Unified Patents Inc.v.Custom Media Technologies LLC

Patent Trial and Appeal Board

Jun 25, 2015

09053144 (P.T.A.B. Jun. 25, 2015)

Trials@uspto.gov Paper No. 9
571.272.7822 Filed: June 25, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS INC.,
Petitioner,
v.
CUSTOM MEDIA TECHNOLOGIES LLC,
Patent Owner.

Case IPR2015-00516
Patent 6,269,275 B1

Before GLENN J. PERRY, THOMAS L. GIANNETTI, and
BARBARA A. PARVIS, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

I. INTRODUCTION
A. Background
Unified Patents Inc. (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
requesting an inter partes review of claims 1–24 of U.S. Patent No.
6,269,275 B1 (Ex. 1002, “the ’275 patent”). Custom Media Technologies
LLC (“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim.
Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that
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an inter partes review may not be instituted unless “the information
presented in the petition . . . and any [preliminary] response . . . shows that
there is a reasonable likelihood that the petitioner would prevail with respect
to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
Based on our review of the record, we determine that Petitioner has
not established a reasonable likelihood that it would prevail with respect to
at least one challenged claim of the ’275 patent. Accordingly, under the
standard of § 314, we deny the Petition and decline to institute an inter
partes review of claims 1–24 of the ’275 patent.
B. Related Proceedings
Petitioner identifies, as a related proceeding, IPR2014-01272 filed by
Cisco Systems, Inc. (“Cisco”). Pet. 2. Petitioner additionally identifies co-
pending district court cases filed in the U.S. District Court for the District of
Delaware by Patent Owner against the following defendants: AT&T Inc.,
Charter Communications Inc., Comcast Corp., Cox Communications Inc.,
DirecTV, Dish Network Corp., Time Warner Cable Inc., and Verizon
Communications Inc. (Civil Action Nos. 1-13-cv-01419 through 01426). Id.
at 3.
C. Real Party-In-Interest
Petitioner “certifies that Unified Patents is the real party-in-interest.”
Pet. 1. Patent Owner suggests that Cisco is an unnamed Real Party in
Interest. Patent Owner contends that Petitioner’s activities “include (1)
copying the Cisco Petition, (2) copying the Schonfeld declaration, and (3)
providing an exhibit that Cisco failed to provide.” Prelim. Resp. 6. Because
we deny the Petition for other reasons, we do not address further Patent
Owner’s contentions regarding the potential unnamed real party-in-interest.
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D. The ’275 patent
The ’275 patent relates to a method and system for customizing and
distributing presentations for user sites. Ex. 1002, Abstract. A server
computer broadcasts a media object including a set of media components to
remotely located user computer devices, such as set top boxes. Id. at 4:66–
5:2. The set top box then selects certain ones of the media components in
response to its presentation logic object and its data object, and combines
these components to create a customized presentation for the user. Id. at
5:2–6.
E. Illustrative Claim
Claims 1 and 13 are the independent claims challenged by Petitioner.
Each of claims 2–12 depends directly from claim 1, and each of claims 14–
24 depends directly from claim 13. Claims 1 and 13 are illustrative and are
reproduced below:
1. A method for customizing and distributing
presentations for user sites, comprising:
gathering user profile information;
creating profile data objects based on individual user
profile information;
accessing the profile data objects individually locally in
each one of a group of user computer means;
creating presentation logic objects based on
corresponding ones of the data objects to facilitate the creation
of individual customized presentations for each one of the user
computer means;
storing each one of the presentation logic objects
individually locally in the group of user computer means;
broadcasting a single universal presentation media object
including a set of media components to each one of a group of
remotely located user computer means;
receiving the universal presentation media object
individually at each one of the group of user computer means;
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selecting certain ones of the media components at each
one of the user computer means in response to its presentation
logic object and its data object; and
arranging the selected ones of said media components to
create customized presentations for the users.
13. A system for customizing and distributing
presentations for user sites, comprising:
means for gathering user profile information;
means for creating profile data objects based on
individual user profile information;
means for accessing the profile data objects individually
locally in each one of a group of user computer means;
means for creating presentation logic objects based on
corresponding ones of the data objects to facilitate the creation
of individual customized presentations for each one of the user
computer means;
means for storing each one of the presentation logic
objects individually locally in the group of user computer
means;
means for broadcasting a single universal presentation
media object including a set of media components to each one
of a group of remotely located user computer means;
means for receiving the universal presentation media
object individually at each one of the group of user computer
means;
means for selecting certain ones of the media
components at each one of the user computer means in response
to its presentation logic object and its data object; and
means for arranging the selected ones of said media
components to create customized presentations for each
individual on[e] of the users.

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F. The Asserted Prior Art
Petitioner relies upon the prior art references below. Pet. 3–4.
Reference Patent No. or
Publication No.
Issued Date /
Filed Date
Exhibit
No.
Seidman U.S. Patent No.
6,298,482 B1
Issued: Oct. 2, 2001
Filed: Nov. 12, 1997
Exhibit
1004
Rosser U.S. Patent No.
6,446,621 B1
Issued: Sept. 3, 2002
PCT Filed: Dec. 17, 1997
Exhibit
1005
Park WO Publication
No. 97/17774
Published:
May 15, 1997
Exhibit
1006
G. The Asserted Grounds of Unpatentability
Petitioner challenges independent claims 1 and 13 of the ’275 patent
on the following grounds. Pet. 24–41.
Reference(s) Basis
Seidman § 102(e) and
§ 103(a)
Rosser § 102(e) and
§ 103(a)
Park § 102(a) and
§ 103(a)
Seidman, Rosser, and/or
Park
§ 103(a)

In support of the grounds above, Petitioner also presents a Declaration by
Dr. Dan Schonfeld (Ex. 1001).
As will be discussed below, Petitioner asserts further grounds of
unpatentability contending that dependent claims 2–12 and 14–24 of the
’275 patent are unpatentable, under 35 U.S.C. § 102 or 35 U.S.C. §103,
based on Seidman, Rosser, and/or Park, alone or in combination with
additional prior art references. Pet. 46–60.
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II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.300(b); see
also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1281–82 (Fed. Cir.
2015) (“Congress implicitly adopted the broadest reasonable interpretation
standard in enacting the AIA,” and “the standard was properly adopted by
[United States Patent and Trademark Office (‘USPTO’)] regulation.”).
Under the broadest reasonable construction standard, claim terms are given
their ordinary and customary meaning, as would be understood by one of
ordinary skill in the art in the context of the disclosure. In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Additionally, we must be
careful not to read a particular embodiment appearing in the written
description into the claim, if the claim language is broader than the
embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(“[L]imitations are not to be read into the claims from the specification.”).
Because we determine that the Petitioner has not shown sufficiently
“creating presentation logic objects based on corresponding ones of the data
objects to facilitate the creation of individual customized presentations for
each one of the user computer means,” as recited in claims 1 and 13, for the
purposes of this Decision, we need not construe expressly terms other than
those set forth below.
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1. “user profile information”
Each of claims 1 and 13 recites “user profile information.” Petitioner
contends that the broadest reasonable interpretation of “user profile
information” is “information about one or more user(s).” Pet. 9.
The specification of the ’275 patent provides two examples of “user
profile information.” In the first example, user profile information
comprises “the patient’s name, billing information, electronic address
information, therapeutic objective, relevant history, relevant demographics
and exercise regime.” Ex. 1002, 7:26–29. In the second example, user
profile information is collected by “the consumer indicating product interest
in response to an advertisement shown from his or her television receiver.”
Id. at 8:5–7 (emphasis added). User profile information comprises, “other
cars of interest[], purchase horizon, and things that are important to the
customer” (id. at 8:9–10 (emphasis added)), as well as “demographic data”
(id. at 8:11–12). In each of these examples, user profile information pertains
to an individual user.
Nonetheless, each of claims 1 and 13 recites customizing and
distributing presentations for “user sites.” Because claims 1 and 13 recite
“gathering user profile information” for customizing and distributing
presentations for multiple “user sites,” we determine that “user profile
information” pertains to multiple users of the user sites. On this record, we,
therefore, determine that the broadest reasonable interpretation of “user
profile information” is “information about one or more users.”
2. “profile data objects”
Each of claims 1 and 13 recites “profile data objects.” Petitioner
contends that the broadest reasonable interpretation of “profile data objects”
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is “collections of data based on information about one or more user(s).”
Pet. 9. Patent Owner does not provide contentions regarding the broadest
reasonable interpretation of this limitation.
Petitioner contends that according to the ’275 patent specification,
profile data objects are compiled based on gathered user profile information.
Pet. 9. Petitioner also contends that the prosecution history supports that
“profile data object” is satisfied by a personal profile database that stores
user profile information. Id.
As discussed above, we determine that the broadest reasonable
interpretation of “user profile information” is information about one or more
users because each of claims 1 and 13 recites customizing and distributing
presentations for “user sites.” We, however, note claims 1 and 13 recite,
“creating profile data objects based on individual user profile information”
(emphasis added). The language of the claim is consistent with the
specification of the ’275 patent describing a set top box as having “its”
profile data object. Ex. 1002, 5:2–4.
Regarding whether “profile data objects” are collections of data, the
’275 patent specification provides specific software architectures and an
International Standards Organization (“ISO”) standard that may be
employed to realize the invention. Ex. 1002, 8:33–53. Several of the names
of these software architectures indicate compatibility with JAVA™. Id.
Additionally, the ’275 patent specification further indicates that these
technologies are used to “encapsulate” the functionality of the invention. Id.
at 8:43–45.
Accordingly, on this record, in light of the specification of the ’275
patent, we determine that the broadest reasonable interpretation of “profile
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data objects” is “objects comprising information about one or more users,
where each object is encapsulated data comprising information about an
individual user.”
3. “user computer means”
Each of claims 1 and 13 recites “user computer means.” Petitioner
contends that the broadest reasonable interpretation of “user computer
means” is “conventional user computer equipment, such as a personal
computer or a set top box, adapted to receive downloaded messages or
presentations.” Pet. 9–10. Patent Owner does not provide a construction for
this term. We construe “user computer means” as reciting structure rather
than function and neither party contends that the limitation should be
construed according to 35 U.S.C. § 112, sixth paragraph.1
The specification of the ’275 patent describes “a group of personal
computer sites” and “user computer site 12,” which may be “personal
computer 13” or “set top box 18.” Ex. 1002, 3:53–58. The ’275 patent
specification provides further specificity explaining “[t]he computer
equipment in the form of personal computers, set top boxes, and other
similar types of devices located at the user sites are conventional, and are
adapted to receive down loaded messages or presentations.” Id. at 3:61–64.
We agree with Petitioner that “user computer means” is user computer
equipment, such as a personal computer or a set top box. We, however,

1 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) re-
designated 35 U.S.C. § 112, sixth paragraph, as 35 U.S.C. § 112(f). Pub. L.
No. 112-29, 125 Stat. 284, 296 (2011). Because the ’275 patent has a filing
date before September 16, 2012 (effective date of § 4(c)), we refer to the
pre-AIA version of § 112.
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disagree with Petitioner that the computer equipment must be conventional.
Petitioner has not argued persuasively that the claim language is limited to
the particular embodiment in the ’275 patent specification referenced by
Petitioner. See In re Van Geuns, 988 F.2d at 1184. Additionally, Petitioner
has not shown sufficiently that one of ordinary skill in the art would
understand what computer equipment is conventional, as understood in light
of the specification of the ’275 patent.
Accordingly, on this record, we determine that the broadest
reasonable interpretation of “user computer means” in light of the
specification of the ’275 patent is “user computer equipment, such as a
personal computer or a set top box, which is adapted to receive downloaded
messages or presentations.”
4. “creating presentation logic objects based on corresponding
ones of the data objects to facilitate the creation of individual customized
presentations for each one of the user computer means”
Claim 1 recites “creating presentation logic objects based on
corresponding ones of the data objects to facilitate the creation of individual
customized presentations for each one of the user computer means.” Claim
13 recites the limitation in means-plus-function format. Petitioner contends
that the broadest reasonable construction of “presentation logic objects” is
“collections of logic or data that can facilitate the creation of customized
media presentations.” Pet. 14. Petitioner contends that the broadest
reasonable interpretation of “creating presentation logic objects based on
corresponding ones of the data objects” is “creating presentation logic
objects each based on one or more corresponding profile data object(s).” Id.
Petitioner contends that the claims were broadened during
prosecution. Pet. 11. In particular, Petitioner contends that an amendment
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was made to encompass the particular embodiment in the ’275 patent
specification that follows: “[the] presentation logic objects ‘may be created
in the presentation logic editing computer 49 which establishes the
relationship between the various forms of media objects and the . . . data
objects.’” Id. at 13 (citing Ex. 1002, 6:58–61). On the basis of this excerpt,
Petitioner contends that “the ’275 [patent] spec[ification] does not teach that
presentation logic objects are created using profile data objects, but instead
that they may in some cases be created based on some relationship between
media objects and the profile data objects.” Id.
Patent Owner, in contrast, contends that presentation logic objects are
created based on profile data objects, which themselves are created based on
the user profile information. Prelim. Resp. 13. We evaluate each of the
parties’ contentions in turn.
The excerpt of the ’275 patent specification referred to by Petitioner
indicates that a relationship is established between media objects and data
objects. Ex. 1002, 6:56–61. In light of the express recitations in claims 1
and 13, Petitioner does not explain persuasively how this excerpt describes
that presentation logic objects may in some cases be created based on some
relationship, or what is meant by “some relationship” (Pet. 13).
Petitioner also contends that by referring to “presentation logic
objects,” “corresponding ones,” and “data objects” in the plural form, claims
1 and 13 do not exclude either a one-to-many or a one-to-one relationship
between the presentation logic objects and the profile data objects. Pet. 13.
In particular, Petitioner contends that the broadest reasonable interpretation
of the creating presentation logic objects limitation is “creating presentation
logic objects each based on one or more corresponding profile data
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object(s).” Id. at 14. We note that Petitioner provides further contentions
based on a presentation logic object corresponding to a majority view of a
group of users. See, e.g., Ex. 1001 ¶ 63 (citing Ex. 1004, 9:7–13) (“For
example . . . [i]f a majority of viewers show an interest[,] . . . [historical,
statistical, and anecdotal information related to the players] could be
displayed immediately on screen when a player is selected.”).
Patent Owner contends that Petitioner does not give weight to the
requirement that presentation logic objects are created to facilitate the
creation of individual customized presentations for each one of the user
computer means. Prelim. Resp. 11.
Although we agree with Petitioner that the recitation of “presentation
logic objects” and “data objects,” in the plural form, does not exclude a one-
to-many relationship, we do not agree to the extent that Petitioner’s proposal
would extend, for example, to creation of a presentation logic object based
on information pertaining to a majority of users of the system. We note that
Petitioner does not clarify the meaning of “corresponding” in its proposal
that each presentation logic object is based on one or more corresponding
profile data object(s).
In the context of claim 1, and as recited in claim 13, “the data
objects” refers to the profile data objects created based on individual user
profile information. Additionally, the profile data objects are accessed
locally prior to creation of the presentation logic objects.
The ’275 patent specification describes “corresponding” in the
following context: “play back only the appropriate desired sequence of
presentation components corresponding to the individual attributes for
display to the user on demand.” Ex. 1002, 5:15–17 (emphasis added).
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Additionally, the ’275 patent specification states, “set top box 18 then selects
certain ones of the media components in response to its presentation logic
object and its data object.” Id. at 5:2–6 (emphasis added).
Accordingly, on this record, we determine that the broadest
reasonable interpretation of “creating presentation logic objects based on
corresponding ones of the data objects” is “creating presentation logic
objects each based on one or more profile data objects associated with an
individual user.”
B. Asserted Anticipation of Claims 1 and 13 by Seidman
Petitioner contends that independent claims 1 and 13 of the ’275
patent are unpatentable as anticipated by Seidman. Pet. 24–28, 42–45.
1. Seidman
Seidman describes a system for two-way digital multimedia broadcast
services. Ex. 1004, Abstract. A head end broadcasts to viewers a
multiplexed stream containing video and audio content, as well as control
information and embedded data. Id. at 3:29–32. Seidman also describes a
method of customizing video programs. Id. at 3:56–57. The customization
may involve selecting a subset of the broadcasted program segments. Id. at
3:57–65.
2. Claims 1 and 13
Petitioner has not shown sufficiently that Seidman discloses “creating
presentation logic objects based on corresponding ones of the data objects to
facilitate the creation of individual customized presentations for each one of
the user computer means,” as recited in claim 1, and as recited in claim 13.
According to Petitioner, “[c]ontrol information [of Seidman] is
equivalent to ‘presentation logic objects’ because it is created by the head
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end based on one or more corresponding viewer profiles to facilitate the
creation of customized presentations and is sent to the STBs [(set top
boxes)].” Pet. 26 (citing Ex. 1004, 3:29–4:40, 7:62–8:50). We, however,
determine that Petitioner has not shown persuasively that control
information is created based on corresponding ones of the profile data
objects, which are created based on information about a user. We note that
Petitioner states “[a] viewer profile is equivalent to a profile data object.”
Id. at 25–26.
In support of its contention that control information is equivalent to
presentation logic objects, Petitioner cites to two lengthy excerpts of
Seidman, without much explanation as to what in these excerpts supports
Petitioner’s contention. Pet. 26 (citing Ex. 1004, 3:29–4:40, 7:62–8:50). In
the first of Petitioner’s citations, Seidman refers to control information as
simply data that is sent in the downstream path. Ex. 1004, 4:35–37. In the
second of Petitioner’s citations, Seidman describes that “embedded data may
or may not be filtered out” depending on the user’s history and interests. Id.
at 8:21–23. Seidman further describes that the head end will alter data to
“zero in” on specific topics. Id. at 8:35–39. We are not persuaded that
filtering data or zeroing in on a specific topic corresponds to creating an
object.
Petitioner and Dr. Schonfeld point to an additional disclosure in
Seidman. Pet. 26 (citing Ex. 1004, 8:62–9:4). The full excerpt of Seidman
that Petitioner and its Declarant rely on is reproduced below.
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If a user (or group of users) demonstrates, by selection of
embedded data and/or intra-video navigation, interest in a
particular topic, the data embedded in the steam can be
modified to reflect this interest. This modification can occur
during the viewing of the program, within seconds of the
indication, by the user (or group of users) of a new topic of
interest. The control information must be modified as well, to
establish the association of the new embedded data with the
previously marked objects in the video.
Ex. 1004, 8:62–9:4.
Neither Petitioner nor Dr. Schonfeld explains persuasively how user
selection corresponds to the profile data objects that are created based on
individual user profile information. We further note that, contrary to
Dr. Schonfeld’s statement (Ex. 1001 ¶ 68), the excerpt does not mention one
or more viewer profiles. Additionally, neither Petitioner nor Dr. Schonfeld
explains persuasively how modifying control data discloses “creating”
presentation logic objects.
Dr. Schonfeld also refers to a few paragraphs preceding the excerpt
cited in the Petition. Ex. 1001 ¶ 62 (citing Ex. 1004, 8:39–9:16). These
immediately preceding paragraphs also do not mention viewer profiles.
Instead, Seidman states that unless the user has his or her own dedicated
video channel, the content broadcasted by the head end will be based on “the
consensus of a given percentage of the users.” Ex. 1004, 8:44–45.
In its claim chart, corresponding to “creating presentation logic
objects based on corresponding ones of the data objects to facilitate the
creation of individual customized presentations for each one of the user
computer means,” Petitioner refers to numerous excerpts of Seidman with
minimal explanation. Pet. 43 (citing Ex. 1004, 9:57–61); see also id. (citing
Ex. 1004, 3:29–3:63, 4:21–26, 4:35–37, 5:13–22, 6:2–7, 7:62–10:19, 10:32–
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34, 12:21–28, 12:33–36, 12:49–52; Ex. 1001 ¶¶ 61–71). Petitioner states,
“[t]he STB receives, from the downstream channel, control information
regarding the program segments available for the currently-broadcast[ed]
program.” Id. (citing Ex. 1004, 9:57–61). Petitioner does not explain
persuasively how this control information has been created or show
sufficiently that this excerpt discloses creating presentation logic objects.
Petitioner also does not show sufficiently that any control information is
created based on profile data objects. Petitioner does not identify
specifically any other portions of Seidman as disclosing the creation of
presentation logic objects “based on corresponding ones of the [profile] data
objects” (emphasis added), as is recited in claims 1 and 13.
In the excerpts of the Schonfeld Declaration to which that Petitioner
points for this limitation (Pet. 43 (citing Ex. 1001 ¶¶ 61–71)), in addition to
the opinion discussed above, Dr. Schonfeld further states that Seidman
describes “control information includes ‘association information,’ which
describes the correspondence of video objects with multimedia objects in the
content stream.” Ex. 1001 ¶ 62 (citing Ex. 1004, 8:55–59). Including
control data in downstream video to associate different types of media
objects does not show sufficiently creation of presentation logic objects
based on corresponding ones of profile data objects.
As a further example, Dr. Schonfeld refers to an excerpt of Seidman
that discusses providing player information during a sports program
(Ex. 1001 ¶ 62 (citing Ex. 1002, 8:39–9:16)), which is reproduced below.
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For example, the data embedded in the stream of a sports
program may include historical, statistical, and anecdotal
information related to the players (i.e.[,] the video objects). If a
majority of viewers show an interest in statistical information
when selecting the embedded data associated with a player, this
information could be displayed immediately on screen when a
player is selected.
Ex. 1004, 9:7–13.
Dr. Schonfeld has not shown persuasively how this excerpt of
Seidman discloses creating presentation logic objects based on
corresponding ones of the data objects. Seidman describes that “[i]f a
majority of viewers show an interest” historical, statistical, and anecdotal
information related to the player could be displayed immediately on the
screen when a player is selected. Ex. 1004, 9:10–13. Dr. Schonfeld has not
shown persuasively how modifying associations to improve the viewing
experience for the majority of users discloses creating presentation logic
objects based on corresponding ones of the profile data objects. As an
alternative, Seidman discloses offering a user a menu (Ex. 1004, 9:14–16),
indicating that the modification is not a customized presentation.
Additionally, Petitioner points to the same excerpts as disclosing other
elements of claims 1 and 13. For example, Petitioner points to the
multiplexed stream broadcasted by the head end as disclosing “broadcasting
a single universal presentation media object including a set of media
components to each one of a group of remotely located user computer
means,” as recited in claims 1 and 13. Pet. 44 (citing Ex. 1004, 3:29–33). In
particular, the excerpt relied on by Petitioner for disclosing broadcasting a
single universal media object states: “the head end broadcasts a multiplexed
stream to viewers . . . [t]his stream contains video and audio content as well
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as control information and embedded data.” Ex. 1004, 3:29–32 (emphasis
added). Petitioner does not explain persuasively how the same data in the
multiplexed stream can both be created based on individual user profile
information and also be a common presentation media object that is
broadcasted to each user.
Dr. Schonfeld cites to further excerpts from the specification of the
’275 patent that he contends disclose “creating presentation logic objects
based on corresponding ones of the data objects.” Ex. 1001 ¶¶ 65–67 (citing
Ex. 1004, 3:58–62, 9:57–61, 10:1–6). These excerpts describe customizing
video programs received by a subscriber. Ex. 1004, 3:58–62, 9:57–61,
10:1–6. We note that Petitioner has pointed to similar excerpts for
disclosing the step of “selecting certain ones of the media components at
each one of the user computer means in response to its presentation logic
object and its data object,” as recited in claims 1 and 13. Pet. 45 (citing
Ex. 1004, 3:56–63, 9:5–13, 10:1–8).
Claims 1 and 13 recite specific steps for customizing presentations.
Petitioner has not shown sufficiently that Seidman discloses “creating
presentation logic objects based on corresponding ones of the data objects to
facilitate the creation of individual customized presentations for each one of
the user computer means,” as recited in claims 1 and 13.
For the foregoing reasons, in light of the arguments and evidence
submitted, Petitioner has not established a reasonable likelihood that claims
1 and 13 are unpatentable as anticipated by Seidman.
C. Asserted Obviousness of Claims 1 and 13 over Seidman
Petitioner contends that claims 1 and 13 are unpatentable as obvious
over Seidman. Pet. 29. Petitioner, however, does not provide further
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contentions regarding “creating presentation logic objects based on
corresponding ones of the data objects to facilitate the creation of individual
customized presentations for each one of the user computer means,” as
recited in claims 1 and 13. For the reasons given above, we are not
persuaded that Petitioner established a reasonable likelihood that claims 1
and 13 are unpatentable as obvious over Seidman.
D. Asserted Anticipation and Obviousness of Claims 1 and 13
over Rosser
Petitioner contends that claims 1 and 13 are unpatentable as
anticipated by or obvious over Rosser. Pet. 30–33. Petitioner states that the
’275 patent has an effective filing date of March 31, 1998. Id. at 4.
Petitioner contends that Rosser qualifies as prior art under 35 U.S.C.
§ 102(e). Id.
Patent Owner contends that Rosser is not prior art to the ’275 patent
(Prelim. Resp. 8–9) because Rosser’s effective date is after the filing date of
the ʼ275 patent. We are persuaded that Rosser does not qualify as prior art.
Rosser indicates that it issued from a PCT application filed on December 17,
1997. Ex. 1005. At the time the PCT application was filed,
35 U.S.C. § 102(e) stated that a person shall not be entitled to a patent if:
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the invention was described in a patent granted on an
application for patent by another filed in the United States
before the invention thereof by the applicant for patent, or on an
international application by another who has fulfilled the
requirements of paragraphs (1) (2), and (4) of section 371(c) of
this title before the invention thereof by the applicant for patent.
35 U.S.C. § 102(e) (1997).2 We, therefore, agree with Patent Owner that
Rosser must meet the requirements of 35 U.S.C. §§ 371(c) (1), (2), and (4),
prior to the filing date of the ’275 patent.
On its face, Rosser indicates that the requirements of paragraphs (1)
(2), and (4) of 35 U.S.C. § 371(c) were satisfied on June 17, 1999.
Ex. 1005, [86]. That date is after the filing date of the ’275 patent, which is
March 31, 1998.3 See Ex. 1002. We, therefore, also agree with the Patent
Owner that Rosser is not prior art under 35 U.S.C. § 102(e).
Rosser fails to qualify as prior art under other relevant subsections of
§ 102, which indicates a PCT publication date of July 2, 1998, and an issue
date of September 3, 2002. Ex. 1005, [45], [87].
Accordingly, on this record, we determine that Petitioner has not
established that Rosser qualifies as prior art to the ’275 patent. We,
therefore, determine that Petitioner has not demonstrated a reasonable

2 Pursuant to the Patent and Trademark Office Authorization Act of 2002,
“[p]atents resulting from an international application filed before November
29, 2000 . . . shall not be effective as prior art as of the filing date of the
international application; however, such patents shall be effective as prior art
in accordance with section 102(e) in effect on November 28, 2000.” Pub. L.
No. 107-273 § 13205.
3 Patent Owner does not contend that the date of invention is earlier than the
filing date of the patent.
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likelihood that claims 1 and 13 are unpatentable as anticipated by or obvious
over Rosser.
E. Asserted Anticipation of Claims 1 and 13 over Park
Petitioner contends that claims 1 and 13 are unpatentable as
anticipated by Park. Pet. 34–37.
1. Park
Park describes broadcasting advertising in a radio broadcast system
such that selected information reaches a specific audience. Ex. 1006, 1. In
Park, advertising segments specify demographic information identifying a
target audience. Id. at 11. The demographic information is in a target
profile that is transmitted in association with an advertisement. Id. at 12.
Additionally, Park stores a user profile, which is a collection of demographic
and psychographic information pertaining to a given user. Id. at 10. Park
describes selecting the appropriate advertisement for presentation by
comparing the user profile with the target profile. Id. at 18. For example, “a
women’s clothing ad can be tailored for women and in fact directed only to
women.” Id. at 19.
2. Claims 1 and 13
Petitioner has not shown sufficiently that Park discloses “creating
presentation logic objects based on corresponding ones of the data objects to
facilitate the creation of individual customized presentations for each one of
the user computer means,” as recited in claim 1, and as recited in claim 13.
Petitioner points to Park’s disclosure of target profiles. Pet. 35 (citing Ex.
1006, 3, 10–11, 12, 17–18). Again, Petitioner provides many citations with
little explanation of how these citations support its contentions. Petitioner
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points to the following in Park: “[t]arget profiles characterize an intended
audience.” Id. at 43 (citing Ex. 1006, 3).
Park’s description of characterizing “an intended audience” (Ex. 1006,
3) does not indicate how target profiles are created. Target profiles could be
created various ways, such as an advertiser simply specifying the
demographic information. For the reasons given above regarding claim
construction, we determine that “creating presentation logic objects based on
corresponding ones of the data objects” means “creating presentation logic
objects each based on one or more profile data objects associated with an
individual user” (emphasis added). Petitioner’s identification of disclosure
in Park regarding target profiles is not sufficient to show creating an object
based on one or more user profiles associated with an individual.
Petitioner additionally points to Park’s description that display of a
customized presentation is a function of a correspondence of data from
target profiles with data from user profiles, which can be determined
because the target profiles include data that is matched to data included in
user profiles. Pet. 35 (citing Ex. 1006, 3, 10–11). Park’s description of how
customized presentations are displayed (Ex. 1006, 3, 10–11), however, is not
sufficient to disclose how presentation logic objects are created.
Petitioner further contends that Park discloses presentation logic
objects created based on a corresponding one of the data objects, by
describing that “[t]he data in target profiles and in user profiles are both
derived from the gathered demographic and psychographic information.”
Pet. 35 (citing Ex. 1006, 17–18). The portion of Park which Petitioner cites,
however, mentions selecting an appropriate advertisement for presentation
by comparing the user profile and a target profile for the stored
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advertisement (see, e.g., Ex. 1006, 18), but does not describe sufficiently
how target profiles are created.
Dr. Schonfeld testifies that Park describes “creation of a ‘target
profile’ based on user profile information . . . e.g., ‘an identification of a
target audience expressed in terms of demographic or psychographic
information including but not limited to age, sex, income, interest topics, and
the like.’” Ex. 1001 ¶ 186 (citing Ex. 1006, 9); see also id. (citing Ex. 1006,
3, 10, 13, 18–19). Dr. Schonfeld’s additional testimony relies on portions of
Park that are the same as or similar to those discussed above and does not
remedy the deficiencies noted.
Accordingly, we determine that Petitioner has not met its burden of
establishing that there is a reasonable likelihood that claims 1 and 13 are
unpatentable as anticipated by or obvious over Park.
F. Asserted Obviousness of Claims 1 and 13 over Park
Petitioner contends that claims 1 and 13 are unpatentable as obvious
over Park. Pet. 37–38, 42–45. Petitioner, however, does not point to
additional excerpts of Park that would teach or suggest “creating
presentation logic objects based on corresponding ones of the data objects to
facilitate the creation of individual customized presentations for each one of
the user computer means,” as recited in claims 1 and 13.
Petitioner relies on Dr. Schonfeld. Pet. 42 (citing ¶¶ 188–90). For
example, Dr. Schonfeld testifies
[i]t would have been merely a design choice of whether to
create a target profile (presentation logic object) based on one
user profile (profile data object) or on a plurality of user
profiles (profile data objects) because the same process could
be invoked to generate a target profile for each user profile or
an aggregate of several user profiles.
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Id. ¶ 189. Dr. Schonfeld’s statement, however, is not persuasive. It is
conclusory and does not identify the teaching in Park suggesting that a
plurality of user profiles are used to create the target profiles. See
37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
underlying facts or data on which the opinion is based is entitled to little or
no weight.”) Dr. Schonfeld provides additional testimony regarding target
profile objects. We are not persuaded by this additional testimony because it
is based on Petitioner’s construction that we did not adopt. Id. ¶ 188.
For the reasons given above, we determine that Petitioner has not
established a reasonable likelihood that claims 1 and 13 are unpatentable as
obvious over Park.
G. Asserted Obviousness of Claims 1 and 13 over Seidman,
Rosser, and Park
Petitioner contends that claims 1 and 13 are unpatentable as obvious
over Seidman, Rosser, and/or Park. Pet. 38–45. As discussed above,
Petitioner has not established that Rosser qualifies as prior art to the ’275
patent. Additionally, we determine that Petitioner has not demonstrated a
reasonable likelihood that claims 1 and 13 are unpatentable as anticipated by
or obvious over Seidman or Park, taken individually. In particular, we
determine that Petitioner has not shown persuasively that either Seidman or
Park individually discloses “creating presentation logic objects based on
corresponding ones of the data objects to facilitate the creation of individual
customized presentations for each one of the user computer means,” as
recited in claims 1 and 13. We, therefore, turn to Petitioner’s contentions
that this element is disclosed in the combined teachings of Seidman and
Park. Id. at 39–40 (citing Ex. 1001 ¶¶ 224, 227, 230).
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For a rationale to combine Seidman and Park, Petitioner relies on the
testimony of Dr. Schonfeld (id.), who states that Seidman and Park “are in
the same field of endeavor and propose similar solutions to a common
problem[,]” which according to Dr. Schonfeld is distributing content to user
devices and delivering customized presentations. Ex. 1001 ¶ 224. We
conclude that Dr. Schonfeld’s testimony that the references are both directed
to a broadly defined field and solution is not sufficient reason, considered
alone, to combine their teachings.
Petitioner relies on certain additional testimony of Dr. Schonfeld.
Pet. 39–40 (citing Ex. 1001 ¶¶ 227, 230). In particular, Dr. Schonfeld
discusses Rosser and Park (Ex. 1001 ¶ 227) and briefly refers to claim charts
in Appendix A (id. ¶ 230). We determine that this does not provide a
sufficient rationale for combining Seidman and Park, because it pertains to
combining only Rosser and Park, not Seidman.
Petitioner additionally contends “[b]y combining the teachings of
Seidman and Park, Park’s target profiles may be created based on viewer
sections of users as disclosed by Seidman.” Pet. 40. Petitioner does not
provide persuasive support for its contention. In addition to the portions of
Dr. Schonfeld’s Declaration cited by Petitioner, Dr. Schonfeld testifies that
“it would have been obvious to apply the teachings of Seidman with respect
thereto to either or both of the systems and methods disclosed in Rosser and
Park.” Ex. 1001 ¶ 225. Dr. Schonfeld further testifies, “[t]he motivation to
combine these references includes improving the customization of media
presentations to individual users (e.g., selection and presentation of
advertisements by targeting advertisements to individual users).” Id. We do
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not find this testimony persuasive. Dr. Schonfeld’s statements are
conclusory, without citation to evidentiary support for his statements.
Additionally, Petitioner has not shown sufficiently that “creating
presentation logic objects based on corresponding ones of the data objects to
facilitate the creation of individual customized presentations for each one of
the user computer means,” as recited in claim 1, and as recited in claim 13,
is taught by the combined teachings of Seidman and Park. Both Seidman
and Park teach presentation for a particular group. For example, Seidman
teaches that content broadcasted by the head end will be based on “the
consensus of a given percentage of the users.” Ex. 1004, 8:44–45. Park
teaches sending advertising to a target audience (Ex. 1006, 9–11) such as “a
women’s clothing ad can be tailored for women and in fact directed only to
women” (id. at 19).
We determine that Petitioner also does not provide sufficient
argument or evidence to show that “creating presentation logic objects based
on corresponding ones of the data objects,” would have been obvious in
view of the combined teachings of Seidman and Park.
Accordingly, we determine that Petitioner has not established a
reasonable likelihood that claims 1 and 13 are unpatentable as obvious over
Seidman, Rosser, and/or Park.
H. Dependent Claims 2–12 and 14–24
Petitioner further contends that dependent claims 2–12 and 14–24 of
the ’275 patent are unpatentable under 35 U.S.C. § 102 or 35 U.S.C. §103,
based on Seidman, Rosser, and/or Park, alone or in combination with
additional prior art references. Pet. 46–60.
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Each of claims 2–12 depends directly from claim 1, and each of
claims 14–24 depends directly from claim 13. Because Petitioner has not
established a reasonable likelihood that independent claims 1 and 13 are
unpatentable, we conclude that Petitioner also has not established that any of
dependent claims 2–12 and 14–24 are unpatentable.
III. ORDER
For the reasons given, it is hereby
ORDERED that the Petition is denied and no inter partes review is
instituted.

For PETITIONER:

Linda Thayer
Linda.thayer@finnegan.com

Rachael Emsley
Rachel.emsley@finnegan.com

For PATENT OWNER:

Jason S. Angell
jangell@fawlaw.com