Amazon.com, Inc.v.Personalized Media Communications LLC

Patent Trial and Appeal Board

Mar 24, 2016

08483169 (P.T.A.B. Mar. 24, 2016)

Trials@uspto.gov Paper No. 55
571.272.7822 Filed: March 24, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

AMAZON.COM, INC. and AMAZON WEB SERVICES, LLC,
Petitioner,

v.

PERSONALIZED MEDIA COMMUNICATIONS, LLC,
Patent Owner.
_______________

Case IPR2014-01530
Patent 7,864,956 B1
_______________

Before KARL D. EASTHOM, TRENTON A. WARD, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

WARD, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318 and 37 C.F.R. § 42.73

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I. INTRODUCTION
We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6(c), and this Final Written Decision is issued pursuant to 35 U.S.C.
§ 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine
that Petitioner has shown by a preponderance of the evidence that claim 6 of
U.S. Patent No. 7,864,956 B1 (Ex. 1003, “the ’956 patent”) is unpatentable.
We also determine that Patent Owner has not met its burden on its Motion to
Amend regarding entry of proposed substitute claim 30, and thus, we deny
the Motion to Amend.
A. Procedural History
Amazon.Com, Inc. and Amazon Web Services, LLC (“Petitioner”)
filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of claim 6
of the ’956 patent. Personalized Media Communications, LLC (“Patent
Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). Pursuant
to 35 U.S.C. § 314(a), we instituted an inter partes review of claim 6 on two
grounds: (1) as unpatentable under 35 U.S.C. § 103 in view of Higgins1 and
Metcalfe2 and (2) as unpatentable under 35 U.S.C. § 103 in view Furukawa.3
See Paper 8 (“Dec. to Inst.”), 23.
After institution of trial, Patent Owner then filed a Patent Owner
Response (Paper 20, “PO Resp.”), to which Petitioner filed a Reply (Paper
30, “Pet. Reply”).

1 U.S. Patent No. 5,270,922 (Ex. 1007) (“Higgins”).
2 Metcalfe & Boggs, ETHERNET: DISTRIBUTED PACKET SWITCHING FOR
LOCAL COMPUTER NETWORKS (Ex. 1009) (“Metcalfe”).
3 U.S. Patent No. 4,439,784 (Ex. 1008) (“Furukawa”).
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In addition, Patent Owner also filed a Contingent Motion to Amend
(Paper 21), to which Petitioner filed an Opposition (Paper 31). Patent
Owner then filed a Reply to Petitioner’s Opposition to the Contingent
Motion. Paper 38.
Patent Owner filed observations on the cross-examination of
Petitioner’s declarant (Paper 45), to which Petitioner filed a response
(Paper 48). Petitioner filed observations and amended observations on the
cross-examination of Patent Owner’s declarant (Papers 46 and 50), to which
Patent Owner filed a response (Paper 49).
An oral argument was held on Dec. 8, 2015. A transcript of the oral
argument is included in the record. Paper 54 (“Tr.”).
B. Related Proceedings
Petitioner informs us that the ’956 patent is the subject of a lawsuit:
Personalized Media Commc’ns, LLC v. Amazon.com, Inc., No. 1:13-cv-
1608-RGA (D. Del. filed Sept. 23, 2013). Pet. 1. According to Petitioner,
the District Court’s judgment in the lawsuit has been appealed to the Court
of Appeals for the Federal Circuit as Appeal No. 15-2008. Paper 33, 1.
Petitioner also informs us that six patents related to the ’956 patent are the
subject of concurrently-instituted inter partes reviews. Pet. 1; Paper 33, 1;
see IPR2014-01527, IPR2014-01528, IPR2014-01531, IPR2014-01532,
IPR2014-01533, and IPR2014-01534.
C. The ’956 Patent
The ’956 patent is titled “Signal Processing Apparatus and Methods”
and generally relates to a unified system of programming communication.
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Ex. 1003, Abstr. This proceeding is limited to claim 6 of the ’956 patent.
Claim 6 is reproduced below:
6. A method of signal processing in a network to communicate
at least some of a recommendation or solution to a plurality of
subscribers, said method comprising the steps of:
transmitting a signal to at least one of a plurality of
stations;
controlling a transmitter station on the basis of information
communicated with said signal, said step of controlling said
transmitter station comprising the steps of:
selecting some generally applicable information in
respect of a problem or interest;
generating at least a portion of a module including
said selected generally applicable information; and
transmitting said module with at least a portion of
said signal;
controlling each of a plurality of receiver stations on the
basis of information communicated with said signal, said step of
controlling each of said plurality of receiver stations comprising
the steps of:
selecting some portion of said module;
communicating receiver specific information to an
output device; and
recommending in outputted video, audio, or print
subscriber specific action in respect to said problem or
interest; and
controlling at least one of said plurality of receiver stations
on the basis of information communicated with said signal, said
step of controlling said at least one receiver station comprising
the steps of:
inputting to a processor some data communicated
with at least one of said signal and said module;
causing said at least one receiver station to establish
communications with a remote station; and
communicating input to said remote station.

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Patent Owner describes claim 6 as directed to a method for
transmitting a signal including a module to a plurality of subscriber stations
which results in communicating a recommendation regarding a problem or
interest to a plurality of subscribers. PO Resp. 4–7.
Figure 7 of the ’956 patent, reproduced below, illustrates a subscriber
station:

As shown above in Figure 7, the ’956 patent discloses a subscriber station
having satellite receiver circuitry 251 and microcomputer 205, television
recorder/player 217, audio recorder/player 255, and computer memory unit
256. Ex. 1003, 202:14–32. The subscriber station further provides a TV
monitor apparatus 202, printer 221, speaker system 263, and one or more
other output systems 261. Id. at 202:45–48.
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As support for claim 6, Patent Owner cites Example #11 disclosed in
the specification of the ’956 patent. PO Resp. 4–7. The cited “Summary
Example #11” focuses on “farmers all over Europe mak[ing] plans regarding
which crops to plant for the 2027 growing season.” Ex. 1003, 274:58–59.
Each farmer has a subscriber station, and the subscriber station stores the
farm information for each farmer in a file, namely, MY_FARM.DAT on a
disk for each subscriber station. Id. at 274:62–275:2. The recorded data
includes the number and size of farmer’s parcels of property, the soil
conditions of the parcels, sunlight and shade information, history of crop
rotation, and the farmer’s farm equipment and financial resources. The
system in example #11 disclosed in the specification of the ’956 patent
enables farmers to receive optimal planting plans given variables refined by
the system and to respond with their own plans, causing data to be
aggregated at the computer of the European master network origination and
control station. Id. at 286:30–36.

II. DISCUSSION
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268, 1275–79 (Fed. Cir.
2015 (“Congress implicitly approved the broadest reasonable interpretation
standard in enacting the AIA,” and “the standard was properly adopted by
PTO regulation”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee,
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136 S. Ct. 890 (mem.) (2016). Under that standard, and absent any special
definitions, we give claim terms their ordinary and customary meaning, as
would be understood by one 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) (citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
banc)). The outcome in this case would not be altered under a broadest
reasonable construction standard or a Phillips claim construction standard.
1. “module”
Petitioner alleges that the broadest reasonable interpretation of the
term “module” includes “any unit of digital data regardless of the how the
data is formatted.” Pet. 17–18. Petitioner argues that the precise scope of
the term “module” is indefinite, but that it must include at least the example
of “modules” described in the specification of the ’956 patent, including
various types of digital data, such as street addresses, the cost of pork
bellies, and binary video images, without specifying how the data is to be
formatted. Pet. 17 (citing Ex. 1003, 189:1–19).
Patent Owner disagrees and argues the Board should construe the term
“module” to mean “a discrete unit of a larger computer program that is
executed and/or processed to perform a specific function.” PO Resp. 13. As
discussed below, we agree with Patent Owner that the specification of the
’956 patent discloses the “module’ as being “executed and/or processed to
perform a specific function,” but it would be contrary to the specification to
require all modules to be a “discrete unit of a larger computer program.”
Patent Owner argues that “module” is defined to mean a part of
program and that programs are composed of independently developed
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modules that are not combined until the program is linked. Id. (citing Ex.
2002, 2004). Contrary to Patent Owner’s arguments, however, claim 6 does
not recite a “program module,” but simply a “module.” As expressly
identified in the specification of the ’956 patent, there are many types of
“modules,” including a “program module” (see Ex. 1003, 186:10–21), an
“object module” (see Ex. 1003, 188:34–47), and a “data module” (see
Ex. 1003, 188:59–189:22). With respect to “data modules,” the ’956 patent
specification discloses that the “data module of set of Q” can store a variety
of data including, for example, “the street address of every one of said
supermarket chain’s markets in the local vicinity,” “particular cost-of-a-
trimmed-pork-belly-unit,” and “binary video image information of several
telephone numbers.” Ex. 1003, 189:4–9.
As Patent Owner cited in its Response, the Federal Circuit has
instructed that “claims should always be read in light of the specification and
teachings in the underlying patent.” PO Resp. 12 (emphasis omitted)
(quoting Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir.
2015)). Furthermore, the specification “is the single best guide to the
meaning of a disputed term.” Translogic Tech., 504 F.3d at 1257 (quoting
Phillips, 415 F.3d at 1315). Accordingly, we must construe the term
“module” for claim 6 of the ’956 patent in light of the disclosure in the ’956
patent specification regarding “modules.” In accordance with the ’956
patent specification, there are various types of modules, such as program
modules, object modules, and data modules; thus, the general term “module”
cannot be construed to be limited to one of these types of modules.
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Patent Owner acknowledges that the ’956 patent specification
discloses a “data module” as a type of “module.” PO Resp. 15 (citing
Ex. 1003, 248:58–249:30). Patent Owner fails, however, to persuasively
explain how the disclosed “data module” would meet its proposed definition
of a “module” being “a discrete unit of a larger computer program . . . .”
For example, it is unclear how a “data module” containing the “particular
cost-of-a-trimmed-pork-belly-unit” (Ex. 1003, 189:4–9) constitutes a
discrete unit of larger computer program. Patent Owner fails to cite any
disclosure in the specification of the ’956 patent that restricts a “module” to
be “a discrete unit of a larger computer program.”
Although the specification of the ’956 patent does not limit modules
to be a discrete unit of a larger computer program, the specification does
disclose that each type of module, including program modules, object
modules, and data modules, is executed by a computer to perform a specific
function. See Ex. 1003, 186:10–17, 188:35–37, 188:59–61. For example,
with respect to one embodiment of the data module, the ’956 patent
specification discloses that “[e]xecuting the information of said intermediate
generation set causes computer, 73, also to generate a particular associated
data module.” Id. at 188:59–61. Similarly, with respect to one embodiment
of the object module, the ’956 patent specification discloses that “computer,
73, compiles the information of said instance and places the resulting so-
called ‘object module’ at particular memory.” Id. at 188:35–37. Likewise,
with respect to one embodiment of the program module, the ’956 patent
specification discloses that computer 73 compiles “formula-and-item-of-
this-transmission information into a machine language program module; and
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. . . link[s] said module to other program modules.” Id. at 186:10–17.
Accordingly, we are persuaded to modify our initial construction of
“module” in the Decision on Institution as “a discrete unit of digital data”
(Dec. to Inst. 8) to incorporate being executed by a computer to perform a
specific function. Therefore, we construe the term “module,” in view of the
specification of the ’956 patent, as “a discrete unit of digital data that is
executed and/or processed to perform a specific function.” We note that a
discrete unit of digital data can be a set of commands or instructions that can
be executed and/or processed to perform a specific function.
2. “recommending in outputted video, audio, or print
subscriber specific action in respect to said problem or
interest”
Claim 6 recites “recommending in outputted video, audio, or print
subscriber specific action in respect to said problem or interest.” Petitioner
argues that the “recommending” limitation not be assigned patentable weight
as printed matter. Pet. 6 (citing In re Huai-Hung Kao, 639 F.3d 1057 (Fed.
Cir. 2011) and MPEP § 2111.05). In Kao, the Federal Circuit determined
that the printed matter doctrine applied because there was “no functional
relationship” between the disputed limitations (Kao, 630 F.3d 1073), but
here the “recommending” step in claim 6 requires outputting the “subscriber
specific action” in “video, audio, or print.” Therefore, we are not persuaded
by Petitioner that the printed matter doctrine is applicable to the
“recommending” step in claim 6. Patent Owner argues, regarding this
“recommending” step, the term “recommend” should be construed to mean
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“to suggest a choice or a course of action.” PO Resp. 19.4 In support of its
proposal, Patent Owner cites two dictionary definitions of the term
“recommend.” PO Resp. 20 (citing Exs. 2006, 2007). The first definition,
from Cambridge Dictionaries, defines “recommend” as “to suggest that
someone or something would be good or suitable for a particular job or
purpose, or to suggest that a particular action should be done.” Ex. 2006, 1.
The second definition, from the American College Dictionary, defines
“recommend” as “to advise a person, etc. to do something.” Ex. 2007, 3.
The specification of the ’956 patent uses the term “recommended” to
describe a proposed planting plan for minimum cost and maximum revenue:
When accessed, the instructions of said module cause a
microcomputer, 205, to analyze any given crop planting plan
and generate information of a recommended planting plan and
growing method that minimizes the expense of insect and other
crop pest damage given maximum revenue.
Ex. 1003, 275:11–16. We determine the dictionary definitions of
“recommend” comport with the use of that term in the specification ’956
patent and with the ordinary and customary meaning, as would be
understood by one of ordinary skill in the art at the time of the invention.
See In re Translogic Tech, 504 F.3d at 1257. Therefore, we are persuaded
by Patent Owner’s proposed definition. Accordingly, we construe the claim
6 limitation of “recommending in outputted video, audio, or print subscriber
specific action in respect to said problem or interest” to mean “suggesting a

4 We note that claim 6 does not include the term “recommend” but recites
“recommending.”
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choice or a course of action in outputted video, audio, or print subscriber
specific action in respect to said problem or interest.”

B. Principles of Law
To prevail in its challenges to the patentability of the claims, a
petitioner must establish facts supporting its challenges by a preponderance
of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
unpatentable under 35 U.S.C. § 103(a) if the differences between the subject
matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) objective evidence of nonobviousness, i.e., secondary
considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
We analyze the instituted grounds of unpatentability in accordance
with the above-stated principles.

C. Level of Ordinary Skill in the Art
According to Petitioner’s declarant, Dr. Charles J. Neuhauser, a
person of ordinary skill in the art relevant to the ’956 patent would have had
“a Bachelor of Science in Electrical Engineering or a closely related field”
and would have between three and five years of experience in
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“implementation of communications systems and controlling these systems
(or similar types of systems) through the use of computer technology.”
Ex. 1001 ¶ 33. Patent Owner’s declarant, Dr. Samuel H. Russ (“Dr. Russ”)
stated that, a person of ordinary skill in the art relevant to the ’956 patent
would have had a bachelor’s degree in digital electronics, electrical
engineering, computer engineering, computer science, and two to five years
of post-degree experience in a similar field. Ex. 2018 ¶ 27. Thus, the
parties’ assessments of the level of ordinary skill in the art are roughly
equivalent.
Based on our review of the ’956 patent, the types of problems and
solutions described in the ’956 patent and cited prior art, and the testimony
of Petitioner’s declarant and Patent Owner’s declarant, we adopt Patent
Owner’s definition of a person of ordinary skill in the art at the time of the
claimed invention. We note that the applied prior art also reflects the
appropriate level of skill at the time of the claimed invention. See Okajima
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).

D. Asserted Obviousness of Claim 6 in View of Higgins and Metcalfe
Petitioner contends claim 6 of the ’956 patent is unpatentable under
35 U.S.C. § 103 in view of Higgins and Metcalfe. Pet. 21–40; Pet. Reply 8–
18. Patent Owner disputes Petitioner’s position, arguing that the cited
references fail to disclose all the elements required by the challenged claims.
PO Resp. 23–45. We have reviewed the Petition, the Patent Owner’s
Response, and Petitioner’s Reply, as well as the relevant evidence discussed
in those papers and other record papers. We determine the record supports
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Petitioner’s contentions and adopt Petitioner’s contentions discussed below
as our own. For reasons that follow, we determine that Petitioner has shown
by a preponderance of the evidence that claim 6 of the ’956 patent would
have been obvious in view of Higgins and Metcalfe.
1. Overview of Higgins
Higgins is titled “System for Distributing Processing and Displaying
Financial Information” and describes a data processing and communication
system that distributes and displays financial market ticker, quotation, news
and ancillary information via a plurality of stored program controlled work
stations. Ex. 1007, Abstr. Figure 1B of Higgins illustrates one embodiment
of the communication system, and is reproduced below:

As shown above in Figure 1B, Higgins discloses a networked
computer system that provides displays of financial market information on a
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work station, such as work station 110i,j,k connected to branch computer 90jk
via cable 103. Id. at 2:27–41. Higgins discloses that ticker plant 35 receives
information from the New York Stock Exchange and distributes this
information to area computers 50 and branch computers 90. Id. at 2:44–61,
Fig. 1A. The information from ticker plant 35 can include stock symbol
143, volume of shares 144, and trade price 145. Id. at 4:45–53. Higgins
further discloses that work station 110i,j,k can use the stock information to
generate a ticker display. Id. at 4:45–53. Figure 2 of Higgins illustrates one
embodiment of the ticker display, and is reproduced below:

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As shown above in Figure 2, Higgins discloses a multi-window presentation
in display 107 of work station 110i,j,k. Id. at 2:27–41. The system disclosed
in Higgins enables security price limit alerts, which are user programmable
and can be activated by the contents of the work station data base, and can
be used by brokers and investors as buy or sell conditions. Id. at Abstr.,
5:11–15. Figure 2 of Higgins above illustrates price limit alert 151.
Furthermore, Higgins discloses one embodiment where a master database 12
stores the “name, account number, telephone number and all other desired
information for all customers . . . for which the user’s station has indicated
an out-of-limit message.” Id. at 9:7–14. For each price limit alert, the user
may contact each such owner to determine if any action is desired “or to take
such automatic action as may be appropriate.” Id. at 9:14–17.
2. Overview of Metcalfe
Metcalfe is titled “Ethernet: Distributed Packet Switching for Local
Computer Networks” and provides a general discussion of the characteristics
of an Ethernet broadcast communication system, including its design
principles, topology, control, and addressing principles. Ex. 1009, 395–397.
Metcalfe describes the author’s implementation of an Ethernet network of
100 nodes along a kilometer-long coaxial cable. Id. at 395. Figure 2 of
Metcalfe illustrates the disclosed Ethernet packet, and is reproduced below:
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As shown above in Figure 2, Metcalfe discloses an Ethernet packet with an 8
bit destination address field, an 8 bit source address field, a 4,000 bit data
field, and a 16 bit checksum field. Id. at 399–400.
3. Analysis
Petitioner argues that claim 6 would have been obvious over Higgins
and Metcalfe. Pet. 21–40. Petitioner argues that Higgins teaches the
claimed “transmitting a signal to at least one of a plurality of stations” by
transmitting a satellite or television signal that carries stock trade execution
information from the ticker plant to the area and branch computers. Id. at 26
(citing Ex. 1007, 2:58–3:3). Furthermore, Petitioner argues that the claimed
“controlling a transmitter station on the basis of information communicated
with said signal” is taught by Higgins’s disclosure of the branch computer
being controlled on the basis of the stock trade execution information by
distributing that information to the work stations connected to the branch
computer. Id. at 26–27 (citing Ex. 1007, 8:38–43; Ex. 1001 ¶ 87).
Additionally, Petitioner argues that the claimed “generating at least a portion
of a module including said selected generally applicable information” is
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taught by the data structure in Higgins and is used to communicate stock
trade information from a branch computer to a work station. Pet. 28.
Petitioner concedes that Higgins does not specify a particular data
structure protocol, but argues that any data structure that the Higgins
protocol requires would be a “module.” Pet. 28 (citing Ex. 1001 ¶¶ 93–94).
Furthermore, Petitioner argues that even if Higgins does not inherently
require a “module,” it would have been obvious for one of ordinary skill in
the art to implement the communication link in Higgins as an Ethernet
connection, as disclosed in Metcalfe. Pet. 28–29 (citing Ex. 1009, Abstr.;
Ex. 1001 ¶¶ 75–78, 89, 95–96). More particularly, Petitioner argues that a
person of ordinary skill in the art would have used Ethernet to connect the
branch computers and work stations in Higgins because “Ethernet was
known to be simple, flexible, widely available, and relatively inexpensive.”
Id. at 29 (citing Ex. 1001 ¶77). We determine the record supports
Petitioner’s contentions and adopt them as our own.
Patent Owner argues that Petitioner’s challenge fails for multiple
reasons. Patent Owner argues that Higgins in view of Metcalfe fails to teach
“controlling a transmitter station on the basis of information communicated
with said signal,” as recited in claim 6. PO Resp. 26. Specifically, Patent
Owner argues that Higgins fails to teach that the signal from the originating
station (Higgins’s ticker plant) controls an intermediate transmission station
(Higgins’s branch computer 90) to create a module because reformatting the
raw stock data would be done by software programmed into the branch
computer and not the raw stock data itself. PO Resp. 26–27.
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We are not persuaded by Patent Owner’s argument. As identified by
Petitioner, Patent Owner’s argument falsely assumes that control by the
software and control by the signal (or module) are mutually exclusive. Pet.
Reply 9 (citing Ex. 1016, 69:22–25 (noting that Patent Owner’s Declarant
Dr. Russ agrees that a computer can be simultaneously controlled by
multiple sources (i.e., a Windows operating system and a keyboard))).
Furthermore, we determine that Patent Owner’s arguments are not
commensurate with the scope of claim 6, as the claim does not prohibit
control of a transmitter station by multiple sources, but merely requires
“controlling a transmitter station on the basis of information communicated
with said signal.” We determine that Higgins’s disclosure of the branch
computer being controlled on the basis of the stock trade information by
distributing that information to the work stations connected to the branch
computer teaches or suggests the claim 6 recitation of “controlling a
transmitter station on the basis of information communicated with said
signal.” See Ex. 1007, 8:38–43; Ex. 1001 ¶ 87.
Second, Patent Owner argues that Higgins in view of Metcalfe fails to
teach or suggest the claim 6 recitation of “controlling each of a plurality of
receiver stations on the basis of information communicated with said
signal,” including “recommending in outputted video, audio, or print
subscriber specific action in respect to said problem or interest.” PO
Resp. 28. With respect to the “recommending” step of claim 6, Petitioner
argues that this is taught or suggested by Higgins disclosure of a workstation
outputting price limit alerts, which constitute a recommendation to a broker
to take action on the stock that triggered the alert and relates to a specific
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stock selected by the broker. Pet. 32–33 (citing Ex. 1007, 1:51–54, 5:11–15,
5:41–43, 9:3–17; Ex. 1001 ¶ 108). Furthermore, Petitioner argues that the
price limit alerts are “in outputted video” because they are displayed on a
work station’s CRT. Pet. 33 (citing Ex. 1007, 2:15–18, 5:41–43). Patent
Owner counters that the disclosure in Higgins is deficient because its price
limits are not recommendations to buy, sell, or hold stock but merely
provide information from which a recommendation can be inferred. PO
Resp. 30–31.
As discussed above, we construe “recommending in outputted video,
audio, or print subscriber specific action in respect to said problem or
interest” to mean “suggesting a choice or a course of action in outputted
video, audio, or print subscriber specific action in respect to said problem or
interest.” Therefore, as provided by Patent Owner’s own proposed
construction, this step does not require an explicit statement of a specific
action, but rather a suggestion of a choice of a course of action. PO Resp. 19
(“‘recommend’ means to ‘to suggest a choice or course of action’”). We
determine that Higgins’s disclosure of a workstation outputting price limit
alerts suggests a choice or course of action, because it suggests a broker take
action on the stock that triggered the alert and relates to a specific stock
selected by the broker to be the subject of the alert. See Ex. 1007, 1:51–54,
5:11–15, 5:41–43, 9:3–17. Dr. Neuhauser testified that the price limit alert
disclosed in Higgins suggests several specific actions that a broker could
take in response to a price limit alert, including buying or selling the stock or
contacting customers who own the stock. Ex. 1001 ¶ 108 (citing Ex. 1007,
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5:11–15, 9:3–17). We determine that the disclosures in Higgins cited by
Petitioner teach or suggest the recommending step of claim 6.
Third, Patent Owner argues that Higgins in view of Metcalfe fails to
teach the claim 6 step of “generating at least a portion of a module including
said selected generally applicable information.” PO Resp. 33. Specifically,
Patent Owner argues that the proposed combination fails to teach generating
a module that is a “discrete unit of a larger computer program that is
executed and/or processed to perform a specific function,” in accordance
with Patent Owner’s proposed construction of “module.” Id. As discussed
above, we do not adopt Patent Owner’s construction of “module” but
construe “module” as “a discrete unit of digital data that is executed and/or
processed to perform a specific function.” Petitioner proposes that the
generation of an Ethernet packet according to Metcalfe would result in a
“module including said selected generally applicable information” to
communicate the trade information disclosed in Higgins from a branch
computer to a work station. Pet. 28–29 (citing Ex. 1001 ¶¶ 75–78, 89, 95–
96; Ex. 1007, 3:1–3; Ex. 1009, 395). Petitioner argues that this packet is
generated at the branch computer before it is transmitted to the work
stations. Ex. 1001 ¶¶ 94, 96. In view of Higgins’s disclosure of regarding
the processing of the trade information, including the stock symbol, prices of
the stock, and volume traded (Ex. 1007, 4:45–49, 2:24–47), to generate a
price limit alert to be displayed on the work station CRT in Higgins (Ex.
1007, Fig. 2), we determine that Higgins in view of Metcalfe teaches or
suggests “generating at least a portion of a module including said selected
generally applicable information,” wherein a “module” is construed to mean
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“a discrete unit of digital data that is executed and/or processed to perform a
specific function.”
Fourth, Patent Owner argues that the rationale for the combination of
Higgins and Metcalfe provided by Petitioner is insufficient because
Petitioner provides a conclusory statement without a well-reasoned
explanation to support a finding of obviousness. PO Resp. 38–39.
Specifically, Petitioner argues that, with respect to Higgins, the “module” is
the data structure used to communicate trade information from a branch
computer to a work station over cable 103. Pet. 28 (citing Ex. 1001 ¶ 93).
Figure 1B of Higgins below illustrates the cable 103 connection between
work station 110i,j,k and branch computer 90jk. Ex. 1007, Fig. 1B.

Additionally, Petitioner contends that, although Higgins does not specify a
protocol, it would have been obvious to a person of ordinary skill in the art
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to implement Higgins cable 103 as an Ethernet connection, in which case the
“module” would be an Ethernet packet as taught in Metcalfe. Pet. 28–29
(citing Ex. 1007, 3:1–3, Fig. 2; Ex. 1001 ¶¶ 75–78, 89, 95–96).
Dr. Neuhauser adds that a person of ordinary skill in the art would have
recognized Ethernet as an obvious choice for implementing the bi-
directional communication that Higgins discloses between the branch
computer 90 and work station 110 because Ethernet was widely available
and relatively low-cost and was widely known to simple and flexible.
Ex. 1001 ¶ 77. Dr. Neuhauser further states that this Ethernet
implementation could have been implemented with off-the-shelf
components. Id. ¶ 78.
Patent Owner argues that this rationale by Petitioner is insufficient
because it relies upon an unsupportable inherency argument. PO Resp. 37
(citing In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“The mere fact
that a certain thing may result from a given set of circumstances is not
sufficient.”)). Patent Owner’s reliance upon In re Robertson is misplaced, as
that quoted statement from In re Robertson concerned an analysis of
anticipation by inherency, not an analysis of obviousness. See In re
Robertson, 169 F.3d at 745. Unlike anticipation, in an obviousness analysis
“a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418. A “person of
ordinary skill often will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” Id. at 420. The fact that Higgins failed to
provide an express description of the data structure used to communicate
trade information from a branch computer to a work station over cable 103 is
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not fatal to Petitioner’s obviousness challenge. As the Federal Circuit
described in Perfect Web Techs., Inc. v. InfoUSA, Inc., it is proper to rely
upon “common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a particular reference.”
587 F.3d 1324, 1328 (Fed. Cir. 2009) (emphasis added) (quoting In re
Bozek, 416 F.2d 1385, 1390 (CCPA 1969)). Patent Owner concedes that
“[o]f course, there will be ‘some protocol’ for communication[] of stock data
between branch computers and work stations.” PO Resp. 38; see Ex. 1016,
129:17–24. Furthermore, Dr. Neuhauser testifies that a “person of ordinary
skill would recognize Ethernet as an obvious choice for implementing the bi-
directional communication that Higgins discloses between the branch
computer (90) and the work stations (110)” as it was simple, flexible, widely
available and relatively low-cost. Ex. 1001 ¶ 77. We agree with Petitioner’s
rationales that Higgins requires a data structure to communicate trade
information from branch computer 90 over cable 103 to work stations 110
and a person of ordinary skill in the art would have recognized Ethernet as
an appropriate data structure for such communication. Upon review, we
determine Petitioner has presented sufficiently an “articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness” and we adopt its contentions as our own. KSR, 550 U.S. at
418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (internal
quotation marks omitted).
Patent Owner further argues that the combination of Higgins and
Metcalfe is improper because Metcalfe states that “[w]e expect that a
reasonable maximum network size would be on the order of 1 kilometer”
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(Ex. 1009, 399), and Patent Owner argues that the financial systems of
Higgins are expected to span a large topography of hundreds of miles (PO
Resp. 39 (citing Ex. 2018 ¶¶ 103–104)). Patent Owner’s argument fails to
provide any disclosure in Higgins that its network must extend hundreds of
miles but simply offers the opinion of Dr. Russ that systems like those in
Higgins are “[t]ypically . . . distributed over a large geographic area.” See
Ex. 2018 ¶ 103. Contrary to Patent Owner’s argument, Dr. Neuhauser
provides that Ethernet would only be used to communicate within the branch
office of Higgins, not across the country. Ex. 1017 ¶ 34. We are also
unpersuaded by Patent Owner’s argument because Patent Owner fails to
identify any distance restrictions placed upon the communication system in
Higgins and the statement in Metcalfe about the reasonable network size
(see Ex. 1009, 399) is directed to the particular implementation in Metcalfe,
not a theoretical maximum distance for Ethernet.
Patent Owner also argues that Metcalfe discloses that, with Ethernet,
“packets are delivered only with high probability”; thus, some packets will
not reach their destination. PO Resp. 40 (citing Ex. 1009, 396). Therefore,
Patent Owner argues that a person of ordinary skill would not implement
Ethernet in the Higgins financial system because packets might be lost.
PO Resp. 40. Patent Owner’s argument fails to recognize that in Ethernet
systems, packets are transmitted when errors or collisions occur; thus, as
described by Dr. Neuhauser, an Ethernet system is designed to correct
packet loss through retransmission and the transmission latency of Ethernet
is far less than other methods, such as the use of the vertical blanking
interval in a television signal. Ex. 1017 ¶ 36. Furthermore, Petitioner
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counters Patent Owner’s assertion that Ethernet is unsuitable for financial
applications by citing uses of Ethernet systems in the stock-trading industry,
such as disclosed in U.S. Patent No. 6,105,005 to Merrill Lynch (the
assignee of Higgins) describing the use of Ethernet in connecting
workstations in a stock-trading computer system. See Ex. 1019, 4:3–4.
Patent Owner also argues that an Ethernet packet is not a “module.”
PO Resp. 41. Specifically, Patent Owner argues that an Ethernet
transmission is simply a passive medium for the propagation of digital
signals. PO Resp. 42 (Ex. 1009, 397). Furthermore, Patent Owner argues
that the branch computer in Higgins would not generate Ethernet packets but
would simply forward these packets. PO Resp. 43. As discussed above, we
construe a “module” as “a discrete unit of digital data that is executed and/or
processed to perform a specific function.” Even assuming that an Ethernet
transmission is a passive medium, Patent Owner fails to persuasively
identify how an Ethernet packet generated to communicate the trade
information disclosed in Higgins from a branch computer to a work station
would not constitute “a discrete unit of digital data that is executed and/or
processed to perform a specific function.” Furthermore, Petitioner counters
the argument that Higgins’s branch computer simply forwards packets by
identifying that Higgins’s branch computer uses different types of network
connections, as incoming data is received via television link 81 or
microwave link 80 and outgoing data is transmitted via cable 103. Ex. 1001
¶ 94; Ex. 1017 ¶ 41. Dr. Neuhauser identifies that the branch computer
would have to process the incoming data to produce the Ethernet packets to
be transmitted over cable 103. Ex. 1017 ¶ 41. Accordingly, we are
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unpersuaded by Patent Owner’s argument that the branch computer in
Higgins is simply forwarding packets.
Furthermore, Patent Owner argues that the trade information in
Higgins does not control the branch computer and, thus, Higgins in view of
Metcalfe fails to teach or suggest “controlling a transmitter station on the
basis of information communicated with said signal,” as recited in claim 6.
PO Resp. 44. Specifically, Patent Owner argues that if the branch computer
received data that was garbled, or unintelligible, the branch computer would
still forward that data to work stations. PO Resp. 44 (citing Ex. 2018 ¶ 83).
Petitioner responds that the fact that the branch computer responds to both
correct and incorrect input does not negate control, as the branch computer
would generate Ethernet packets as a direct response to receiving trade
information from the ticker plant. Pet. Reply 18 (citing Ex. 1017 ¶ 15). We
agree that controlling step of claim 6 is taught or suggested by Higgins in
view of Metcalfe as proposed by Petitioner and adopt its contentions as our
own.
Based on the foregoing discussion and the record, including the
secondary evidence of nonobviousness discussed below, Petitioner
demonstrates by a preponderance of the evidence that claim 6 would have
been obvious in view of Higgins and Metcalfe.

E. Asserted Obviousness of Claim 6 in View of Furukawa
Petitioner contends claim 6 of the ’956 patent is unpatentable under
35 U.S.C. § 103 in view of Furukawa. Pet. 40–58; Pet. Reply 18–22. Patent
Owner disputes Petitioner’s position, arguing that the cited references fail to
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disclose all the elements required by the challenged claims. PO Resp. 45–
58. We have reviewed the Petition, the Patent Owner’s Response, and
Petitioner’s Reply, as well as the relevant evidence discussed in those papers
and other record papers. We determine the record supports Petitioner’s
contentions and adopt Petitioner’s contentions discussed below as our own.
For reasons that follow, we determine that Petitioner has shown by a
preponderance of the evidence that claim 6 of the ’956 patent would have
been obvious in view of Furukawa.
1. Overview of Furukawa
Furukawa is titled “Power Cutting Device For Terminal Units of
CATV System” and discloses a Community Antenna Television (“CATV”)
system providing a terminal unit including a television set in the guest rooms
of a hotel, such that the guests can observe various programs on the
television sets. Ex. 1008, 2:6–9. The CATV system provides a central
facility enabled to remotely control the television sets with a down-data
signal. Id. at 1:35–43. Figure 2 of Furukawa, illustrating the CATV system,
is reproduced below:
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As shown above in Figure 2, Furukawa discloses center 4 that includes a
display unit 10, a data transmitter 28, and data receiver 29 in communication
with a data analyzer in further communication with a computer 7. Id. at
2:49–61. The center 4 can transmit video and data over cable 5 to a terminal
unit 35, located in guest room 2, which includes a television set 3, a main
unit 33 and a control unit 34. Id. at 2:62–68. The main unit 33 receives
down-data signal (g), which includes instructions. Id. at 3:10–14. In one
embodiment, the CATV system is used to implement a spot channel to allow
particular information to appear on the television set, such as informing all
of the hotel guests of a fire. Id. at 7:32–36. In another embodiment, it is
necessary to inform a tourist party of a particular message. Id. at 7:58–61.
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Figure 8 of Furukawa, illustrating such a message on a television set, is
reproduced below:

As shown above in Figure 8, Furukawa discloses the delivery of a
message (“Tourist Departure 8:00A.M. Please push button (1) when
acknowledged.”) via the spot channel to particular members of a tourist
party. Id. at 7:59–65. As the rooms 2 for particular guests in the tourist
party are known, only the terminal units 35 corresponding to the rooms 2 of
the tourist party “are forcibly operated so that the information is transmitted
to the tourist party only.” Id. at 7:65–67. Specifically, center 4 transmits a
down-data signal to terminal units 35 and the signal includes answer-
requesting data to determine whether the guest has received the information.
Id. at 8:6–10. The guest depresses the response button 47 to acknowledge
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receipt of the message and the up-data signal to center 4 includes the address
number of the responding terminal unit 35. Id. at 8:20–28.
2. Analysis of Asserted Obviousness Ground in View of
Furukawa
Petitioner argues that claim 6 would have been obvious over
Furukawa and the knowledge of one of ordinary skill in the art. Pet. 8, 40–
57. Petitioner argues that Furukawa teaches the claimed “transmitting a
signal to at least one of a plurality of stations” by transmitting a signal that
specifies the addresses of the terminal units that should receive a spot
channel instruction. Id. at 45 (citing Ex. 1008, 7:61–68; Ex. 1001 ¶ 42).
Furthermore, Petitioner argues that the claimed “controlling a transmitter
station on the basis of information communicated with said signal” is taught
by Furukawa’s disclosure that the center is controlled on the basis of the
addresses associated with a spot message, as it uses them to transmit a
message to specific terminal units. Id. at 46–47 (citing Ex. 1008, 7:61–68;
Ex. 1001 ¶ 148). Additionally, Petitioner argues that the claimed
“generating at least a portion of a module including said selected generally
applicable information” is taught by the down-data signal transmitted from
the center when a spot channel message is available. Pet. 48 (citing Ex.
100[8], 7:40–51).5
Petitioner argues that Furukawa’s disclosure of a down-data signal
having serially encoded data, including the addresses of the terminal units,
meets the “module” limitation in claim 6. Pet. 48 (citing Ex. 1008, 7:40–51,

5 Although the Petition cites Ex. 1007, this appears to be a typographical
error. See Pet. 48.
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61–65; Ex. 1001 ¶ 153). Furthermore, Petitioner argues that a person of
ordinary skill in the art would recognize that any module which is
transmitted, including the content of the down-data signal, must first be
generated in accordance with the claim 6 recitation of “generating at least a
portion of a module.” Pet. 48 (citing Ex. 1001 ¶ 153). We determine the
record supports Petitioner’s contentions and adopt them as our own.
Patent Owner argues in response that Petitioner’s challenge fails for
multiple reasons. Patent Owner argues that Petitioner improperly relies
upon the knowledge of one of ordinary skill in the art as a source of prior art
to supply claim limitations missing from Furukawa. PO Resp. 48. More
particularly, Patent Owner argues that the expert cannot be the source of
prior art, but the expert can act as a prism through which to evaluate the
prior art. Id. We are not persuaded by Patent Owner’s argument that
Petitioner relies upon its Declarant as a source of prior art. An obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418. The portions of Dr. Neuhauser’s Declaration relied
upon by Petitioner merely describe how one of ordinary skill in the art
would view the disclosure in Furukawa. Pet. 48 (citing Ex. 1001 ¶ 153).
Contrary to Patent Owner’s arguments, Dr. Neuhauser does not introduce
evidence improperly, but rather explains Furukawa and how one of ordinary
skill in the art would view Furukawa. Id. Accordingly, we are not
persuaded by Patent Owner’s argument.
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Patent Owner argues that Petitioner fails to establish that the CATV
system of Furukawa teaches or suggests “controlling a transmitter station on
the basis of information communicated with said signal.” PO Resp. 49.
Petitioner alleges that “controlling a transmitter station on the basis of
information communicated with a signal” is taught by Furukawa’s disclosure
that the center is controlled on the basis of the addresses associated with a
spot message, as it uses them to transmit a message to specific terminal
units. Pet. at 46–48 (citing Ex. 1008, 7:61–68; Ex. 1001 ¶ 148). Patent
Owner argues in response that because center 4 in Furukawa controls the
terminal unit by sending addressed messages to the terminal unit, the
addresses control the terminal units, not the center 4. PO Resp. 50. More
particularly, Patent Owner argues that the operations performed by the
central facility are independent of the terminal unit address because the
center broadcasts the addresses and the spot messages to all the terminal
units; thus, “there is no address-specific behavior on the part of the center.”
PO Resp. 51 (citing Ex. 2018 ¶ 20).
Dr. Neuhauser responds that even if center 4 is simply forwarding the
address to the terminal unit, center 4 must form the spot channel instruction
with the address; thus, center 4 is necessarily controlled “on the basis of” the
address information. Ex. 1017 ¶ 53. Furthermore, as to Patent Owner’s
argument that the addresses only control the terminal units 35 and not the
center 4, Dr. Neuhauser responds that there is no reason for a person of
ordinary skill in the art to think that an address could not control both the
center and the terminal units. Id. ¶ 54. We agree that Furukawa discloses
transmitting the spot channel instructions to at least the terminal units
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designated by certain addresses (Ex. 1008, 7:61–68); thus, center 4 is
controlled by these addresses.
Patent Owner also argues that center 4 does not receive the addresses.
PO Resp. 50. Similarly, Patent Owner also argues that Furukawa fails to
teach or suggest the claim 6 recitation of “transmitting a signal to at least
one of a plurality of stations,” because Furukawa merely states that the
addresses and corresponding room numbers “are known.” PO Resp. 58
(quoting Ex. 1008, 7:61–68). Patent Owner fails to identify, however, how
center 4 obtains these addresses. As identified by Dr. Neuhauser, Furukawa
discloses that there are a number of different operations that can be
performed with respect to individual terminal units, including (a)
summarizing channel usage charges on display unit 10, (b) forcing reception
of a spot channel, (c) summarizing spot channel acknowledgments, (d)
enabling and disabling reception of special channels, (e) summarizing
special channel questionnaire responses on display unit 10, and (f) disabling
television sets when the guest is our or the room is empty. Ex. 1017 ¶ 47
(citing Ex. 1008, 2:32–46, 10:51–11:6, 7:40–56, 8:28-36, 8:56–63, 9:28–34,
9:44–62, 10:17–29). Dr. Neuhauser further states that a person of ordinary
skill in the art would understand that the natural place to control these
terminal unit operations, such as enabling and disabling television service
based on room occupancy, would be at display unit 10 of center 4, located at
the front desk of the hotel. Ex. 1017 ¶ 48 (citing Ex. 1008, 2:20–22). We
agree with Petitioner that one of ordinary skill in the art would understand
that, given the large number of operations provided and the constantly
changing nature of the services at the hotel, center 4 would receive the
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addresses corresponding to certain guest rooms subject to a particular
operation. Based on the foregoing, we determine Furukawa teaches or
suggests “transmitting a signal to at least one of a plurality of stations.”
Patent Owner also argues that Furukawa fails to teach or suggest
“selecting some generally applicable information; generating at least a
portion of a module including said generally applicable information.”
PO Resp. 53. Specifically, Patent Owner argues that Furukawa does not
disclose how the spot channel message is selected. Id. at 54. Petitioner
alleges, however, that in the Furukawa, the spot channel message is chosen
from among other types of instructions, such as a power off instruction, that
the center is capable of sending. Pet. Reply 21 (citing Ex. 1001
¶ 151; Ex. 1008, 1:34–42, 8:56–57, 10:3–6). For example, Furukawa
discloses that “four special channels are outputted” and these channels
“cannot be received even by operating the channel buttons 46” but “can be
received upon a particular instruction from the data transmitter 28 in the
center 4.” Ex. 1008, 8:51–57. Dr. Neuhauser states that to a person of
ordinary skill in the art, this would indicate that the data transmitter is
selecting among possible instructions to provide the particular one it places
in the down-data signal. Ex. 1017 ¶¶ 59–60. We agree that the selection of
spot channel message in Furukawa teaches or suggests “selecting some
generally applicable information.”
Furthermore, Patent Owner argues that the address numbers of the
terminal units and the down-data signal are distinct. PO Resp. 56.
Petitioner counters that Patent Owner’s argument is contrary to the express
disclosure in Furukawa that describes “incorporating address information[]
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in the down-data-signal” and that “address information contained in said
down-data signal.” Pet. Reply 21 (emphasis omitted) (quoting Ex. 1008,
Abstract, 12:4–17). Given these express disclosures in Furukawa, we are
not persuaded that the address numbers and down-data signal are distinct.
Patent Owner also argues that the spot channel message is itself
transmitted to the terminal stations and is not used in “generating at least a
portion of a module including said generally applicable information,” as
recited in claim 6. PO Resp. 55. More particularly, Patent Owner argues
that there is “no disclosure in Furukawa of any computer program that is
generated or transmitted from any of the described stations.” Id. at 56.
First, we note that claim 6 requires only “generating at least a portion of a
module” (emphasis added). Furthermore, as discussed above, we do not
adopt Patent Owner’s proposed construction of module that requires it to be
a “discrete unit of a larger computer program.” Rather, we construe module
to mean “a discrete unit of digital data that is executed and/or processed to
perform a specific function.” Petitioner alleges that Furukawa discloses
generating a module by disclosing a down-data signal that is transmitted
from the center when a spot channel message is available, the signal
including the addresses of the relevant terminal units and the spot channel
message. Pet. 48 (citing Ex. 1008, 7:40–51, 7:61–65; Ex. 1001 ¶ 153).
Dr. Neuhauser further testifies that, in one embodiment, the combining of
the two signal components, the addresses and the spot channel message, at
the center 4 would constitute the claimed “generating at least a portion of a
module.” Ex. 1017 ¶ 67. We determine the records supports Petitioner’s
contentions and adopt them as our own.
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Based on the foregoing discussion and the record, including the
secondary evidence of nonobviousness discussed below, Petitioner
demonstrates by a preponderance of the evidence that claim 6 would have
been obvious in view of Furukawa.
F. Secondary Considerations
1. Commercial Success: Licensing
Relying on testimony by its declarant, Mr. Holtzman, Patent Owner
contends that “PMC has numerous licensees to the ’956 Patent, as well as to
other patents in the portfolio.” PO Resp. 59 (citing Ex. 2029). Petitioner
replies that Patent Owner fails to show a nexus from Patent Owner’s
portfolio of licensees to the invention defined by claim 6. Pet. Reply 24.
Petitioner’s argument is persuasive. Patent Owner’s single statement and
blanket citation to an entire exhibit, Ex. 2029, without more, does not
constitute a sufficient argument showing how any licenses demonstrate
unobviousness of challenged claim 6.
In cases in which the proffered evidence of commercial success
constitutes licenses, rather than sales of products embodying the invention,
the licenses may have been taken only because they were cheaper than
defending an infringement suit or for other business reasons. See EWP
Corp. v. Reliance Universal Inc., 755 F.2d 898, 908–09 (Fed. Cir. 1985)
(“[I]t is not unusual to see astute businessmen capitalize on [a licensing
program for an otherwise invalid patent] by erecting a temporarily
successful licensing program thereon. . . . They sometimes succeed because
they are mutually beneficial to the licensed group or because of business
judgments that it is cheaper to take licenses than to defend infringement
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suits, or for other reasons unrelated to the unobviousness of the licensed
subject matter.”).
Similar to the characterization in EWP, Mr. Holtzman notes that some
of the provided licenses to the “’956 Patent family,” or “the ’956 Patent,
among other PMC patents,” included a “substantial payment” in “settlement
of litigation” or with knowledge of pending inter partes reviews. See
Ex. 2029 ¶¶ 16–24. Mr. Holtzman also contends that some companies made
equity investments in addition to licenses, and also “many of the license
amounts are orders of magnitude above the cost of defense in an
infringement action.” Id. ¶¶ 25–26.
We find that this testimony about “substantial payments” relative to
“cost of defense,” and equity investments, lacks a requisite factual support
and fails to delineate anything specific to the ’956 patent family or the ’956
patent, let alone the challenged claim of the ’956 patent. The testimony is
entitled to little weight. Even affording it some weight, the testimony does
not address whether or not any settlement or license has anything to do with
the particular merits of the challenged claim of the ’956 patent. The
testimony, at face value, at most shows that a license to the whole ’956
patent family may cost substantially more than defending any litigation with
respect to one of the patents in the ’956 patent family, but it does not even
mention specific litigation for the ’956 patent or relative cost to a license
thereto. Also, litigation advances with certain risk whereas a license
provides a known outcome.
The tenuous testimony fails to show “affirmative evidence of nexus.”
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir.
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2004). Patent Owner must demonstrate “a nexus between the merits of the
invention and the licenses of record,” otherwise the evidence of licenses
garners little weight. In re GPAC Inc., 57 F.3d 1573 at 1580 (Fed. Cir.
1995) (emphasis added) (citation omitted). “[W]ithout a showing of [a]
nexus, ‘the mere existence of . . . licenses is insufficient to overcome the
conclusion of obviousness.’” In re Antor Media Corp., 689 F.3d 1282, 1293
(Fed. Cir. 2012) (quoting Iron Grip Barbell, 392 F.3d at 1324).
In GPAC Inc., 57 F.3d at 1580, the court found that “in affidavits
reciting the license history of the ’111 patent, GPAC did not establish which
claims(s) of the patent the licensing program incorporates, [and thus] GPAC
has not shown that licensing of [applicant’s] invention arose out of
recognition and acceptance of the subject matter claimed.” Like the
applicants with licenses in EWP Corp, GPAC, and Antor Media, Patent
Owner has not shown a nexus to the challenged “subject matter claimed”:
Mr. Holtzman’s testimony lists patent family licenses and revenue, but does
not discuss the merits of the challenged claim as they relate to any particular
license for the ’956 patent in the portfolio of licenses. See PO Resp. 59
(citing Ex. 2029). Moreover, only claim 6 of the ’956 patent has been
challenged.
The cited testimony of Mr. Holtzman does not establish whether a
specific license (or licensing clause, etc.) for the ’956 patent occurred
because of the merits of the challenged claim, the merits of unchallenged
claims, for other patented inventions, or for other economic reasons related
to the whole ’956 patent family. The evidence, at best, implies that some
settlements included licenses for the ’956 patent family perhaps to avoid
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some litigation for a patent or patents in the family, or that equity
investments may have occurred based on the company itself, PMC. See Ex.
2029 ¶¶ 8–27. Mr. Holtzman’s summary coalesces with our summary:
“This success is attributable not to any particular feature by itself, but rather
to the combination of features of PMC’s inventions.” Id. ¶ 27.
Accordingly, Patent Owner’s licensing program evidence is afforded
little weight in showing that the challenged claim in the ’956 patent would
not have been obvious.
2. Industry Praise
Industry praise for an invention may provide evidence of
nonobviousness where the industry praise is linked to the claimed invention.
See Geo. M. Martin Co. v. Alliance Mach. Sys. Intern. LLC, 618 F.3d 1294,
1305 (Fed. Cir. 2010); Asyst Techs., Inc. v. Emtrack, Inc., 544 F.3d 1310,
1316 (Fed. Cir. 2008). Patent Owner asserts that “PMC has received
professional acclaim and industry recognition of its inventions.
Additionally, there are numerous patents and publications that cite to the
’956 Patent family.” PO Resp. 59 (citing Ex. 2029).
Petitioner replies that Patent Owner fails to provide any nexus
between the forward citations and the invention cited in claim 6. Pet.
Reply 25. Petitioner’s argument is persuasive. Patent Owner’s brief
statements and blanket citation to an entire exhibit, Ex. 2029, without more,
does not constitute a sufficient argument showing as to how any alleged
praise demonstrates unobviousness with respect to a challenged claim in the
’956 patent. See PO Resp. 60.
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Similar to its licensing argument, Patent Owner does not provide any
analysis explaining how professional acclaim for the ’956 patent family,
including purported evidence of value or “numerous” citations, constitutes
praise with nexus to a feature of the challenged claim in the ’956 patent.
The arguments and cited evidence fail to show how the challenged claim of
the ’956 patent would have been unobvious. See Ex. 2029 ¶¶ 28–33.
Patent Owner does not specify any acclaim or recognition in its Patent
Owner Response to the ’956 patent family, let alone a challenged claim in
the ’956 patent. See PO Resp. 59. Considering just the ’956 patent, it
includes 29 claims, 294 columns, and includes much background
information. See Ex. 1003. Patent Owner’s argument fails to show how its
alleged evidence of value or praise which includes the whole ’956 patent
family, distinguishes over many citations to, and great reviews of, popular
text books or journal articles. See Ex. 2029 ¶¶ 28–32.
Patent Owner has not established a sufficient nexus between the
merits of the claimed invention of the challenged claim in the ’956 patent
and the alleged industry praise. Accordingly, Patent Owner’s evidence of
secondary considerations based on industry praise is entitled to little or no
weight.
3. Summary
Patent Owner failed to demonstrate a sufficient nexus between the
claimed invention and any commercial success or industry praise. After
considering all the cited evidence and arguments presented, the evidence of
objective indicia of nonobviousness does not overcome Petitioner’s showing
of obviousness.
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III. MOTION TO AMEND
In an inter partes review, amended claims are not added to a patent as
of right, but rather must be proposed as a part of a Motion to Amend.
35 U.S.C. § 316(d). As the moving party, Patent Owner bears the burden of
proof in establishing that it is entitled to add proposed substitute claim 30.
37 C.F.R. § 42.20(c); see also Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
at 1306–08 (patentee bears the burden of showing that its proposed
substitute claims are patentable over the prior art of record); Prolitec, Inc. v.
ScentAir Techs., Inc., 807 F.3d 1353, 1363–64 (Fed. Cir. 2015) (same); Idle
Free Systems, Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 7
(PTAB June 11, 2013) (Paper 26) (informative) (“For a patent owner’s
motion to amend, 37 C.F.R. § 42.20(c) places the burden on the patent
owner to show a patentable distinction of each proposed substitute claim
over the prior art.”); MasterImage 3D, Inc. v. RealD, Inc., Case IPR2015-
00040 (PTAB July 15, 2015) (Paper 42) (same).
Patent Owner filed a contingent Motion to Amend in order to replace
the claim 6 with proposed substitute claim 30 should claim 6 be determined
to be unpatentable. Paper 21 (“Mot.”). Petitioner opposes Patent Owner’s
Motion. Paper 31 (“Opp.”). Because we find claim 6 unpatentable, we
address Patent Owner’s Motion to Amend. As discussed below, we
determine that Patent Owner has not carried its burden of demonstrating the
patentability of the proposed claim.
A. Analysis of the 37 C.F.R. § 42.121 Requirements
Patent Owner must demonstrate (1) the amendment responds to a
ground of unpatentability involved in the trial; (2) the amendment does not
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seek to enlarge the scope of the claims of the patent or introduce new subject
matter; (3) the amendment proposes a reasonable number of substitute
claims; and (4) the proposed claims are supported in the original disclosure.
37 C.F.R. § 42.121.
Proposed substitute independent claim 30 is reproduced below, with
underlined text indicating material inserted relative to claim 6:
30. (Substitute for claim 6, if found unpatentable) A
method of signal processing in a network to communicate at least
some of a recommendation or solution to a plurality of
subscribers, said method comprising the steps of:
transmitting a signal to at least one of a plurality of
stations;
controlling a transmitter station on the basis of information
communicated with said signal, said step of controlling said
transmitter station comprising the steps of:
selecting some generally applicable information in respect
of a problem or interest;
generating at least a portion of an executable computer
program module including said selected generally applicable
information; and
transmitting said executable computer program module
with at least a portion of said signal;
controlling each of a plurality of receiver stations on the
basis of information communicated with said signal, said step of
controlling each of said plurality of receiver stations comprising
the steps of:
selecting some portion of said executable computer
program module;
executing said executable computer program module at
said receiver stations;
communicating receiver specific information to an output
device; and
recommending in outputted video, audio, or print
subscriber specific action comprising a recommendation to a
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consumer to acquire a specific product or service in respect to
said problem or interest; and
controlling at least one of said plurality of receiver stations
on the basis of information communicated with said signal, said
step of controlling said at least one receiver station comprising
the steps of:
inputting to a processor some data communicated with at
least one of said signal and said executable computer program
module;
causing said at least one receiver station to establish
communications with a remote station; and
communicating input to said remote station.
Mot. 28–29.
We determine Patent Owner has satisfied the burden with respect to
the above-discussed requirements of 37 C.F.R. § 42.121. For example,
Patent Owner seeks to add one substitute claim to replace the one claim
found unpatentable, and the substitute claim adds limitations that purport to
narrow the scope of the original claim it replaces. Mot. 1. Patent Owner
identifies support in the original specification for the recitation in claim 30
of an “executable computer program module.” Id. at 3 (citing Ex. 2021,
536:11–17, 538:12–16). Furthermore, Patent Owner identifies support in the
original specification for the recitation in claim 30 of a “subscriber specific
action comprising a recommendation to a consumer to acquire a specific
product or service,” including the disclosure that a subscriber is presented
with a personalized recommendation to purchase a new truck. Id. at 5
(citing Ex. 2021, 551:15–552:7).
We, thus, are persuaded that there is written description support for
Patent Owner’s proposed substitute claim. Accordingly, we now focus on
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whether Patent Owner has met its burden of proof to show that proposed
substitute claim 30 encompasses patentable subject matter under 35 U.S.C.
§ 101.
B. Analysis of the Patentable Subject Matter
An inter partes review cannot be instituted using 35 U.S.C. § 101 as
the basis for a challenge brought by a petitioner. See 35 U.S.C. § 311(b) (“A
petitioner in an inter partes review may request to cancel as unpatentable 1
or more claims of a patent only on a ground that could be raised under
section 102 or 103 and only on the basis of prior art consisting of patents or
printed publications.”). In a motion to amend, however, the patent owner
has the burden of demonstrating the patentability of the claims. See
37 C.F.R. § 42.20(c) (“The moving party has the burden of proof to establish
that it is entitled to the relief requested.”). In a case such as this, where the
original claims have been determined to be invalid under 35 U.S.C. § 101 by
a District Court (see Memorandum Opinion, Ex. 1022, 16–18), we will
consider whether Patent Owner has explained how the proposed
amendments addressed the District Court’s concerns regarding the validity
of the claims and whether Patent Owner has shown that its proposed
amended claim encompasses patent eligible subject matter. See Ariosa
Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 166, slip op. at
51–52, 2014 WL 4381564, at *29–*30 (PTAB Sept. 2, 2014).
We begin our analysis with the principles of law that generally apply
to a ground based on § 101, and then we turn to the arguments presented by
the parties.
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1. Principles of Law
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has held that this statutory
provision contains an important implicit exception: laws of nature, natural
phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409
U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work.”). Notwithstanding that
a law of nature or an abstract idea, by itself, is not patentable, the practical
application of these concepts may be deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94
(2012).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If the claims are directed to a
patent-ineligible concept, the second step in the analysis is to consider the
elements of the claims “individually and ‘as an ordered combination’” to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132
S. Ct. at 1297–98). In other words, the second step is to “search for an
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‘inventive concept’—i.e., an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” Id. (quoting Mayo, 132
S. Ct. at 1294) (brackets in original). The prohibition against patenting an
abstract idea “cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment or adding insignificant
postsolution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010)
(citation and internal quotation marks omitted).
Accordingly, using this framework, we analyze Patent Owner’s
proposed substitute claim 30.
2. Whether Proposed Substitute Claim 30 is Directed to an
Abstract Idea
In the first step of our analysis, we determine whether the challenged
claims are directed to a patent-ineligible concept, such as an abstract idea.
See Alice, 134 S. Ct. at 2355. Petitioner contends that proposed substitute
claim 30 is directed to the abstract idea of generating personalized
recommendations for acquiring a product or service. Opp. 11 (citing August
10, 2015 Memorandum Opinion of the District Court for the District of
Delaware (“Delaware District Court Opinion”), Ex. 1022, 18). In the
Delaware District Court Opinion, original claim 6 was found to be directed
to unpatentable subject matter, namely the abstract idea of providing
personalized recommendations. Id. at 17–18 (“Claim 6 of the ’956 patent is
clearly abstract.”). Specifically, the District Court found that the “claim is
no different than the Department of Agriculture providing advice on what
farmers should grow.” Delaware District Court Opinion at 17. In response
to Patent Owner’s argument that the claim is not abstract because the
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recommendations are generated simultaneously to multiple users, the
District Court concluded this was a mere consequence of performing the
method on a computer and the “improved speed or efficiency inherent with
applying an abstract idea on a computer.” Id. at 17–18. Petitioner notes that
the District Court, in performing an analysis for patent eligibility, adopted
the Patent Owner’s proposed construction of “module” as a “program
module.” Opp. 10 (citing Ex. 1025 (“[A] module is ‘any of a number of
distinct but interrelated units from which a program may be built up.’”)).
Petitioner argues that Patent Owner’s amendments simply recite program
modules rather than modules generally and customer recommendations
rather than recommendations generally, and Petitioner argues that neither of
these changes affect the outcome of the Alice inquiry. Id. at 11. Petitioner,
therefore, argues that the District Court’s analysis also applies to proposed
substitute claim 30. Id.
In response, Patent Owner relies upon the United States Court of
Appeals for the Federal Circuit’s decision in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), to support its position that
the challenged claims are not directed to an abstract idea. PO Reply 5.
According to Patent Owner, proposed substitute claim 30 is directed to a
problem rooted in computerized networks where a signal from an origination
station controls a transmitter station to select information and complete an
executable computer program, which is then transmitted to receiver stations
to be executed to provide recommendations of user-specific action. Id. at 5
(citing Ex. 2049 ¶¶ 96–103).
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In DDR Holdings, the Federal Circuit determined that, although, the
patent claims at issue there involved conventional computers and the
Internet, the claims addressed the problem of retaining website visitors who,
if adhering to the routine, conventional functioning of Internet hyperlink
protocol, would be transported instantly away from a host’s website after
“clicking” on an advertisement and activating a hyperlink. DDR Holdings,
773 F.3d at 1257. The Federal Circuit held that “the claimed solution is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” Id.
Patent Owner’s Declarant, Dr. Weaver, contends that the District
Court overly simplified claim 6 to create its proposed abstract idea.
Ex. 2049 ¶ 100. Furthermore, Patent Owner argues that claim 6 recites
many specific steps involving specific hardware components. PO Reply 6
(citing Ex. 2049 ¶¶ 96–101).
Based on our independent assessment of the proposed claims, we do
not agree with Patent Owner that the steps recited in proposed substitute
claim 30 are “necessarily rooted in computer technology” and “specifically
aris[e] in the realm of computer networks.” See DDR Holdings, 773 F.3d at
1257. Rather, we agree that the subject matter of the challenged claims as
framed by Petitioner—namely, “generating personalized recommendations
for acquiring a product or service”—is not different fundamentally from the
kinds of commonplace commercial methods and processes that were the
subjects of recent decisions from the United States Supreme Court, as
discussed below.
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The Supreme Court held that the claims in Alice were drawn to the
abstract idea of intermediated settlement and that “the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.” Alice, 134 S. Ct. at 2352, 2358. Alice involved
“a method of exchanging financial obligations between two parties using a
third-party intermediary to mitigate settlement risk.” Id. at 2356. Like the
method of hedging risk in Bilski, 561 U.S. at 628, which the Supreme Court
deemed “a method of organizing human activity,” Alice’s “concept of
intermediated settlement” was held to be “a fundamental economic practice
long prevalent in our system of commerce.” Alice, 134 S. Ct. at 2356.
Similarly, the Supreme Court found that “[t]he use of a third-party
intermediary . . . is also a building block of the modern economy.” Id.
Thus, the Supreme Court held that “intermediated settlement . . . is an
‘abstract idea’ beyond the scope of § 101.” Id. With respect to the first step
of the patent-eligible analysis under the Mayo framework, the Supreme
Court concluded that in Alice “there is no meaningful distinction between
the concept of risk hedging in Bilski and the concept of intermediated
settlement” in Alice, and that “[b]oth are squarely within the realm of
‘abstract ideas’ as we have used that term.” Alice, 134 S. Ct. at 2357. On
this record, we determine that, similar to the concept of intermediated
settlement in Alice and the concept of risk hedging in Bilski, the concept at
issue here—namely, “generating personalized recommendations for
acquiring a product or service”—is a “practice long prevalent in our system
of commerce,” and “squarely within the realm of ‘abstract ideas.’” Alice,
134 S. Ct. at 2356–57; Bilski, 561 U.S. at 611.
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In the present case, “generating personalized recommendations for
acquiring a product or service,” such as presenting a personalized
recommendation for a truck, as relied upon by Patent Owner for written
description support (see Mot. 5 (citing Ex. 2021, 551:15–552:7)), is similar
to commercial practices long found in commerce and advertising.
Furthermore, as identified by Petitioner, Patent Owner admitted that
computer program modules, the primary addition by amendment to original
claim 6, were conventional years before the ’956 patent. Opp. 11 (citing PO
Resp. 13 (citing Exs. 2003, 2004, 2005)). As support for proposed substitute
claim 30 in the original disclosure (Mot. 5), Patent Owner relies upon the
following disclosure:
For example, by analyzing equipment depreciation information,
one microcomputer, 205, determines that its farmer has an old
truck, a new tractor, and a new disk harrow and selects, as one
of its four commercials, the commercial for the new truck.
Ex. 2021, 551:30–34 (emphasis added). Therefore, in the example above set
forth in the specification of the ’956 patent, the microcomputer determines
the farmer has an old truck and provides that farmer with advertising for a
new truck. See id. Patent Owner does not contend that they are the first to
target a person with an old truck with a commercial for a new truck. Much
like a farmer more than 100 years ago riding into town on an old wagon may
have received an advertisement for a new wagon, the practice of providing
personalized recommendations or advertising based on the current
possessions of a potential customer is a practice “long prevalent in our
system of commerce.” Alice, 134 S. Ct. at 2356. Accordingly, similar to the
District Court, we determine that “generating personalized recommendations
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for acquiring a product or service,” is an abstract idea. Therefore, in view of
the foregoing, we are persuaded that proposed substitute claim 30 is directed
to an abstract idea.
3. Whether the Proposed Substitute Claim Includes Limitations
That Represent Inventive Concepts
Turning to the second step in the analysis, we look for additional
elements that can “transform the nature of the claim” into a patent-eligible
application of an abstract idea. That is, we determine whether the claims
include an “inventive concept,” i.e., an element or combination of elements
sufficient to ensure that the patent in practice amounts to significantly more
than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2357. The
relevant inquiry here is whether “additional substantive limitations . . .
narrow, confine, or otherwise tie down the claim so that, in practical terms, it
does not cover the full abstract idea itself.” Accenture Global Servs., GmbH
v. Guidewire Software, Inc., 728 F.3d 1336, 1344–45 (Fed. Cir. 2013)
(internal quotations and citation omitted). The Supreme Court in Alice
cautioned that merely limiting the use of abstract idea “to a particular
technological environment,” or implementing the abstract idea on a “wholly
generic computer,” is not sufficient.” Alice, 134 S. Ct. at 2358 (citation and
internal quotation marks omitted).
In other words, the limitations of the claims must be examined to
determine whether the claims contain an “inventive concept” to “transform”
the claimed abstract idea into patent-eligible subject matter. Alice, 134
S. Ct. at 2357. “A claim that recites an abstract idea must include
‘additional features’ to ensure ‘that the [claim] is more than a drafting effort
designed to monopolize the [abstract idea].’” Alice, 134 S. Ct. at 2357
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(quoting Mayo, 132 S. Ct. at 1297) (alterations in original). Those
“additional features” must be more than “well-understood, routine,
conventional activity.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014) (internal quotation marks omitted) (citing Mayo, 132 S. Ct.
at 1298).
Petitioner contends that proposed substitute claim 30 fails to recite
any meaningful limitations on the abstract idea. Opp. 11–12. Petitioner
specifically argues that the limitations added to proposed substitute claim 30
narrow the claim from modules generally to program modules, but adding
generic computer components and functionality cannot supply an inventive
concept. Opp. 11 (citing Alice, 134 S. Ct. at 2359–60).
Patent Owner contests Petitioner’s arguments that the challenged
claims lack meaningful limitations that confine the claims to patentable
subject matter. PO Reply 6–7. Patent Owner argues that claim 30 is closely
tied to computer hardware and software and directed to a “concrete
application of ‘personalized recommendations.’” Id. at 7 (citing Ex. 2049
¶¶ 102–103; Ex. 2048 ¶¶ 10–13).
As in Alice, the relevant question is “whether the claims here do more
than simply instruct the practitioner to implement the abstract idea of
intermediated settlement on a generic computer.” Alice Corp., 134 S.Ct. at
2359. We conclude that they do not. More particularly, we are not
persuaded that what Patent Owner argues is a “concrete application of
‘personalized recommendations’” provided in the amendments presented in
substitute claim 30 incorporate enough meaningful limitations to ensure that
it claims more than just an abstract idea. See Alice Corp., 134 S.Ct. at 2357
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(quoting Mayo, 132 S. Ct. at 1297). The computer hardware elements
recited in method claim 30, including the inclusion of an “executable
computer program module,” amount to “a mere instruction to ‘implemen[t]’
an abstract idea ‘on . . . a computer.’” Id. at 2358 (internal citation omitted).
More particularly, we conclude that when considered individually and “as an
ordered combination,” the claim elements, including the “executable
computer program module,” appear to recite steps to perform the abstract
concept of “generating personalized recommendations for acquiring a
product or service” on a computer, which is not sufficient to transform an
abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2359–
60 (citing Mayo, 132 S. Ct. at 1297–98). Therefore, we find that Patent
Owner has not demonstrated the patentability of proposed substitute
claim 30. Accordingly, Patent Owner’s Motion to Amend is denied.
C. Analysis of the Patentable Distinction of the Proposed Claim
Over the Prior Art
We have determined that Patent Owner has not demonstrated the
patentability of proposed substitute claim 30 under 35 U.S.C. § 101.
Accordingly, we need not reach a decision regarding whether proposed
substitute claim 30 is patentable in view of the prior art.

IV. CONCLUSION
For the foregoing reasons, we conclude Petitioner has shown by a
preponderance of the evidence that claim 6 of the ’956 patent would have
been obvious under 35 U.S.C. § 103 in view of Higgins and Metcalfe and
Petitioner has shown by a preponderance of the evidence that claim 6 of the
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’956 patent would have been obvious under 35 U.S.C. § 103 in view of
Furukawa.
In addition, we conclude Patent Owner has not met its burden to show
proposed substitute claim 30 is patentable.

V. ORDER
For the reasons given, it is
ORDERED that, based on Petitioner’s showing by a preponderance of
the evidence, claim 6 of the ’956 patent is unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Amend is
denied; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

PETITIONER:

Brenton R. Babcock
Colin B. Heideman
Kent N. Shum
Joseph S. Cianfrani
Jeremy A. Anapol
KNOBBE, MARTENS, OLSON & BEAR, LLP
2BRB@knobbe.com
2cbh@Knobbe.com
2kns@knobbe.com
2JSC@knobbe.com
2JAA@knobbe.com
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PATENT OWNER:

Stephen T. Schreiner
Phong Dinh
Jennifer A. Albert
Eleanor M. Yost
Ce Li
GOODWIN PROCTER LLP
sschreiner@goodwinprocter.com
PDinh@goodwinprocter.com
JAlbert@goodwinprocter.com
EYost@goodwinprocter.com
cli@goodwinprocter.com

Thomas J. Scott, Jr., Vice President & General Counsel
PERSONALIZED MEDIA COMMUNICATIONS, LLC
tscott@pmcip.com