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

Patent Trial and Appeal Board

Mar 22, 2016

08459521 (P.T.A.B. Mar. 22, 2016)

Trials@uspto.gov Paper No. 55
571.272.7822 Filed: March 22, 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 IPR2014-01534
Patent 7,827,587 B1
_______________

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

BRADEN, Administrative Patent Judge.

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

IPR2014-01534
Patent 7,827,587 B1

2

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 9 of
U.S. Patent No. 7,827,587 B1 (Ex. 1002, “the ’587 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 22, 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 9
of the ’587 patent. Personalized Media Communications, LLC (“Patent
Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). Pursuant
to 35 U.S.C. § 314(a), we instituted an inter partes review of claim 9 as
(1) unpatentable under 35 U.S.C. § 103 in view of Monat,1 and (2)
unpatentable under 35 U.S.C. § 103 in view of Calo2. See Paper 7 (“Dec. to
Inst.”), 41.
After institution of trial, Patent Owner filed a Patent Owner Response
(Paper 20, “PO Resp.”), to which Petitioner filed a Reply (Paper 32,
“Reply”). In addition, Patent Owner also filed a Contingent Motion to
Amend the Claim (Paper 21), to which Petitioner filed an Opposition

1 US Patent No. 4,556,904; Dec. 3, 1985 (filed Mar. 3, 1983) (“Monat,” Ex.
1006).
2 US Patent No. 4,805,134; Feb. 14, 1989 (filed Jan. 9, 1986) (“Calo,” Ex.
1007).
IPR2014-01534
Patent 7,827,587 B1

3

(Paper 33). Patent Owner then filed a Reply to Petitioner’s Opposition to
the Motion to Amend the Claims. Paper 40 (“PO Reply”).
Patent Owner filed observations on the cross-examination of
Petitioner’s declarant (Paper 46), to which Petitioner filed a response
(Paper 49). Petitioner filed observations and amended observations on the
cross-examination of Patent Owner’s declarant (Papers 48, 53), to which
Patent Owner filed a response and an amended response (Papers 50, 53).
An oral argument was held on December 8, 2015. A transcript of the
oral argument is included in the record. Paper 54 (“Tr.”).
B. Related Proceedings
Petitioner informs us that the ’587 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 35, 1.
Petitioner also informs us that six patents related to the ’587 patent are the
subject of concurrently-filed petitions for inter partes review. Pet. 1; Paper
35, 1; see IPR2014-01527, IPR2014-01528, IPR2014-01530, IPR2014-
01531, IPR2014-01532, and IPR2014-01533.
C. The ’587 Patent
The ’587 patent discloses a system for using embedded signals to
deliver personalized program content to a subscriber station. Ex. 1002,
7:47–48, 15:14–46. One embodiment of the ’587 patent describes a remote
program originating studio that transmits a commercial (“program unit Q”)
in a network transmission to a number of intermediate transmission stations,
IPR2014-01534
Patent 7,827,587 B1

4

where each intermediate transmission station generates additional
information that is included in a transmission sent to ultimate receiver
stations. Id. at 193:25–57. This embodiment is illustrated in Figures 6A and
6B, reproduced below.

Figure 6A shows one intermediate transmission station 50 controlled
by a program originating studio. Id. at 193:47–48. The station receives
IPR2014-01534
Patent 7,827,587 B1

5

network transmissions at receiver 53 and retransmits the transmission
immediately via modulator 83, shown in Figure 6B. Id. at 193:48–51.
According to the ’587 patent, computer 73 of a given intermediate
transmission station contains “information relevant to the particular
discounts and specials in effect at the particular markets in the vicinity of
said station.” Id. at 193:58–66, Fig. 6A. Specifically, the information may
be “local-formula-and-item information” in the form of specific values for
various variables (“a, p, q, d, Z, r, s, and dd”) corresponding to information
such as the cost of gasoline (“p”) and the distance between a given
warehouse and market (“Z”). See id. at 187:9–54, 193:65–194:30. With
each transmission of the commercial information from the transmitter station
to a subscriber station, the computer program instructions compute the cost
of delivery of a product to a particular subscriber. Id. at 186:38–46, 187:1–
9.
The ’587 patent discloses that after a program originating studio
transmits a “generate-set-information message (#10)” to intermediate
transmission station computers 73 that includes, among other information,
an execution segment, information segment information of an “intermediate
generation set of Q,” and an end of file signal, then computer 73 executes a
program to compile and link “local-formula-and-item information” so that
computer 73 generates a specific program instruction set version—the
program instruction set of Q1—that applies to the particular discounts and
specials in effect at the particular markets in the vicinity of the subscriber
station and at the particular time of the network transmission of Q. Id. at
195:16–196:7.
IPR2014-01534
Patent 7,827,587 B1

6

The ’587 patent further discloses transmitting the complete
information of the program instruction set (e.g., the first portion of the
completed program unit Q1) to a receiver station based on the information of
a “01” header and the address of the subscriber station microcomputers 205
(e.g., the second portion of the completed program unit Q1). Id. at 28:1–29,
46:5–24, 49:6–56. Upon receiving the completed processor instructions, the
receiver station “load[s] and execute[s] at microcomputer 205, the
information segment of the message.” Id. Thus, the second portion of the
completed processor instructions informs the receiver station to load and
execute the information segment of the message, the program instruction set,
at a specific processor (microcomputer 205) of the receiver station. Id. The
instructions (and some data) are downloaded and each receiver station
executes the instructions. Id. at 249:48–251:63. Each receiver station is a
different distance from the warehouse and will compute different estimated
costs for delivery of a product. Id.
Another embodiment of the ’587 patent discloses that stations that
send out programming transmissions use “SPAM” signals to control the
handling, generating, and displaying of programming at subscriber stations.
Ex. 1002, 21:34–39. SPAM signals control and coordinate a wide variety of
subscriber stations. Said stations include so-called “local affiliate” broadcast
stations that receive and retransmit single network transmissions. Id. at
21:40–43. The information of SPAM signals includes data, computer
program instructions, and commands. Id. Data and program instructions are
often recorded in computer memories at subscriber stations for deferred
execution. Id. at 22:4–7. In combined medium communications (television,
IPR2014-01534
Patent 7,827,587 B1

7

radio, and other media) (id. at 22:12–13), particular SPAM commands
control the execution of intermediate generation sets and program instruction
sets and the transmission and display of information generated by said sets
(id. at 22:31–34).
According to the ’587 patent, SPAM signals contain binary
information of the sort well known in the art, for example: (i) including bit
information required for error correction using forward error correction
techniques in point to multi-point communications; (ii) using request
retransmission techniques in point to point communications; and/or (iii)
other error correction techniques, as appropriate. Id. at 23:17–24. The
composition of a SPAM signal is shown in Figure 2E, reproduced below.

Figure 2E illustrates that a SPAM signal commences with a header, followed
by an execution segment, a meter-monitor segment, and an information
segment. Id. at 23:25–33. The header, execution, and meter-monitor
segments constitute a command. Id. at 23:33–35. Figure 2E also illustrates
the use of “padding bits” in a SPAM signal. Id. at 28:50–56.
The ’587 patent explains that to determine the composition of signal
information, the fact that most computer systems communicate information
in signal words that are of a constant binary length that exceeds one bit must
be taken into account. Id. at 28:30–34. According to the ’587 patent, most
computer information is communicated in so-called “bytes,” each of which
consists of eight digital bits. Id. at 28:34–36. The ’587 patent cautions that
IPR2014-01534
Patent 7,827,587 B1

8

failure to recognize this fact could result in incomplete signals and/or in
erroneous processing in signal information. Id. at 28:36–38.
Figure 2G, reproduced below, shows an incomplete signal. Id.

Figure 2G illustrates a command with a header, an execution segment, and a
meter-monitor segment, each of which is of particular bit length. Id. at
28:38–40. The command of Figure 2G, however, is only twenty-one bits
long. Id. at 28:41–42. As Figure 2G shows, the command constitutes two
bytes of eight bits each with five bits left over. Id. at 28:42–43. The
’587 patent explains that in a system that communicates information only in
words that are multiples of eight, a signal whose information is represented
in twenty-one information bits is incomplete. Id. at 28:43–46. According to
the ’587 patent, to constitute a complete communication, said signal must be
transmitted in twenty-four bits. Id. at 28:46–48. The ’587 patent discloses
that to change an incomplete communication to a complete communication,
extra bits are added at the end of a command. Id. at 28:50–55. These extra
bits are called “padding bits” and are illustrated in Figure 2F, shown above.
Id. at 28:55–56, Fig. 2F.
IPR2014-01534
Patent 7,827,587 B1

9

D. Illustrative Claim
As noted above, an inter partes review was instituted as to
independent claim 9, which is reproduced below:
9. A method of processing signals in a network including:
receiving at a transmitter station in said network an information
transmission from a remote station, said transmission including
incomplete processor instructions;
receiving at said transmitter station a control signal;
detecting at said transmitter station said incomplete processor
instructions and said control signal and passing said incomplete
processor instructions and said control signal to a computer in said
transmitter station;
storing said incomplete processor instructions in said computer;
generating information to complete said incomplete processor
instructions by processing, at said computer, information stored in
said computer based on said control signal, wherein said stored
information is not part of said transmission;
completing, at said computer, said incomplete processor instructions
by placing said generated information into said passed and stored
incomplete processor instructions; and
communicating to a processor in a receiver station in said network at
least a first portion of said completed processor instructions based
on a second portion of said completed processor instructions.
Ex. 1001, 290:24–48.
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
also In re Cuozzo Speed Techs., 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
IPR2014-01534
Patent 7,827,587 B1

10

PTO regulation.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee,
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). Our analysis in this Decision is not impacted by whether we apply
the broadest reasonable interpretation or the Phillips standard. See Phillips
v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
1. “Incomplete Processor Instructions”
The parties disagree on the construction of the phrase “incomplete
processor instructions,” as recited by independent claim 9. In order to
construe the disputed phrase, we must first determine the scope of
“processor instructions.”
a. Processor Instructions
Patent Owner contends the term “processor instructions” means
“‘program instructions that are executed at a processor.’” PO Resp. 14
(citing Ex. 2004 ¶ 52). Patent Owner first argues that treatises describe
microprocessors as executing “programs, which are collections of
instructions that specify the sequence of orders given to the system,”
therefore, “processor instructions” are “the sequenced components of a
computer program--program instructions executed by the processor.” Id.
(citing Ex. 2006, 36). Patent Owner then argues that applying ordinary rules
of construction of English provides concordance: “processor instructions”
are “instructions” that are executed by a “processor.” Id. at 14–15. Patent
Owner lastly argues that the ’587 patent specification supports Patent
IPR2014-01534
Patent 7,827,587 B1

11

Owner’s construction. Id. at 16–17. Patent Owner specifically cites to
Examples Nos. 9 and 10 from the Specification as supporting its position.
Id. at 17 (citing Ex. 1002, 183:32–46; Ex. 2004 ¶ 54).
Patent Owner acknowledges that the ’587 patent does not define the
term “processor instructions.” Id. at 18. In fact, the term “processor
instructions” is not used in the specification until claim 9. Instead, the
specification uses the terms “program instructions,” “program instruction
sets,” “operating instructions,” and “microprocessor control instructions”
when describing particular embodiments and examples. See Ex. 1002, 2:53–
57, 19:63–67, 25:4–9, 28:1–5. The ’587 patent specifically teaches that
“program instructions” include steps inputted to a computer that are
executed by the computer upon command. Ex. 1002, 22:4–13, 28:2–11,
46:11–13, 184:8–15. Despite the disclosure found in the ’587 patent, Patent
Owner argues that a “person of ordinary skill in the art would understand,
based on the disclosure of the ’587 Patent that the ‘processor instructions’ of
claim 9 are the program instructions (examples of which are discussed
above) that are executed at a computer.” PO Resp. 18 (citing Ex. 2004 ¶
63). Patent Owner also argues that including data or information or
“everything a computer touches” is unreasonably broad as an instruction.
See id. at 18–19.
We agree with Patent Owner as to the last argument. We do not agree
with Patent Owner regarding its other arguments, however, because Patent
Owner appears to conflate the recitations in claim 9 of “processor
instructions” with the specification’s multiple descriptions of “program
instructions.” Furthermore, Patent Owner’s proposed construction is
IPR2014-01534
Patent 7,827,587 B1

12

inconsistent with the claims of the ’587 patent because claims that depend
from claim 9 indicate that the processor instructions of claim 9 are more than
a “program instruction set.” Two different claims that indirectly depend
from claim 9 recite “a program instruction set.” See Ex. 1002 (claims 18
and 20). If claim 18 is read to include the limitations of claim 9, from which
it indirectly depends, it would separately recite receiving “processor
instructions” and receiving a “program instruction set.” Therefore, we do
not agree that the claim term “processor instructions” is limited to “program
instructions” as argued by Patent Owner. Rather, we determine that
“processor instructions” is broader than “program instructions” and include a
command or an instruction used or executed by a processor but is not limited
to commands or instructions used in or executed by a program. See Ex.
1002, 14:25–28
b. Incomplete Processor Instructions
Petitioner contends the term “incomplete processor instructions”
should be construed as “processor instructions to which information will be
added prior to the processor instructions being transmitted to a particular
receiver station.” Pet. 16. According to Petitioner, the specification of the
’587 patent uses the term “incomplete” to refer to commands, signals or
other instructions that are not yet in the form in which they will be
transmitted to a subscriber station. Id. at 14–15 (citing Ex. 1002, 28:34–49).
Petitioner contends the term is also used in a manner whereby instructions
may be “incomplete” with respect to one type of subscriber station even if
the same instructions would be considered “complete” with respect to
another type of subscriber station, such as a subscriber station in which a
IPR2014-01534
Patent 7,827,587 B1

13

different signal word bit length applies. Pet. 15–16 (citing Ex. 1002, 29:5–
9)(“the information of each information segment is composed and
transmitted in a bit length that is, itself, exactly a multiple of the particular
signal word bit length that applies in computer communications at said
subscriber stations”).
Petitioner notes that in the co-pending district court litigation
referenced above, Patent Owner has alleged that the term “incomplete
processor instructions” is broad enough to cover not only processor
instructions that will be supplemented, but allegedly it encompasses any
“processor instructions that can be supplemented with other instructions.”
Id. at 16.
Petitioner, thus, argues that a person of ordinary skill in the art at the
time of the alleged invention would have understood the broadest reasonable
construction of the claim limitation “incomplete processor instructions” to
be at least as broad as “processor instructions to which information will be
added prior to the processor instructions being transmitted to a particular
receiver station.” Id. (citing Ex. 1001 ¶ 26).
Patent Owner contests Petitioner’s proposed claim construction,
explaining that “incomplete processor instructions,” as used in claim 9
should be construed as “a set of processor instructions that need to be
completed before they can provide the intended function when executed.”
PO Resp. 19. According to Patent Owner, the ordinary meaning of
“incomplete” is “not complete, lacking some part.” Id. at 20 (citing
Ex. 2002, 967; Ex. 2004 ¶ 64). Patent Owner relies on Example No. 10 to
guide its construction of the terms of claim 9. Id. Patent Owner explains
IPR2014-01534
Patent 7,827,587 B1

14

that Example No. 10 teaches that (i) an information transmission, which
includes a set of processor instructions, is received at a transmitter station
and needs to be completed before transmission to subscriber stations; (ii) the
processor instructions need to be completed by the addition of formulas for
discounts and so called “cents-off coupon specials” at local supermarkets
(Ex. 1002, 183:32–46); and (iii) without the formulas, the processor
instructions are incomplete because individual subscriber stations will not be
able to compute and display the discounts available to them (id. at 195:16–
47). PO Resp. 20.
Patent Owner further argues that until the processor instructions are
completed they cannot deliver the intended function of telling the consumer
what the discount will be. Patent Owner concludes that a person of ordinary
skill in the art, upon reviewing the specification of the ’587 patent, would
understand that the broadest reasonable construction of “incomplete
processor instructions” in claim 9 is “a set of processor instructions that need
to be completed before they can provide the intended function when
executed.” Id. (citing Ex. 2004 ¶¶ 65–66).
We are charged with interpreting claim terms 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). When construing claim terms,
we should “consult the patent’s prosecution history in proceedings in which
the patent has been brought back to the [US Patent and Trademark Office]
for a second review.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
1298 (Fed. Cir. 2015). In this case, the prosecution history of the
IPR2014-01534
Patent 7,827,587 B1

15

’587 patent reveals that in response to an office action rejecting the pending
claims, the patent applicant stated:
In their 1987 continuation-in-part specification, applicants
disclose “an integrated system of programming communication”
which encompasses many inventions and deliberately includes
many embodiments. Their teaching technique is to introduce the
principles of their integrated system in a series of related
examples. Each example builds upon structure and principles
introduced earlier. Examining basic principles in detail in early
examples, enables the specification with concreteness to expand
and extend the scope of the teaching in later examples.
Ex. 1003, 285 (emphasis in original).
Because of the integrated nature of the disclosure, no part of the
specification is intended to be considered in isolation.
Id. at 288 (emphasis in original). Even when specifically discussing
Example Nos. 9, 10, and 11 of the ’587 patent, the patent applicant stated:
Applicants provide these specific embodiments in support of the
pending claims as by way of example only. The claims must be
read as broadly as is reasonable in light of the specification, and
Applicants in no way intend that their submission of
excerpts/examples be construed to unnecessarily bound the
scope of the claimed subject matter.
Id. at 289.
During our claim construction, we consult the patent’s specification to
help clarify the meaning of claim terms, because the claims “must be read in
view of the specification, of which they are a part.” Trading Technologies
Intern, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (quoting
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995)
(en banc), aff’d, 517 U.S. 370, 116 S. Ct. 1384, 134 L.Ed.2d 577 (1996)).
IPR2014-01534
Patent 7,827,587 B1

16

We must be careful, however, not to improperly import limitations into the
claims or to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the
embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Given our mandate under 37 C.F.R. § 42.100(b) and the patent applicant’s
statements during the prosecution of the ’587 patent, we understand that the
examples laid out in the specification are exemplary and are not to be read as
limitations in the claims.
On the other side of the claim construction coin, as a general rule,
“there is a strong presumption against a claim construction that excludes a
disclosed embodiment.” See In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1324 (Fed. Cir. 2011). Several exceptions to this
presumption apply. For example, a claim may be interpreted to exclude
embodiments “where those embodiments are clearly disclaimed in the
specification . . . or prosecution history.” Oatey Co. v. IPS Corp., 514 F.3d
1271, 1277 (Fed. Cir. 2008). Otherwise, “where claims can reasonably [be]
interpreted to include a specific embodiment, it is incorrect to construe the
claims to exclude that embodiment, absent probative evidence [to] the
contrary.” Id. at 1277. “This does not mean, however, that each and every
claim ought to be interpreted to cover each and every embodiment.”
PPC Broadband, Inc. v. Corning Optical Commc’ns. RF, LLC, No. 2015-
01364, 2016 WL 692369, slip. op. at *4 (Fed. Cir. Feb. 22, 2016) (quoting
Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010)
(“It is not necessary that each claim read on every embodiment.”)).
IPR2014-01534
Patent 7,827,587 B1

17

In this case, the specification of the ’587 patent does not define
explicitly the term “incomplete processor instructions,” and the
embodiments in Examples Nos. 93 and 10, as discussed by Patent Owner, do
not use or recite the term “incomplete processor instructions.” See Ex. 1002,
183:1–220:21. In fact, the term is not used in the specification except in
claims 9 and 10. Although, the embodiments in Examples Nos. 9 and 10 as
cited by Patent Owner are instructive, we are unpersuaded by Patent
Owner’s argument that claim construction should only be guided by those
examples and not by the specification in its entirety, especially in light of the
patent applicant’s statements during the prosecution the ’587 patent
discussed above.
Rather, the disclosure in the ’587 patent teaches embodiments that use
the word “incomplete” to refer to commands, signals or other instructions
that are not yet in the form in which they will be transmitted to a subscriber
station. See id. at 28:34–49. Specifically, the specification discloses that
“[i]n a system that communicates information only in words that are
multiples of eight, a signal whose information is represented in twenty-one

3 Example No. 9 explains that a prerecorded program unit (e.g., a
commercial) generally is applicable to any and all subscriber station (Ex.
1002, 184:52–65), but the program unit lacks information regarding
particular discount formulas and coupons that apply at a specific scheduled
time for particular business that are local to the subscriber station (id. at
184:66–185:6). According to the ’587 patent, particular formula-and-item-
of-this-transmission information is generated and incorporated into a
particular program instruction set and transmitted with the program unit
from the transmission station to the subscriber station. Id. at 185:7–19. The
program unit it transmitted, received, decoded, and played. Id. at 189:56–
192:39.
IPR2014-01534
Patent 7,827,587 B1

18

information bits is incomplete. To constitute a complete communication,
said signal must be transmitted in twenty-four bits. To the command of
FIG. 2G, three bits must be added.” Id. at 28:43–49 (emphases added).
According to the ’587 patent, particular bits are added at the end of any
command that is not already a multiple of the particular signal word bit
length that is used in the signal processor system at the particular subscriber
stations to which the transmission will be transmitted. Id. at 28:50–55. The
’587 patent refers to the additional bits as “padding bits.” Id. at 28:55–56.
Patent Owner’s proffered claim construction imports selected
limitations from specific embodiments in the specification into the claim and
provides an overly narrow interpretation of the claim term. We must be
careful not to read a particular embodiment into the claim when, as here, the
claim language is broader than the embodiment. Patent Owner has not
pointed to any definitions or disavowals in the specification or otherwise
clearly explained why the specification’s disclosure of incomplete
commands and padding bits should not guide our claim construction
analysis. Thus, we are unpersuaded by Patent Owner’s contentions, which
appear to be based on a narrow reading of the claim that is inconsistent with
the broadest reasonable interpretation of the claims.
Accordingly, we decline to adopt Patent Owner’s claim construction
as it would limit unnecessarily the scope of the claims. Instead, we find the
broadest reasonable construction of “incomplete processor instructions” to
mean “processor instructions to which data, information, or bits must be
added prior to the processor instructions being transmitted to, used, or
executed by a particular processor.”
IPR2014-01534
Patent 7,827,587 B1

19

2. “generating”
Claim 9 recites “generating information to complete said incomplete
processor instructions by processing, at said computer, information stored in
said computer based on said control signal, wherein said stored information
is not part of said transmission.”
Petitioner does not address this claim term for purposes of claim
construction. Patent Owner contends the term “generating information”
requires “more than mere selection or retrieval; it requires the creation of a
product through processing.” PO Resp. 21. According to Patent Owner, the
ordinary meaning of “generating” is to “create” or “bring into existence” and
that ordinary meaning is consistent with the construction proffered by Patent
Owner. Id. (citing Ex. 2012).
Patent Owner cites to certain examples in the specification where new
information is generated by processing existing data, and not merely
retrieving or selecting data from storage. Id. at 21–22 (citing Ex. 1002,
195:48–62, 185:52–186:37). Patent Owner also cites to a Board decision
regarding a related patent, where the Board construed the term “generate” as
“to bring into existence” and to require more than just selecting or retrieving.
Id. at 23–24 (citing Ex parte Harvey, No. 2007-1837 (BPAI Mar. 20, 2009)
(Ex. 2001, 18, 39)).
In Harvey, the Board did not construe the term “generate,” but
construed the claim element “generating an image by processing at least one
user specific subscriber datum,” and, thus, interpreted a different claim
phrase than what is at issue here. Additionally, the Board in Harvey
reasoned that teletext data itself is not generated by processing user selection
IPR2014-01534
Patent 7,827,587 B1

20

data, but is only retrieved from a database, so it cannot be said that an image
is generated by processing indirectly user selection data. See Ex. 2001, 38–
40. Therefore, the Board’s claim construction in a prior decision is limited
to the specific claim terms at issue in that case, and it provides little
guidance in the present case.
Although, we construe claim terms 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)), when construing claim terms, we
“should also consult the patent’s prosecution history in proceedings in which
the patent has been brought back to the [US Patent and Trademark Office]
for a second review.” Microsoft Corp., 789 F.3d at 1298. In this case, the
prosecution history of the ’587 patent does not discuss or construe the term
“generating.”
During our claim construction, we also consult the patent’s
specification to help clarify the meaning of claim terms, because the claims
“must be read in view of the specification, of which they are a part.”
Trading Technologies Intern, 595 F.3d at 1352 0) (quoting Markman v.
Westview Instruments, Inc., 52 F.3d at 979 (en banc), aff’d, 517 U.S. 370,
116 S. Ct. 1384, 134 L.Ed.2d 577 (1996)). The specification of the
’587 patent does not define explicitly the term “generate,” or the phrase
“generating information to complete said incomplete processor instructions
by processing, at said computer, information stored in said computer.” The
specification, however, does provide examples of “generating information to
complete said incomplete processor instructions by processing, at said
computer, information stored in said computer.” Specifically, the ’587
IPR2014-01534
Patent 7,827,587 B1

21

patent discloses completing transmission communications by adding a
certain number of padding bits to an incomplete twenty-one bit
communication in order to create or produce a twenty-four bit
communication that can be transmitted to a particular processor. Ex. 1002,
28:34–56. The addition of the padding bits to the incomplete
communication appears to require only (i) identifying an incomplete
communication, (ii) determining how many padding bits are needed, and
(iii) dictating where in the communication the padding bits should be placed.
Id. Any construction of “generating information to complete said
incomplete processor instructions by processing, at said computer,
information stored in said computer” must be broad enough to encompass
this embodiment of the ’587 patent. See Katz, 639 F.3d at 1324.
Given the ’587 patent’s disclosure and the language of the claim
phrase itself, which dictates that the generated information must complete
incomplete processor instruction, we are persuaded that the gerund verb
“generating” is defined by the function assigned to it in the claims.
Furthermore, claim 9 recites “generating information . . . by processing,”
thus, Patent Owner’s proposed construction of “generating” as “creating an
end product through processing” (PO Resp. 24) would render the term
“processing” as used in claim 9 superfluous. See Merck & Co., Inc. v. Teva
Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (A claim
construction that gives meaning to all the terms of the claim is preferred over
one that does not do so.); Elekta Instruments S.A. v. O.U.R. Sci. Int’l, Inc.,
214 F.3d 1302, 1307 (Fed. Cir. 2000) (construing claim to avoid rendering
the 30 degree claim limitation superfluous); Gen. Am. Transp. Corp. v.
IPR2014-01534
Patent 7,827,587 B1

22

Cryo–Trans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996) (rejecting the district
court’s claim construction because it rendered superfluous the claim
requirement for openings adjacent to the end walls).
Accordingly, we find the broadest reasonable construction of
“generating information to complete said incomplete processor instructions
by processing, at said computer, information stored in said computer”
encompasses any action that produces data, information, or bits that
completes an incomplete processor instruction.
B. Principles of Law
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 challenges presented in the Petition in accordance
with the above-stated principles.
C. Level of Ordinary Skill in the Art
According to Petitioner’s declarant, Charles J. Neuhauser, Ph.D. (“Dr.
Neuhauser”) a person of ordinary skill in the art relevant to the ’587 patent
IPR2014-01534
Patent 7,827,587 B1

23

“would [have been] an engineer with a Bachelor of Science in Electrical
Engineering or a closely related field” and would have had between three
and five years of experience in “implementation of communications systems
and controlling these systems (or similar types of systems) through the use
of computer technology.” Ex. 1001 ¶ 31. According to Dr. Neuhauser,
“[s]omeone would [have been] equally qualified if they had a Master’s of
Science degree and somewhat less practical experience.” Id.
Patent Owner’s declarant Samuel H. Russ, Ph.D. (“Dr. Russ”)
contends that the level of ordinary skill in the art relevant to the ’587 patent
would have been a person with at least a bachelor’s degree (or equivalent) in
digital electronics, electrical engineering, computer engineering, computer
science, and two to five years of post-degree experience in a similar field.
Ex. 2004 ¶ 27.
Based on our review of the ’587 patent, the types of problems and
solutions described in the ’587 patent and cited prior art, the testimony of
Petitioner’s declarant, and the testimony of Patent Owner’s declarant, we
find that a person of skill in the art relevant to the ’587 patent would have
had a Bachelor of Science in Electrical Engineering or a closely related field
and at least two to five years of post-degree experience in a similar field.
We note that the applied prior art 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 9 in view of Monat
Petitioner contends claim 9 of the ’587 patent is unpatentable under
35 U.S.C. § 103 in view of Monat. Pet. 17–39. Patent Owner disputes
IPR2014-01534
Patent 7,827,587 B1

24

Petitioner’s position, arguing that the cited references fail to disclose all the
elements required by the challenged claims (PO Resp. 29–41), and evidence
of secondary considerations outweighs a prima facie finding of obviousness
(id. at 49–54). We have reviewed the Petition, Patent Owner’s Response,
and Petitioner’s Reply, as well as the relevant evidence discussed in those
papers. For reasons that follow, we determine that Petitioner has shown by a
preponderance of the evidence that challenged claim 9 of the ’587 patent
would have been obvious in view of Monat.
1. Overview of Monat
Monat discloses a teletext based information transmission and
reception system for issuing user prompt commands. Ex. 1006, Abstract.
According to Monat, receiver systems and keyboards for a teletext system
may be provided by different manufacturers, and therefore, there may be no
common symbol to use as a prompt character. Id. at 1:30–40. To solve this
problem Monat teaches a system where (1) the prompt character is detected,
(2) it is determined that the user’s keyboard lacks the specific prompt
character, and (3) the prompt character is replaced at the viewer’s teletext
receiver to match a character that is on the user’s keyboard. Id. at 3:12–20.
The encoding system disclosed in Monat includes two parts: a
teletext transmitter and a teletext receiver. Id. at Figs. 2, 3. A teletext
transmitter is shown in Figure 2, reproduced below.
IPR2014-01534
Patent 7,827,587 B1

25

Figure 2 illustrates a teletext transmitter modified to function
according to Monat. As shown in Figure 2, user prompt detector 202 locates
menu prompt characters within received teletext page data. Id. at 3:30–32.
When user prompt detector 202 locates a prompt code in the teletext page
data, it causes prompt identification code generator 204 to generate a special
nondisplayable character (i.e., “prompt identification code character”). Id. at
3:32–42. This code is passed to data inserter 206, which places the prompt
identification code character into the teletext page data adjacent to the user
prompt character. Id. at 3:38–42. The resulting modified teletext page data
is then placed into teletext page storage memory 208. Id. Teletext encoder
210 and summer circuit 214 read the modified teletext page data from
teletext page storage memory 210, encode the data, and place it in the
television signal. Id. at 3:43–54. The signal can be combined with a
IPR2014-01534
Patent 7,827,587 B1

26

television video signal or full frame teletext (i.e., with no video), which can
be transmitted to a receiver system. Id. at 5:38–52.
Figure 3, reproduced below, illustrates a receiver system compatible
with Monat’s teletext transmitter.

The receiver system, as shown in Figure 3, is modified to detect the
non-displayable control code (“prompt identification code character”) and to
replace the transmitted prompt character (i.e., the “#”) with the appropriate
displayable prompt character available on the viewer's keyboard 12. Id.
at 3:8–12. In this manner the transmitted display prompt “1#” would appear
as “la” (or “1A”) in a display screen of the example receiver, so that a user
can enter the desired prompt selection using keyboard 12 (although the
display prompt might appear as “1#” in another receiver with another
keyboard 12). See id. at 3:12–20, Fig. 1.
IPR2014-01534
Patent 7,827,587 B1

27

2. Analysis Regarding Monat
Petitioner contends the combined teachings of Monat, as summarized
above, teaches or suggests each limitation of claim 9 of the ’587 patent.
a. Incomplete Processor Instructions
Claim 9 recites “receiving at a transmitter station in said network an
information transmission from a remote station, said transmission including
incomplete processor instructions.”
Petitioner contends that a person of ordinary skill in the art would
consider a teletext transmission to be or include “processor instructions,”
because a processor of a receiver apparatus must interpret instructions within
a teletext transmission in order to determine what information to display
and/or in order to process user input of a menu option selection. Pet. 21–22
(citing Ex. 1006, 2:3–11, 4:5–66); see Ex. 1001 ¶ 52. Petitioner supports its
position with the Declaration of Dr. Neuhauser, who testifies that a person of
skill in the art would understand that the receiver system is a teletext
processor and the stream of teletext page data received from teletext page
data source 200 includes “processor instructions” (such as the combination
of control information and displayable information in each teletext page),
because the information directs the teletext receive system to compose the
appropriate display. Ex. 1001 ¶ 52 (citing Ex. 1006, Figs. 2, 3).
Petitioner further contends that the teletext data stream received from
the teletext page data source is, or includes, “incomplete” processor
instructions because it does not yet include sufficient control characters to
enable user prompts to be processed properly by a processor of a receiver
station. Pet. 22 (citing Ex. 1006, 1:49–55, 3:38–42); Ex. 1001 ¶ 52.
IPR2014-01534
Patent 7,827,587 B1

28

Petitioner’s position is supported again by Dr. Neuhauser’s testimony, which
states that one of ordinary skill in the art would consider the teletext page
data received from teletext page data source 200 to contain “incomplete”
processor instructions because it lacks control character codes that would
allow it to be processed by the receiver station to produce a correct display
for that receiver station. Pet. 22 (citing Ex. 1006, Abstract; 1:50–62, 3:38–
42, 5:27–31). According to Dr. Neuhauser, the receiver station is configured
to personalize menu prompts within teletext page information by identifying
control characters in the teletext information via prompt code detector 320,
yet none of these control characters prompts are included in the teletext
information received from teletext page data source 200, making the
instructions of the received teletext information “incomplete” for purposes
of communication to the receiver station and for processing by the receiver
station’s prompt code detector. Ex. 1001 ¶ 52 (citing Ex. 1006, 4:24–29,
Fig. 3).
Patent Owner contests Petitioner’s position, contending that
alphanumeric information, such as letters, numbers and characters, that
comprise a teletext transmission are not “processor instructions.” PO Resp.
29–31. According to Patent Owner, person of ordinary skill in the art would
not consider the transmission of alphanumeric information to be the
“processor instructions” of claim 9 of the ’587 Patent. Id. at 30 (citing Ex.
2004 ¶¶ 86–87). Patent Owner relies on its proposed construction of the
term “processor instructions” as “program instructions that are executed by a
processor” to support its position. See supra Section II.A.1. Patent Owner
argues that a skilled artisan would regard the alphanumeric codes of Monat
IPR2014-01534
Patent 7,827,587 B1

29

as data to be subsequently processed, not as a set of instructions to be
executed. PO Resp. 30. Patent Owner further argues that the numbers,
letters, and control codes on a teletext page are not “executed” by a
processor, but are processed by the display terminal processes in accordance
with its own program. Id.
Patent Owner further contends that merely interpreting character
codes and control codes does not transform teletext codes into “processor
instructions,” because the codes are not executed by the teletext decoder.
PO Resp. 31. Rather, according to Patent Owner, the teletext decoder
simply converts code to text so that data is formatted correctly, but that does
not qualify as processor instructions. Id. at 31–32.
Patent Owner cites to a prior Board decision to support its
interpretation that teletext signals are not processor instructions. Id. at 30
(citing Ex. 2001, 14). The Board’s decision, however, addressed different
claims and the decision was directed to whether the asserted Oono reference
taught “outputting said video presentation to said user based on said
organized signal.” See Ex. 2001, 37. That decision by the Board did not
construe the term “processor instructions,” and it did not shed any light on
whether interpreting instructions within a teletext transmission in order to
determine what information to display and/or in what order constitutes
processor instructions. Id. at 28–37.
Patent Owner lastly argues that the teletext pages in Monat are not
incomplete, and they are not “completed” at the transmitter station. PO
Resp. 33. According to Patent Owner, the teletext pages received from
Teletext Page Data Source 200 in Monat are complete and can be interpreted
IPR2014-01534
Patent 7,827,587 B1

30

and displayed by a teletext receiver. Id. (citing Ex. 1006, Fig. 2). Patent
Owner then argues the intermediate station receives complete pages and
makes them “incomplete” by inserting special non-visible control codes, and
then these “incomplete” pages are sent to each receiver terminal where the
pages are “completed” and displayed. Id. at 34. Patent Owner supports its
position with the Declaration of Dr. Russ, who testifies that:
[e]ven if one regards the process of inserting control codes as
performing some partial step towards “completing” the page, it
is quite clear that the final step of completion (that is, of replacing
and displaying a complete set of information) is performed at the
receiver, not the transmitter as required by the claim language.
Ex. 2004 ¶ 96.

We disagree with Patent Owner’s position. To the contrary, we agree
with Petitioner’s position and adopt its contentions as our own that Monat
teaches or suggests “receiving at a transmitter station in said network an
information transmission from a remote station, said transmission including
incomplete processor instructions,” as recited by claim 9 for several reasons.
First, we find that standard teletext (such as the “update indicator” and
“suppress header” control functions) includes control information that is
similar to some of the embodiments of “instructions” that are “executed” in
the ’587 patent specification. For example, the’587 patent discloses:
“[h]ereinafter, an instruction such as the above signal of “GRAPHICS ON”
that causes subscriber station apparatus to execute a combining operation in
synchronization is called a “combining synch” command.” Ex. 1002,
14:25–28. Additionally, we credit the testimony of Dr. Neuhauser, who
states:
IPR2014-01534
Patent 7,827,587 B1

31

[I]t is well-known that the Teletext information stream sent from
the television station contains many types of non-displayable
control codes that change the mode and manner of text
presentation. Even the earliest systems relied upon such control
codes to change the state of the Teletext display processor. For
example, certain codes change the size, color and width of the
displayed characters. Other codes, which I referred to explicitly,
determine when information is displayed and when it is updated.
Ex. 1001 ¶ 35.

Later enhancements to the Teletext protocol included more
elaborate control characters and sequence to support more
sophisticated displays, captioning, alerts, reveal and other
functions. One of ordinary skill in the art would consider these
control codes as processor instruction under the broadest
reasonable interpretation because these codes control the
processing and presentation of Teletext information.
Ex. 1020 ¶ 35.
Second, we find that teletext pages that could be considered
“complete” for certain receivers that have appropriate keys that correspond
to user prompt characters, are not “complete” for receivers lacking the
appropriate keys. Monat specifically addresses this issue so as to
“complete” pages that are lacking the appropriate keys corresponding to user
prompt characters and then allow those pages to be displayed on all
receivers. See Ex. 1006, Abst. We credit the testimony of Dr. Neuhauser,
who explains:
[T]he pages will not display properly for other users, which is the
problem that Monat proposes to solve. Quite simply, when the
transmitter of Monat places a non-displayable prompt
identification code in the Original Teletext page it is making that
page complete for all users. This is the basic point of Monat, that
the modified page will be displayed properly at every user
IPR2014-01534
Patent 7,827,587 B1

32

station. [Monat 1:56-62]. This is the sense in which is it
“complete”.
Ex. 1020 ¶ 42.
Lastly, we note that Patent Owner’s contentions are based on a narrow
scope of the claim, which is inconsistent with the broadest reasonable
interpretation of the claims as discussed previously in Section II.A.1. See
e.g., In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir.
2007).
b. “generating information to complete said incomplete
processor instructions”
Claim 9 recites “generating information to complete said incomplete
processor instructions by processing, at said computer, information stored in
said computer based on said control signal, wherein said stored information
is not part of said transmission.”
Petitioner contends this limitation is taught by Monat, which discloses
the following:
Detector 202 compares the teletext data stream with the menu
format data and identifies all teletext characters corresponding
to user prompts. The output of detector 202 is applied to a
prompt character code generator 204 which may include a read
only memory (ROM) for generating a user prompt
identification code word.
Ex. 1006, 3:27–36 (emphasis added).
Petitioner supports its position with the Declaration of Dr. Neuhauser,
who testifies that one of skill in the art would understand that Monat
discloses generating a user prompt identification code word to add to the
teletext information (i.e., “information to complete said incomplete
IPR2014-01534
Patent 7,827,587 B1

33

processor instructions”) by processing, at detector 202 and prompt character
code generator 204, a program or other information stored in a read only
memory based on the menu format data (i.e., “said control signal”). Ex.
1001 ¶¶ 72–73. Dr. Neuhauser further testifies that the information stored in
the read only memory is not part of the teletext information received by the
teletext encoding system (meaning that “said stored information is not part
of said transmission”). Id.
Patent Owner contests Petitioner’s position, arguing its purposed
construction of “generating” as discussed previously in Section II.A.2.
PO Resp. 34–35. Based on its claim construction, Patent Owner contends
that Monat does not teach generating information, because a prompt code
generator retrieves a user prompt identification code word from the ROM.
Id. at 36 (citing Ex. 1006, 3:27–36). According to Patent Owner, prompt
code generator 204 reads the user prompt identification code from the ROM
based on the output of detector 202, and then the teletext encoding system
simply supplements the teletext characters with non-visible prompt control
character codes retrieved from memory. Id. Patent Owner concludes that
there is no “generating” of information as required by the claim. Id. (citing
Ex. 2004 ¶ 101).
Contrary to Patent Owner’s assertion that Monat’s teletext system
merely retrieves stored information, we agree with Petitioner’s contention
because we find that Monat teaches that prompt character code generator
204 generates a user prompt identification code word. See Ex. 1006, 3:32–
36 (“The output of detector 202 is applied to a prompt character code
generator 204 which may include a read only memory (ROM” for generating
IPR2014-01534
Patent 7,827,587 B1

34

a user prompt identification word”). Specifically, we find that Monat
teaches that the user prompt identification code word is created by
processing information stored in read only memory as recited by claim 9.
Id. Based on the testimony of Dr. Neuhauser, we are satisfied that one of
skill in the art would understand that Monat teaches generating a user
prompt identification code word to add to the teletext information by
processing, at detector 202 and prompt character code generator 204,
information stored in a read only memory based on the menu format data.
See Ex. 1001 ¶¶ 72–74.
Furthermore, we are unpersuaded by Patent Owner’s assertion that
“[t]he teaching of Monat is similar to that of the prior art previously rejected
by the B.P.A.I., in which the Teletext data was merely selected from a
database and not processed.” PO Resp. 37 (citing Ex. 2001, 39). We note
that the Board decision does not support Patent Owner’s position, because
the decision was directed to determining whether a cited reference disclosed
“generating an image by processing at least one user specific subscriber
datum” and the Board found that the reference did “generate” an image but
not by processing user selection data. See Ex. 2001, 39.
Accordingly, we agree with, and adopt as our own, Petitioner’s
position, as supported by Dr. Neuhauser’s testimony, that Monat teaches or
suggests “generating information to complete said incomplete processor
instructions by processing, at said computer, information stored in said
computer based on said control signal, wherein said stored information is not
part of said transmission,” as recited by claim 9.
IPR2014-01534
Patent 7,827,587 B1

35

c. “communicating to a processor . . . a first portion of said
completed processor instructions”
Claim 9 recites “communicating to a processor in a receiver station in
said network at least a first portion of said completed processor instructions
based on a second portion of said completed processor instructions.”
Petitioner contends that every other step recited in claim 9 is
performed by or in association with the transmitter station, however, the
claim does not require that this limitation be performed by the transmitter
station. Pet. 33. Thus, Petitioner contends that this limitation may be
performed by the receiver station. Id. According to Petitioner, there are two
possible ways Monat teaches this limitation: (1) Monat discloses that
“[w]hen the data from memory 314 contains no prompt characters the output
of detector 320 is low, thereby maintaining switch 322 in a position to
couple the data on conductor 318 directly to the input of a pixel generator
326.” Pet. 35 (citing Ex. 1006, 4:32–39), or (2) Monat teaches this
limitation based on Monat’s disclosure that “[w]hen the data on conductor
318 contains a prompt code identifying character, detector 320 produces an
output pulse which changes switch 322 to its uppermost position for
coupling the output of ROM 324 to the input of pixel generator 326.”
Pet. 35 (citing Ex. 1006, 4:47–54). Petitioner further notes that Monat
discloses that “[p]ixel generator 326 therefore receives a stream of signals
representative of non-prompting signals to be displayed interspersed with
signals representing the prompting symbols to which conversion has been
made.” Pet. 35 (citing Ex. 1006, 5:11–18).
IPR2014-01534
Patent 7,827,587 B1

36

Petitioner relies on the declaration of Dr. Neuhauser to support its
position. Specifically, Dr. Neuhauser testifies that one of skill in the art
would understand that Monat’s disclosure teaches communicating to a
processor (e.g., pixel generator 326) in a receiver station in the network at
least a first portion (e.g., signals representative of non-prompting signals in
the teletext information) of said completed processor instructions based on a
second portion (where the lack of a control character in the position before
or after the prompt, depending on the embodiment, would be the “second
portion”) of said completed processor instructions. Ex. 1001 ¶ 79. Dr.
Neuhauser further testifies that one of ordinary skill in the art would
consider pixel generator 326 to be a “processor,” or to be capable of being
embodied in a processor, because it “takes the coded teletext information
(characters or graphic symbols) and converts them and generates pixel
intensity information therefrom.” Ex. 1001 ¶ 79 (citing Ex. 1006, 4:36–39).
Patent Owner contests Petitioner’s position, contending that Petitioner
fails to explain: (i) which of the series of Teletext pages is the claimed “first
portion”; (ii) which is the claimed “second portion”; and (iii) how the first
portion is communicated to a receiver station processor “based on the second
portion” per claim 9. PO Resp. 38. Patent Owner notes that Petitioner
proffers two alternative theories as to how Monat discloses the disputed
claim limitation. Id. According to Patent Owner, in neither of Petitioner’s
theories does a second portion of received teletext packets determine where
a first portion of received teletext packets goes. Id. at 38–39.
Specifically, Patent Owner contends that in Petitioner’s first
alternative theory, a “Teletext character code (alleged first portion) is fed to
IPR2014-01534
Patent 7,827,587 B1

37

pixel generator 326 based on the absence of a prompt character code
(alleged second portion),” and Petitioner fails to explain how the absence of
something can be the second portion of something. Id. at 38. Patent Owner
contends that Petitioner’s second alternative theory fails because the alleged
first portion—data retrieved from ROM 324—is not part of the series of
teletext pages that are received, and the data in ROM 324 and prompt
control code are never together as first and second portions of “completed
processor instructions” or anything else. Id. at 39 (citing Ex. 2004 ¶ 110).
We do not agree with Patent Owner’s position. Rather, we find that
Monat teaches including a second portion (that encompasses both the
presence and absence of a prompt character) that communicates with a
processor (pixel generator 326) a first portion (e.g., signals representative of
non-prompting signals in the teletext information). See Ex. 1006 at 3:38–42,
5:11–18. We credit Dr. Neuhauser’s testimony, which explains that Monat
teaches communicating to a processor (e.g., pixel generator 326) at least a
first portion (e.g., a first character to be displayed) of the processor
instructions based on a second portion (e.g., the character following the first
character being anything other than a prompt identification control
character). See Ex. 1001 ¶ 79 (citing Ex. 1006, 4:30–54, 5:11–6:5, 6:38–50)
Accordingly, we are satisfied that Monat teaches or suggests
“communicating to a processor in a receiver station in said network at least a
first portion of said completed processor instructions based on a second
portion of said completed processor instructions,” as recited by claim 9.
d. “receiving at said transmitter station a control signal”
Claim 9 recites “receiving at said transmitter station a control signal.”
IPR2014-01534
Patent 7,827,587 B1

38

Petitioner presented three alternative teachings of a “control signal”
being received by the transmitter station of Monat. Pet. 23–25; Reply 17.
According to Petitioner, the primary disclosure of the “control signal” is
Monat’s “menu format data;” the first alternative is each user prompt
character within the received teletext information; and the second alternative
is Monat’s disclosure that “control signals” may be generated and passed to
processors in order to process incoming teletext information. Pet. 23–25
(citing Ex. 1006, 1:18–25, 2:47–61, 3:27–30, 4:9–13, Fig. 2).
Patent Owner contests Petitioner’s position, arguing that Petitioner
fail to demonstrate how Monat teaches the recited limitation, because
Petitioner conflates the “control signal” and “incomplete processor
instructions.” PO Resp. 40.
We do not agree with Patent Owner’s position. Rather, we agree with
Petitioner’s contention regarding this limitation, because we find that Monat
teaches the required “control signal.” As Petitioner notes, Figure 2 of Monat
shows that “menu format data” is received by user prompt detector 202
separately from the teletext information that is received from teletext page
data source 200. Reply 19 (citing Ex. 1006, Fig. 2). Moreover, we are
satisfied that Monat teaches that after separately receiving the teletext
information and the menu format data, user prompt detector 202 “compares
the teletext data stream with the menu format data.” See id. (citing Ex.
1006, 3:25–32.
e. Secondary Considerations of Non-Obviousness
Factual inquiries for an obviousness determination include secondary
considerations based on evaluation and crediting of objective evidence of
IPR2014-01534
Patent 7,827,587 B1

39

nonobviousness. See Graham, 383 U.S. at 17. Notwithstanding what the
teachings of the prior art would have suggested to one of ordinary skill in the
art at the time of the invention, the totality of the evidence submitted,
including objective evidence of nonobviousness, may lead to a conclusion
that the challenged claims would not have been obvious to one of ordinary
skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984).
Secondary considerations may include any of the following: long-felt but
unsolved needs, failure of others, unexpected results, commercial success,
copying, licensing, and praise. See Graham, 383 U.S. at 17; Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
To be relevant, evidence of nonobviousness must be commensurate in
scope with the claimed invention. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir.
2011) (citing In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)); In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). In that regard, in order to be
accorded substantial weight, there must be a nexus between the merits of the
claimed invention and the evidence of secondary considerations. In re
GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). “Nexus” is a legally and
factually sufficient connection between the objective evidence and the
claimed invention, such that the objective evidence should be considered in
determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing
Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The burden of showing that
there is a nexus lies with the patent owner. Id.; see Paulsen, 30 F.3d at
1482. Here, Patent Owner argues that commercial success, licensing, long-
felt but unresolved need, and industry praise indicates that the claims would
IPR2014-01534
Patent 7,827,587 B1

40

not have been obvious to a person of ordinary skill in the art. PO Resp. 49–
54.
1. Commercial Success: Licensing
Patent Owner also argues that its licensing program demonstrates
commercial success establishes that the claims are not obvious. PO Resp.
50–51. Patent Owner asserts that it has “[t]he ’587 Patent along with other
patents issued to the inventors have had tremendous licensing success.” Id.
at 51 (citing Ex. 2008) (incorporating by reference license agreement
information). Patent Owner further asserts that “[t]hese patents have been
licensed in agreements providing payments exceeding $350M and involving
more than a dozen licensees.” Id. Patent Owner states that “[Patent Owner]
has licensed the ’587 Patent to numerous industry leaders, including Cisco,
Sony, DirectTV, Motorola, Gemstar-TV Guide, [Scientific-Atlanta LLC],
Pegasus, [DISH Network Corporation], and The Weather Channel.” Id.
We are not persuaded. In cases in which the proffered evidence of
commercial success is licenses, rather than sales of products embodying the
invention, there is a danger that the licenses may have been taken only
because they were a less costly alternative to defending an infringement suit.
See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed. Cir.
1985). In such situations, nexus between the commercial success and the
patent cannot be inferred; rather, “affirmative evidence of nexus” is
required. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317,
1324 (Fed. Cir. 2004). In other words, a patent owner must demonstrate “a
nexus between the merits of the invention and the licenses of record”;
otherwise the licenses are to be accorded little weight. In re GPAC Inc., 57
IPR2014-01534
Patent 7,827,587 B1

41

F.3d 1573, 1580 (Fed. Cir. 1995) (citation omitted). Moreover, our
reviewing court has held that “without 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 Co. v. USA Sports, Inc., 392 F.3d 1317,
1324 (Fed. Cir. 2004)).
Like the applicants with licenses in EWP Corp, GPAC, and Antor
Media, Patent Owner has done little more than cite to the declaration of Mr.
Gerald Holtzman, which lists licenses and their respective sales revenue.
See PO Resp. 50–51 (citing Ex. 2008). The cited testimony of Mr.
Holtzman only details the revenues for each license and does not establish
whether the licensing program was successful because of the merits of the
claimed invention, the merits of other patented inventions, or for other
economic reasons, such as to avoid litigation or because of prior business
relationships. See Ex. 2008 ¶¶ 8–27; see also Antor Media, 689 F.3d at 1294
(affirming Board’s finding that evidence of existence of licenses was
insufficient to overcome prima facie case of obviousness). Additionally, Mr.
Holtzman’s testimony lists patent family licenses and revenue, but does not
discuss the merits of any of the challenged claims as they relate to any
particular license for the ’587 patent in the portfolio of licenses. See PO
Resp. 50 (citing Ex. 2008). We, therefore, find that the evidence provided
by Patent Owner does not establish a sufficient link between the merits of
the invention claimed in the ’587 patent and the taking of the noted licenses.
Although, Mr. Holtzman notes that some of the provided licenses were taken
in situations where there was pending litigation against the licensee (Ex.
IPR2014-01534
Patent 7,827,587 B1

42

2008 ¶ 14), he does not address whether litigation had been threatened
against other licensing parties.
Furthermore, evidence of $350M in licensing revenue alone is not
enough to show commercial success, because Patent Owner must relate that
figure to the overall market. In re Baxter Travenol Labs, 952 F.2d 388, 392
(Fed. Cir. 1991) (“Information solely on numbers of units sold is insufficient
to establish commercial success.”); see also In re Huang, 100 F.3d 135, 140
(Fed. Cir. 1996) (“Declining to find evidence of commercial success because
‘[a]though [the inventor’s] affidavit certainly indicates that many units have
been sold, it provides no indication of whether this represents a substantial
quantity in this market.’”). We, therefore, cannot determine whether the
licenses reflect the commercial value of the invention claimed in the ’587
patent, or whether they were taken merely to avoid the cost of litigation,
either pending or threatened. Absent a persuasive showing of nexus, Patent
Owner’s evidence of licensing fails to establish commercial success.
Accordingly, we give little weight to Patent Owner’s argument that its
licensing program is evidence that the claims are not obvious.
2. Industry Praise
Patent Owner argues that the ’587 patent has generated industry
praise, because a third party (Ocean Tomo, LLC) conducted a study and
evaluated the “value” of certain patents. PO Resp. 51. According to Patent
Owner:
As part of this study, the firm assessed the value of each patent
using a number of different value factors to determine a
PatentRatings IPQ score that objectively rated each patent.
Approximately 220,000 issued patents were analyzed to
determine a PatentRatings IPQ score, with the median of the
IPR2014-01534
Patent 7,827,587 B1

43

scores being 100. According to the study, the top rated inventor
with 16 patents in the wireless field was John Harvey, inventor of
the ’587 Patent. The firm found that the patents, all members of
the ’587 Patent family, had an average PatentRating IPQ score of
235.7, placing them in the top 0.1% of the approximate 220,000
active U.S. utility patents granted in 2010.
Id. at 52 (citing Ex. 2010).
Patent Owner further argues that citation of a patent by other patent
holders in their patent filings (i.e., “forward citations”) is a measure of
recognition and value. Id. at 52–53 (citing Ex. 2013; Ex. 2014; Ex. 2015).
According to Patent Owner, “[m]embers of the ’587 Patent family have been
cited by more than 850 U.S. and foreign patents. This recognition by others
is strong objective indicia of the significance of the patent that weighs
against obviousness.” Id. at 53.
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 Tech’n., Inc. v. Emtrak, Inc., 544 F.3d 1310,
1316 (Fed. Cir. 2008). Patent Owner does not provide sufficient, if any,
analysis explaining how the cited study (Ex. 2010) or the “forward citations”
praise the invention recited in the challenged claims. Patent Owner does not
specify any acclaim or recognition in its Patent Owner Response to the ’587
patent family, let alone a challenged claim in the ’587 patent. See PO Resp.
52–53. Considering just the ’587 patent, it includes 21 claims, 292 columns,
and 199 pages of information, and includes much background information.
See Ex. 1002. Patent Owner’s argument fails to show how its alleged
evidence of value or praise which includes the ’587 patent family,
IPR2014-01534
Patent 7,827,587 B1

44

distinguishes over many citations to, and great reviews of, popular text
books or journal articles. See Ex. 2007 ¶¶ 28–31.
Patent Owner does not show relevant praise by the industry, let alone
for a product or anything else commensurate in scope with, and covered, by
a challenged claim. See Bayer Healthcare Pharms., Inc. v. Watson Pharms.,
Inc., 713 F.3d 1369, 1377 (Fed. Cir. 2013) (finding that brief discussions of
Patent Owner’s product in journal articles “fall well short of demonstrating
true industry praise” and reasoning that “industry praise of what was clearly
rendered obvious by published references is not a persuasive secondary
consideration”). A challenged ’587 patent claim does not cover all
information disclosed in the patents of the ’587 patent family––information
that allegedly, at least in part, constitutes the object of praise. Accordingly,
in this case, Patent Owner has not established a sufficient nexus between the
merits of the claimed invention of the challenged claims and the alleged
industry praise.
3. Long-Felt but Unsolved Need
Patent Owner argues that “[t]he inventors of the ’587 Patent
recognized that there was a long-felt need to provide a communications
system with expanded capabilities, while overcoming inherent limitations of
existing teletext systems and related systems.” PO Resp. 53 (citing Ex. 2004
¶¶ 169–179). Patent Owner also describes the differences between the prior
system and the “Harvey inventions.” Id. at 54.
We are not persuaded. Patent Owner must show that any evidence of
long-felt need “demonstrates both that a demand existed for the patented
invention, and that others tried but failed to satisfy that demand.” In re
IPR2014-01534
Patent 7,827,587 B1

45

Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
676 F.3d 1063, 1082 (Fed. Cir. 2012). Patent Owner’s argument is lacking
as to both elements. That is, Patent Owner offers no evidence that others
tried and failed.
Accordingly, we give little weight to Patent Owner’s argument that
there was a long-felt but unmet need that overcomes Petitioner’s showing of
obviousness in this case.
4. Summary of Analysis of Secondary Considerations of
Non-Obviousness
Patent Owner failed to demonstrate a sufficient nexus between the
claimed invention and any commercial success or industry praise. Patent
Owner also failed to demonstrate a long-felt but unmet need for the claimed
invention. We, thus, find that the evidence of objective indicia of
nonobviousness is insufficient to overcome the evidence of obviousness over
Monat.
f. Conclusion of Analysis Regarding Monat
For the foregoing reasons, and weighing the evidence as a whole,
Petitioner has proven by a preponderance of the evidence that Monat teaches
all elements of challenged claim 9 of the ’587 patent. We determine the
record supports Petitioner’s contentions as summarized above and adopt the
supported contentions as our own. Furthermore, we conclude that
understanding Monat’s teachings as it applies to claim 9 would have been
within the level of ordinary skill in the art, as evidenced by the prior art of
record. We, therefore, determine that claim 9 would have been obvious at
the time of the invention, and thus, is unpatentable under 35 U.S.C. § 103.
IPR2014-01534
Patent 7,827,587 B1

46

E. Asserted Obviousness of Claim 9 in view of Calo
Petitioner contends claim 9 of the ’587 patent is unpatentable under
35 U.S.C. § 103 in view of Calo. Pet. 17–39. Patent Owner disputes
Petitioner’s position, arguing that the cited references fail to disclose all the
elements required by the challenged claims (PO Resp. 41–49), and evidence
of secondary considerations outweighs a prima facie finding of obviousness
(id. at 49–54). 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 papers of record. For reasons that follow, we
determine that Petitioner has shown by a preponderance of the evidence that
challenged claim 9 of the ’587 patent would have been obvious in view of
Calo.
1. Overview of Calo
Calo discloses a system with a combination of operational nodes
incorporating databases and application programs for providing graphical and
textual information (Videotex) and transactional capabilities to end-user
terminals. Ex. 1007, 1:6–12. The system disclosed in Calo includes a
collection of operations nodes (ON) connected by a Videotex Application
Network (VAN) and is illustrated in Figure 1, reproduced below.
IPR2014-01534
Patent 7,827,587 B1

47

As shown in Figure 1, different operations nodes may be connected to
the system and each node may have a subset of capabilities. Id. at 1:6–12.
For example, a DON (Database ON) may only support database access without
supporting end user terminals or application program execution. Id. at 2:18–
23. An ON is a computer based system to which are attached various types of
peripheral equipment depending upon the requirements of the ON. The
attached peripherals may include database storage, end user terminals and
network interfaces. Id. at 3:18–22. End user terminals (E/U) access
Videotext pages stored in network attached databases and use application
programs stored within the network. Id. at 1:6–12. Databases comprise
pages of control information and displayable data. Id. at Abstract; Fig. 1.
One embodiment in Calo is directed to a transactional service referred
to as “Value-Added Page Creation.” Ex. 1007, 9:28–41. With Value-Added
Page Creation, “when a page is retrieved from a VAN database, it is possible
to enhance the value of that page to a user by ‘adding’ current and/or
specific information to that page prior to displaying it at the user's terminal.
Id. at 9:41–45. “Such a feature is enabled by the invocation of a program
IPR2014-01534
Patent 7,827,587 B1

48

that merges the retrieved page with data that the program has derived from
other sources.” Id. at 9:45–48.
2. Analysis
a. Incomplete Processor Instructions
Claim 9 recites “receiving at a transmitter station in said network an
information transmission from a remote station, said transmission including
incomplete processor instructions.”
Petitioner contends that a person of ordinary skill in the art would
consider a Videotex pages to be or include “processor instructions,” because
a Videotex page includes control information and encoded displayable data
that instructs a device how to display graphics and/or text. Pet. 45–46
(citing Ex. 1007, 3:62–4:2 (“[a] page is a variable length data structure
consisting of control information and displayable data,” where the
“[d]isplayable data in a page is normally encoded . . . and preferably read out
in color, graphics, and text form on a display device”), 4:28–40 (regarding
“exit paths” that are “embedded in the control area of a page and are invoked
by certain functions”); see Ex. 1001 ¶ 114. Petitioner further contends that
Calo teaches the transmission and use of incomplete processor instructions.
Pet. 44. According to Petitioner, Calo discloses that there may be “post page
retrieval processing required for a particular page” because some pages
“may require additional dynamic processing to complete the page retrieved.
A given page may require the initiation of a program or transaction to
perform some unique updating dating [sic] or dynamic creation of pages.”
Pet. 44 (citing Ex. 1007, 19:12–18). Petitioner concludes that in instances
where a program must be invoked to complete a received Videotex page, the
IPR2014-01534
Patent 7,827,587 B1

49

received “processor instructions” would be “incomplete.” Pet. 45.
Petitioner supports its position with the Declaration of Dr. Neuhauser, who
testifies that a person of skill in the art would understand Calo as disclosing
that a transmission (e.g., a page) received from a remote station may include
incomplete processor instructions (e.g., the received page, including control
information, may be incomplete). Ex. 1001 ¶¶ 114–115.
Patent Owner contests Petitioner’s position, contending that the
Videotex page data structures that include control information and
displayable data are not “processor instructions.” PO Resp. 42. According
to Patent Owner, incomplete processor instructions are completed by placing
generated information into the incomplete processor instructions, so that
when a completed program instruction set is received at s subscriber station,
it is loaded and executed by computer. Id. at 43–44. Patent Owner explains
that Calo’s system (decoder) is executing its own program, not executing a
program embedded in the Videotex page. Id. at 44 (citing Ex. 1007, 5:35–
64). Thus, Patent Owner concludes that neither the displayable data, nor the
control information of the Videotex page relied upon by Petitioners, are
program instructions executed at a station. Id.
Patent Owner further contends that merely enhancing the value of a
Videotex page with additional processing does not mean the page was
incomplete and does not transform the Videotex page into processor
instructions. PO Resp. 44. According to Patent Owner, the “Videotex page
does not become retroactively incomplete because it was later enhanced,”
and to read it in such a way would read the term “incomplete” out of the
claim. Id. at 44–45.
IPR2014-01534
Patent 7,827,587 B1

50

We do not agree with Patent Owner. Rather, we agree with and adopt
Petitioner’s contentions regarding this limitation as our own, because we
find that a Videotex page includes control information and encoded
displayable data that instructs a device how to display graphics and/or text.
See Ex. 1007, 3:62–4:2 (“[a] page is a variable length data structure
consisting of control information and displayable data,” where the
“[d]isplayable data in a page is normally encoded … and preferably read out
in color, graphics, and text form on a display device”), 4:28–40 (regarding
“exit paths” that are “embedded in the control area of a page and are invoked
by certain functions”). The systems of Calo are also described as being
configured to process NAPLPS-encoded videotex pages. See Ex. 1007,
3:65–68.
Additionally, as to Patent Owner’s retroactively incomplete argument,
we credit the testimony of Dr. Neuhauser’s that a person of skill in the art
would understand Calo as disclosing that a transmission (e.g., a page)
received from a remote station may include incomplete processor
instructions (e.g., the received page, including control information, may be
incomplete). See Ex. 1001 ¶¶ 114–115; see also Ex. 1007, 19:12–18 (“Page
operations software is also responsible for the initiation of any post page
retrieval processing required for a particular page. Some Vidoetex pages may
require additional dynamic processing to complete the page retrieved. A given
page may require the initiation of a program or transaction to perform some
unique updating dating or dynamic creation of pages.”). Accordingly, we
conclude that Calo teaches or suggests “receiving at a transmitter station in
said network an information transmission from a remote station, said
IPR2014-01534
Patent 7,827,587 B1

51

transmission including incomplete processor instructions,” as recited by
claim 9.
b. “generating information to complete said incomplete
processor instructions”
Claim 9 recites “generating information to complete said incomplete
processor instructions by processing, at said computer, information stored in
said computer based on said control signal, wherein said stored information
is not part of said transmission.”
Petitioner contends this limitation is taught by Calo, which discloses
generating information to complete an incomplete Videotex page by
processing information stored in the host computer (such as data derived
from sources other than the page) based on the control signal. Pet. 51–52
(citing Ex. 1007, 9:41–48, 19:14–58, Fig. 7). According to Petitioner,
Calo’s embodiment regarding the Value-Added Page Creation indicates that
when a page is retrieved from a VAN database, it is possible to enhance the
value of that page to a user by “adding” current and/or specific information
to that page prior to displaying it at the user's terminal. Petitioner contends
that “[s]uch a feature is enabled by the invocation of a program that merges
the retrieved page with data that the program has derived from other
sources.” Pet. 52 (citing Ex. 1007, 9:41–48, Fig. 7).
Dr. Neuhauser testifies that one of skill in the art would consider the
“information” generated to “complete said incomplete processor
instructions” in claim 9 to be disclosed by the “data that the program has
derived” in Calo. Ex. 1001 ¶ 128. Dr. Neuhauser further testifies that one
of ordinary skill in the art would also consider the “information stored in
IPR2014-01534
Patent 7,827,587 B1

52

said computer,” as recited in claim 9, to be disclosed by either (1) the data
from other stored, local sources (from which the generated information is
derived), or (2) the program itself, which was stored by the host system prior
to its “invocation” or execution. Id. at ¶¶ 129–130. Petitioner concludes
that in either case, the stored information was not part of the transmission
that included the incomplete page. Pet. 52.
Patent Owner contests Petitioner’s position, contending that Calo does
not teach generating information, because generating requires more than
merely selecting and retrieving information—it requires that a product be
created through processing. PO Resp. 46 (citing Ex. 2004 ¶¶ 67, 127).
According to Patent Owner, the retrieved page and the data in Calo are
derived from other sources and preexist before their merger, thus negating
the generation of information required by this limitation in claim 9. Id. at
47 (emphasis in original). Patent Owner argues that “none of the dynamic
page creation services discussed in Calo involve the generation of new
information” and that “[t]he various formatting operations in Calo in
merging data are similar to the disclosure in Monat, where the Teletext
encoding system supplements the Teletext characters with non-visible
prompt control character codes stored in the memory.” Id. Patent Owner
insists that in contrast to the Calo disclosure, claim 9 requires that the
information to complete the incomplete processor instructions is generated
by processing information (e.g., by performing one or more computations).
Id. (citing 2004 ¶¶ 129–130). Patent Owner concludes that there is no
“generating” of information in Calo as required by the claim. Id.
IPR2014-01534
Patent 7,827,587 B1

53

We disagree with Patent Owner’s position, for at least two reasons.
First, we find that Calo meets the challenged limitation, because Calo
describes pages that require processing so as to “complete” the pages,
thereby demonstrating that such pages were “incomplete” prior to
processing. See Ex. 1007, 19:12–18 (“Some Videotex pages may require
additional dynamic processing to complete the page retrieved. A given page
may require the initiation of a program or transaction to perform some
unique updating dating or dynamic creation of pages.”). Second, we find
that contrary to Patent Owner’s assertion that Calo’s Value-Added Page
Creation merely retrieves stored information wholesale with no processing,
Calo teaches invocating a program that derives data from other sources that
is then merged with a specific retrieved page. See Ex. 1007, 9:41–48 (“a
program that merges the retrieved page with data that the program has
derived from other sources”).
Additionally, we agree with Petitioner’s position that information
derived from other sources is at least stored in the host computer in Calo and
then processed based on a control signal so that it can be merged with the
retrieved page. Id. at 19:14–58, Fig. 7. We credit the testimony of
Dr. Neuhauser that one of skill in the art would consider the “information”
generated to “complete said incomplete processor instructions” in claim 9 to
be disclosed by the “data that the program has derived” in Calo. See
Ex. 1001 ¶ 128. Therefore, we are satisfied that one of skill in the art would
understand that Calo teaches generating data to add to a retrieved page by
processing information stored in memory.
IPR2014-01534
Patent 7,827,587 B1

54

Accordingly, we find that Calo teaches or suggests “generating
information to complete said incomplete processor instructions by
processing, at said computer, information stored in said computer based on
said control signal, wherein said stored information is not part of said
transmission,” as recited by claim 9.
c. “communicating to a processor . . . a first portion of said
completed processor instructions”
Claim 9 recites “communicating to a processor in a receiver station in
said network at least a first portion of said completed processor instructions
based on a second portion of said completed processor instructions.”
Petitioner contends that a Videotex page of Calo, completed by the
program of the host system, would be “a variable length data structure
consisting of control information and displayable data[,]” where the
displayable data is “encoded in accordance with the North American
Presentation Level Protocol Syntax (NAPLPS), an industry standard, and
preferably read out in color, graphics, and text form on a display device at
the terminal of an end user.” Pet. 54 (citing Ex. 1007, 3:63–4:2). According
to Petitioner, in response to a page request from an end-user terminal to a
host in Calo, “the Host response returns via session layer 130 and is
processed by the application manager 132,” where the session layer and
application manager are components of the end-user terminal PC. Id. (citing
Ex. 1007, 26:59–27:2, Fig. 13). As explained by Petitioner, the application
manager 132 of the end-user terminal is in communication with the
terminal’s NAPLPS decoder 133, which “converts a NAPLPS data stream
into the graphic commands.” Id. at 54–55 (citing Ex. 1007, 27:10–12, Fig.
IPR2014-01534
Patent 7,827,587 B1

55

13). Petitioner concludes that communicating to a processor (e.g., the
NAPLPS decoder or a PC processor executing NAPLPS decoder software)
in a receiver station (e.g., an end-user terminal) at least a first portion of the
completed processor instructions (e.g., at least a portion of the NAPLPS
encoded displayable data of the completed page) based on a second portion
of the completed processor instructions (e.g., at least a portion of the control
information of the completed page). Id. at (citing Ex. 1007, 13:33–41, 26:5–
12, 3:63–4:2, 5:28–60, 27:1–14, Figs. 10–13, Claim 1); Ex. 1001 ¶¶ 137–
142.
Petitioner supports its position with the Declaration of Dr. Neuhauser,
who testifies that Videotex pages in Calo are encoded in NAPLPS format,
which was a well-known standard for encoding information for presentation
on a text/graphics device. Ex. 1001 ¶ 138. Dr. Neuhauser further testifies
that one of ordinary skill in the art reading Calo would know that presenting
NAPLPS formatted Videotex pages by the end user terminal inherently
requires communicating portions of the page to a processor for display based
on other portions. Id.; see Ex. 1001 ¶¶ 137, 139–142.
Patent Owner contests Petitioner’s position, contending that Petitioner
fails to explain how Calo teaches (1) the communication of a first portion of
the completed processor instructions based on a second portion of the
completed processor instructions or (2) that only a portion of the Videotex
page is communicated based on another portion of the Videotex page.
PO Resp. 48–49. According to Patent Owner, Calo lacks a first portion and
second portion because in the Calo the entire Videotex page is
communicated to the processor. Id. at 48 (citing Ex. 1007, 19:12–21, 25:43–
IPR2014-01534
Patent 7,827,587 B1

56

26:4). Patent Owner also argues that, in Calo, by the time the page arrives at
the user’s terminal, the entire page is already being displayed, and therefore,
a person of ordinary skill in the art would not consider the display of
Videotex page in Calo to mean that the transmitter station communicates a
first portion of the Videotex page instructions to a receiver station based on a
second portion of the Videotex page. Id. (citing Ex. 2004 ¶ 137).
We do not agree with Patent Owner. Rather, we agree with (and
adopt as our own) Petitioner’s position that claim 9 does not require the
“communicating” step to be performed by the transmitter station, and the
step may be performed by a component of the receiver station other than the
processor, or by any other system. See Pet. 33–34; Reply 23–24. We
further agree with (and adopt as our own) Petitioner’s position that this
challenged claim limitation is disclosed by actions performed at the end-user
terminal of Calo, such as by communicating displayable data of a page to a
decoder in the terminal based on control information in the page. See Pet.
55–56 (citing Ex. 1007, 13:33–41, 26:5–12, 3:63–4:2, 5:28–60, 27:1–14,
Figs. 10–13, Claim 1; Ex. 1001 ¶¶ 137–142); Reply 24.
Accordingly, we find that Calo teaches or suggests “communicating to
a processor in a receiver station in said network at least a first portion of said
completed processor instructions based on a second portion of said
completed processor instructions,” as recited by claim 9.
d. Analysis of Secondary Considerations of Non-
Obviousness
As discussed above in Section II.D.2.d., Patent Owner failed to
demonstrate a sufficient nexus between the claimed invention and any
commercial success or industry praise. Patent Owner also failed to
IPR2014-01534
Patent 7,827,587 B1

57

demonstrate a long-felt but unmet need for the claimed invention. We, thus,
find that the evidence of objective indicia of nonobviousness is insufficient
to overcome the evidence of obviousness over Calo.
e. Conclusion of Analysis Regarding Calo
For the foregoing reasons, and weighing the evidence as a whole,
Petitioner has proven by a preponderance of the evidence that Calo teaches
all elements of challenged claim 9 of the ’587 patent. We determine the
record supports Petitioner’s contentions as summarized above and adopt the
supported contentions as our own. Furthermore, we conclude that
understanding Calo’s teachings as it applies to claim 9 would have been
within the level of ordinary skill in the art, as evidenced by the prior art of
record. We, therefore, determine that claim 9 would have been obvious at
the time of the invention, and thus, is unpatentable under 35 U.S.C. § 103.
III. MOTION TO AMEND
Patent Owner filed a contingent Motion to Amend in order to replace
the unpatentable claims with proposed substitute claim 22. Paper 21
(“Mot.”). Petitioner opposes Patent Owner’s Motion. Paper 33 (“Opp.”).
Because we find claim 9 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 any of the proposed
claims.
A. Analysis of the 37 C.F.R. § 42.121 Requirements
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
IPR2014-01534
Patent 7,827,587 B1

58

proof in establishing that it is entitled to add proposed substitute claims 56–
67. 37 C.F.R. § 42.20(c); see Idle Free Sys., Inc. v. Bergstrom, Inc., Case
IPR2012-00027, slip op. at 7 (PTAB June 11, 2013) (Paper 26)
(representative). As part of this showing, Patent Owner must demonstrate
(1) the amendment responds to a ground of unpatentability involved in the
trial; (2) the amendment does not 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 22 is reproduced below, with
underlined text indicating material inserted relative to claim 9, and brackets
indicating material removed relative to that claim:
22. A method of processing signals in a network including:
receiving at a transmitter station in said network an
information transmission from a remote station, said
transmission including an incomplete program instruction set
processor instructions that is not executable to perform its
intended function until it is completed;
receiving at said transmitter station a control signal;
detecting at said transmitter station said incomplete
program instruction set processor instructions and said control
signal and passing said incomplete program instruction set
processor instructions and said control signal to a computer in
said transmitter station;
storing said incomplete program instruction set processor
instructions in said computer;
generating information to complete said incomplete
program instruction set processor instructions by processing, at
said computer, information stored in said computer based on said
control signal, wherein said stored information is not part of said
transmission;
IPR2014-01534
Patent 7,827,587 B1

59

completing, at said computer, said incomplete program
instruction set processor instructions by placing said generated
information into said passed and stored incomplete program
instruction set processor instructions; and
communicating from said transmitter station to a processor
in a receiver station in said network at least a first portion of said
completed program instruction set processor instructions based
on a second portion of said completed program instruction set
processor instructions. and thereby enabling the execution of the
completed program instruction set at said receiver station.
Mot. 1–2.
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 (1) substitute claim to replace the one (1)
claim found unpatentable, and the substitute claim adds limitations that
purport to narrow the scope of the original claim it replaces. Mot. 1–2.
Patent Owner identifies support in the original specification for substitute
claim 22’s “program instruction set” and the step of “enabling the execution
of the completed program instruction set at said receiver station.” Id. at 3–9
(citing Ex. 2009, 354:35–355:14, 360:30–35, 361:14–362:1, 364:25–31,
374:20–27, 375:12–25, 377:25–379:19, 482:32–483:35, 484:7–489:32,
490:35–491:29).
We, thus, are persuaded that there is written description support for
Patent Owner’s proposed substitute claim. Accordingly, we now focus on
whether Patent Owner has met its burden of proof to show that proposed
substitute claim 22 encompasses patentable subject matter under 35U.S.C.
§ 101.
IPR2014-01534
Patent 7,827,587 B1

60

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
claims have been determined to be invalid under 35 U.S.C. § 101 by a
district court (see Memorandum Opinion, Ex. 1024, 11–12), 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, 51–52, 2014 WL 4381564,
*29–*30 (P.T.A.B. 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.
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
IPR2014-01534
Patent 7,827,587 B1

61

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
‘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
IPR2014-01534
Patent 7,827,587 B1

62

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 22.
2. Whether Proposed Substitute Claim 22 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 22 is directed to the abstract idea of completing partial instructions.
Opp. 8 (citing Ex. 1024, 12). According to Petitioner, generally addressing
both Alice steps, original claim 9 was found to be directed to unpatentable
subject matter by a district court (id. at 2), and the limitations added to
proposed substitute claim 22 “merely ‘add a degree of particularity’ to the
abstract idea”, which is insufficient to transform the abstract idea into
patent-eligible subject matter (id. at 9 (citing Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715 (Fed. Cir. 2014))). Petitioner, therefore, concludes
that the district court’s analysis applies to proposed substitute claim 22. Id.
at 9.
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 4–5.
According to Patent Owner, proposed substitute claim 22 is directed to a
IPR2014-01534
Patent 7,827,587 B1

63

problem rooted in computerized networks where incomplete computer
programs must be processed to complete them before transmitting them
from one level (e.g., transmitter stations) to be executed at other levels (e.g.,
receiver stations). Id. at 5 (citing Ex. 2028 ¶ 109).
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 hosts 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 contends that Petitioner and the district court overly
simplify the claims to create the proposed abstract idea. PO Reply 6 (citing
Ex. 1024, 11). Patent Owner argues, however, that there is nothing abstract
about completing partial computer program instructions. Id. According to
Patent Owner, the claim recites both a temporal sequence of steps and
technical operations that are required at specific locations in a network,
which indicates that the claim is per se technological as it fits no other
context than a computer network. Id. (citing 2028 ¶¶ 90–94).
Based on our independent assessment of these challenged claims, we
do not agree with Patent Owner that the steps recited in proposed substitute
claim 22 is “necessarily rooted in computer technology” and “specifically
arises in the realm of computer networks.” See DDR Holdings, 773 F.3d at
IPR2014-01534
Patent 7,827,587 B1

64

1257. Rather, we find that the subject matter of the challenged claims as
framed by Petitioner—namely, “completing incomplete or partial
instructions”—is not different fundamentally from the kinds of conventional
commercial methods and processes that were the subjects of recent decisions
from the United States Supreme Court, as discussed below.
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
IPR2014-01534
Patent 7,827,587 B1

65

settlement in Alice and the concept of risk hedging in Bilski, the concept at
issue here—namely, “completing incomplete or partial instructions”—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.
In the present case, “completing incomplete or partial instructions” so
as to have customized instructions (or advertising as discussed in Examples
9, 10, and 11 of the ’587 patent) is similar to commercial practices long
found in radio and television advertising, where advertisements were
produced at a central station and sent in an incomplete format to local or
regional stations with instructions to insert additional information relating to
local prices or specials into the advertising. See, e.g., Ex. 1003, 1316
(stating “[t]he Examiner finds that it was notoriously well known in the
television art to embed one or more ‘instruction signals’ into broadcast TV
programming to automate the process of inserting local or regional advertising
into the programming prior to re-transmission, as illustrated by Marsden,
Germany, and Diedrich.”); see also Ex. 3001, 1:8–14 (patent application by
Germany, relied upon by the Examiner, explaining the “need for a cueing
system to facilitate the insertion of local announcements, regional
broadcasts, alternative advertisements, and the like into different programs),
Ex. 3002 (patent application by Marsden, relied upon by the Examiner,
stating that it was a commercial television practice for “a common
programme from a studio [to be] distributed to several different transmitting
stations serving different areas, each of which inserts their own
advertisements at intervals in the programme”). We do not find this to be an
IPR2014-01534
Patent 7,827,587 B1

66

inventive concept. Specifically, tailoring instructions based on device-
specific information is no different than customizing radio or television
advertising content based on geographic pricing information. Therefore, in
view of the foregoing, we are not persuaded that Patent Owner has
demonstrated that proposed substitute claim 22 is directed to a patent-
ineligible abstract idea under 35 U.S.C. § 101.
3. Whether the Proposed Substitute Include 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 limitations that represent 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 as an
additional feature to provide “practical assurance that the process is more
than a drafting effort designed to monopolize the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (brackets in original) (citation and internal
quotation marks omitted).
IPR2014-01534
Patent 7,827,587 B1

67

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. Id. (internal
quotation marks omitted) (citing 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 (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 22 fails to recite
any meaningful limitations on the abstract idea. Opp, 9. Petitioner
specifically argues that the limitations added to proposed substitute claim 22
“result in slightly narrowing the claim,” but “merely ‘add a degree of
particularity’ to the abstract idea” that does not transform the abstract idea
into patent-eligible subject matter. Id. (citing Ultramercial, Inc., 772 F.3d at
715). Petitioner concludes that limiting the “instructions” to being
“executable” “program instruction sets” that are “communicated” by the
transmitter station does not render the claimed subject matter patentable
under 35 U.S.C. § 101, because claims are patent eligible only if they
include an inventive concept. Id.
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 with the further
IPR2014-01534
Patent 7,827,587 B1

68

technical limitations and clearly stated technical goal, claim 22 undoubtedly
recites a technological invention with practical benefits rather than an
abstract idea. Id. at 7 (citing Ex. 2028 ¶ 95; Ex. 2027 ¶¶ 10–13).
We find that when considered individually and “as an ordered
combination,” the claim elements appear to be steps to perform the abstract
concept of “completing incomplete or partial instructions” 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 22. Accordingly, Patent Owner’s
Motion to Amend is denied.
C. Analysis of the Patentable Distinction of the Propose Claim
Over the Prior Art
We have determined that Patent Owner has not demonstrated the
patentability of proposed substitute claim 22 under 35U.S.C. § 101.
Accordingly, we need not reach a decision regarding whether proposed
substitute claim 22 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 9 of the ’587 patent would have
been obvious in view of either Monat or Calo.
In addition, we conclude Patent Owner has not demonstrated, by a
preponderance of the evidence, the patentability of proposed substitute claim
22, and therefore, we denied Patent Owner’s Motion to Amend.
IPR2014-01534
Patent 7,827,587 B1

69

V. ORDER
For the reasons given, it is
ORDERED that, by a preponderance of the evidence, claim 9 of the
’587 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.

IPR2014-01534
Patent 7,827,587 B1

70

PETITIONER:

Brenton R. Babcock
Colin B. Heideman
Kent N. Shum
KNOBBE, MARTENS, OLSON & BEAR, LLP
2brb@knobbe.com
2cbh@Knobbe.com
2kent.shum@knobbe.com
BoxAmazon1@knobbe.com

PATENT OWNER:

Stephen T. Schreiner
Phong Dinh
GOODWIN PROCTER LLP
SSchreiner@goodwinprocter.com
PDinh@goodwinprocter.com

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