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____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Unified Patents Inc.,
Petitioner
v.
Personalized Media Communications, LLC,
Patent Owner
IPR2015-00520
Patent 7,805,749
____________
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 7,805,749
B.
C.
D.
E.
II.
III.
IV.
A.
B.
C.
D.
V.
VI.
B.
C.
D.
The Claims at Issue Are Obvious Over Powell in View of Guillou and
the Knowledge of Person of Ordinary Skill in the Art. ......................45
1.
Powell........................................................................................46
2.
ii
Guillou ......................................................................................49
CONCLUSION .............................................................................................59
iii
iv
Description
1001
1002
1003
1004
1005
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1007
1008
1009
1010
1011
1012
1013
1014
1015
1016
1017
1018
1021
1022
1023
1024
1025
1026
1027
1028
1029
1030
vi
The 749 patent is involved in the Amazon IPR, which is pending, as well as
in co-pending litigation captioned Personalized Media Commcns., LLC v.
Amazon.com, Inc., No. 1:13-cv-1608-RGA (D. Del. filed Sept. 23, 2013).
Back-up Counsel
cpdocketkiklis@oblon.com
Postal and Hand-Delivery Address:
1940 Duke Street
Alexandria, VA 22314
Telephone: (703) 413-2707
Facsimile: (703) 413-2220
cpdocketmckeown@oblon.com
Postal and Hand-Delivery Address:
1940 Duke Street
Alexandria, VA 22314
Telephone: (703) 413-6297
Facsimile: (703) 413-2220
Katherine D. Cappaert (Reg. No. 71,639)
cpdocketcappaert@oblon.com
Postal and Hand-Delivery Address:
1940 Duke Street
Alexandria, VA 22314
Telephone: (703) 236-2674
Facsimile: (703) 413-2220
D.
Please address all correspondence to lead counsel and back-up counsel at the
address shown above. Unified also consents to electronic service by email to:
cpdocketkiklis@oblon.com.
E.
Unified certifies that the 749 patent is available for inter partes review and
that Unified is not barred or estopped from requesting an inter partes review
challenging the patent claims on the grounds identified in this petition.
2
The twelve claims at issue in this petition relate to a process for promoting
encrypted programming. In general, the claimed process requires receiving and
outputting (e.g., in audio or video) a first portion of programming, prompting a
subscriber as to whether the subscriber would like to receive a second portion of
programming, and, upon the subscribers reply, receiving, decrypting, and
outputting the second portion of programming.
The prior art relied on herein falls into two general categories. The first
category of prior art relates to pay-per-view television systems, which provided
previews, messages, etc. in a first portion of the programming.
When a
subscribers station received and processed the signal, the user was prompted as to
whether they wanted to purchase the pay-per-view program. If so, the user would
input the necessary information to authorize delivery of, and decrypt, the
programming. Data transmitted with the program, or entered by the user, was used
to identify and decrypt the program.
The second category of prior art relates to teletext and videotex systems that
were available in the 1970s and 1980s. Those systems used one-line banner
advertisements and video to promote related pages and prompted users to request
the related information. The prior art also taught that the videotex pages could be
encrypted such that they would be decrypted by the users terminal. The issue is
3
PMCs strategy was clear: to overburden the Patent Office, delay the
During prosecution, the applicants asserted that the claims of the 749 patent
are supported by the Julia Childs example (490 patent at 20:16-68) and the
Exotic Meals of India example (749 patent at 241:50-246:58). Ex. 1003 at 679681. The Julia Childs example in the 490 patent is less than one column long and
describes a viewer watching a television program on cooking techniques. Ex. 1002
at 20:16-68.1 Halfway through the program, the host says, If you are interested
in cooking what we are preparing here and want a printed copy of the recipe for a
charge of only 10 cents, press 567[.] Id. at 20:19-23. A user can then press 567
on their input device.
determines whether 567 has been entered by the user, and if so, the tuner tunes
the cable converter box to the appropriate channel to receive the recipe in encoded
form. Id. at 20:28-38.
When the encrypted recipe is received, a signal word (e.g., a decryption
key) is passed to a processor, which uses the signal word to decrypt the recipe. Id.
at 20:38-43. The processor then conveys to its data recorder, 16, information that
1
Representative Claim
The 749 patent was filed on June 7, 1995, one day before the patent term
adjustments under GATT took effect. Ex. 1001 at 1. In a 1997 Office Action, the
examiner rejected the claims, including the claim that ultimately issued as Claim 2
(claim 3 during prosecution), as anticipated by Campbell. Ex. 1003 at 638-639.
As discussed in more detail below, Campbell describes a method for descrambling
pay-per-view programming.
subscribers channel selection as the reply recited in step [d] above. Id. at 638
(referring to step 310). Although there are several readings of Campbell that
anticipate the claims, the examiner did not correctly apply Campbell.
In response, PMC argued (incorrectly) that Campbell was not prior art. Id.
at 688-689.
PMC then summarily argued that Campbell did not teach the
necessary limitations, including that the subscribers selection of the channel could
10
11
17:39-41; 19:42-49.
In contrast, the 1987 specification redefined programming more broadly to
include everything that is transmitted electronically to entertain, instruct or
inform, including television, radio, broadcast print, and computer programming as
well as combined medium programming.
The 1987
specification also added new disclosures relating to the use of, for example,
satellite receiver circuitry at the receiver station for receiving satellite
transmissions. Ex. 1001 at 202:14-26; 268:5-10; Fig. 7. Thus, the applicants
redefined programming to be commensurate the newly added subject matter.
A person of ordinary skill in the art would have understood that the
definition provided in the 1987 specification expands the definition of
programming that was provided in the 490 patent to include other types of
transmission, such as transmissions via satellite or telephone lines. Ex. 1004 37.
13
Accordingly, Campbell
CLAIM CONSTRUCTION
16
19
The program
identification number serves two purposes at the subscribers decoder: (1) the
decoder uses the program identification number to select the appropriate program
assignment code stored in memory, which will be used to descramble the
program; and (2) the number is stored in memory for later billing purposes. Id. at
7:40-48; 7:59-63; 2:37-43.
U.S. Patent No. 3,886,302 (Kosco), which was filed in 1974, describes a
20
Id. at 12:58-68.
(f)communicating
said selected at
least one of a
code and a datum
to a remote site;
Text channels can be authorized independently (id. at 17:2428) and use a similar process (id. at 16:17-20).
(i) delivering said Jeffers: Jeffers discloses that the program is descrambled so
mass medium
that it can be viewed. Ex. 1005 at 11:68; Figs. 1; 13:37
programming to
(The TV modulator receives the descrambled video signal
an output device. from the decoder and generates and output to an RF switch
which will provide the necessary signals to the television set
for view the descrambled program.).
Campbell: Campbell teaches that the descrambled programming can be delivered to a television set. Ex. 1006 at 8:47-55,
16:32-34, Fig. 1.
Claim 3
3. The method of
claim 2, wherein
said output device
outputs at least
one of audio, hard
copy, and television, said method
further comprising the steps of:
36
Claim 11
11. The method
of claim 2,
wherein a storage
device is operatively connected
to said processor,
said method further comprising
the step of:
39
Campbell: Campbell teaches that Text channels can be authorized independent of the program channels so that the
information may be provided as an additional service for
certain subscribers while others may be available for
everyone. Ex. 1006 at 17:21-41. The authorization process is
the same for text as for scrambled television. Id. at 16:15-20;
see also id. at 18:30-49, 3:8-12. See Claim 2, above. The
signals are scrambled at the head end and descrambled by the
converter only after the proper control parameters are
satisfied by the converter. Ex. 1006 at 12:10-15. Data is
used to enable the descrambling process, including a program
40
delivering said
data to said processor.
Claim 24
Claim 49
[Preamble]
receiving a first
information
transmission including mass medium programming and said
control signal;
outputting said
mass medium
programming at
said at least one
output device;
detecting said
control signal;
D.
In the late 1970s and early 1980s, teletext and videotex systems were
widely known. Teletext generally referred to point-to-multipoint systems in which
pages of text were encoded into a non-viewable portion of the television
broadcast signal, which could then be decoded by properly-equipped receivers.
Ex. 1004 77. Users could select and store particular pages for display on their
TV. Id. Videotex was a point-to-point computer network system in which a user
could query a host computer for pages of information through a telephone line
using a modem, and the retrieved information would be displayed on a TV. Id. at
78. The references below relate to the promotion and encryption of content on
these systems.
45
Powell2
Powell was published in March, 1980 and therefore constitutes prior art to the
46
Encryption and decryption processes were well known in the 1970s. Ex.
1004 86. In 1976, a decryption standard called DES was approved by the United
States National Bureau of Standards. Ex. 1018. This decryption standard was
47
Id. at 87.
documented, and at the same conference at which Powell was presented, another
presentation described the need for encryption when such systems are used for
home banking applications. See, e.g., Ex. 1019 at 193, 197. Not surprisingly,
encryption became commonplace in such systems. Ex. 1004 88; Ex. 1020 at
289-90 (at-home banking application occurs on a dedicated, scrambled channel);
Ex. 1021 at 4-3 (All of the information . . . while doing Home Banking is encoded
by a method called DES encryption.).
Accordingly, it would have been obvious to a person of ordinary skill in the
art as of 1980 that the one-line banner advertisement taught by Powell (find out
more -- go to Page 2617) could be used by a bank to direct customers from a
generally available, non-secure video, teletext or viewdata page to an encrypted,
secure page in which the customer could perform his/her banking. Ex. 1004 89.
In any such system, a code or datum designating the second portion of the mass
medium programming (the requested page) would be selected, that code would be
communicated to a remote site (the host computer), and it would be used in the
decryption process, because the decryption key would be specific to the page being
48
Guillou3
U.S. Patent No. 4,337,483 (Guillou) teaches a method for providing and
receiving encrypted content in teletext and viewdata systems, such as the Prestel
system described in Powell. Ex. 1022 at 1:8-20; id. at 21:23-28 (the encryption/
decryption techniques can be applied to the Prestel system). Guillou teaches that,
in a teletext system, the decryption key would be specific to a magazine, i.e., a
set of teletext pages. Id. at 5:8-10. Guillou teaches that the control portion
(heading) of a page, which includes the page number, is not encrypted, but that the
information portion of the page is encrypted.
The
information portion is encrypted using the page number and an operating key K.
Id. at 5:34-37. At the receiver station, the information portion is decrypted using
the same information, i.e., the operating key K and the page number. Id. at 6:1729, 7:64-69.
Guillou further teaches that a double key system may be used, wherein the
Guillou was filed on January 31, 1980, and issued on June 29, 1982. Ex. 1022.
49
7, 9.
Powell: Powell teaches a Prestel page that includes a one line advertisement stating find
out more go to Page 2617. Ex. 1014 at 240.
Powell discloses that the Prestel system is interactive. Ex. 1017 at 233. Prestel terminals included a transmitter for communicating a users
input to a remote site. Ex. 1015 (Moore) at 7, 9.
52
Powell: The Prestel terminals operated by processing information received from a host computer on a microcomputer. Ex. 1015 (Moore) at
9-10.
Guillou: Guillou discloses delivering processing
instruction (for decryption) to a processor. Ex.
1022 at 20:18-21:14, Figs. 9-10.
Powell: The processed information is output to a
television set. Ex. 1015 (Moore) at 8.
(b) communicating said delivered mass medium programming to said output device in
Guillou: Guillou further teaches that the operating
accordance with said delivered key is used to decrypt the broadcast prior to
instructions.
display. Ex. 1022 at 7:43-8:14.
Claim 9
9. The method [of] claim 2,
Powell: Prestel terminals contain a microcomwherein said interactive video puter. Ex. 1015 (Moore) at 9 (The user interacts
viewing apparatus comprises a directly with [a host] computer by accessing it
microcomputer.
directly through his own microcomputer).
Guillou: Guillou discloses that the system disclosed therein may apply to the Prestel system.
53
Claim 24
With respect to Claim 49, Guillou teaches that the key may be transmitted
separate from the encrypted content. Ex. 1022 at 8:59-67. A person of ordinary
skill in the art would have recognized that the decryption of videotext pages may
be page-specific, and that the key could be transmitted prior to receiving the
encrypted page. Ex. 1004 97. Thus, it would have been obvious to a person of
ordinary skill in the art that Guillous message (Mi) for decrypting the related
material (encrypted Page 2617) could be sent with the promotional page itself. Id.
55
Id.
Therefore, the
combination of Powell and Guillou disclose all of the elements of Claim 49, and it
would have been obvious to a person of ordinary skill in the art.
56
See Claim 2.
See Claim 2.
Powell: Page 2617 is at least one of video, text,
and a graphic and is presented sequentially.
58
Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988). Where, as here,
a strong prima facie obviousness showing exists, even relevant secondary
considerations supported by substantial evidence may be inadequate to overcome
a final conclusion . . . [of] obvious[ness]. Leapfrog Enters. Inc. v. FisherPrice,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Unified is not aware of any evidence
of secondary considerations that would support a finding of non-obviousness, but
reserves the right to supplement its positions.
X.
CONCLUSION
For the reasons set forth above, Unified has established a reasonable
likelihood of prevailing in showing that Claims 2, 3, 9-13, 18, 24, 49 and 52-53 of
the 749 patent are unpatentable, and therefore requests that the Board order an
59
22850
/Michael L. Kiklis/
Michael L. Kiklis (Reg. No. 38,939)
Attorney for UNIFIED PATENTS INC.
60
By:
61
/Michael L. Kiklis/
Michael L. Kiklis
Reg. No. 38,939