Unified Patents Inc.v.Personalized Media Communications, LLC

Patent Trial and Appeal Board

Jun 8, 2015

08485283 (P.T.A.B. Jun. 8, 2015)

Trials@uspto.gov Paper 15
571-272-7822 Entered: June 8, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS, INC.,
Petitioner,

v.

PERSONALIZED MEDIA COMMUNICATIONS, LLC,
Patent Owners.
____________

Case IPR2015-00520
Patent 7,805,749 B1
____________

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

BRADEN, Administrative Patent Judge.

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

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Patent 7,805,749 B1
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I. INTRODUCTION
Unified Patents, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
requesting an inter partes review of claims 2, 3, 9–13, 18, 24, 49, 52, and 53
(“challenged claims”) of U.S. Patent No. 7,805,749 B1 (Ex. 1001, “the ’749
patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 1, 14–15. Personalized
Media Comm., LLC (“Patent Owner”) timely filed a Patent Owner
Preliminary Response (“Prelim. Resp.”). Paper 12. We have jurisdiction
under 35 U.S.C. § 314.
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a), which provides that an inter partes review may not be
instituted “unless the Director determines . . . there is a reasonable likelihood
that the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.”
Based on the particular circumstances of this case, we exercise our
discretion under 35 U.S.C. § 325(d) and deny the Petition.
A. Related Matters
Petitioner informs us that the ’749 patent is the subject of a lawsuit:
Personalized Media Communications, LLC v. Amazon.com, Inc., No. 1:13-
cv-1608-RGA (D. Del. filed Sept. 23, 2013). Pet. 1. Additionally,
Petitioner identifies another inter partes review filed by third parties that
involves the ’749 patent, namely, Amazon.com, Inc. and Amazon Web
Services, LLC v. Personalized Media Comm., LLC (collectively “Amazon”),
IPR2014-01533. Paper 3, 1. In IPR2014-01533, we instituted an inter
partes review of claims 2, 3, 9–13, 18, 24, 49, 52, and 53 of the ’749 patent
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on March 26, 2015. IPR2014-01533, Paper 7. Petitioner filed its Petition,
challenging the same claims, along with a Motion for Joinder requesting that
we join this proceeding with IPR2014-01533. Pet. 14–15; Paper 3, 1. In a
decision entered concurrently (Paper 16), Petitioner’s Motion for Joinder is
denied.
B. The’749 Patent
The ’749 patent discloses a system for using embedded signals to
deliver personalized program content to a subscriber station. Ex. 1001,
7:47–48; 15:14–46. One embodiment of the disclosed system is illustrated
in Figure 7 and is reproduced below.

Figure 7 shows that TV set 202, printer 221, and local input device
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225 are connected to a system that includes micro-computer 205 and signal
processor 200. Id. at 242:31–59. The ’749 patent describes personalized
content being delivered to a subscriber substation by transmission of a
message, which can be encrypted and decrypted. Id. at 246:26–29. The
content is decrypted using a decryptor that is provided with the personalized
content-containing message. Id. at 15:21–27. Personalized content can be
sent to and coordinated through computers, television, and printers. Id. at
241:57–60.
Another embodiment of the ’749 patent describes a subscriber
watching a television program called “Exotic Meals of India.” Id. at
241:50–246:58. According to the ’749 patent, mid-way through the program
“Exotic Meals of India,” subscribers are offered a print out of the recipe and
shopping list of the meal that is being prepared on the show. Subscribers are
prompted to enter a code, TV567#, into a local input device. Id. at 242:63–
65; 249:23. A receiver station receives the code and accesses
preprogrammed information (including “particular program unit information
and TV567# information”) that is stored in a buffer at microcomputer 205.
Id. at 241:61–65; 249:24–56; Figs. 7, 7F. One minute later, the program
originating studio embeds a second signal that includes “unit code
identification information that identifies the programming of the information
segment of said message” and a computer program for generating a user-
specific recipe. Id. at 243:60–244:3. Receipt of this second signal causes
the receiver stations where the TV567# code was entered to execute the
program (instructions) to generate a user-specific recipe. Id. at 244:4–59.
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The’749 patent states that the information of the second message, i.e., the
message containing the instructions for generating the recipe and shopping
list, “can be encrypted and caused to be decrypted in any of the methods
described above—for example, in the method of the first message of
example #4.” Id. at 246:26–29.
Example #4 of the ’749 patent specifically provides a process for
decrypting a message in which a receiver station selects a “program unit
identification code,” selects preprogrammed key information, decrypts a
message using a key, and stores the program unit information and decryption
key information in a “meter record” at a recorder. Id. at 102:25–117:2. The
information in the record is transferred to a remote billing station via a
telephone connection. Id. at 48:45–60.
C. Illustrative Claim
As noted above, Petitioner challenges claims 2, 3, 9–13, 18, 24, 49,
52, and 53 of the ’749 patent, of which claims 2, 18, and 49 are the only
independent claims. Claim 2 is illustrative of the challenged claims and is
reproduced below:
2. A method for mass medium programming promotion and
delivery for use with an interactive video viewing
apparatus comprising the steps of:
receiving a first portion of said mass medium programming in a
first programming signal, said first portion of mass
medium programming including a video image that
promotes a second portion of said mass medium
programming;
displaying said video image, said interactive video viewing
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apparatus having an input device to receive input from a
subscriber;
prompting said subscriber for a reply, during said step of
displaying said video image, as to whether said
subscriber wants said second portion of said mass
medium programming promoted in said step of
displaying of said video image, said interactive video
viewing apparatus having a transmitter for
communicating said reply to a remote site;
receiving said reply from said subscriber at said input device in
response to said step of prompting said subscriber, said
interactive video viewing apparatus having a processor
for processing said reply;
processing said reply and selecting at least one of a code and a
datum designating said second portion of said mass
medium programming to authorize delivery of said
second portion of said mass medium programming;
communicating said selected at least one of a code and a datum
to a remote site;
receiving said second portion of said mass medium
programming in a second programming signal;
decrypting said second portion of said mass medium
programming by using said at least one of a code and a
datum in response to said step of processing said reply;
and
delivering said mass medium programming to an output device.

D. The Evidence of Record
Petitioner relies upon the following references, as well as the
Declaration of Michael O. Slinn (Ex. 1004):
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Reference Patent/Printed Publication Date Exhibit
Jeffers US Patent No. 4,739,510 Apr. 19, 1988 1005
Campbell US Patent No. 4,536,791 Aug. 20, 1985 1006
Guillou US Patent No. 4,337,483 June 29, 1982 1022
Powell Chris Powell, Prestel: the
Opportunity for Advertising,
VIEWDATA AND
VIDEOTEXT 1980-81:
AWORLDWIDE REPORT
233–246
1980 1014
E. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims 2, 3, 9–13, 18, 24, 49,
52, and 53 of the ’749 patent based on the following grounds:
Reference(s) Basis Claims Challenged
Jeffers § 102 2, 3, 9–13, 18, 24, 49, 52, and
53
Campbell § 103 2, 3, 9–13, 18, 24, 49, 52, and
53
Powell and Guillou § 103 2, 3, 9–13, 18, 24, 49, 52, and
53

II. ANALYSIS
Petitioner states that its “[P]etition is substantively identical to the one
in [IPR2014-01533]” and requests that the Board grants its Petition and
institute inter partes review. Pet. 1. Patent Owner counters that Petitioner’s
joinder request would: (i) complicate and delay the proceeding in IPR2014-
01533; (ii) waste the Board’s resources; and (iii) prejudice the Patent Owner.
Opposition to Petitioner’s Motion for Joinder (Paper 7, “Opp.”), 7–15.
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We have discretion under 35 U.S.C. § 325(d) to reject a petition when
the same or substantially the same prior art or arguments were presented
previously in another proceeding before the Office. The relevant portions of
that statute are reproduced below:
In determining whether to institute or order a proceeding under
this chapter, chapter 30, or chapter 31, the Director may take
into account whether, and reject the petition or request because,
the same or substantially the same prior art or arguments
previously were presented to the Office.
35 U.S.C. § 325(d).
Although the grounds of unpatentability, claim construction, and
supporting evidence in this proceeding are nearly identical to the grounds of
unpatentability, claim construction, and supporting evidence in IPR2014-
01533 (compare Pet. 14–59 with IPR2014-01533, Paper 1, 14–60),
Petitioner downplays the significance of the fact that this proceeding
includes at least one new substantive issue that is not before us in the
proceeding in IPR2014-01533. As noted in our concurrent decision denying
Petitioner’s motion for joinder, Petitioner is a company whose stated
purpose is to deter NPE litigation by protecting technology sectors (Mot. 2);
therefore, Patent Owner seeks additional discovery to determine what
companies, if any, fund and control the Petitioner (Opp. 10). Patent Owner
argues that this additional discovery will be required to address adequately
whether Petitioner failed to identify all real parties-in-interest under 35
U.S.C. § 312(a)(2). Opp. 10–11.
Additionally, Petitioner fails to address how instituting and joining
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this proceeding to IPR2014-01533 will affect the schedules in the other six
related inter partes reviews between Amazon and the Patent Owner, which
have all been instituted and share the same schedule as IPR2014-01533.
See, e.g., IPR2014-01531, Paper 11, 1; IPR2014-01532, Paper 16, 1;
IPR2014-01533, Paper 15, 1. Furthermore, Patent Owner argues that
Petitioner will not be prejudiced by a denial of joinder because Petitioner
may refile its Petition in the event that IPR2014-01533 is terminated.
Opp. 13–14.
Taking into consideration the efficient administration of the Office
under 35 U.S.C. § 316(b), as well as the reasons set forth in the decision
denying Petitioner’s Motion to Joinder (Paper 16) entered concurrently, we
exercise our discretion under 35 U.S.C. § 325(d) and deny the Petition in
this proceeding because the same or substantially the same prior art and
arguments were presented previously in IPR2014-01533.

III. ORDER
Accordingly, it is ORDERED that the Petition is DENIED.

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For PETITIONER:

Michael Kiklis
Scott McKeown
Katherine Cappaert
cpdocketkiklis@oblon.com
cpdocketmckeown@oblon.com
cpdocketcappaert@oblon.com

For PATENT OWNER:

Stephen Schreiner
Eleanor Yost
sschreiner@goodwinprocter.com
eyost@goodwinprocter.com

Thomas Scott
tscott@pmcip.com