Personalized Media Communications, LLC

Patent Trials and Appeals Board

Sep 27, 2021

IPR2020-00725 (P.T.A.B. Sep. 27, 2021)

Trials@uspto.gov Paper 30
571.272.7822 Entered: September 27, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

GOOGLE LLC,
Petitioner,

v.

PERSONALIZED MEDIA COMMUNICATIONS, LLC,
Patent Owner.
_______________

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Patent 9,674,560
_______________

Before GEORGIANNA W. BRADEN, JON M. JURGOVAN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

BRADEN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6, and this Final Written Decision is issued pursuant to 35 U.S.C. § 318(a).
For the reasons that follow, we determine Petitioner has shown by a
preponderance of the evidence that claim 4 of U.S. Patent No. 9,674,560 B1
is unpatentable, but has failed to demonstrate claims 5–10 are unpatentable.
I. INTRODUCTION AND BACKGROUND
A. Procedural History
Google LLC (“Petitioner”) filed a Petition requesting an inter partes
review of claims 4–10 of U.S. Patent No. 9,674,560 (Ex. 1001, “the ’560
patent”). Paper 1 (“Pet.”). Personalized Media Communications, LLC
(“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).
Pursuant to 35 U.S.C. § 314(a), we instituted an inter partes review of all
challenged claims on all proposed grounds of unpatentability. See Paper 13
(“Dec. to Inst.”), 58.
After institution of trial, Patent Owner filed a Patent Owner Response
(Paper 15, “PO Resp.”), to which Petitioner filed a Reply (Paper 21, “Pet.
Reply”). Patent Owner then filed a Sur-Reply (Paper 23, “PO Sur-Reply”).
An oral argument was held on June 30, 2021. A transcript of the oral
argument is included in the record. Paper 29 (“Tr.”).
B. Real Parties in Interest
Petitioner identifies itself as the real party-in-interest pursuant to 37
C.F.R. § 42.8. Pet. 81. Petitioner denies that its parent companies XXVI
Holdings Inc. and Alphabet Inc. are real parties-in-interest. Id. at n.1. Patent
Owner identifies only itself as the real party-in-interest pursuant to 37 C.F.R.
§ 42.8. Paper 5 (Patent Owner’s Mandatory Notices), 1. There is no dispute
regarding the identification of the real parties-in-interest.
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C. Related Proceedings
Petitioner informs us of three district court proceedings based on
the ’560 patent, one of which is pending against Petitioner. Pet. 81. Patent
Owner informs us of the same pending district court proceeding against
Petitioner:
 Personalized Media Communications, LLC v. Akamai
Technologies, Inc., No. 2:19-cv-00089 (E.D. Tex. filed March 21,
2019);
 Personalized Media Communications, LLC v. Google LLC,
No. 2:19-cv-00090 (E.D. Tex. filed March 21, 2019); and
 Personalized Media Communications, LLC v. Netflix, Inc.,
No. 2:19-cv-00091 (E.D. Tex. filed March 21, 2019).
Paper 5, 1. Although the Netflix case was filed in the Eastern District of
Texas, the case was transferred to the Southern District of New York.
Ex. 2003, 16–17. Patent Owner also informs us of numerous administrative
matters before the USPTO such as reissue applications, ex parte
reexaminations, or inter partes review proceedings of patents that belong to
the same patent family as the ’560 patent. Paper 5, 1–3.
D. The ’560 Patent
The ’560 patent was filed on May 23, 1995, issued on June 6, 2017,
and is titled “Signal Processing Apparatus and Methods.” Ex. 1001,
codes (22), (45), (54). The ’560 patent claims priority to Aug. 30, 1993
through a continuation application of related patent No. 7,856,650.
1. Written Description
The ’560 patent describes a “unified system of programming
communication” where the “system encompasses the prior art (television,
radio, broadcast hardcopy, computer communications, etc.) and new user
specific mass media.” Ex. 1001, code (57). The ’560 patent states that
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“[w]ithin the unified system, parallel processing computer systems, each
having an input (e.g., 77) controlling a plurality of computers (e.g., 205),
generate and output user information at receiver stations.” Id. According to
the ’560 patent, its system is capable of combining “user information
selectively into prior art communications to exhibit personalized mass media
programming at video monitors.” Id.
One embodiment disclosed in the ’560 patent is Figure 1, which is
reproduced below.

Figure 1 is a block diagram of a video/computer combined medium receiver
station. Ex. 1001, 9:39–40. The ’560 patent discloses that via a conventional
antenna, the station receives a conventional television broadcast transmission
at television tuner 215. Id. at 10:52–54. The ’560 patent teaches that TV
signal decoder 203 has capacity for receiving a composite video transmission
and detecting digitally embedded information. Id. at 10:63–66. According to
the ’560 patent, TV signal decoder 203 also can convert received information
(by means of input protocol techniques) into digital signals that
microcomputer 205 can receive and process and that can control the
operation of microcomputer 205. Id. at 11:1–5. The ’560 patent teaches that
microcomputer 205 is a conventional microcomputer system with disk drives
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that is adapted to have capacity for receiving signals from decoder 203. Id. at
11:6–9.
The ’560 patent further discloses that a studio or television station that
originates the broadcast transmission of programming is called the “program
originating studio.” Id. at 11:43–44. According to the ’560 patent, the
program is transmitted from the program originating studio “by conventional
television network feed transmission means” to a large number of
geographically dispersed intermediate transmission stations that can
retransmit the program to millions of subscriber stations where subscribers
can then view the program. Id. at 11:45–50. The ’560 patent teaches that the
“network transmission means may include so-called landlines, microwave
transmissions, a satellite transponder, or other means.” Id. at 11:50–52.
The ’560 patent discloses that the programming origination station
sends signals to an intermediate transmission station (e.g., a local television
station) that receives, performs an action(s) based on a series of embedded
control instructions in the televised signal, and retransmits to at least one
subscriber station for viewing by the subscriber. Id. at 11:34–12:5. The
instructions may allow for content to be embedded that is unique to the
subscriber such as the recording of a television program for distribution at a
later time, etc. Id. at 181:8–52.
One embodiment of an intermediate transition station disclosed in
the ’560 patent is Figure 6A, which is reproduced below.
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Figure 6A, above, is a “block diagram of one example of signal processing
apparatus and methods at an intermediate transmission station, in this case a
cable system headend.” Ex. 1001, 10:22–24. Figure 6A shows signal
processor system 71 where “in field distribution system, 93, amplifier, 94,
inputs programming transmissions to signal processor system, 71,” while
“amplifier, 95, inputs programming transmissions to signal processor, 96,
which permits both signal processor apparatus to monitor all programming
transmitted by the cable television system head end station to field
distribution system 93.” Id. at 176:26–35. The ’560 patent teaches that
signal processor system 71 also has signal processor means to control signal
processor system 71 to record meter-monitor information of said message
information, and to transfer recorded information to external communications
network 97. Id. at 170:51–55.
The ’560 patent specifically discloses that the signal processor is a
“focal means for the controlling and monitoring subscriber station
operations.” Id. at 15:32–36. According to the ’560 patent, it has the
capacity for regulating communications consumption by selectively
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decrypting or not decrypting encrypted programming and/or control signals
and capacity for assembling and retaining meter records at each subscriber
station that document the consumption of specific programming and
information at said station. Id. at 15:38–44.
2. Illustrative Claims
As noted above, Petitioner challenges claims 4–10. Pet. 22–23.
Independent claims 4 and 5 are illustrative of the challenged claims and are
reproduced below:
4. A method of communicating image programming and computer
programming to at least one subscriber in a network, said network
including at least one programming origination station, at least one
intermediate transmission station, and at least one subscriber
station, said method comprising the steps of:
originating an information transmission containing a control signal
from said at least one programming origination station designating
at least a portion of a programming presentation, which is effective
to accomplish:
effecting said at least one intermediate transmission station to
control a computer to select a receiver and communicate said at
least a portion of said programming presentation to a transmitter,
and transmit to said at least one subscriber station a signal including
said at least a portion of a programming presentation; and
transmitting said information transmission containing said control
signal from said at least one programming origination station to
said at least one intermediate transmission station.
Ex. 1001, 291:6–26.

5. A method of communicating units of programming to a subscriber
in a network, said network including at least one programming
origination station, an intermediate transmission station, and at least
one subscriber station, said intermediate transmission station
transmitting said units of programming to said at least one
subscriber station, said method comprising the steps of:
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receiving an information transmission containing a control signal
from said origination station at said intermediate transmission
station;
detecting said control signal at said intermediate transmission
station and passing said control signal to a computer; and
controlling said intermediate transmission station based on said
control signal to:
select a portion of said units of programming based on operating
records stored at said intermediate transmission station;
receive said units of programming at said intermediate transmission
station; communicate said selected a portion of said-units of
programming to a storage location;
store said selected a portion of said units of programming at said
storage location; and
alter said operating records stored at said intermediate transmission
station to indicate at least one of reception and storage of said
selected a portion of units of programming; and subsequently
transmitting said selected a portion of said-units of programming to
said at least one subscriber station.
Id. at 291:26–292:18.
E. The Asserted Challenges to Patentability and Evidence of Record
Petitioner asserts the following challenges to patentability (see
Pet. 21):
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References/Basis 35 U.S.C. §1 Challenged Claim(s)
Torpey,2 Cox ’6453 103(a) 4
Cox ’645, Cox ’4044 103(a) 5–10
Petitioner submits the Declaration of Stuart Lipoff, M.S., P.E. (“Mr. Lipoff”)
in support of Petition for Inter Partes Review (Ex. 1003). Patent Owner
submits the Declaration of Alfred C. Weaver, Ph.D. (“Dr. Weaver”) in
support of Patent Owner’s Response (Ex. 2001). Dr. Weaver was deposed by
Petitioner. See Ex. 1014 (Weaver Deposition).
F. Principles of Law Regarding Obviousness
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

1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(September 16, 2011) (“AIA”), included revisions to 35 U.S.C. § 103 that
became effective on March 16, 2013. Because the ’560 patent issued from an
application filed before March 16, 2013, we apply the pre-AIA versions of
the statutory bases for unpatentability.
2 Torpey R. J., “Television Automation—Design Concepts,” J. SMPTE
Vol. 81 (March 1972) (Ex. 1005, “Torpey”).
3 US 4,388,645, issued June 14, 1983 (Ex. 1006, “Cox ’645”).
4 US 4,393,404, issued July 12, 1983 (Ex. 1007, “Cox ’404”).
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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. of Kan. City, 383 U.S. 1, 17–18 (1966). “While the sequence of these
questions might be reordered in any particular case,” KSR, 550 U.S. at 407,
the U.S. Court of Appeals for the Federal Circuit has “repeatedly emphasized
that an obviousness inquiry requires examination of all four Graham factors
and that an obviousness determination can be made only after consideration
of each factor,” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir.
2016), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d
1290 (Fed. Cir. 2017) (en banc). When evaluating a combination of
references, an obviousness analysis should address “whether there was an
apparent reason to combine the known elements in the fashion claimed by the
patent at issue.” KSR, 550 U.S. at 418.
We analyze the obviousness issues according to these principles.
G. Burden of Proof
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is unpatentable.”
Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016)
(citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to
identify “with particularity . . . the evidence that supports the grounds for the
challenge to each claim”)). This burden of persuasion never shifts to Patent
Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter
partes review). Furthermore, the petitioner cannot satisfy its burden of
proving obviousness by employing “mere conclusory statements.” In re
Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). “The
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petitioner must instead articulate specific reasoning, based on evidence of
record, to support the legal conclusion of obviousness.” In re Magnum Oil
Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
Thus, to prevail in an inter partes review, Petitioner must explain how
the proposed prior art or combinations of prior art would have rendered the
challenged claims unpatentable. At this final stage, we determine whether a
preponderance of the evidence of record shows that the challenged claims
would have been obvious over the cited prior art. 35 U.S.C. § 316(e).
II. ANALYSIS
A. Claim Construction
Because Petitioner filed the Petition after November 13, 2018, we
construe claim terms “using the same claim construction standard” that
district courts use to construe claim terms in civil actions under 35 U.S.C.
§ 282(b). 37 C.F.R. § 42.100(b) (2021); see Changes to the Claim
Construction Standard for Interpreting Claims in Trial Proceedings Before
the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
(amending 37 C.F.R. § 42.100(b) effective November 13, 2018). Under that
standard, “[c]laim terms are given their ordinary and customary meaning,
which is the meaning the term would have to a person of ordinary skill in the
art at the time of the invention.” Power Integrations, Inc. v. Fairchild
Semiconductor Int’l, Inc., 904 F.3d 965, 971 (Fed. Cir. 2018) (citing Phillips
v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)). “In
determining the meaning of the disputed claim limitation, we look principally
to the intrinsic evidence of record, examining the claim language itself, the
written description, and the prosecution history, if in evidence.” DePuy
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Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1006 (Fed. Cir.
2006) (citing Phillips, 415 F.3d at 1312–17). There is a “heavy
presumption,” however, that a claim term carries its ordinary and customary
meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
Cir. 2002) (citation omitted).
1. “intermediate transmission station”
Petitioner states that it does not believe any terms need be construed to
resolve the issues presented in this Petition. Pet. 21. Petitioner notes there
were claim-construction issues in the related district court proceeding. Id.
(citing Ex. 1009). Patent Owner presents claim constructions rendered in the
related district court proceeding. PO Resp. 12–13. Patent Owner then
requests that the Board adopt the district court’s construction of “intermediate
transmission station” as a “station that can receive and retransmit broadcast
transmissions.” Id. at 18. According to Patent Owner, with regards to
“broadcast,” the district court stated that “intermediate transmission station”
is “defined in the [’560 Patent] with this [point-to-multipoint over-the-air
transmission] capability.” Id. (citing Ex. 1013, 28) (alteration in original).
Petitioner argues that “[t]he district court’s construction is simple: an
intermediate transmission station is a ‘station that can receive and retransmit
broadcast transmissions.’” Pet. Reply 1–2 (citing Ex. 1013, 31). That is,
according to Petitioner, “the intermediate transmission station ‘can receive’
broadcast transmissions and ‘retransmit’ those received broadcast
transmissions,” but “[h]ow the intermediate transmission station
‘retransmit[s]’ those received broadcast transmissions is unspecified.” Id.
at 2. Petitioner further argues that “the district court considered a
construction that incorporated language similar to the ‘point-to-multipoint’
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language PMC now proposes, but the district court ultimately chose the
language that the patentee used in its definition for ‘intermediate transmission
station.’” Id. (citing Ex. 1013, 28, 31). Therefore, Petitioner concludes that
the term does not need any further construction for this IPR, but should the
Board decide to construe “intermediate transmission station,” then the “term
should not be limited to retransmitting ‘over-the-air,’ as [Patent Owner]
urges” because “[l]imiting the claimed ‘intermediate transmission station’ to
transmitting “over-the-air” would contradict the ’560 patent’s clear disclosure
otherwise.” Id. at 3.
As explained below, the parties dispute whether the prior art teaches an
“intermediate transmission station.” See PO Resp. 18–19; Pet. Reply 1–3.
To help resolve that dispute, we address the meaning of “intermediate
transmission station.” See Ex. 1001, 7:16–22, 21:67–22:1, 44:28–31,
169:45–54; Ex. 1013, 28–31, 88; Ex. 2003, 5–15.
In a related civil action, a Texas district court construed “intermediate
transmission station” to mean “station that can receive and retransmit
broadcast transmissions.” See Ex. 1013, 28–31, 88. In another related civil
action, a New York district court construed “intermediate transmission
station” the same way. See Ex. 2003, 5–15.
The Texas district court determined that “[t]he term ‘intermediate
transmission station’ is defined in” the ’560 patent. Ex. 1013, 29; see
Ex. 2003, 3, 6. We agree that the ’560 patent defines the term “intermediate
transmission station.” See Ex. 1001, 21:67–22:1. In particular, the patent
states: “stations that receive and retransmit broadcast transmissions are called
‘intermediate transmission stations.’” Ex. 1001, 21:67–22:1; see Ex. 1013,
29; Ex. 2003, 3, 6. The ’560 patent further describes the “intermediate
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transmission station” as retransmitting programming both “over-the-air
(hereinafter, ‘broadcast’) or over hard-wire (hereinafter, ‘cablecast’).”
Ex. 1001, 7:16–22; see also 44:28–31 (“transmitting said transmissions via
conventional broadcast or cablecast means”); 169:45–54.
Consistent with the ’560 patent’s definition and both district courts,
we construe “intermediate transmission station” to mean “station that can
receive and retransmit broadcast transmissions.” See Ex. 1001, 21:48–50;
Ex. 1013, 28–31, 88; Ex. 2003, 5–15. This definition does not exclude a
station that can receive and retransmit hard-wire or cablecast transmission.
See Ex. 1001, 7:16–22; see also id. at 44:28–31 (“transmitting said
transmissions via conventional broadcast or cablecast means”), 169:45–54.
2. Other Terms
Because the express construction of other claim terms are not needed
to resolve any dispute in this proceeding at this time, we do not construe any
of the other claim limitations. See, e.g., Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., 868 F.3d 1005, 1017 (Fed. Cir. 2017); Vivid Techs.,
Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
those terms need be construed that are in controversy, and only to the extent
necessary to resolve the controversy.”).
B. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, we consider the level of ordinary skill in the pertinent art at
the time of the invention. Graham, 383 U.S. at 17. “The importance of
resolving the level of ordinary skill in the art lies in the necessity of
maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The person of ordinary
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skill in the art is a hypothetical person who is presumed to have known the
relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573,
1579 (Fed. Cir. 1995). The level of ordinary skill in the art may be reflected
by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
Cir. 2001). Factors that may be considered in determining the level of
ordinary skill in the art include, but are not limited to, (1) the educational
level of the inventor; (2) the type of problems encountered in the art;
(3) prior-art solutions to those problems; (4) the rapidity with which
innovations are made; (5) the sophistication of the technology; and (6) the
educational level of workers active in the field. GPAC, 57 F.3d at 1579;
Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983).
In a given case, one or more factors may predominate. GPAC, 57 F.3d at
1579. Generally, it is easier to establish obviousness under a higher level of
ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637
F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill
generally favors a determination of nonobviousness . . . while a higher level
of skill favors the reverse.”).
Based on Mr. Lipoff’s testimony, Petitioner argues that a person
having ordinary skill in the art at the time of the alleged invention would
have had “a bachelor’s degree in electrical engineering or computer
engineering (or equivalent), and at least three years of work experience in the
field of television broadcasting systems, computer systems or television
electronics, and/or multimedia or real-time video systems.” Pet. 20–21.
Petitioner further argues that “[w]ith more education, for example,
postgraduate degrees and/or study, less experience is needed to attain an
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ordinary level of skill in the art. Similarly, more experience can substitute
for formal education.” Id. at 21 (citing Ex. 1003 ¶ 33).
Patent Owner argues that a person having ordinary skill in the art at the
time of the alleged invention would have had “at least a bachelor’s degree (or
equivalent) in digital electronics, electrical engineering, computer
engineering or a related technical degree, and two to five years of post-degree
experience in a similar field.” PO Resp. 5. Dr. Weaver’s testimony supports
Patent Owner’s position. See Ex. 2001 ¶ 35.
Based on our review of the ’560 patent, the types of problems and
solutions described in the ’560 patent and cited prior art, and the testimony of
both Mr. Lipoff (see Ex. 1003 ¶ 33) and Dr. Weaver (see Ex. 2001 ¶ 35), we
find that a person of ordinary skill in the art at the time of the claimed
invention would have had at least a bachelor’s degree in electrical
engineering or computer engineering (or equivalent), and at least two years of
work experience in the field of television broadcasting systems, computer
systems or television electronics, and/or multimedia or real-time video
systems. We agree with Petitioner’s contention that “[w]ith more education,
for example, postgraduate degrees and/or study, less experience is needed to
attain an ordinary level of skill in the art. Similarly, more experience can
substitute for formal education.” We note that our analysis would be the
same under either party’s proposed level of skill in the art.
C. Alleged Obviousness of Claim 4 of the ’560 Patent in View of Torpey
and Cox ’645
Petitioner contends claim 4 of the ’560 patent is unpatentable under
35 U.S.C. § 103 as obvious in view of Torpey and Cox ’645. Pet. 21–40; Pet.
Reply 3–12. Patent Owner disputes Petitioner’s contentions. PO
Resp. 13–24; PO Sur-Reply 1–5. Below, we provide overviews of Torpey
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and Cox ’645, and then we consider the obviousness issues raised by the
parties. For reasons that follow, we determine Petitioner has shown by a
preponderance of the evidence that the challenged claim would have been
obvious under 35 U.S.C. § 103 in view of Torpey and Cox ’645.
1. Overview of Torpey (Ex. 1005)
Torpey is a journal article titled “Television Automation—Design
Concepts.” Ex. 1005.5 Torpey describes a “computer-driven automation
package” installed in television stations across the Canadian Broadcasting
Corporation network. Id. at Abstract. Torpey’s television stations transmit
television programs to subscribers in disparate areas. Id. at 176.
Torpey attempts to solve certain problems associated with automating
the distribution of television programs by creating a fully computerized
television station using a video/audio switcher. Id. at 175. Rather than
requiring a person to be present to operate the switching of the television
programs (id. at 1:3), Torpey teaches a system of automated control of the
video/audio switcher that uses a computer to control the switching of
television programs based on event information inputted through punch
cards. Id. at 3:2‒3. According to Torpey, an automated television system
can be broken into basic subsystems: (1) the video/audio switcher with a
conventional Manual Control Panel; and (2) the automated control system,
which operates the switcher when there is no one to operate the Manual
Control Panel. Id. at 176. Torpey states that “[t]he first item, the video/

5 Petitioner contends that Torpey is prior art under §§ 102(a),(b) and was
publicly accessible prior to the earliest claimed priority date of the ’560
patent, as evidenced by a declaration from Rachel J. Watters, librarian and
Director of Wisconsin TechSearch at the University of Wisconsin-Madison.
Pet. 2 (citing Ex. 1011).
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audio switcher, is straightforward in design and layout.” Id. One element of
Torpey’s video/audio switcher is shown in Figure 1, reproduced below:

Figure 1, above, is a diagrammatic representation of the CBC Moncton
video/audio switcher. Ex. 1005, 176. Another element of Torpey’s
video/audio switcher is shown in Figure 2, reproduced below.

Figure 2, above, is a diagrammatic representation of the CBC Moncton audio
source. Id. Torpey discloses that, as shown in Figure 2, audio facilities
closely follow the video, with the addition of certain separate audio-only
sources and provision for mixing two audio signals for audio-over effects.
Id.
Torpey then discloses that the second subsystem, the automated
control, was designed and built independently of the video/audio switcher.
Id. According to Torpey, “[b]oth the automation and the operator are capable
of controlling the switcher in parallel with one another.” Id. One
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embodiment of Torpey’s automated control system is shown in Figure 3,
reproduced below.

Figure 3, above, is a diagrammatic representation of the CBC Moncton
automated control system. Ex. 1005, 176. According to Torpey, the
component parts of the automated system include: (1) a small general-
purpose digital computer; (2) clock and clock interface; (3) data input
terminal(s): (a) punched card reader and (b) keyboard; (4) relay switching
interface; (5) status display – alphanumeric video character generator; (6)
input interface for manual controls from human operator, feedback from
devices, etc.; and (7) software. Id. In Figure 3, the computer reads events
(i.e., an “on air” occurrence) inputted through a punched card reader to
control the switching of the video. Id. The computer stores up to 12 events
ahead and switches the video/audio switcher according a software program
that manages the events. Id.
Torpey further discloses ideas regarding design variations as well as
future expansions of its system, including logging of events, network control,
time sharing, and remote programing. Id. at 177–78. Regarding remote
programming, Torpey specifically teaches that “[i]f a station is equipped with
a computer that runs the switcher and if a string of these stations forms a
network, then program scheduling and preparation of each station’s program
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log can be performed at one central office, and then loaded into each
individual computer via data lines.” Id. at 178.
2. Overview of Cox ’645 (Ex. 1006)
Cox ’645 is a U.S. Patent titled “Teletext Communication System with
Timed Multipage Local Memory.” Ex. 1006, code (54). Cox ’645 discloses
a teletext communications system comprising a transmitter, e.g., an orbiting
satellite, transmitting multiple pages of a teletext encoded data service at
selected times of the day. Id. at code (57). Specifically, Cox ’645 discloses
that its “teletext decoder is adapted for acquiring and storing each transmitted
teletext page at a page memory defined by said page memory address code
and automatically rebroadcasts each of the stored pages for which the stored
selected time interval coincides with the transmitted time of day code.” Id.
Cox ’645 discloses a system at a central station that receives teletext
formatted data and automatically rebroadcasts the stored data to a plurality of
remote receivers at selected times during the day. Id. at 8:5–10.
One embodiment of Cox ’645’s system is shown in Figure 1,
reproduced below.

Figure 1, above, is a block diagram illustrating a teletext
communication system. Ex. 1006, 2:52–54. Cox ’645 further discloses that
the teletext communication system includes satellite transmitter 10 that
transmits multiple channels of television signals to cable television head
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end 12 (which includes satellite receiver 20, multi-page teletext decoder 22,
and television channel modulator 24), for rebroadcast over cable 14 to a
number of subscriber television receivers 16. Id. at 3:21–27, 43–59.
According to Cox ’645, embedded in the vertical intervals of the television
signals are control data and teletext pages. Id. at 3:29–34. The control data
includes, for each teletext page, “first and second auxiliary data rows.” Id.
at 3:34–35.
One embodiment of the second auxiliary row control data of
Cox ’645’s system is shown in Figure 3, reproduced below.

Figure 3, above, is a diagram illustrating the teletext data formatting
scheduled used by Cox ’645’s teletext communication system. Ex. 1006,
2:55–57. As shown, in Figure 3, the second auxiliary row, “row 25,”
includes a “time of day code” “specifying the time of day.” Id. at 4:47–51.
Cox ’645 states that control data found within the first and second auxiliary
data rows are “normally not intended for teletext display.” Id. at 3:34–39.
Cox ’645 also discloses the use of teletext decoder 22 that is adapted
for acquiring the teletext encoded signals and is responsive to the control data
for storing each programming guide page in a respective page memory. Id.
at 3:51–54, Fig. 1. In addition, according to Cox ’645, decoder 22 is
responsive to the control data for automatically reading and decoding the
stored programming guide pages during selected times of the day and
coupling the decoded pages in a predetermined cyclical manner to the input
of a television channel modulator 24. Id. at 3:54–59, Fig. 1.
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One embodiment of Cox ’645’s teletext decoder 22 is shown in
Figure 4, reproduced below.

Figure 4, above, is a block diagram of the multi-page teletext decoder of
Figure 1. Ex. 1006, 2:58–59. Cox ’645 discloses that the decoder includes a
number of page memories in which teletext pages can be stored. Id.
at 5:30–51, Fig. 4. According to Cox ’645, the decoder receives the
television signal, including the control data and the teletext pages, via a
satellite receiver at the head end. Id. at 5:6–10. Cox ’645 teaches that for
each teletext page, a data acquisition circuit at the decoder acquires row 24
and couples the memory page address byte to a signal distribution control
circuit at the decoder. Id. at 5:18–24. Cox ’645 explains that the data
acquisition circuit also acquires the teletext page and couples it to the data
inputs of the page memories. Id. at 5:40–45. According to Cox ’645, the
signal distribution control circuit processes the memory page address byte to
generate a “page memory select signal” corresponding to the memory page
address byte. Id. at 5:26–30. Cox ’645 discloses that the page memory select
signal is coupled to the “select” input of each of the page memories, thereby
selecting the page memory corresponding to the memory page address byte.
Id. at 5:30–33. As taught in Cox ’645, the signal distribution control circuit
then generates an output signal enabling the “write” input of the selected
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page memory, thereby storing the time-on and time-off codes and the
corresponding teletext page at the selected page memory. Id. at 5:34–45.
Each teletext page is stored in this manner at a respective page memory. Id.
at 5:46–51.
3. Analysis of Torpey and Cox ’645 as Applied to Challenged
Independent Claim 4
a. Preamble
Claim 4 recites “[a] method of communicating image programming
and computer programming to at least one subscriber in a network, said
network including at least one programming origination station, at least one
intermediate transmission station, and at least one subscriber station, said
method comprising the steps of.” Ex. 1001, 291:6–11.
Petitioner contends the preamble is a non-limiting statement of
“purpose or intended use of the invention” but nonetheless argues that
Torpey and Cox ’645 teach the preamble. Pet. 27–28 (citing Ex. 1003
¶¶ 102–09). To support its argument, Petitioner first relies on Torpey’s
television programming as the “image programming” that is communicated.
Id. at 28 (citing Ex. 1003 ¶ 104). Petitioner also relies on Cox ’645’s
description of control data as the communicated “computer programming.”
Id. at 29 (citing Ex. 1007, Figs. 1–3, 3:31–4:4, 4:27–45, 5:4–24). Petitioner
argues it would have been obvious to a person of ordinary skill in the art at
the time of the invention to use the combined teachings of Torpey and
Cox ’645 to communicate “computer programming.” Id. Petitioner states
that “while Cox ’645 transmits teletext pages to the subscriber receivers as
television signals (without including the control data), it would have been
widely understood that, in other implementations of teletext, at least some of
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this control data would reach the subscriber receivers.” Id. (citing Ex. 1007,
Figs. 1–3, 3:31–4:4, 4:27–45, 5:4–24).
Alternatively, Petitioner argues that the proposed combination could be
used to transmit “computer programming” in the form of software. Id.
Petitioner relies on the testimony of Mr. Lipoff to support its position. Id.
Mr. Lipoff testifies that
[i]t would have been widely understood and obvious to a [person
of ordinary skill in the art] that software intended for subscriber
stations could be inserted into the vertical interval of a television
signal. One example was telesoftware, which provisioned
teletext receivers with software by inserting it into the vertical
interval of a television signal.
Ex. 1003 ¶ 104. Mr. Lipoff cites to two instances when such telesoftware
was inserted into the vertical interval of television signals in order to transmit
programming to a receiver. Id. (citing Ex. 1003, Ex. D, 557–58; Ex. E,
482–83, 486).
Petitioner further relies on Cox ’645’s satellite transmission (i.e., the
“programming origination station”) to a location over-the-air to Torpey’s
network television station (i.e., the “intermediate transmission station”).
Pet. 30 (citing Ex. 1005, Abstract; Ex. 1009, 165; Ex. 1003 ¶¶ 106–07).
According to Petitioner, Torpey’s network television station is between
(intermediate) the satellite and subscriber receiver and transmits the
television program. Id. at 30–31 (citing Ex. 1005, Abstract; Ex. 1009, 150;
Ex. 1003 ¶¶ 108–09).
Patent Owner contends that the preamble is limiting because it
“provides antecedent basis for, and recites, several claim limitations that
appear in the rest of claim 4.” PO Resp. 14–17. Patent Owner relies on
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Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999), stating, “If the claim preamble, when read in the context of the entire
claim, recites limitations of the claim, or, if the claim preamble is ‘necessary
to give life, meaning, and vitality’ to the claim, then the claim preamble
should be construed as if in the balance of the claim.” Id.
Patent Owner further argues that neither Torpey nor Cox ’645 disclose
“[a] method of communicating image programming and computer
programming to at least one subscriber in a network.” PO Resp. 15
(emphasis omitted, alteration in original). Rather, according to Patent
Owner, “when read carefully, the Petition does not actually allege that either
of the references discloses communicating ‘computer programming’ to a
subscriber.” Id. Patent Owner states that the Petition merely argues that “it
would have been obvious to a [person of ordinary skill in the art] to [have]
use[d] the proposed combination to communicate ‘computer programming.’”
Id. (citing Pet. 29). Patent Owner disagrees with the Petition, arguing that
“[w]hen discussing the combination in earnest, the Petition itself does not
allege that either reference discloses communication of ‘computer
programming’ to a subscriber.” Id. Patent Owner further argues that neither
Torpey’s “Program log” (transmitted from the Central Office to the Network
Television Station) nor Cox ’645’s teletext “Control Data” (transmitted from
the Satellite to the Head End) are received by the subscriber station (e.g.,
“Subscriber” in Torpey and “Subscriber Receiver” in Cox ’645). Id. at 15–
17. Instead, according to Patent Owner, only the “television program” of
Torpey and a standard NTSC television signal representative of the “Stored
teletext page” of Cox ’645 are sent to the subscriber receiver. Id. at 17
(citing Ex. 1006, 2:5–14). Thus, Patent Owner concludes that by Petitioner’s
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own arguments, no computer programming makes its way to the subscriber
receiver. Id.
“Whether to treat a preamble term as a claim limitation is determined
on the facts of each case in light of the claim as a whole and the invention
described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354,
1358 (Fed. Cir. 2010) (internal quotation marks omitted). “Absent clear
reliance on the preamble in the prosecution history, or in situations where it is
necessary to provide antecedent basis for the body of the claim, the preamble
generally is not limiting.” Symantec Corp. v. Computer Assocs. Int’l,
Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotation marks and
citation omitted). Additionally, preamble language that merely states the
purpose or intended use of an invention generally is not treated as limiting
the scope of a claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d
473, 478 (Fed. Cir. 1997). Yet, when the limitations in the body of the claim
rely upon or derive essential structure from the preamble, then the preamble
acts as a necessary component of the claimed invention and is limiting. See
Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).
Our reviewing court has explained, however, that a “conclusion that
some preamble language is limiting does not imply that other preamble
language, or the entire preamble, is limiting.” Cochlear Bone Anchored Sols.
AB v. Oticon Med. AB, 958 F.3d 1348, 1355 (Fed. Cir. 2020); see TomTom,
Inc. v. Adolph, 790 F.3d 1315, 1322–23 (Fed. Cir. 2015) (holding the court
erred in determining that it had to construe the entire preamble if it construed
a portion of it), citing Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 868 (Fed.
Cir. 1985), overruled in part on other grounds by Nobelpharma AB v.
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Implant Innovations, Inc., 141 F.3d 1059, 1068 (Fed. Cir. 1998) (en banc in
part). The Court in Cochlear Bone Anchored specifically held that even
when a phrase in a preamble provides a necessary structure for a claim, that
preamble structure does not necessarily convert the entire preamble into a
limitation, particularly one that only states the intended use of the invention.
958 F.3d at 1355.
Based on the current record, we find at least part of the preamble
limiting because (1) the claim limitations relating to “network,” “origination
station,” “intermediate transmission station,” and subscriber station” rely on
the preamble for antecedent basis, and (2) it recites “communicating image
programming and computer programming to at least one subscriber,” which
provides a limitation to the claim for communicating the same. Accordingly,
we find these portions of the preamble recite essential structures of the
communication method and are limiting. We need not reach a determination
on whether the entirety of the preamble is limiting because we find the prior
art teaches the preamble.
Specifically, we find Petitioner has shown by a preponderance of the
evidence that the combination of Torpey and Cox ’645 teaches or suggests a
[a] method of communicating image programming and computer
programming to at least one subscriber in a network, said
network including at least one programming origination station,
at least one intermediate transmission station, and at least one
subscriber station, said method comprising the steps of.
We agree with Petitioner that “at least some of this control data would reach
the subscriber receivers” or “[i]t would have been widely understood and
obvious to a [person of ordinary skill in the art] that software intended for
subscriber stations could be inserted into the vertical interval of a television
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signal” (see Pet. 29), because Cox ’645 discloses control data and discloses
that
teletext encoded data can be transmitted during the vertical
intervals of any one of these signals. The teletext encoded data
transmitted by the satellite may represent any desired
information, including, for example, multiple pages of
programming guide or the like identifying the content of the
television programming signals being transmitted by the
satellite.
Ex. 1006, 1:67–2:5. So we know a person of ordinary skill in the art would
have understood that encoded data, such as a computer program or
telesoftware, could have been sent via satellite to an intermediate
transmission station (i.e., Torpey’s network television stations). We, thus,
find Cox ’645 to indicate three things: (1) it transmits signals via satellite;
(2) the head end facility corresponds to the intermediate transmission station
(i.e., Torpey’s network television stations); and (3) encoded embedded
control data is not relayed from Cox ’645’s head end facility in the vertical
interval of television signals to the television receiver subscriber stations.
See id. at 1:67–2:14, 3:34–39. Cox ’645 does not explicitly disclose the
transmission of computer programming as required by the claims.
Petitioner then cites to Cox ’404 to support its position that although
“Cox ’645 transmits teletext pages to the subscriber receivers as television
signals (without including the control data), it would have been widely
understood that, in other implementations of teletext, at least some of this
control data would reach the subscriber receivers.” Pet. 29 (citing Ex. 1007,
Figs. 1–3, 3:31–4:4, 4:27–45, 5:4–24); Tr. 8:12–9:3. According to Petitioner,
if this control data is considered “computer programming,” then the proposed
combination would communicate “computer programming.” Petitioner
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alternatively suggests that the proposed combination could be used to
transmit “computer programming” in the form of software. Petitioner
concludes that “[i]t would have been widely understood and obvious to a
POSA that software intended for subscriber stations could be inserted into the
vertical interval of a television signal.” Id. Petitioner relies on the testimony
of Mr. Lipoff to support its position. Id. at 28–29 (citing Ex. 1003 ¶ 104).
Regarding Petitioner’s argument, we credit the testimony of Mr. Lipoff
delineating the transmission of telesoftware in early teletext systems. See
Ex. 1003 (citing Ex. 1003, Ex. D, 557–58; Ex. E, 482–83, 486). Mr. Lipoff’s
testimony and cited evidence demonstrate at least two instances at the time of
the invention when telesoftware actually was inserted into the vertical
interval of television signals in order to transmit programming instructions to
a television subscriber receiver as required by the challenged claims. See id.
Patent Owner disputes Petitioner’s position arguing “Petitioner fails to
explain, however, how the teachings of Cox ’404 with its television receiver
receiving certain control data fits into the Torpey-Cox ’645 combination.”
PO Sur-Reply 3–4 (citing Ex. 1006, 2:1–14). We do not agree with Patent
Owner. Petitioner notes that Cox ’404 discloses an invention from the same
inventors as Cox ’645 so one of ordinary skill in the art naturally would have
considered the two references together. Pet. Reply 7.
Patent Owner also disputes Petitioner’s position arguing “the control
data in the Torpey-Cox ’645 combination does not reach the subscriber
because Cox ’645 converts the teletext into visual signals.” PO Sur-
Reply 3–4 (citing Ex. 1006, 2:1–14). Again, we do not agree with Patent
Owner because Petitioner demonstrates Cox ’404 describes a “conventional
television signal transmitter” that (1) transmits teletext control data to a
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“television receiver including a conventional teletext decoder” and (2) is
“adapted for transmitting a teletext signal in the vertical blanking interval of a
broadcast television signal.” Pet. Reply 7. (citing Ex. 1007, 3:21–25
(describing Figure 1), 4:27–37) (emphasis omitted). Additionally, Petitioner
persuasively explains that Cox ’404’s teletext decoder is a computer and it
receives teletext control information “to do things, to cause something to
happen, then, at the television receiver.” Tr. 9:16–10:17; see also
Ex. 1007, 5:4–6 (“Teletext decoder 38 typically comprises a keyboard 42, a
data acquisition circuit 44, a page memory 46, a time base circuit 48, and an
RGB display generator 50.”). Thus, Cox ‘404 contemplates transmitting
control data to a subscriber’s receiver, contrary to Patent Owner’s argument.
Patent Owner further disputes that the combination of Cox ’645 and
Torpey teaches or suggests an “intermediate transmission station” as required
by the preamble and other claim limitations. PO Resp. 18–19. Patent Owner
specifically argues there is no disclosure of “a satellite receiving and
retransmitting broadcast transmissions in Torpey” and that disclosed cable
head end in Cox ’645 is not capable of “retransmit[ting] broadcast
transmissions.” Id. at 19.
Petitioner contends, however, that Torpey and Cox ’645 render an
“intermediate transmission station” obvious. Pet. 30 (citing Ex. 1003 ¶ 108).
Consistent with its proposed claim construction, Petitioner argues “Torpey’s
network television station receives and retransmits transmissions of television
programs sent over-the-air from one location, Cox ’645’s satellite, to many
locations, Torpey’s network television stations (Torpey envisions multiple
network television stations, Ex. 1005, Abstract.).” Id. at 30–31 (citing
Ex. 1003 ¶ 109).
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We agree with Petitioner and find that Torpey and Cox ’645 teach or at
least suggest an “intermediate transmission station” as we have construed the
term. See supra Section II.A.1. Specifically, our construction does not limit
the method by which a program is retransmitted. According to the ’560
patent, cablecast retransmission may be used by an intermediate transmission
station. Therefore, we find that Torpey’s network television station is an
intermediate transmission station because it would have been capable of
receiving television programs sent over-the-air from a satellite (Cox ’645
satellite transmitter 10) and then retransmiting transmissions to another
location. Ex. 1005, 178, Figs. 1 and 2. Torpey specifically discloses:
[i]f a station is equipped with a computer that runs the switcher
and if a string of these stations forms a network, then program
scheduling and preparation of each station’s program log can be
performed at one central office, and then loaded into each
individual computer via data lines. The list of future possibilities
is long, and is limited only by the imagination and the
requirements of the broadcaster.
See id. at 178. Additionally, we credit the testimony of Mr. Lipoff, who
explains that in Petitioner’s proposed combination, Torpey would retransmit
a television program sent over-the-air from one location to many locations,
which would be Torpey’s network television stations. See Ex. 1003
¶¶ 108–09.
Accordingly, after our review of the evidence of record, we determine
Petitioner has shown by a preponderance of the evidence that the
combination of Cox ’645 and Torpey teaches or suggests the challenged
claim preamble.
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b. originating an information transmission containing a control signal
from said at least one programming origination station designating
at least a portion of a programming presentation, which is effective
to accomplish
Claim 4 recites “originating an information transmission containing a
control signal from said at least one programming origination station
designating at least a portion of a programming presentation, which is
effective to accomplish.” Ex. 1001, 291:17–22.
Petitioner contends that Torpey and Cox ’645 teach originating an
information transmission containing a control signal (e.g., Torpey’s program
log) from said at least one programming origination station (e.g., Cox ’645’s
satellite) designating at least a portion of a programming presentation (e.g.,
Torpey’s television program). Pet. 31 (citing Ex. 1003 ¶¶ 110–15).
Petitioner argues that “the satellite originates a transmission of the program
log to the network television station.” Id. (citing Ex. 1003 ¶ 111). According
to Petitioner, Torpey describes the network television station receiving the
program log “via data lines” from a central office, and a person of ordinary
skill in the art “would have been motivated, based on Cox ’645, to modify
Torpey to send the program over-the air from the satellite, just as the satellite
in Cox ’645 sends the control signals associated with the teletext pages.” Id.
(citing Ex. 1003 ¶ 111).
Petitioner further contends the program log, which lists a number of
television programs to be aired, designates a television program. Pet. 32
(citing Ex. 1005, 176; Ex. 1003 ¶ 112). Therefore, Petitioner concludes that
“[b]ecause Torpey and Cox ’645 teach originating a transmission of a
program log from a satellite, and that the program log designates a television
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program, Torpey and Cox ’645 thus teach” the challenged limitation. Id.
at 33.
Patent Owner does not dispute Petitioner’s contentions. See generally
PO Resp. Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Based on the entirety of the trial record before us, we agree with
Petitioner and determine a person of ordinary skill in the art would have been
motivated, based on the teachings of Cox ’645, to modify Torpey to send the
program over the air from the satellite and that the program log does act as a
signal designating a least a portion of a programming presentation to be
played as recited by the challenged claim.
c. effecting said at least one intermediate transmission station to
control a computer to select a receiver and communicate said at
least a portion of said programming presentation to a transmitter,
and transmit to said at least one subscriber station a signal
including said at least a portion of a programming presentation
Claim 4 recites “effecting said at least one intermediate transmission
station to control a computer to select a receiver and communicate said at
least a portion of said programming presentation to a transmitter, and
transmit to said at least one subscriber station a signal including said at least a
portion of a programming presentation.” Ex. 1001, 291:17–22.
Petitioner contends that Torpey discloses this limitation because
Torpey’s network television station “controls the automated control system,
based on the program log, to select an input through which a television
program is received and communicate the television program to a
transmitter.” Pet. 34 (citing Ex. 1003 ¶ 117). Petitioner argues that Torpey’s
television station includes a “video/audio switcher” and an “automated
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control system which operates the switcher.” Id. at 34–35 (citing
Ex. 1005, 176). Citing to Torpey’s Figure 1, Petitioner further argues that the
video switcher at the television station is configured to switch between a
number of inputs to broadcast a received television signal on a transmitter.
Id. at 35 (citing Ex. 1005, Fig. 4; Ex. 1003 ¶ 117). According to Petitioner’s
proposed combination, the network television station receives the program
log, which designates a television program to be aired, the video source of
the television program, and the time at which the television program is to be
aired. Id. (citing Ex. 1005, 176, Fig. 4; Ex. 1003 ¶ 118).
Petitioner then contends that “[b]ased on the program log, an
automated control system at the network television station controls the
switcher to air the designated television program at the designated time.” Id.
at 36 (citing Ex. 1005, 176, Fig. 4; Ex. 1003 ¶ 119). Petitioner argues that
“[t]o air the television program, the automated control system selects the
designated video source—i.e., the input through which the television program
is received—and transmits the designated television program on a
transmitter.” Id. at 36–37 (citing Ex. 1005, 176; Ex. 1003 ¶ 120). Therefore,
Petitioner concludes “[b]ecause Torpey and Cox ’645 thus teach that, based
on the program log, the network television station controls the automated
control system to select an input and communicate the television program to
the transmitter,” the combined references teach the challenged limitation.
Pet. 37.
Patent Owner, however, disputes Petitioner’s contention that Torpey’s
selection of an input at the network television station is the same as selecting
a receiver. PO Resp. 20–23. Patent Owner argues that Torpey’s
“video/audio switcher” merely facilitates connecting video/audio inputs to
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outputs but it does not select a receiver and subsequently coordinate the
desired input-output connection to the selected output. Id. at 22–23.
According to Patent Owner, Torpey is distinguishable from the challenged
claim because the ’560 patent states that its “control processors (71) and
computers (73) [] selectively automate connection and operation of
receivers (53), recorder/players (76), computers (73), generators (82),
strippers (81) . . . .” Id. at 22 (citing Ex. 1001, Abstract) (alterations in
original). Patent Owner then argues that “[r]eceiver 53 is specifically
selected, tuned, and its output used, when the head end has a plurality of
receivers 53–62 shown in Fig. 6A. Torpey is silent as to any ability to select
a receiver. Torpey merely receives all received signals and uses the matrix to
select a signal to ‘TAKE.’” Id. at 22–23 (citing Ex. 1001, 197:14–16).
As to Cox ’645, Patent Owner points to a prior Board decision
(1) holding held that Cox ’645 does not disclose “select[ing] a receiver” and
(2) reversing a rejection of claim 4 (then pending claim 65) based on
Cox ’645:
Claim [4] recites two distinct phrases: “transmit to said at least
one subscriber station” and “select a receiver.” In context,
reciting “select a receiver” (emphasis added) and “transmit to
said at least one subscriber station” implies the selection of a
single receiver instead of, as the Examiner reasons, selecting a
set of receivers each located “at least one subscriber station.”
Furthermore, Cox does not specify clearly whether or not the
decoder selects subscriber receivers at the cited passages,
contrary to the Examiner’s finding. See Cox 3:54–62; Ans. 11–
12.
PO Resp. 23 (citing Ex. 1002, 96–97).
We agree with Patent Owner that the Board previously addressed the
application claim that eventually issued as claim 4. See Ex. 1002, 96.
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Additionally, we agree the Board determined that the limitations recited in
the claim require the selection of a single receiver instead of set of receivers.
Id. at 96–97. We do not agree, however, that the Board’s holding or the
claim language itself requires the selected receiver be located at the end
user’s subscriber station.
Claim 4 recites “effecting said at least one intermediate transmission
station to control a computer to select a receiver” which requires the
intermediate transmission station to control a computer.
Ex. 1001, 291:17–18. Immediately following, the claim then recites “and
communicate said at least a portion of said programming presentation to a
transmitter” indicating that the intermediate transmission station
communicates the programming presentation to a transmitter. Id.
at 291:18–20. The claim next recites “and transmit to said at least one
subscriber station a signal.” Id. at 291:20–21. The separation of the clauses
reciting “receiver” and “at least one subscriber station” appears to leave open
the location of the receiver.
The specification of the ’560 patent supports a reading that the receiver
may be located at the intermediate transmission station. Specifically,
the ’560 patent discloses that computer 73 (see Fig. 6A) located at an
intermediate transmission station is caused to received information from a
particular transmission by having satellite earth station receiver 50 receive a
signal that goes through a low noise amplifier 51, 52, which then causes TV
receiver 53 to tune to a particular satellite transmission. Ex. 1001, 197:4–16,
Fig. 6A. This, in turn, causes switch 75 to output information of a
transmission to cable channel modulator 83, 87, or 91. Id. at 197:15–18. TV
receiver stations 53–56 are located at an intermediate transmission station.
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Id. at 169:55–63. Based on this disclosure, we understand the receiver of
claim 4 may be located at an intermediate transmission station.
Additionally, based on Torpey’s disclosure, we agree with Petitioner
that Torpey’s automated control system selects a designated video source—
i.e., the input through which the television program is received—and
transmits the designated television program on a transmitter. See Pet. 36–37.
Specifically, we find that Torpey’s input functions as a single selected
receiver (located at an intermediate transmission station) of a signal that is
then transmitted to a subscriber station. See id. Therefore, we conclude
Torpey’s input is a receiver within the context of the ’560 patent claims.
Accordingly, after our review of the evidence of record, we determine
Petitioner has shown by a preponderance of the evidence that the
combination of Cox ’645 and Torpey teaches or suggests the challenged
claim limitation.
d. transmitting said information transmission containing said control
signal from said at least one programming origination station to
said at least one intermediate transmission station.
Claim 4 recites “transmitting said information transmission containing
said control signal from said at least one programming origination station to
said at least one intermediate transmission station.” Ex. 1001, 291:23–26.
Petitioner contends that Torpey and Cox ’645 teach transmitting said
information transmission containing said control signal (e.g., Torpey’s
program log) from said at least one programming origination station (e.g.,
Cox ’645’s satellite) to said at least one intermediate transmission station
(e.g., Torpey’s network television station). Pet. 38 (citing Ex. 1003
¶¶ 125–28). Petitioner argues that the satellite originates a transmission of
the program log to the network television station. Id. (citing Ex. 1003
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¶¶ 126–27). According to Petitioner, although Torpey describes the network
television station receiving the program log “via data lines” from a central
office, a person of ordinary skill in the art would have had reason, based on
Cox ’645, to modify Torpey’s network to send both the program log and the
television programming over the air from a satellite, just as the satellite in
Cox ’645 sends the control signals and the teletext pages over the air. Id.
at 39 (citing Ex. 1003 ¶¶ 126–27). Because Torpey and Cox ’645 teach
transmitting the program log from the satellite to the network television
station, Petitioner concludes that Torpey and Cox ’645 teach the required
“transmitting said information transmission containing said control signal
from said at least one programming origination station to said at least one
intermediate transmission station.” Id. at 39–40.
Patent Owner disputes Petitioner’s contentions and argues Torpey’s
transmission of program logs from a “central office” via “data lines” does not
meet the claim limitation. PO Resp. 24 (citing Ex. 1005, 178). According to
Patent Owner, a central office is not a programming origination station and it
cannot “originate the transmission of image programming as the
programming origination station of the ’560 Patent would.” Id. (citing
Ex. 1001, 11:42–44 (“a studio or station that originates the broadcast
transmission of programming is called the ‘program originating studio.’”)).
Patent Owner argues that Torpey is silent as to the control instructions being
transmitted from a programming origination station. Id. Patent Owner
further argues that Cox ’645 does not make up for Torpey’s failure. Id.
We do not agree with Patent Owner’s position because we do not
understand Petitioner’s arguments to be based on Torpey relaying its program
logs from a “central office” via “data lines.” Rather, we understand
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Petitioner’s arguments to be that Torpey’s network would have sent both the
program log and the television programming over the air from a satellite, just
as the satellite in Cox ’645 sends the control signals and the teletext pages
over the air. See Pet. 39 (citing Ex. 1003 ¶¶ 126–27). Therefore, we find that
Torpey’s program logs qualify as a control signal and would have had reason
to send it via Cox ’645’s satellite.
Accordingly, after our review of the evidence of record, we determine
Petitioner has shown by a preponderance of the evidence that the
combination of Cox ’645 and Torpey teaches or suggests the challenged
claim limitation.
e. Reasons to Combine Torpey and Cox ’645
Petitioner contends that a person of ordinary skill in the art at the time
of the invention would have had reason to combine the teachings of Torpey
and Cox ’645. Pet. 23. Petitioner specifically argues that while Torpey
describes the network television station receiving the program log “via data
lines” from a central office, a person of ordinary skill in the art “would have
been motivated, based on Cox ’645, to modify Torpey’s network to send the
program log over-the-air in the same manner as the television programs, just
as the satellite in Cox ’645 sends the control data over-the-air in the same
manner as the teletext pages.” Id. (citing Ex. 1003 ¶¶ 95–96). According to
Petitioner, a person of ordinary skill in the art “would have been motivated to
send both the program log and the television programs over-the-air from a
satellite, like the control data and teletext pages in Cox ’645.” Id. Petitioner
notes that, for example, “the program log could be embedded in a vertical
interval of television signals sent by the satellite, just as Cox ’645’s control
data is embedded in a vertical interval of the television signals sent by the
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satellite.” Id. at 24 (citing Ex. 1003 ¶¶ 95–96). Petitioner argues a person of
ordinary skill in the art “would have understood that transmitting control
signals over-the-air like the television programs is efficient and effective.”
Id. (citing Ex. 1003 ¶ 97). Petitioner further argues that it is efficient because
(1) it makes use of an existing channel of communication to the network
television station, removing the need for the data line to the network
television station and simplifying infrastructure, and (2) it removes a possible
point of failure in Torpey’s system. Id. (citing Ex. 1003 ¶ 97).
Patent Owner does not address whether a person of ordinary skill in the
art would not have attempted to combine the teachings of Torpey with those
of Cox ’645. See generally PO Resp. Nonetheless, the burden remains on
Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d
at 1378.
We have considered all arguments and supporting evidence regarding
the rationale for combining the teachings of Torpey with Cox ’645, and find
Petitioner articulates a reasoning with a rational underpinning that a person of
ordinary skill in the art would have combined the teachings from the cited
prior art to arrive at the invention recited in the challenged claims. KSR, 550
U.S. at 418. A motivation to combine may be found “explicitly or implicitly
in market forces; design incentives; the ‘interrelated teachings of multiple
patents’; ‘any need or problem known in the field of endeavor at the time of
invention and addressed by the patent’; and the background knowledge,
creativity, and common sense of the person of ordinary skill.” ZUP, LLC v.
Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018) (quoting Plantronics,
Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)).
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Based on the evidence of record, Petitioner relies on Cox ’645 to
provide a more explicit teaching regarding data that is embedded in the
vertical interval of television signals and for sending signals over a satellite in
the same manner TV signals are relayed. See Ex. 1003 ¶¶ 95–96. Given
Cox ’645’s express teaching regarding sending control data over the air in the
same manner as the teletext pages (see id.), we agree with Petitioner that a
person of ordinary skill would have had reason to turn to Cox ’645’s
teachings for use with Torpey’s automated system and would have had a
reasonable expectation of success in using the systems together. See
Ex. 1003 ¶¶ 94–98; Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566
F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348 (Fed. Cir. 2007)).
f. Summary
Based on the foregoing, we conclude Petitioner has demonstrated by a
preponderance of the evidence that challenged independent claim 4 would
have been obvious under 35 U.S.C. § 103 in view of the combined teachings
of Torpey and Cox ’645.
D. Analysis of Cox ’645 and Cox ’404 as Applied to
Challenged Claims 5–10
Petitioner contends independent claim 5 and dependent claims 6–10 of
the ’560 patent are unpatentable under 35 U.S.C. § 103 as being obvious in
view of Cox ’645 and Cox ’404 and provides specific arguments for each
challenged claim. Pet. 21, 40–77 (citing Ex. 1003 ¶¶ 129‒210);
Reply 12–27. Patent Owner disputes Petitioner’s contentions. PO
Resp. 25–38; PO Sur-Reply 6–26. For reasons that follow, we determine
Petitioner has failed to show by a preponderance of the evidence that
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challenged claims 5–10 would have been obvious under 35 U.S.C. § 103 in
view of Cox ’645 and Cox ’404.
1. Overview of Cox ’645 (Ex. 1006)
See supra, Section II.C.2.
2. Overview of Cox ’404 (Ex. 1007)
Cox ’404 is a U.S. Patent titled “Special Services Teletext
Communications Systems,” and issued on July 12, 1983. Ex. 1007,
codes (45), (54). Cox ’404 is directed to “[a] teletext communications system
includ[ing] a transmitter cyclically transmitting a plurality of conventional
teletext encoded data rows together with one or more teletext encoded special
services data rows.” Id. at code (57). One embodiment of Cox ’404 is
reproduced below.

Figure 1, above, is a block diagram illustrating the video portion of a
television signal transmitter including a teletext encoder. Id. at 2:52–54.
Cox ’404 discloses that “a conventional television signal transmitter . . .
transmit[s] a teletext signal in the vertical blanking interval of a broadcast
television signal.” Id. at 3:21–25. Cox ’404 further discloses that video
signal source 12 also receives an input from teletext encoder 18, which
develops an appropriately bandlimited digitally encoded serial data signal
and inserts this encoded signal in one or more unused horizontal lines of the
vertical blanking interval of the composite video signal developed on
conductor 16. Id. at 3:31–37.
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Cox ’404 further describes how a teletext page is stored in a page
memory at a decoder. Id. at 5:44–51, 6:4–30. In another embodiment of
Cox ’404, a decoder is disclosed and a figure of such decoder is reproduced
below:

Figure 3, above, is a block diagram illustrating pertinent portions of a
television receiver equipped with a conventional teletext decoder.
Ex. 1007, 2:57–59. Cox ’404 teaches that when the decoder receives a
teletext page, a data acquisition circuit couples the teletext page to a page
memory for storage. Id. at 5:44–51. According to Cox ’404, each teletext
page includes twenty-four rows of “character bytes,” and each row is
identified by a row address code, as shown in Figure 2. Id. at 6:14–17.
Cox ’404 notes that the page memory “contains sufficient memory capacity
to store one complete page of acquired teletext data.” Id. at 6:4–5. In
particular, Cox ’404 discloses that the page memory typically includes “a 24
row by 40 column matrix of individually addressable 8 bit memory
locations,” and each character byte of the teletext page is “written into a
corresponding memory location.” Id. at 6:6–12.
One embodiment of the format for teletext encoded data is shown in
Figure 2, reproduced below.
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Figure 2, above, is a chart illustrating the British teletext signal format.
Ex. 1007, 2:55–56. Cox ’404 teaches that storing a teletext page into a
memory location requires a row address code and a column address code. Id.
at 6:6–16. According to Cox ’404, the column address code is “internally
generated” and “incremented in response to each character Byte of the
acquired data row” of the teletext page. Id. at 6:15–17. “In this manner,
page memory 46 is loaded for storing an entire page of teletext data.” Id.
at 6:23–25.
3. Analysis of Cox ’404 and Cox ’645 as Applied to Challenged
Independent Claim 5
a. Preamble
Claim 5 recites “[a] method of communicating units of programming
to a subscriber in a network, said network including at least one
programming origination station, an intermediate transmission station, and at
least one subscriber station, said intermediate transmission station
transmitting said units of programming to said at least one subscriber station,
said method comprising the steps of.” Ex. 1001, 291:27–33.
Petitioner contends that Cox ’645 and Cox ’404 together teach
communicating a teletext page to a subscriber receiver in a network that
includes a satellite, a head end, and the subscriber receiver, and the head end
transmitting the teletext page to the subscriber receiver. Pet. 48. Therefore,
Petitioner concludes that Cox ’645 and Cox ’404 teach the preamble. Id.
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Patent Owner does not dispute Petitioner’s contentions. See generally PO
Resp. Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. Based on the
current record, and for the reasons Petitioner states, we find that Petitioner
has shown that Cox ’645 and Cox ’404 together teach the preamble to
independent claim 5 regardless of whether the preamble is limiting.
b. receiving an information transmission containing a control signal
from said origination station at said intermediate transmission
station
Claim 5 recites “receiving an information transmission containing a
control signal from said origination station at said intermediate transmission
station.” Ex. 1001, 291:34–36.
Petitioner contends that Cox ’645 teaches this limitation by disclosing
that the cable network head end receives control data (i.e., a control signal)
from the satellite that includes, for each teletext page, “first and second
auxiliary data rows.” Pet. 51 (citing Ex. 1006, 3:34–35). Petitioner argues
that the first auxiliary data row, “row 24,” includes a “memory page address
byte,” “time-on and time-off codes,” a “magazine code,” and a “page number
code.” Id. (citing Ex. 1006, Fig. 2, 4:3–7, 4:23–25). Petitioner then argues
that the second auxiliary row, “row 25,” includes a “time of day code,”
“specifying the time of day.” Id. (citing Ex. 1006, Fig. 3, 4:47–51).
According to Petitioner, “[b]oth rows 24 and 25 also include a “magazine
code” and “page number code” for the teletext page. Id. at 51–52 (citing
Ex. 1006, 4:3–7).
Patent Owner does not dispute Petitioner’s contentions. See generally
PO Resp. Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
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Based on the entirety of the trial record before us, we find that
Petitioner has shown that the first and second auxiliary data rows disclosed in
Cox ’645 are received at the cable network head end from the satellite, which
teaches “receiving an information transmission containing a control signal
from an origination station at an intermediate transmission station” as recited
by the challenged claim.
c. detecting said control signal at said intermediate transmission
station and passing said control signal to a computer
Claim 5 recites “detecting said control signal at said intermediate
transmission station and passing said control signal to a computer.”
Ex. 1001, 291:37–39.
Petitioner contends that Cox ’645 teaches this limitation because
satellite receiver 20 at the head end detects the control data from satellite
transmitter 10 and passes it to decoder 22 (i.e., a computer) at the head end.
Pet. 53 (citing Ex. 1006, 5:6–10; Ex. 1003 ¶¶ 151–52). According to
Petitioner, “[f]or each teletext page, a data acquisition circuit at the decoder
acquires row 24, which includes the memory page address byte, time-on and
time-off codes, and magazine and page number codes for the teletext page.”
Id. (citing Ex. 1006, 4:23–25, 5:18–25). Petitioner notes that “[t]he time of
day code is stored in a row 25 register at the decoder.” Id. (citing Ex. 1006,
5:55–56). Thus, Petitioner concludes that “[b]ecause Cox ’645 and Cox ’404
thus teach detecting the control data at the satellite receiver at the head end
and passing the control data to the decoder,” they teach the claim limitation.
Id.
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Patent Owner does not dispute Petitioner’s contentions. See generally
PO Resp. Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Based on the entirety of the trial record before us, we find that
Petitioner has shown that the first and second auxiliary data rows disclosed in
Cox ’645 are detected at the cable network head end and passed to a
computer, such as decoder 22, as required by the challenged claim.
d. controlling said intermediate transmission station based on said
control signal to: select a portion of said units of programming
based on operating records stored at said intermediate transmission
station
Claim 5 recites “controlling said intermediate transmission station
based on said control signal to: select a portion of said units of programming
based on operating records stored at said intermediate transmission station.”
Ex. 1001, 292:1–5.
Petitioner contends that Cox ’645 and Cox ’404 teach controlling
Cox ’645’s head end (an intermediate station) based on control data to select
character bytes of Cox ’645’s teletext page based on Cox ’404’s column
address code and the magazine and page number codes of Cox ’645 and
Cox ’404. Pet. 54 (citing Ex. 1003 ¶ 155). Specifically, Petitioner contends
that the character bytes of Cox ’645’s teletext page are selected based on
Cox ’404’s column address code and the magazine and page number codes
(i.e., operating records) disclosed in Cox ’645 and Cox ’404. Id. Petitioner
relies on the testimony of Mr. Lipoff to explain “operating records.” Id.
at 53. Mr. Lipoff testifies that the “Cox ’404’s column address code and the
magazine and page number codes of Cox ’645 and Cox ’404” are the
operating records at issue. Ex. 1003 ¶¶ 154, 175.
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Patent Owner does not dispute Petitioner’s contentions. See generally
PO Resp. Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Based on the entirety of the trial record before us, we find that
Petitioner has shown that selecting character bytes of teletext pages based on
at least an internally generated column address as disclosed in Cox ’404 and
further based on information in the control data as disclosed in Cox ’645
meets the limitation recited by the challenged claim.
e. receive said units of programming at said intermediate transmission
station
Claim 5 recites “receive said units of programming at said intermediate
transmission station.” Ex. 1001, 292:6–7.
Petitioner contends that Cox ’645 and Cox ’404 teach this limitation
because Cox ’645’s head end determines whether to receive the teletext page
based on the magazine and page number codes in the control data. Pet. 58
(citing Ex. 1003 ¶ 165). Petitioner argues that Cox ’645’s control data
includes a “magazine code” and “page number code,” while the decoder at
Cox ’645’s head end receives, such as through a keyboard, magazine and
page number codes identifying teletext pages the head end is authorized to
receive. Id. (citing Ex. 1006, 4:3–7, 5:14–18). According to Petitioner, the
“decoder compares the magazine and page number codes for the teletext page
with the authorized magazine and page number codes to determine whether
to receive the teletext page.” Id. (citing Ex. 1006, 1:37–60, 5:10–18;
Ex. 1003 ¶ 165).
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Patent Owner does not dispute Petitioner’s contentions. See generally
PO Resp. Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Based on the entirety of the trial record before us, we find that
Petitioner has shown that Cox ’645 teaches controlling the head end based on
the control data to receive the teletext page at the head end, thereby meeting
the limitation recited by the challenged claim.
f. communicate said selected a portion of said-units of programming
to a storage location
Claim 5 recites “communicate said selected a portion of said-units of
programming to a storage location.” Ex. 1001, 292:7–9.
Petitioner contends that Cox ’645 teaches that data acquisition
circuit 30 couples a teletext page to the data inputs of the page memories via
signal distribution control circuit 36 that enables the teletext page to be
written to page memory. Pet. 59–60 (citing Ex. 1006, 5:18–45). Petitioner
then relies on Cox ’404’s teaching of communicating the teletext page by
communicating the character bytes of the teletext page to the page memory.
Pet. 60 (citing Ex. 1007, 6:9–23).
Patent Owner does not dispute Petitioner’s contentions. See generally
PO Resp. Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Based on the entirety of the trial record before us, we find that
Petitioner has shown that the character bytes in the teletext page being
written to a page memory as disclosed in Cox ’645 and Cox ’404 meets the
limitation recited by the challenged claim.
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g. store said selected a portion of said units of programming at said
storage location
Claim 5 recites “store said selected a portion of said units of
programming at said storage location.” Ex. 1001, 292:10–11.
Petitioner contends “Cox ’645 and Cox ’404 teach controlling the head
end based on the control data to store the character bytes of the teletext page
in the page memory” because “in the proposed combination the head end
stores the character bytes of the teletext page in the page memory identified
by the memory page address byte in the control data.” Pet. 61 (citing
Ex. 1003 ¶¶ 171–73). According to Petitioner, the data acquisition circuit in
Cox ’645 “couples a teletext page to the data inputs of the page memories
and couples the memory page address byte for the teletext page to the signal
distribution control circuit.” Id. (citing Ex. 1006, 5:18–24). Petitioner argues
that “[t]he signal distribution control circuit processes the memory page
address byte to generate a ‘page memory select signal corresponding to the
memory page address byte’” and specifically, the “page memory select signal
is coupled to the ‘select’ input of each of the page memories, thereby
selecting the page memory corresponding to the memory page address byte.”
Pet. 61 (citing Ex. 1006, 5:26–33). Petitioner then argues that “[t]he signal
distribution control circuit then generates an output signal enabling the
‘write’ input of the selected page memory, thereby storing the teletext page at
the selected page memory.” Id. (citing Ex. 1006, 5:34–45). Petitioner cites
to Cox ’404, which teaches “storing the teletext page involves storing the
character bytes of the teletext page to the page memory.” Id. (citing
Ex. 1007, 6:9–23).
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Patent Owner does not dispute Petitioner’s contentions. See generally
PO Resp. Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Based on the entirety of the trial record before us, we find that
Petitioner has shown that the character bytes in the teletext page being stored
in a page memory as disclosed in Cox ’645 and Cox ’404 meets the limitation
recited by the challenged claim.
h. alter said operating records stored at said intermediate transmission
station to indicate at least one of reception and storage of said
selected a portion of units of programming
Claim 5 recites “alter said operating records stored at said intermediate
transmission station to indicate at least one of reception and storage of said
selected a portion of units of programming.” Ex. 1001, 292:12–16.
Petitioner contends that Cox ’645 and Cox ’404 teach this limitation.
Pet. 62–66. Petitioner specifically argues that Cox ’404 teaches that its
column address code (i.e., part of the operating record according to
Petitioner) is incremented each time a character byte of the teletext page is
stored in page memory and that the incrementing indicates storage of each
character byte of the teletext page. Id. at 62 (citing Ex. 1003 ¶ 176).
Petitioner notes that Cox ’404 discloses that “[i]n storing each character byte
into its corresponding memory location, the decoder generates an ‘address
signal’ that includes, in addition to the row address code of the row in which
the character byte appears in the teletext page, a ‘column address code.’” Id.
at 63 (citing Ex. 1007, 6:12–19).
Petitioner then cites to Cox ’404’s disclosure that the “column address
code is ‘internally generated’ and ‘incremented in response to each character
Byte of the acquired data row’ of the teletext page.” Id. at 63–64 (citing
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Ex. 1007, 6:16–17). According to Petitioner, such internal generating and
incrementing is not inconsistent with the column address code being a
“record” as recited by the claims. Pet. Reply 21. Petitioner further relies on
Cox ’645 to teach storing the teletext page based on the control data. Pet. 62
(citing Ex. 1003 ¶ 177).
Petitioner relies on the testimony of Mr. Lipoff to support its position.
Pet. 62–66 (citing Ex. 1003 ¶¶ 175–82). Mr. Lipoff testifies that “Cox ’645
does not describe how the teletext page is stored in the page memory at the
decoder, stating only that storage occurs ‘in a conventional manner.’”
Ex. 1003 ¶ 180 (citing Ex. 1006, 5:40–45). According to Mr. Lipoff’s
testimony, a person of ordinary skill in the art “would have turned to
knowledge in the art, such as Cox ’404’s disclosure of storing a teletext page
in a page memory at a decoder, Ex. 1007, 5:44–51, 6:4–30, to implement
Cox ’645’s teachings.” Id. Mr. Lipoff further testifies that a person of
ordinary skill in the art would have understood from Cox ’645 and Cox ’404
that
because the acquisition process is triggered by a match between
the magazine and page number codes and the page-header row
stored upon entry at the keyboard, terminating the data
acquisition process of that page would be effected by altering the
stored magazine and page number codes, either to indicate
another magazine and page number code entered by the user or
to indicate nothing.
Id. ¶ 181. Mr. Lipoff specifically testifies that “insofar as the altering of this
stored magazine and page number codes indicates that the teletext page
having that magazine and page number code has been fully received and
stored, this altering indicates receipt and storage of that teletext page.” Id.
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Patent Owner disputes Petitioner’s position for several reasons. First,
Patent Owner contends that Petitioner identifies two items as operating
records: (1) the magazine and page numbers supplied by the user through the
keyboard; and (2) the column address code that increments as the characters
of the teletext page are written into the page memory. PO Resp. 26.
According to Patent Owner, the column address code is not an “operating
record,” but is an internally generated control signal for addressing page
memory 46. Id. at 26–27 (citing Ex. 1007, 6:15–17, Fig. 3; Ex. 2001 ¶ 51).
Patent Owner argues that “[t]he column address code is simply advanced by
an internal clock so that the next byte will be written in the next column
address and will be reset when a new row address is input.” Id.
Second, as Patent Owner’s declarant testifies, “[t]he column address
code is not a record and is never used as a record.” Ex. 2001 ¶ 51. Patent
Owner contends a “record is information that relates to a past event. Even if
the column address code is stored (of which no disclosure exists), it does not
relate to any past event.” PO Sur-Reply 7. Thus, according to Patent Owner,
“[t]he column address code of Cox ’404 is a piece of data that specifies a
location in memory into which data will be stored. . . . while a clock internal
of data acquisition circuit 44 will increment the column address for each
character Byte of the row.” Id. (citing Ex. 1007, 6:17–23). Patent Owner
further argues that “any column address code would be immediately changed
to support future writes to a new memory location (and to prevent subsequent
data from overwriting a given memory location).” Id. Therefore, Patent
Owner concludes that no record is maintained “to indicate at least one of
reception and storage” as claimed. PO Sur-Reply 7.
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Third, Patent Owner contends that if each of (1) the column address
code and (2) the magazine and page number codes were an “operating
record,” the disputed claim element is only satisfied if both of them are
altered “to indicate at least one of reception and storage of said selected a
portion of units of programming,” which Patent Owner argues is not the case.
Id. at 8. Patent Owner specifically argues that “Cox ’404 discloses the
storage of the corresponding character occurring while the column address
code increments. Because of the contemporaneous nature of the two events
(storage and altering the column address code), one cannot indicate the
other.” Id. at 9; Tr. 35:7–37:2. Patent Owner relies on the testimony of its
declarant, Dr. Weaver, to support its position that the causal relationship
between the storage and incrementing is missing. See Ex. 2001 ¶ 58.
We agree with Patent Owner that Petitioner fails to demonstrate
sufficiently that Cox ’404’s column address code constitutes a record or that
it is stored. See, e.g., Tr. 30:25–31:14. Additionally, we agree with Patent
Owner that Petitioner fails to demonstrate that the column address code is
altered “to indicate at least one of reception and storage of said selected a
portion of units of programming,” as required by the challenged claim.
Contrary to Petitioner’s argument that Cox ’404 discloses that “generated
column address code which is incremented in response to each character Byte
of the acquired data row” (Pet. 62–64; Tr. 17:24–20:13), Cox ’404 explicitly
states the following:
Each character Byte of a data row acquired by data acquisition
circuit 44 is coupled to page memory 46 by a data line 56 and
written into a corresponding memory location thereof in
accordance with the address signals developed on an address
bus 58, the address signals being formed by the row address code
transmitted with the data row and an internally generated column
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address code which is incremented in response to each character
Byte of the acquired data row. In other words, the row address
code transmitted with each data row will cause the character
Bytes of that row to be stored in the corresponding memory
address row of page memory 46 while a clock internal of data
acquisition circuit 44 will increment the column address for each
character Byte of the row.

Ex. 1007, 6:9–23 (emphasis added). We understand Cox ’404 to disclose
that its incrementing step occurs in data acquisition circuit 44 of Figure 3,
while the first character is being stored in page memory 46. Id. at 6:13–16,
Fig. 3. But we do not find where incrementing is an indication of storage or
that the purported record is maintained to indicate reception of a unit of
programming. Based on the entire disclosure of Cox ’404, the incrementing
may happen before, after, or at exactly the same time as the storage of the
first character. Cox ’404 does not disclose any feedback mechanism for page
memory 46 to indicate storage to data acquisition circuit 44, and therefore,
the incrementing does not appear to be an indication of storage. See id.
at 6:19–23, Fig. 3.
Accordingly, based on the entirety of the trial record before us, we find
Petitioner has failed to demonstrate by a preponderance of the evidence that
the combination of Cox ’645 and Cox ’404 teaches more than one operating
record or that the alleged operating records are altered to indicate reception
and storage of a selected unit of programming as recited by the challenged
claim.
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i. subsequently transmitting said selected a portion of said units of
programming to said at least one subscriber station
Claim 5 recites “subsequently transmitting said selected a portion of
said units of programming to said at least one subscriber station.” Ex. 1001,
292:16–18.
Petitioner contends that Cox ’645 and Cox ’404 teach this limitation.
Pet. 66–67. Petitioner specifically contends that Cox ’645 teaches
transmitting the teletext page to the subscriber receiver while Cox ’404
teaches that the teletext page includes the character bytes. Id. at 66.
According to Petitioner, Cox ’645 teaches that, once the teletext page is
stored in the page memory, it is transmitted by the head end to the subscriber
receiver during “the time interval defined by the time-on and time-off codes”
for the teletext page. Id. (citing Ex. 1006, 6:3–21). Petitioner then notes that
“Cox ’404 explains that each teletext page includes rows of character bytes.”
Id. (citing Ex. 1007, 6:14–15).
Patent Owner does not dispute Petitioner’s contentions. See generally
PO Resp. Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Based on the entirety of the trial record before us, we find that
Petitioner has shown that the character bytes in the teletext page are
transmitted to the subscriber receiver in Cox ’645 and Cox ’404 as required
by the challenged claim.
j. Reasons to Combine the Teachings of Cox ’645 and Cox ’404
Petitioner contends a person of ordinary skill in the art at the time of
the invention would have had reason to combine the teachings of Cox ’645
and Cox ’404. Pet. 41. Petitioner specifically argues that a person of
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ordinary skill in the art would have been motivated to modify Cox ’645 with
the teachings of Cox ’404 because Cox ’645 describes a system that uses
control data to control a head end in the transmission of teletext pages stored
in a page memory, but only says that the teletext pages are stored in a
“conventional manner.” Id. (citing Ex. 1006, 5:40–45). As Cox ’404
discloses storing a teletext page in a page memory at a decoder, Petitioner
argues that a person of ordinary skill in the art would have turned to the
knowledge disclosed in Cox ’404 in order to implement the “conventional
manner” disclosed in Cox ’645. Id. (citing Ex. 1007, 5:44–51, 6:4–30).
Patent Owner, however, contends that a person of ordinary skill in the
art would not have attempted to modify Cox ’645 with the teachings of
Cox ’404. PO Resp. 25–26. Patent Owner asserts that the column address
code in Cox ’404 is for addressing page memory 46, shown in Figure 3,
whereas Cox ’645 is silent as to any addressable column address or column
address code and only discloses time base circuit 32 with reference to row
address bytes. Id. at 25 (citing Ex. 2001 ¶ 49). Thus, according to Patent
Owner, a person of ordinary skill in the art would not have been motivated to
implement a multi-page storage of Cox ’645 with the system and methods of
a single-page storage of Cox ’404. Id.
We do not agree with Patent Owner’s arguments. Based on the current
record, Petitioner brings in Cox ’404 for a more explicit teaching of the
conventional manner to store a teletext page as discussed in Cox ’645. See
Ex. 1006, 5:40–45; Ex. 1007, 5:44–51, 6:4–30. A motivation to combine
may be found “explicitly or implicitly in market forces; design incentives; the
‘interrelated teachings of multiple patents’; ‘any need or problem known in
the field of endeavor at the time of invention and addressed by the patent’;
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and the background knowledge, creativity, and common sense of the person
of ordinary skill.” ZUP, 896 F.3d at 1371 (quoting Plantronics, 724 F.3d
at 1354). Cox ’404 appears to supply information as to what Cox ’645
describes as the “conventional manner” to store a teletext page.
We have considered carefully all arguments and supporting evidence
regarding the rationale for combining the teachings of Cox ’404 with
Cox ’645. After doing so, we find that Petitioner provides an adequate
reason, with rational underpinnings, that a person of skill in the art at the time
of the invention would have had reason to combine the teachings from the
cited prior art.
k. Summary Regarding Claim 5
After careful consideration of all arguments and evidence, we
determine, on a full record, Petitioner fails to demonstrate by a
preponderance of evidence that independent claim 5 would have been
obvious in view of the combined teachings of Cox ’404 and Cox ’645 under
35 U.S.C. § 103.
4. Analysis of Cox ’404 and Cox ’645 as Applied to Challenged
Dependent Claims 6–10
Petitioner contends that dependent claims 6–10 of the ’560 patent are
unpatentable under 35 U.S.C. § 103 as being obvious in view of Cox ’404
and Cox ’645 and provides specific arguments for each challenged claim.
Pet. 67–77 (citing Ex. 1003 ¶¶ 189‒210; Ex. 1006, Fig. 5, 4:23–32, 5:26–45,
6:3–21, 6:55–7:10). Patent Owner contends that the cited prior art does not
render dependent claims 6–10 of the ’560 patent obvious. PO Resp. 35‒38.
Patent Owner further contends the combined prior art does not teach or
suggest “storing predetermined characteristics” as required by claims 9
and 10. Id. (citing Ex. 2001 ¶¶ 62–64).
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On this record and for purposes of institution, for the same reason
discussed above, we determine Petitioner fails to demonstrate by a
preponderance of evidence that dependent claims 6–10 would have been
obvious in view of the combined teachings of Cox ’404 and Cox ’645 under
35 U.S.C. § 103.
III. CONSTITUTIONAL CHALLENGE
Patent Owner contends that “this proceeding is unconstitutional and
violates the Appointments Clause.” Resp. 22. Patent Owner also contends
that the Federal Circuit “attempted to cure the constitutional violation by
eliminating tenure protections afforded to PTAB judges by the statute” and
that “this purported remedy by itself simply fails to cure the violation.” Id.
at 22–23 (citing Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320
(Fed. Cir. 2019)).
We do not reach Patent Owner’s Appointments Clause challenge
because the Supreme Court resolved the issue in United States v. Arthrex,
Inc., 141 S. Ct. 1970, 1986–87, 1997 (2021).
IV. CONCLUSION
Based on the evidence presented with the Petition, the evidence
introduced during the trial, and the parties’ respective arguments, Petitioner
has shown by a preponderance of the evidence that claim 4 would have been
obvious to a person of ordinary skill in the art at the time of the invention in
view of Torpey’s teachings in combination with that of Cox ’645.
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But Petitioner has not shown by a preponderance of the evidence that
claims 5–10 are unpatentable under § 103(a) as obvious over Cox ’645 and
Cox ’404.6
In summary:
Claims
35 U.S.C.
§
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
4 103(a) Torpey, Cox ’645 4
5–10 103(a) Cox ’645, Cox ’404 5–10
Overall
Outcome
4 5–10

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claim 4 in the ’560 patent is determined to be
unpatentable;
ORDERED that claims 5–10 in the ’560 patent are not determined to
be unpatentable; and

6 Should Patent Owner wish to pursue amendment of the challenged claims in
a reissue or reexamination proceeding after the issuance of this Final Written
Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed.
Reg. 16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue
application or a request for reexamination of the challenged patent, we
remind Patent Owner of its continuing obligation to notify the Board of any
such related matters in updated mandatory notices. See 37 C.F.R.
§§ 42.8(a)(3), (b)(2).
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FURTHER ORDERED that, because this is a Final Written Decision,
the 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..

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PETITIONER:

Erika H. Arner
Daniel C. Cooley
Joshua L. Goldberg
Cory C. Bell
Sydney R. Kestle
A. Grace Mills
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
erika.arner@finnegan.com
daniel.cooley@finnegan.com
joshua.goldberg@finnegan.com
cory.bell@finnegan.com
sydney.kestle@finnegan.com
gracie.mills@finnegan.com

PATENT OWNER:

Dmitry Kheyfits
Andrey Belenky
Brandon Moore
KHEYFITS BELENKY LLP
dkheyfits@kblit.com
abelenky@kblit.com
bmoore@kblit.com

Thomas J. Scott, Jr.
tscott@pmcip.com