15. The specification also discloses that a “user may
`designate a partition in his individual Data Box to hold only advertising
`information[,] which has been processed and customized according to his
`unique user suitability criteria.” Id. at 39:10–17.
`The specification also supports interpreting the recited “storage space”
`to mean a “storage section,” as both Petitioner and Patent Owner propose
`and as reflected in the District Court’s constructions. Pet. 14; Prelim.
`Resp. 17; Ex. 1027, 19. As Patent Owner points out, the specification
`repeatedly refers to the designated advertising sections as “‘sections’, data
`boxes’ or spaces.’” Ex. 1003, 31:45–46, 31:60–61; Prelim. Resp. 6.
`Moreover, we agree with Petitioner that the prosecution history of the
`related ’090 patent supports Petitioner’s proposed construction and disagree
`with Patent Owner that it supports Patent Owner’s narrower proposal.
`Pet. 14–16 (citing Ex. 1002, 302, 365–66, 432–33); Prelim. Resp. 11–13,
`11
`
`
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`15–17 (citing Ex. 1002, 365–66, 432–33). The cited portions of the
`’090 patent prosecution history, when read in context, support Petitioner’s
`proposal, as they address or relate to the patentee’s statements concerning
`the reserved storage section or space being just for storing advertising data.
`See Ex. 1002, 302, 365–66, 432–33. For example, in addressing a limitation
`similar to the “addressable and reserved storage space” of claims 1 and 19,
`the patentee represented that “to ‘reserve’ a memory space for advertising
`data would mean to a person skilled in the art that such memory space is
`kept for only advertising data and only for advertising data for which the
`specific storage space is ‘reserved,’” and that the limitation requires at least
`one storage section be “reserve[d]” “just for storing advertising data” or, in
`other words, “structurally set aside for advertising data.” Id. at 2, 302, 351,
`364–67 (emphases, other than first, added). The cited portions, however, do
`not support sufficiently Patent Owner’s proposed construction, because none
`of the cited statements of the patentee, or the examiner, address or represent
`that the claimed storage section or space is limited to a portion of a storage
`device set apart from other portions of the same device that store
`non-advertising data. See id. at 302, 365, 366, 432–33.
`Accordingly, on the present record, we determine that the broadest
`reasonable interpretation, in light of the ’494 patent specification, of
`claim 1’s limitation “addressable and reserved storage space for storing
`digital advertising data” is “data storage section set apart just for storing
`digital advertising data.” Moreover, the broadest reasonable interpretation
`of claim 19’s limitation “addressable and reserved storage space for storing
`the particular advertising data” is “data storage section set apart just for
`storing the particular advertising data.” We note that our constructions are
`nearly identical to those adopted in the District Court Case. Ex. 1027, 19
`12
`
`
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`(adopting constructions identical to those we adopt other than using the term
`“aside,” rather than “apart”).
`2. “predefined criteria data” (Claims 1, 3, and 19) and “suitability
`criteria data” (Claims 4, 5, 23, and 25)
`Challenged independent claims 1 and 19, as well as dependent
`claim 3, recite “predefined criteria data.” Ex. 1003, 46:25, 46:36–37, 48:25.
`Challenged dependent claims 4, 5, 23, and 25 recite “the suitability criteria
`data.” Id. at 46:41–44, 48:55, 48:61–62. Petitioner raises arguments
`regarding two aspects of the scope and meaning of these terms. Pet. 17–18.
`Patent Owner does not respond to Petitioner’s assertions.
`First, Petitioner argues that “the suitability criteria data” in dependent
`claims 4, 5, 23, and 25 “lacks antecedent basis other than to relate back to
`‘predefined criteria data’” in independent claims 1 and 19. Id. at 17.
`Therefore, according to Petitioner, “suitability criteria data” should be given
`the same interpretation as “predefined criteria data.” Id.; Ex. 1008 ¶ 155.
`Claims 4 and 5 each depend directly from independent claim 1,
`whereas claims 23 and 25 each depend directly from independent claim 19.
`Ex. 1003, 46:41–44, 48:47–55, 48:61–62. The only “criteria data” in
`independent claims 1 and 19 is “predefined criteria data.” Id. at 46:25,
`48:25. Accordingly, based on the record before us, we are persuaded that a
`person of ordinary skill in the art, upon reviewing the ’494 patent, would
`have understood “the suitability criteria data” recited in claims 4, 5, 23, and
`25 to refer to “predefined criteria data” in their respective independent
`claim. See id. at 46:25, 46:41–44, 48:25, 48:47–55, 48:61–62 (emphasis
`added); NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1306 (Fed.
`Circ. 2005), abrogated on other grounds by Zoltek Corp. v. United States,
`
`
`
`13
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`672 F.3d 1309, 1323 (Fed. Cir. 2012) (explaining that a claim term using the
`definite article “the” requires antecedent basis).
`Second, Petitioner argues the broadest reasonable interpretation of
`both “predefined criteria data” and “suitability criteria data” is “one or more
`of total number of customers, customer profile data, customer demographics,
`program schedules, product showcase schedules, available advertising
`formats, available advertising schedules, advertising rates, ad placement
`timing, or cost effectiveness.” Pet. 18. As support, Petitioner asserts that
`“[d]uring prosecution, the [Office] identified that the term ‘predefined
`criteria data’ replaced the ten ‘factors’ originally listed in claim 83 of the
`related ’090 [p]atent,” i.e., the factors in Petitioner’s proposed construction.
`Id. at 17 (citing Ex. 1001, 53:19–23; Ex. 1004, 207); see Ex. 1008 ¶¶ 118,
`153; Ex. 1001, 46:48–56 (claim 5), 53:15–23 (claim 83).
`The cited portion of the prosecution history of the ’494 patent does
`not adequately support Petitioner’s proffered construction. Petitioner cites
`to the statement of reasons for allowance in which the examiner explained
`that the ’494 patent claims differ only in obvious ways from the ’090 patent
`claims and would have been subject to an obviousness-type double patenting
`rejection but for the filing of a terminal disclaimer. Ex. 1004, 207. The
`examiner continues: “[f]or example, instant claim 110 is claim 83 in the
`[’]090 patent much simplified with . . . the ten ‘factors’ in claim 83 replaced
`with the genus ‘predefined criteria data.’” Id. We do not agree with
`Petitioner’s implication that this statement narrows or limits the meaning of
`“predefined” and “suitability criteria data” in the ’494 patent claims to the
`factors specifically enumerated in dependent claims of a different, though
`related, patent. Petitioner provides no other evidence to support its proposed
`
`
`
`14
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`construction. Thus, Petitioner has not shown that its proposed construction
`is the broadest reasonable construction of the claim terms.
`Having reviewed the ’494 patent and the record before us, we
`determine that, beyond addressing the issues raised by Petitioner above, we
`need not provide an express construction of the claim terms “predefined
`criteria data” and “suitability criteria data” for purposes of this decision.
`3. Other Claim Terms
`On this record, we determine that no other claim terms require an
`express construction to resolve the issues presented by the patentability
`challenges. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`(Fed. Cir. 2011) ((“[C]laim terms need only be construed ‘to the extent
`necessary to resolve the controversy.’”) (citation omitted)).
`B. ALLEGED ANTICIPATION BY HITE
`Petitioner argues, and Patent Owner disputes, that Hite anticipates
`claims 1–7, 16–19, 23–25, 27, and 28. Pet. 18–59; Prelim. Resp. 20–28.
`1. Principles of Law
`Anticipation under 35 U.S.C. § 102 requires that “each claim
`element,” and “the claimed arrangement or combination of those elements,”
`“be disclosed, either expressly or inherently, in a single prior art reference.”
`Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332–33 (Fed.
`Cir. 2010) (citation omitted). Inherent disclosure is established where the
`reference “must necessarily include” an “unstated limitation.” Id. (citation
`and emphasis omitted).
`
`2. Overview of Hite
`Hite discloses a system that delivers and displays television and radio
`commercials targeted to individual viewers. Ex. 1009, [57], 1:7–10, 5:28–
`37. The disclosed system is intended to provide “viewers with
`15
`
`
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`advertisements which are matched to [their] interests and needs” and
`“advertisers with less waste and greater cost effectiveness.” Id. at 3:20–35.
`In Hite’s system, “[e]ach commercial is analyzed as to its nature and
`focus” and a Commercial Identifier (“CID”) code “is appended.” Id.
`at 1:40–45. Commercials that can be preempted are imbedded with a CID
`code indicating “under what circumstances a more suitable commercial may
`be substituted.” Id. at 3:45–64. Additional codes, such as a context code
`and viewer reaction codes, can be “appended to the CID code to provide
`additional capabilities.” Id. at 4:19–24; see id. at 4:25–5:16. Likewise, a set
`of CID codes is assigned to a viewer, based on the viewer’s needs and
`wants. Id. at 1:7–10, 3:65–4:2, 8:18–22. The display site can store and
`process CID codes for multiple viewers so that when the viewer is identified,
`commercials appropriate to that viewer are presented. Id. at 8:39–44.
`Hite discloses that its system includes Ad Administration Facility
`(“AAF”) 100, which analyzes customers, commercials, and programs to
`construct CID codes. Id. at 8:64–9:1. The commercials and CID codes are
`conveyed to Ad Transmission Facility (“ATF”) 200, which combines them
`with audio/video programming and conveys the combined programming to
`Media Origination Facility (“MOF”) 300. Id. at 9:16–20, Fig. 1. Next, the
`package of programming, commercials, and CID codes is conveyed to
`display site 400. Id. at 9:32–38, 13:58–66, Fig. 1. Display site 400 includes
`commercial processor 438 and optional video storage device 456, from
`which “[c]ommercial [p]rocessor 438 can cause commercial signals to be
`stored or played back.” Id. at 14:12–13, 14:28–32, 14:42–46, Fig. 5.
`
`According to Hite, “[t]he storage devices used” in its system “can be
`any form which is economical at the time of construction.” Id. at 10:44–46,
`
`
`
`16
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`12:6–8. Examples “include magnetic, optical, and semiconductor
`implemented in tapes, disks, and chips.” Id. at 10:46–49, 12:8–11.
`
`In one embodiment of Hite’s system, “an individually addressable
`digital recording device (RD) with a unique address is installed at the
`display site in the television receiver, VCR, display device set-top[ ]box or
`modular decoder associated with the video provider.” Id. at 6:60–66. “CID
`codes chosen for a particular display site (consumer) are transmitted to and
`stored in” the RD at the display site. Id. at 6:66–7:1; see id. at 4:1–2, 5:40–
`48, 6:60–66, 7:34–37. Subsequently, commercials, each attached with
`“codes indicating the conditions and rules” required for its display, are
`“transmitted to the display site prior to the time of their intended use.” Id.
`at 7:1–11, 7:36–38. The CID codes and display rules are stored in an Ad
`Queue in the commercial processor. Id. at 7:12–14.
`Commercial processor 438 at the display site, which “is programmed
`to find and analyze the CID codes in each commercial,” compares the codes
`attached to the commercials with the previously stored CID codes for the
`consumer. Id. at 4:3–15, 7:7–10, 7:24, 7:38–42. The commercials with CID
`codes that match the stored CID codes are “selected” and “stored in the
`storage at the display site.” Id. at 7:11–12, 7:38–42. Then, during a break in
`a broadcast program, commercial processor 438 looks for CID codes in
`incoming commercials. Id. at 7:24–26. If there is a CID code, the processor
`applies the display rules for the stored commercials and substitutes the
`default, incoming commercials with stored commercials. Id. at 7:24–51.
`
`
`
`17
`
`
`
`IPR2017-00717
`Patent 9,053,494 B2
`
`3. Independent Claims 1 and 19
`a. “addressable and reserved storage space for storing digital”
`or “the particular advertising data” (Claims 1 and 19)
`Petitioner argues that Hite’s “individually addressable digital
`recording device (RD) with a unique address or Video Storage Device”
`constitutes the “addressable and reserved storage space for storing digital” or
`“the particular advertising data” recited in claims 1 and 19 of the
`’494 patent. Pet. 19–21, 51. According to Petitioner and Petitioner’s
`declarant, Dr. Kevin Negus, Hite meets the claim language, given that Hite
`“discloses that digitized commercials may be stored in the storage device
`that is the ‘individually addressable digital recording device (RD) with a
`unique address’ or ‘Video Storage Device,’” and “Hite discloses no other
`usage for such memory or storage device at the display site other than
`storing ‘CID codes’ and/or commercials with ‘CID codes.’” Id. at 20–21;
`see Ex. 1008 ¶¶ 417, 419.
`In response, Patent Owner contends that Hite’s RD, which stores CID
`codes, cannot meet the recited “addressable and reserved storage space,”
`because it does not store advertising data, i.e., multimedia data. Prelim.
`Resp. 22–23.3 Patent Owner also arg
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
